00 Civ. 5686 (LAK)
August 21, 2001
Plaintiff moves for leave to file a second supplemental complaint. Defendant cross-moves for a Rule 16 conference and related relief.
Plaintiff's motion for leave to file a second supplemental complaint is granted. Defendant's contention that the Court lacks jurisdiction over the subject matter of plaintiff's prayer for a declaration of non-infringement is without merit. There plainly is an actual controversy between the parties notwithstanding the dismissal of defendant's infringement counterclaims for want of certificates of registration. While the Copyright Act makes possession of a certificate of registration a prerequisite to a suit for copyright infringement, 17 U.S.C. § 411, it does not make the existence of such a certificate a prerequisite to a suit for a declaration of non-infringement. While the non-existence of a registration certificate may be germane to the question whether there is an actual controversy, it certainly is not dispositive where, as here, defendant has applied for registration and quite clear contends that plaintiff is infringing his copyrights. Defendant's other arguments in opposition to the motion are without merit, provided, however, that the Court does not now pass on the merits of defendant's contention that plaintiff's claim for breach of paragraph 20 of the 1996 agreement is barred by principles of former adjudication.
Defendant's cross-motion for a Rule 16 conference is denied at this time. The parties shall meet and confer with a view to reaching agreement on a discovery cutoff date, which shall be no later than November 1, 2001, and for the filing of dispositive motions, which shall be no later than December 1, 2001, and shall file a stipulation setting forth their agreement. If the parties cannot reach agreement on a schedule, they promptly shall notify the Court of that fact.
The second supplemental complaint attached to plaintiff's motion papers is deemed served and filed as of this date.