BROOKLYN, NY – A little over a year ago, I flagged a few lawsuits as copyright cases to watch, due to their wide-ranging implications. One of these was Fourth Estate Public Benefit Corp. v. Wall-Street.com, a case upon which the U.S. Supreme Court ruled in March.
The impact of Fourth Estate is already being felt in courtrooms around the country, including in another case I’ve covered before, Xclusive-Lee v. Hadid. In that case, model Gigi Hadid was sued by the company which owned the copyright to an image of Hadid that she posted to her Instagram account.
While Hadid’s initial defenses included a claim that Xclusive-Lee hadn’t sufficiently alleged it did, in fact, own the copyright to the image, as well as a fair use defense and a claim that she had an “implied license” to use it, what led the court to dismiss the lawsuit against Hadid wasn’t any of those claims. What swayed the court in Hadid’s case was the Supreme Court’s decision in Fourth Estate, which settled the question of whether creators of copyright-eligible works must wait until their copyright applications have been approved and their works have been registered before they file a complaint alleging violation of their copyright.
In its Fourth Estate decision, the Supreme Court held that “registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright” – something which had not yet occurred with respect to the image at issue in Hadid’s case.
In a decision issued earlier this month, U.S. District Judge Pamela Chen wrote that “assuming, without deciding, that Plaintiff has sufficiently pled that it owns a valid copyright in the Photograph, the Court concludes that Plaintiff’s copyright infringement claim should nevertheless be dismissed due to Plaintiff’s failure to comply with the registration requirement.”
“As the Supreme Court has held, the registration requirement is ‘[a] statutory condition’ under which a plaintiff must obtain registration of a copyright in a work ‘before filing a lawsuit’ based on infringement of that work,” Chen continued. “Here, Plaintiff does not allege that it had been formally granted registration of a copyright in the Photograph from the Copyright Office at the time it filed the complaint in this case. At most, the complaint alleges – and, indeed, Plaintiff appears to concede – that, at the time it commenced this action, it had only applied for a copyright in the Photograph.”
Making matters worse for Xclusive-Lee, Chen also ruled that the company cannot amend and refile its complaint against Hadid, even if the Copyright Office does grant registration of the photograph at issue in the case. In coming to that decision, Chen quoted from a case involving adult entertainment industry litigant Malibu Media.
“Moreover, the Court declines to grant Plaintiff leave to amend the complaint to allege registration should its copyright application be approved in the future,” Chen wrote in her decision. “On this issue, the Court finds Malibu Media, LLC v. Doe persuasive. That case presented the question of ‘whether a plaintiff that improperly filed suit before a copyright was registered [could] cure that defect by amending its complaint after the Register has completed registration of the copyright.’ The court answered that question in the negative, reasoning as follows: ‘Plaintiff’s argument would make a meaningless formality out of Fourth Estate’s requirement that an application be approved prior to filing suit. Were it correct, a plaintiff could file suit at any time, notwithstanding Section 411(a)’s precondition, and simply update the complaint when registration finally occurred. That would undermine Congress’s choice to maintain registration as a prerequisite to suit.’”
While Xclusive-Lee can’t refile the complaint just dismissed by Chen, the company can still file an entirely new action against Hadid, assuming the Copyright Office grants registration of the photo in the future. Anticipating that the company may do exactly that, Chen included a bit of advice for the company in a footnote to her ruling.
“In the event that Plaintiff files a new action after being formally granted a registered copyright in the Photograph, the Court advises Plaintiff that, at a minimum, it should more fully articulate the means by which it came to own the copyright in the Photograph, because ‘a bare assertion of ownership is the sort of legal conclusion that the Court need not accept’ at the pleadings stage of a copyright action,” Chen wrote.
Since the court found dismissal of the case was warranted due to the lack of registration on Xclusive-Lee’s photo, Chen didn’t need to address Hadid’s various defenses. Should Xclusive-Lee file a new action against Hadid once registration has been granted by the Copyright Office, we may yet find out whether her arguments are persuasive to the court.
