Kaseberg v. Conaco, LLC, Case No.: 15-CV-1637 JLS (DHB)

• Decision Date: 15 November 2018
• Docket Number: Case No.: 15-CV-1637 JLS (DHB)
• Citation: 360 F.Supp.3d 1026
• Court: U.S. District Court — Southern District of California
• Parties: Robert Alexander KASEBERG, Plaintiff, v. CONACO, LLC ; Turner Broadcasting System; Time Warner, Inc.; Conan O'Brien ; Jeff Ross; Mike Sweeney; Does 1–10, Inclusive, Defendants.

360 F.Supp.3d 1026

Robert Alexander KASEBERG, Plaintiff,

v.CONACO, LLC ; Turner Broadcasting System; Time Warner, Inc.; Conan O'Brien ; Jeff Ross; Mike Sweeney; Does 1–10, Inclusive, Defendants.

Case No.: 15-CV-1637 JLS (DHB)

United States District Court, S.D. California.

Signed November 15, 2018

Jayson Lorenzo, Ryan James Altomare, J. Lorenzo Law, Carlsbad, CA, for Plaintiff.

Erica J. Van Loon, Lathrop Gage LLP, Brittany Elias, Justin P. Thiele, Rex Hwang, Thomas Patrick Burke, Jr., Glaser Weil Fink Howard Avchen & Shapiro, LLP, Los Angeles, CA, for Defendants.

ORDER (1) GRANTING PLAINTIFF'S MOTION FOR JUDGMENT ON THE PLEADINGS, AND (2) DISMISSING DEFENDANTS' NINTH AND TENTH AFFIRMATIVE DEFENSES

(ECF Nos. 165, 167)

Hon. Janis L. Sammartino, United States District Judge

Presently before the Court is Plaintiff Robert Alexander Kaseberg's Motion for Judgment on the Pleadings and/or Partial Summary Judgment as to Defendants' Fraud on the Copyright Office and Unclean Hands Affirmative Defenses ("Mot.," ECF No. 167). Also before the Court are Defendants' Opposition to ("Opp'n," ECF No. 169) and Plaintiff's Reply in Support of ("Reply," ECF No. 171) the Motion. The Court vacated oral argument on the Motion and took the matter under submission without oral argument. ECF No. 170. After considering the Parties' arguments and the law, the Court GRANTS Plaintiff's Motion.

BACKGROUND

On July 22, 2015, Plaintiff filed a Complaint against Defendants for copyright infringement, alleging that Defendants featured on the Conan show jokes authored by Plaintiff without Plaintiff's consent. See generally ECF No. 1. Plaintiff alleged that "copyright registration [wa]s being sought" for each of the jokes at issue. Id. ¶ 26. The operative First Amended Complaint, filed October 3, 2016, see generally ECF No. 58, contains an identical allegation. See id. ¶ 29.

Only one of the five jokes in Plaintiff's Complaint is at issue for purposes of this Motion: the "Tom Brady joke." Mr. Lorenzo filed an application on Plaintiff's behalf to register the Tom Brady joke in September 2015 (the "September 2015 Application"). ¹

Am. Ans., ECF No. 165, ¶ 49; see also Request for Judicial Notice in Support of Motion ("RJN"), ECF No. 167-3, Ex D.²

On March 24, 2016, Defendant Conaco served discovery requests on Plaintiff, requesting all documents relating to Plaintiff's efforts to register the jokes and "all facts relating to YOUR ownership of the copyrights related to the JOKES AT ISSUE." Am. Ans. ¶¶ 52–53. Although Plaintiff agreed to produce all documents relating to his registration efforts, he did not produce registration certificates for the Tom Brady joke. Id. ¶ 52. Further, Plaintiff's interrogatory response, signed by Mr. Lorenzo, represented that Plaintiff "has registered copyrights for the jokes created." Id. ¶ 53.

The Office initially refused registration for the September 2015 Application on July 20, 2016, stating that there was not the requisite minimum amount of original authorship. Id. ¶ 49; see also Declaration of Jayson M. Lorenzo in Support of Plaintiff's Motion ("Lorenzo Decl."), ECF No. 167-4, ¶ 3 & Ex. 2.³ Shortly thereafter, on August 10, 2016, Mr. Lorenzo filed a second application on Plaintiff's behalf, this time seeking registration of multiple works published on February 2, 2015, including the previously rejected Tom Brady joke (the "August 2016 Application"). Am. Ans. ¶ 50; see also RJN Ex. C. Mr. Lorenzo did not disclose to the Office the July 20, 2016 refusal of the Tom Brady joke. Am. Ans. ¶ 50; see also Plaintiff's Response to Defendants' Material Facts in Opposition to Plaintiff's Motion ("Pl.'s Resp."), ECF No. 171-2, ¶ 8.

On October 19, 2016, Mr. Lorenzo filed a First Request for Reconsideration of the July 20, 2016 refusal for the September 2015 Application with the Office, which again refused registration on the basis of originality in March 2017. Am. Ans. ¶ 51; see also Lorenzo Decl. Ex. 2.

On February 3, 2017, Defendants filed a motion for summary judgment, partial summary judgment, or summary adjudication. Am. Ans. ¶ 55; see also ECF No. 70. In their motion, Defendants argued, among other things, that Plaintiff "failed to produce any evidence proving that he registered the Tom Brady" joke and that Plaintiff's "monologue-style jokes are ... only entitled to thin copyright protection." See ECF No. 70-1 at 8–9, 13–15; see also Am. Ans. ¶ 55.

Plaintiff's opposition, filed February 24, 2017, appended copies of the September 2015 and August 2016 Applications. See ECF No. 97-2 Ex. 8; see also Am. Ans. ¶ 56. The registrations for the Tom Brady joke were not produced to Defendants until after Defendants had filed their motion for summary judgment, Am. Ans. ¶ 56; see also Pl.'s Resp. ¶ 9, and the correspondence with the Office was not produced until May 2017. Am. Ans. ¶ 56; see also Pl.'s Resp. ¶ 10. The Court therefore ordered the parties to submit supplemental briefing as to whether Plaintiff's failure timely to disclose the applications should be outcome-determinative. Am. Ans. ¶ 57; see also ECF Nos. 122, 126, 127.

On May 12, 2017, the Court granted in part and denied in part Defendants' motion for summary judgment. Am. Ans. ¶ 58; see also ECF No. 131. As to the registrations, the Court determined that Plaintiff's failure timely to disclose them to Defendants should not be outcome-determinative because "reopening discovery and permitting a late-filed dispositive motion—if warranted—sufficiently neutralizes any potential prejudice Defendants may have suffered." ECF No. 131 at 8–10. As to "the amount of protection Plaintiff's works should be afforded," id. at 18, the Court wrote that, "[i]n the present case, there is little doubt that the jokes at issue merit copyright protection." Id. at 21 (citing Feist Publ'ns, Inc. v. Rural Tel. Serv. Co. , 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) ; Bleistein v. Donaldson Lithographing Co. , 188 U.S. 239, 251, 23 S.Ct. 298, 47 L.Ed. 460 (1903) ). Ultimately, however, the Court "conclude[d] that Plaintiff's jokes are entitled to only ‘thin’ copyright protection." Id.

On May 30, 2017, Mr. Lorenzo filed a Second Request for Reconsideration of the September 2015 Application, noting that "[t]he basis for this second reconsideration is that the Court ruled at Summary Judgment on May 9, 2017, that ‘there is little doubt that the jokes at issue merit copyright protection.’ " Am. Ans. ¶ 60; see also Lorenzo Decl. Ex. 2 (quoting ECF No. 131 at 21:7–13). He concluded the letter by noting that, "[i]n light of the Court's that [sic ] [his] client's material has met the originality requirements for copyright protection, and the previous joke registrations, [his] client respectfully requests that the work ... be allowed to register." Id. A full copy of the Court's May 12, 2017 Order was attached as Exhibit A to the letter. See Lorenzo Decl. Ex. 2.

The Office registered the August 2016 Application—including the Tom Brady joke—in June 2017. Am. Ans. ¶ 62. As for the September 2015 Application, by letter dated July 17, 2017, the Review Board of the Office (the "Board") found on de novo review that the Tom Brady joke "exhibit[ed] copyrightable authorship and thus may be registered." Lorenzo Decl. Ex. 3; see also Am. Ans. ¶ 63.The letter explained that "[t]he Board base[d] its finding on the ‘minimal degree of creativity’ required by the U.S. Supreme Court in Feist ," and that "[c]ourts and the Copyright Office both have found copyright protection for jokes when the jokes are sufficiently creative." Lorenzo Decl. Ex. 3 (citing Foxworthy v. Custom Tees, Inc. , 879 F.Supp. 1200, 1219 (N.D. Ga. 1995) ). The Board "caution[ed] that ... the copyright in the Work is ‘thin,’ " and "note[d] its decision is consistent with a decision in the Southern District of California, finding that this work merits thin copyright protection." Id. (citing ECF No. 131 at 21).

The letter also addressed the August 2016 Application, explaining that, "[b]ecause previously registered material, including material that has been submitted for registration but has not been registered yet, is unclaimable in subsequent registrations, the registration for Three Jokes Work must be corrected to exclude the content covered in the registration for" the Tom Brady joke. Id. ; see also Am. Ans. ¶ 64. The letter noted that on July 5, 2017, John R. Riley, an Attorney-Advisor with the Office, had contacted Mr. Lorenzo and that Mr. Lorenzo "agreed that, if the Board granted registration of [the Tom Brady joke], the registration record for Three Jokes Work would need to be corrected to exclude the text comprising the single [Tom Brady] joke." Lorenzo Decl. Ex. 3.

On November 11, 2015, Defendants filed a motion for leave to file an amended answer to Plaintiff's First Amended Complaint "to include the affirmative defenses of (1) fraud on the Copyright Office and (2) unclean hands, in light of Plaintiff['s] ... and his counsel's misconduct before the Copyright Office and this Court." ECF No. 154-1 at 1. The Court granted the motion on April 13, 2018, see generally ECF No. 164, finding that justice required granting the motion and that Plaintiff could file a "dispositive motion regarding the affirmative defenses, if Plaintiff deems one is appropriate." Id. at 6.

Defendants filed their amended answer on April 18, 2018, see generally ECF No. 165, adding a Ninth Affirmative Defense for Fraud on the Copyright Office, see id. ¶¶ 45–68, and a Tenth Affirmative Defense for Unclean Hands. See id. ¶¶ 69–78. The instant Motion followed on May 9, 2018. See generally ECF No. 167.

LEGAL STANDARD

Any party may move for judgment on the pleadings "[a]fter the pleadings are closed—but early enough not to delay trial." Fed. R. Civ. P. 12(c). A motion for judgment on the pleadings attacks the legal sufficiency of the claims alleged in the complaint. See Patel v. Contemporary Classics of Beverly Hills , 259 F.3d 123, 126 (2d Cir. 2001). The Court must construe "all material...