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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`ELLEN SENISI,
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`Plaintiff,
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`-v-
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`JOHN WILEY & SONS, INC.,
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`Defendant.
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`No. 13CV3314-LTS-AJP
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`-------------------------------------------------------x
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`MEMORANDUM OPINION AND ORDER
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`On November 30, 2105, this Court issued a Memorandum Opinion and Order
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`(“SJ Order”) resolving the cross-motions of Plaintiff Ellen Senisi (“Senisi” or “Plaintiff”) and
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`Defendant John Wiley & Sons, Inc. (“Wiley” or “Defendant”) for summary judgment. (See
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`Docket Entry Nos. 168, 173, 209.) The SJ Order dismissed 143 of the 153 claims of copyright
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`infringement remaining in this case, relying principally on the invalidity of copyright registration
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`VA 1-429-916, which covered 140 of the claims at issue (the “subject claims”). (See SJ Order.)
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`On December 10, 2015, Senisi filed a letter with the Court seeking “clarification that the
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`dismissal of the claims covered by VA 1-429-916 [was] . . . without prejudice.” (See Docket
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`Entry No. 210) (emphasis in original). Wiley opposed Plaintiff’s request for clarification. (See
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`Docket Entry Nos. 211-213.) On January 7, 2016, the Court issued a Memorandum Order
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`denying Senisi’s request that the dismissal of her claims based on registration VA 1-429-916 be
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`deemed without prejudice. (See Docket Entry No. 214 (“Jan. 7 Order”).)
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`Senisi filed the instant motion on January 15, 2016, seeking reconsideration of the
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`Jan. 7 Order’s holding that dismissal of the claims arising from registration VA 1-429-916 was
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`with prejudice or, in the alternative, entry of judgment on the ruling dismissing the 140 claims
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`pursuant to Federal Rule of Civil Procedure 54(b) so that Senisi might pursue an immediate
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`appeal. (See Docket Entry Nos. 215, 216 (“Senisi Memo”).) Wiley opposes both requests. (See
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`Docket Entry No. 220 (“Wiley Memo”).)
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`The Court has carefully considered the parties’ submissions and, for the reasons
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`stated below, grants Senisi’s motion for reconsideration, vacates the Jan. 7 Order and holds that
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`the 140 claims that had been asserted in connection with registration VA 1-429-916 are
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`dismissed without prejudice.
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`DISCUSSION1
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`“A motion for reconsideration is governed by Local Civil Rule 6.3. In deciding a
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`motion for reconsideration pursuant to Local Civil Rule 6.3 . . . [t]he moving party is required to
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`demonstrate that the Court overlooked the controlling decisions or factual matters that were put
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`before the Court in the underlying motion.” See Weber v. Multimedia Entertainment, Inc., No.
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`97CV682-JGK, 2000 WL 724003, at *1 (S.D.N.Y. June 5, 2000); see also Shrader v. CSX
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`Transportation, Inc., 70 F.3d 255, 257 (2d Cir. 1995) (“reconsideration will generally be denied
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`unless the moving party can point to controlling decisions or data that the court overlooked –
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`matters, in other words, that might reasonably be expected to alter the conclusion reached by the
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`court.”). “A motion for reconsideration can [also] be granted if . . . there is a need to correct a
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`clear error or prevent manifest injustice.” Stone v. 866 3rd Next Generation Hotel, LLC, No.
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`99CV4780-LTS-KNF, 2002 WL 655591, at *1 (S.D.N.Y. Apr. 19, 2002) (quoting Virgin
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`In light of the extensive prior motion practice in this case, the Court presumes the
`parties’ familiarity with the underlying facts.
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`Atlantic Airways v. National Mediation Bd., 956 F.2d 1245, 1255 (2d Cir.1992)); see also
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`Munafo v. Metropolitan Transp. Authority, 381 F.3d 99, 105 (2d Cir. 2004) (“we agree with our
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`sister circuits that district courts may alter or amend judgment to correct a clear error of law or
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`prevent manifest injustice”) (internal quotation marks and citations omitted). Ultimately, the
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`decision as to whether or not to grant a motion for reconsideration is entrusted to the district
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`court’s sound discretion. See, e.g., Devlin v. Transportation Communications Intern. Union, 175
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`F.3d 121, 132 (2d Cir. 1999); see also In re MarketXT Holdings Corp., 455 F. App’x 41, 43 (2d
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`Cir. 2012) (summary order) (holding that “[t]he court’s denial of Appellants’ motion to
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`reconsider was not an abuse of discretion.”).
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`Wiley’s Procedural Arguments
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`As an initial matter, Wiley argues that Senisi’s motion for reconsideration fails on
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`procedural grounds as untimely and as an impermissible successive motion for reconsideration.
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`(See Wiley Memo at pp. 7-8.) As Wiley notes, Local Civil Rule 6.3 requires a party to file a
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`motion for reconsideration “within fourteen (14) days after the entry of the Court’s
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`determination of the original motion.” See S.D.N.Y. Local Civil Rule 6.3. Wiley argues that
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`Senisi’s motion is, in effect, a motion for reconsideration of the Court’s SJ Order, which was
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`filed on November 30, 2015, thus rendering her January 15, 2016, filing of the instant motion for
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`reconsideration untimely. While a portion of Senisi’s argument does challenge the Court’s
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`dismissal of her infringement claims based on the validity of registration VA 1-429-916, her
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`briefing on the instant motion focuses principally on the Court’s January 7, 2016, conclusion that
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`the dismissal of the claims arising from registration VA 1-429-916 was with prejudice. (See
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`generally Senisi Memo.) The motion for reconsideration was filed eight days after entry of the
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`Jan. 7 Order, and thus is clearly timely with respect to that Order. Therefore, Senisi’s
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`reconsideration motion is not procedurally foreclosed on timeliness grounds as to the issue of the
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`nature of the dismissal.
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`Nor does this motion represent an impermissible successive motion for
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`reconsideration. Wiley cites several cases in support of the proposition that “[t]he law is clear
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`that Plaintiff may not file successive motions for reconsideration.” (Wiley Memo at p. 8.)
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`Courts in this district have stated, for instance, that “[a] litigant is entitled to a single motion for
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`reconsideration.” Guang Ju Lin v. United States, Nos. S3 09CR746-SHS, 13CV7498-SHS, 2015
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`WL 747115, at *2 (S.D.NY. Feb. 18, 2015); see also Montanile v. National Broadcasting Co.,
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`216 F. Supp. 2d 341, 342 (S.D.N.Y. 2002) (“A Court must narrowly construe and strictly apply
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`Local Rule 6.3, so as to avoid duplicative rulings on previously considered issues, and to prevent
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`the rule from being used as a substitute for appealing a final judgment.”). Although Senisi seeks
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`the same relief here that she was denied in the Court’s Jan. 7 Order – that is, leave to file an
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`amended complaint – her initial letter to the Court, styled as a request for “clarification” of the
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`import of the Court’s SJ Order, cannot fairly be characterized as a motion seeking
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`reconsideration of any part of that Order. It was not until the Jan. 7 Order that the Court
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`explicitly set out its reasoning for dismissing Senisi’s claims with prejudice, and it was not until
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`the filing of the instant motion that these legal issues were fully briefed. The Court’s action on
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`the instant motion, therefore, is not a “duplicative ruling” on a “previously considered issue.”
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`Thus, the Court rejects Wiley’s argument that the instant motion is procedurally foreclosed as
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`successive motion for reconsideration, and will consider the merits of Senisi’s legal arguments.
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`Senisi’s Merits Argument
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`While the principles that have persuaded the Court to reconsider the Jan. 7 Order
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`were not presented fully in the earlier letter motion practice and therefore cannot be viewed as
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`overlooked controlling authority, the more fleshed out argumentation on the instant
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`reconsideration motion practice, and the steps Plaintiff took promptly after the SJ Order was
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`rendered, warrant revisitation of the Court’s earlier decision to preclude merits litigation of the
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`dismissed claims. Senisi relies most heavily on the argument that, in copyright infringement
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`cases, it is the “typical and proper practice . . . to dismiss claims without prejudice or to stay the
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`proceedings in order to allow the copyright owner to correct any technical registration defects,”
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`and proffers persuasive authority. (See Senisi Memo at p. 13.) As Senisi indicates, in Family
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`Dollar Stores, Inc. v. United Fabrics Intern., Inc., 896 F. Supp. 2d 223 (S.D.N.Y. 2012), Judge
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`McMahon noted that the “normal” course of action to follow in a case such as this would be to
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`dismiss any copyright infringement claims without prejudice to renewal after the party alleging
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`infringement has secured a valid registration. See id. at 234. In an order issued in that case,
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`Judge McMahon noted the “highly technical” nature of dismissal of claims on the basis of an
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`invalid registration and, in dismissing the claim that was based on the invalid registration,
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`specifically noted that the dismissal was without prejudice to litigation on the merits once a valid
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`registration had been secured. (See Declaration of Kevin McCulloch in Support of Plaintiff’s
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`Motion for Reconsideration, Ex. 5, Docket Entry No. 217-7.)
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`In this connection, the Second Circuit has recognized that the Copyright Act
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`imposes a requirement that, in order to institute an infringement action, a plaintiff must – as a
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`statutory precondition – hold a valid copyright registration. See Psihoyos v. John Wiley & Sons,
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`Inc., 748 F.3d 120, 125 (2d Cir. 2014); see also Accurate Grading Quality Assurance, Inc. v.
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`Thorpe, No. 12CV1324-ALC, 2013 WL 1234836, at *7 (S.D.N.Y. Mar. 26, 2013) (“While not a
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`strictly jurisdictional requirement, section § 411(a) nonetheless requires copyright registration as
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`a precondition to a copyright claims”) (quoting 17 U.S.C. § 411(a)). As this court has held,
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`“[t]he absence of a valid copyright registration . . . [bars] a plaintiff from bringing a viable
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`copyright infringement action,” (emphasis added) and thus does not permit the adjudication of
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`the merits of such an action. See L.A. Printex Industries, Inc. v. Le Chateau, Inc., No.
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`11CV4248-LTS, 2012 WL 987590, at *3 (S.D.N.Y. Mar. 23, 2012). Courts within this Circuit
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`have consistently held that failing to meet a statutory precondition to suit precludes adjudication
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`on the merits and warrants dismissal without prejudice. See, e.g., Building and Const. Trades
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`Council of Buffalo, New York and Vicinity v. Downtown Development, Inc., 448 F.3d 138, 156
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`(2d Cir. 2006); see also Catskill Mountains Ch. of Trout Unlimited, Inc. v. City of New York,
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`273 F.3d 481, 485 (2d Cir. 2001); Leviton Mfg. Co., Inc. v. Reeve, 942 F. Supp. 2d 244, 273
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`(E.D.N.Y. 2013) (“because the resulting judgment of dismissal is not a determination of the
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`claim, but rather a refusal to hear it, a plaintiff should thereafter have the opportunity to pursue it
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`. . . when the preconditions have been met.”).2
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`2
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`The Supreme Court’s holding in Reed Elsevier v. Muchnick that registration
`constitutes a statutory prerequisite to suit rather than a jurisdictional bar does not
`alter this result. See 559 U.S. 154 (2010). Indeed, the Copyright Act provides
`explicitly that “no civil action for infringement of the copyright in any United
`States work shall be instituted until preregistration or registration of the copyright
`claim has been made in accordance with this title. See 17 U.S.C.S. § 411(a)
`(LexisNexis 2011). Accordingly, “courts in this Circuit have . . . required that a
`plaintiff either hold a valid copyright registration outright or have applied and
`been refused a registration prior to filing a civil claim, both before and after Reed
`Elsevier . . . That a majority of the decisions on this point in this Circuit were
`decided prior to Reed Elsevier is of no moment as they remain grounded in the
`important policy goals achieved by the § 411(a) requirement . . . It remains the
`law in this Circuit that § 411(a) imposes a bar to copyright infringement claims
`where a plaintiff has not either received or been denied a copyright registration at
`the time such a claim is interposed.” See Muench Photography, Inc. v. Houghton
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`Recent Second Circuit precedent comports with the spirit of these decisions. In
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`Loreley Financing (Jersey) No. 3 Ltd. v. Wells Fargo Securities, LLC, 797 F.3d 160 (2d Cir.
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`2015), the Second Circuit reaffirmed that the “liberal spirit” of Federal Rule of Civil Procedure
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`15 embodies a “strong preference for resolving disputes on the merits.” See id. at 190-91
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`(quoting Williams v. Citigroup Inc., 659 F.3d 208, 212-13 (2d Cir. 2011)). Moreover, in
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`Loreley, the Second Circuit recognized that a rule requiring a plaintiff to immediately amend its
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`complaint prior to a motion to dismiss in order to avoid waiving its ability to do so later on
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`would present that plaintiff “with a Hobson’s choice: agree to cure deficiencies not yet fully
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`briefed and decided or forfeit the opportunity to replead.” Loreley, 797 F.3d at 190. The Court
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`went on to hold that “[w]ithout the benefit of a ruling, many a plaintiff will not see the necessity
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`of amendment or be in a position to weigh the practicality and possible means of curing specific
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`deficiencies.” Id. The Second Circuit also noted that this concern is particularly apparent in
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`“complex” cases where issues may be “borderline, and hence subject to reasonable dispute.” Id.
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`at 191. The Second Circuit’s holding in Loreley thus counsels strongly against the dismissal of
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`claims with prejudice prior to “the benefit of a ruling” that highlights “the precise defects” of
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`those claims. Id. at 190-91.
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` The Court therefore agrees with Plaintiff that denying Senisi “redress for her
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`[potentially] meritorious claims based on a technical default in her copyright registration would
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`constitute a manifest injustice” that reconsideration of the Jan. 7 Order would avoid. (See Senisi
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`Memo at p. 17 (citing Foman v. Davis, 371 U.S. 178, 181 (1962) for proposition that it is
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`Mifflin Harcourt Pub. Co., No. 09CV2669-LAP, 2012 WL 1021535, at *5
`(S.D.N.Y. Mar. 26, 2012). Moreover, Reed Elsevier did not suggest that
`registration should be considered to be an element of the merits of a copyright
`claim.
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`“entirely contrary to the spirit of the Federal Rules of Civil Procedure for decisions on the merits
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`to be avoided on the basis of . . . mere technicalities).) Senisi was entitled to rely upon
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`registration VA 1-429-916 as prima facie evidence of the validity of her copyright registration,
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`see, e.g., Fonar Corp. v. Domenick, 105 F.3d 99, 104 (2d Cir. 1997), and she did so throughout
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`the course of litigating this case. As Senisi points out, Wiley never moved to dismiss Senisi’s
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`claims on the basis of the invalidity of registration VA 1-429-916 prior to the summary judgment
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`motion practice. Therefore, preclusion of Senisi’s potentially meritorious infringement claims
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`on the basis that she ought to have amended her registration prior to any judicial ruling on that
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`registration’s validity would seem to contravene the “strong preference for resolving disputes on
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`the merits” articulated in Loreley. 797 F.3d at 190. This is particularly true in light of the fact
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`that Senisi has proffered that, following this Court’s SJ Order, she filed multiple applications
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`with the Copyright Office seeking to re-register all of the photographs affected by the SJ Order,
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`and that several of the new applications were approved on the day that this Court filed its Jan. 7
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`Order. (See Senisi Memo at p. 10; see also Docket Entry No. 217, Declaration of Kevin
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`McCulloch in Support of Motion for Reconsideration, Exs. 1-3.) In taking such action promptly,
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`Senisi changed the factual landscape of this case. Under such circumstances, it would be
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`manifestly unjust to preclude litigation of the merits of the 140 subject claims.
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`Accordingly, the Court vacates the Jan. 7 Order and hereby declares that the
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`claims based on copyrights registered under VA 1-429-916 are dismissed without prejudice.
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`Plaintiff will be permitted to file an amended complaint that properly alleges the valid
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`registration of the images underlying the 140 subject claims.3 Plaintiff’s motion is granted
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`without prejudice to either party’s filing of a motion, pursuant to Rule 21 of the Federal Rules of
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`In light of this determination, Senisi’s remaining requests for relief are moot.
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`Civil Procedure, to sever the 140 subject claims from the remaining claims in the case for the
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`purpose of prompt disposition of the litigation of those remaining claims.
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`CONCLUSION
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`In light of the foregoing, Senisi’s request for reconsideration of the Court’s Jan. 7
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`Order is granted. The Jan. 7 Order is vacated and the 140 claims that were based on copyright
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`registration VA 1-429-916 are dismissed without prejudice. Plaintiff may file her amended
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`complaint no later than April 5, 2016. Should they so desire, either party may move, pursuant to
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`Federal Rule of Civil Procedure 21, for severance of the 140 claims from all other claims
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`remaining in the case.
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`The parties are hereby directed to meet and confer regarding any further
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`anticipated motion practice, the possibility of settlement and outstanding trial preparation issues.
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`The final pretrial conference in this matter that is currently scheduled for Friday, May 6, 2016,
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`at 11:00 a.m. will instead be a status conference at which the foregoing issues will be
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`discussed.4 The parties must file a joint status report addressing these issues no later than
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`Friday, April 29, 2016.
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`This Memorandum Opinion and Order resolves Docket Entry Number 215.
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`SO ORDERED.
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`Dated: New York, New York
`March 15, 2016
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` /s/ Laura Taylor Swain
`LAURA TAYLOR SWAIN
`United States District Judge
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`All deadlines relating to the final pretrial conference remain stayed pending
`further order of the Court.
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