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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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ROBERT ALEXANDER KASEBERG,
Plaintiff,

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v.

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CONACO, LLC; TURNER
BROADCASTING SYSTEM; TIME
WARNER, INC.; CONAN O’BRIEN;
JEFF ROSS; MIKE SWEENEY; DOES
1–10, inclusive,

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Case No.: 15-CV-1637 JLS (DHB)
ORDER (1) GRANTING
PLAINTIFF’S MOTION FOR
JUDGMENT ON THE PLEADINGS,
AND (2) DISMISSING
DEFENDANTS’ NINTH AND
TENTH AFFIRMATIVE DEFENSES
(ECF Nos. 165, 167)

Defendants.

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Presently before the Court is Plaintiff Robert Alexander Kaseberg’s Motion for

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Judgment on the Pleadings and/or Partial Summary Judgment as to Defendants’ Fraud on

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the Copyright Office and Unclean Hands Affirmative Defenses (“Mot.,” ECF No. 167).

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Also before the Court are Defendants’ Opposition to (“Opp’n,” ECF No. 169) and

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Plaintiff’s Reply in Support of (“Reply,” ECF No. 171) the Motion. The Court vacated

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oral argument on the Motion and took the matter under submission without oral argument.

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ECF No. 170. After considering the Parties’ arguments and the law, the Court GRANTS

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Plaintiff’s Motion.

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///
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BACKGROUND

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On July 22, 2015, Plaintiff filed a Complaint against Defendants for copyright

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infringement, alleging that Defendants featured on the Conan show jokes authored by

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Plaintiff without Plaintiff’s consent. See generally ECF No. 1. Plaintiff alleged that

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“copyright registration [wa]s being sought” for each of the jokes at issue. Id. ¶ 26. The

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operative First Amended Complaint, filed October 3, 2016, see generally ECF No. 58,

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contains an identical allegation. See id. ¶ 29.

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Only one of the five jokes in Plaintiff’s Complaint is at issue for purposes of this

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Motion: the “Tom Brady joke.” Mr. Lorenzo filed an application on Plaintiff’s behalf to

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register the Tom Brady joke in September 2015 (the “September 2015 Application”).1 Am.

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Ans., ECF No. 165, ¶ 49; see also Request for Judicial Notice in Support of Motion

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(“RJN”), ECF No. 167-3, Ex D. 2

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On March 24, 2016, Defendant Conaco served discovery requests on Plaintiff,

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requesting all documents relating to Plaintiff’s efforts to register the jokes and “all facts

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relating to YOUR ownership of the copyrights related to the JOKES AT ISSUE.” Am.

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Ans. ¶¶ 52–53. Although Plaintiff agreed to produce all documents relating to his

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registration efforts, he did not produce registration certificates for the Tom Brady joke. Id.

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¶ 52. Further, Plaintiff’s interrogatory response, signed by Mr. Lorenzo, represented that

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Plaintiff “has registered copyrights for the jokes created.” Id. ¶ 53.

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Although the public catalog provides a date of September 11, 2015, see RJN Ex. C, the parties refer to a
September 3, 2015 application. See, e.g., Mot. at 13; Opp’n at 9. The precise date of the application is
not material to the determination of this Motion.
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The Court may take judicial notice of the printouts from the copyright catalog provided by Plaintiff. See,
e.g., Idema v. Dreamworks, Inc., 90 F. App’x 496, 498 (9th Cir. 2003), as amended on denial of
reh’g (Mar. 9, 2004) (“[A] copyright registration . . . is the sort as to which judicial notice is appropriate.”)
(citing Fed. R. Evid. 201(b)(2)); see also Brooks-Ngwenya v. Indianapolis Pub. Sch., 564 F.3d 804, 808
(7th Cir. 2009) (citing Island Software & Computer Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 261 (2d
Cir. 2005)). The Court may consider matters subject to judicial notice without converting the motion into
one for summary adjudication. See Harris v. Cnty. of Orange, 682 F.3d 1126, 1132 (9th Cir. 2012) (citing
Lee v. City of Los Angeles, 250 F.3d 668, 689 (9th Cir. 2001)).
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The Office initially refused registration for the September 2015 Application on

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July 20, 2016, stating that there was not the requisite minimum amount of original

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authorship. Id. ¶ 49; see also Declaration of Jayson M. Lorenzo in Support of Plaintiff’s

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Motion (“Lorenzo Decl.”), ECF No. 167-4, ¶ 3 & Ex. 2.3 Shortly thereafter, on August 10,

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2016, Mr. Lorenzo filed a second application on Plaintiff’s behalf, this time seeking

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registration of multiple works published on February 2, 2015, including the previously

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rejected Tom Brady joke (the “August 2016 Application”). Am. Ans. ¶ 50; see also RJN

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Ex. C. Mr. Lorenzo did not disclose to the Office the July 20, 2016 refusal of the Tom

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Brady joke. Am. Ans. ¶ 50; see also Plaintiff’s Response to Defendants’ Material Facts in

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Opposition to Plaintiff’s Motion (“Pl.’s Resp.”), ECF No. 171-2, ¶ 8.

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On October 19, 2016, Mr. Lorenzo filed a First Request for Reconsideration of the

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July 20, 2016 refusal for the September 2015 Application with the Office, which again

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refused registration on the basis of originality in March 2017. Am. Ans. ¶ 51; see also

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Lorenzo Decl. Ex. 2.

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On February 3, 2017, Defendants filed a motion for summary judgment, partial

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summary judgment, or summary adjudication. Am. Ans. ¶ 55; see also ECF No. 70. In

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their motion, Defendants argued, among other things, that Plaintiff “failed to produce any

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evidence proving that he registered the Tom Brady” joke and that Plaintiff’s “monologue-

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style jokes are . . . only entitled to thin copyright protection.” See ECF No. 70-1 at 8–9,

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13–15; see also Am. Ans. ¶ 55.

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Plaintiff’s opposition, filed February 24, 2017, appended copies of the

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September 2015 and August 2016 Applications. See ECF No. 97-2 Ex. 8; see also Am.

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In addition to the pleadings and matters of judicial notice, the Court also may consider documents
incorporated by reference in the pleadings without converting the Motion into one for summary
adjudication. See Shame On You Prods., Inc. v. Banks, 893 F.3d 661, 668 n.2 (9th Cir. 2018). A document
is incorporated by reference if its “authenticity is not contested and the complaint relies on” it. Spy Optic,
Inc. v. Alibaba.Com, Inc., 163 F. Supp. 3d 755, 764 (C.D. Cal. 2015) (citing Lee, 250 F.3d at 688). The
Court concludes that it properly may consider Exhibits 2 and 3 to the Lorenzo Declaration because their
authenticity is not contested and they are integral to Defendants’ ninth and tenth affirmative defenses.
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Ans. ¶ 56. The registrations for the Tom Brady joke were not produced to Defendants until

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after Defendants had filed their motion for summary judgment, Am. Ans. ¶ 56; see also

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Pl.’s Resp. ¶ 9, and the correspondence with the Office was not produced until May 2017.

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Am. Ans. ¶ 56; see also Pl.’s Resp. ¶ 10. The Court therefore ordered the parties to submit

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supplemental briefing as to whether Plaintiff’s failure timely to disclose the applications

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should be outcome-determinative. Am. Ans. ¶ 57; see also ECF Nos. 122, 126, 127.

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On May 12, 2017, the Court granted in part and denied in part Defendants’ motion

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for summary judgment. Am. Ans. ¶ 58; see also ECF No. 131. As to the registrations, the

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Court determined that Plaintiff’s failure timely to disclose them to Defendants should not

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be outcome-determinative because “reopening discovery and permitting a late-filed

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dispositive motion—if warranted—sufficiently neutralizes any potential prejudice

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Defendants may have suffered.” ECF No. 131 at 8–10. As to “the amount of protection

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Plaintiff’s works should be afforded,” id. at 18, the Court wrote that, “[i]n the present case,

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there is little doubt that the jokes at issue merit copyright protection.” Id. at 21 (citing Feist

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Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991); Bleistein v. Donaldson

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Lithographing Co., 188 U.S. 239, 251 (1903)).

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“conclude[d] that Plaintiff’s jokes are entitled to only ‘thin’ copyright protection.” Id.

Ultimately, however, the Court

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On May 30, 2017, Mr. Lorenzo filed a Second Request for Reconsideration of the

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September 2015 Application, noting that “[t]he basis for this second reconsideration is that

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the Court ruled at Summary Judgment on May 9, 2017, that ‘there is little doubt that the

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jokes at issue merit copyright protection.’” Am. Ans. ¶ 60; see also Lorenzo Decl. Ex. 2

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(quoting ECF No. 131 at 21:7–13). He concluded the letter by noting that, “[i]n light of

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the Court’s that [sic] [his] client’s material has met the originality requirements for

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copyright protection, and the previous joke registrations, [his] client respectfully requests

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that the work . . . be allowed to register.” Id. A full copy of the Court’s May 12, 2017

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Order was attached as Exhibit A to the letter. See Lorenzo Decl. Ex. 2.

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The Office registered the August 2016 Application—including the Tom Brady

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joke—in June 2017. Am. Ans. ¶ 62. As for the September 2015 Application, by letter
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dated July 17, 2017, the Review Board of the Office (the “Board”) found on de novo review

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that the Tom Brady joke “exhibit[ed] copyrightable authorship and thus may be registered.”

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Lorenzo Decl. Ex. 3; see also Am. Ans. ¶ 63. The letter explained that “[t]he Board base[d]

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its finding on the ‘minimal degree of creativity’ required by the U.S. Supreme Court in

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Feist,” and that “[c]ourts and the Copyright Office both have found copyright protection

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for jokes when the jokes are sufficiently creative.” Lorenzo Decl. Ex. 3 (citing Foxworthy

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v. Custom Tees, Inc., 879 F. Supp. 1200, 1219 (N.D. Ga. 1995)). The Board “caution[ed]

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that . . . the copyright in the Work is ‘thin,’” and “note[d] its decision is consistent with a

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decision in the Southern District of California, finding that this work merits thin copyright

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protection.” Id. (citing ECF No. 131 at 21).

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The letter also addressed the August 2016 Application, explaining that, “[b]ecause

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previously registered material, including material that has been submitted for registration

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but has not been registered yet, is unclaimable in subsequent registrations, the registration

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for Three Jokes Work must be corrected to exclude the content covered in the registration

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for” the Tom Brady joke. Id.; see also Am. Ans. ¶ 64. The letter noted that on July 5,

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2017, John R. Riley, an Attorney-Advisor with the Office, had contacted Mr. Lorenzo and

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that Mr. Lorenzo “agreed that, if the Board granted registration of [the Tom Brady joke],

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the registration record for Three Jokes Work would need to be corrected to exclude the text

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comprising the single [Tom Brady] joke.” Lorenzo Decl. Ex. 3.

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On November 11, 2015, Defendants filed a motion for leave to file an amended

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answer to Plaintiff’s First Amended Complaint “to include the affirmative defenses of

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(1) fraud on the Copyright Office and (2) unclean hands, in light of Plaintiff[’s] . . . and his

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counsel’s misconduct before the Copyright Office and this Court.” ECF No. 154-1 at 1.

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The Court granted the motion on April 13, 2018, see generally ECF No. 164, finding that

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justice required granting the motion and that Plaintiff could file a “dispositive motion

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regarding the affirmative defenses, if Plaintiff deems one is appropriate.” Id. at 6.

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Defendants filed their amended answer on April 18, 2018, see generally ECF No.

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165, adding a Ninth Affirmative Defense for Fraud on the Copyright Office, see id. ¶¶ 45–
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68, and a Tenth Affirmative Defense for Unclean Hands. See id. ¶¶ 69–78. The instant

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Motion followed on May 9, 2018. See generally ECF No. 167.

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LEGAL STANDARD

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Any party may move for judgment on the pleadings “[a]fter the pleadings are

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closed—but early enough not to delay trial.” Fed. R. Civ. P. 12(c). A motion for judgment

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on the pleadings attacks the legal sufficiency of the claims alleged in the complaint. See

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Patel v. Contemporary Classics of Beverly Hills, 259 F.3d 123, 126 (2d Cir. 2001). The

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Court must construe “all material allegations of the non-moving party as contained in the

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pleadings as true, and [construe] the pleadings in the light most favorable to the [non-

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moving] party.” Doyle v. Raley’s Inc., 158 F.3d 1012, 1014 (9th Cir. 1998). “Judgment

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on the pleadings is proper when the moving party clearly establishes on the face of the

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pleadings that no material issue of fact remains to be resolved and that it is entitled to

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judgment as a matter of law.” Hal Roach Studios, Inc. v. Richard Feiner & Co., Inc., 896

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F.2d 1542, 1550 (9th Cir. 1990).

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The Federal Rules of Civil Procedure are generally liberal with respect to pleading,

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instructing courts that “[p]leadings must be construed so as to do justice.” Federal Rule of

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Civil Procedure 8(e); see also Mut. Creamery Ins. Co. v. Iowa Nat. Mut. Ins. Co., 427 F.2d

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504, 507–08 (8th Cir. 1970) (“It is settled law that pleadings must be construed liberally in

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order to prevent errors in draftsmanship or the like from barring justice to litigants. Such

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pleadings must be construed favorably to the pleader and judged by substance rather than

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form.”); Lomartira v. Am. Auto. Ins. Co., 245 F. Supp. 124, 129 (D. Conn. 1965), aff’d 371

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F.2d 550 (2d Cir. 1967) (“[C]ases should be decided upon their merits, rather than upon

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technical deficiencies in the pleadings.”). Further, the Court observes “the ‘strong policy

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favoring a trial on the merits.’” See Genentech, Inc. v. U.S. Int’l Trade Comm’n, 122 F.3d

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1409, 1423 (Fed. Cir. 1997).

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ANALYSIS
Plaintiff moves for judgment on the pleadings as to Defendants’ ninth affirmative
defense of fraud on the Copyright Office and tenth affirmative defense of unclean hands.
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I.

Ninth Affirmative Defense: Fraud on the Copyright Office

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“[N]o civil action for infringement of the copyright in any United States work shall

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be instituted until . . . registration of the copyright claim has been made.” 17 U.S.C.

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§ 411(a) (“Section 411”); see also Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 157

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(2010) (a copyright holder must register its copyright in a work with the United States

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Copyright Office before filing suit for infringement). “A certificate of registration satisfies

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the requirements of [Section 411(a),] regardless of whether the certificate contains any

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inaccurate information, unless—(A) the inaccurate information was included on the

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application for copyright registration with knowledge that it was inaccurate; and [¶] (B) the

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inaccuracy of the information, if known, would have caused the Register of Copyrights to

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refuse registration.” 17 U.S.C. §§ 411(b)(1)(A) & (B).4 “As with all allegations of fraud,

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claims of fraud on the Copyright Office must be pled with particularity pursuant to the

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requirements of Rule 9(b) of the Federal Rules of Civil Procedure.” Metro. Reg’l Info.

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Sys., Inc. v. Am. Home Realty Network, Inc., 948 F. Supp. 2d 538, 558 (D. Md. 2013).

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Defendants have alleged that Plaintiff knowingly committed fraud on the copyright
office through the following acts:

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a.

[Plaintiff] failed to disclose to the Copyright Office the
July 20, 2016 rejection of the [September 2015
A]pplication with the [August 2016 Application];

b.

[Plaintiff] failed to disclose to the Copyright Office the
March 23, 2017 second refusal of the [September 2015
Application] until after Defendants informed [Plaintiff]’s
counsel of their intent to assert a Fraud on the Copyright

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The Court notes that, “[i]n any case in which inaccurate information described under [Sections
411(b)(1)(A) & (B)] is alleged, the court shall request the Register of Copyrights to advise the court
whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse
registration.” 17 U.S.C. § 411(b)(2). But “[b]efore asking the Register whether she would have refused
to register a copyright . . . a court should feel free to determine whether there is in fact a misstatement of
fact.” DeliverMed Holdings, LLC v. Schaltenbrand, 734 F.3d 616, 625 (7th Cir. 2013) (quoting Response
of the Register of Copyrights to Request Pursuant to 17 U.S.C. § 411(b)(2) at 12, Olem Shoe Corp. v.
Wash. Shoe Co., No. 1:09-cv-23494 (S.D. Fla. Oct. 14, 2010). Consequently, should the Court determine
that there is no misstatement of fact, it need not refer the issues of materiality or reliance to the Register.
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Office affirmative defense because of this material
omission; . . .

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c.

[Plaintiff] failed to disclose to the Copyright Office, at any
point, the prior publication of the Tom Brady Joke on
Twitter before its subsequent publication with two other
jokes on [Plaintiff]’s blog claimed on the [August 2016
Application]; and

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[Plaintiff] mischaracterized the holding in the Court’s
May 12, 2017 summary judgment order in correspondence
to the Copyright Office, omitted key facts and details
which led the Review Board to issue the registration.

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Am. Ans. ¶ 65; see also id. ¶ 66.

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Plaintiff argues that he is entitled to judgment on the pleadings or, alternatively,

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partial summary judgment because (1) his correspondence with the Office was not

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“information . . . included on the application for copyright registration” as required under

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Section 411(b),” see Mot. at 6–7; (2) he did not give “inaccurate information” to the Office

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or intend to defraud the Office because the Court’s May 12, 2017 Order was attached to

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the second reconsideration letter, see id. at 7–8, and the copyrightability of the Tom Brady

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joke was an issue adjudicated by the Court, see id. at 8–11; and (3) any alleged inaccuracies

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concerning the August 2016 Application are “irrelevant” because the registration that

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issued for the August 2016 Application “no longer contains any Tom Brady information.”5

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Id. at 12–14. The Court addresses each of Plaintiff’s arguments in turn.

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A.

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Plaintiff first argues that, although “it is [not] appropriate to commit fraud during a

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reconsideration or appeal, . . . the law [of the defense of fraud on the Copyright Office is

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such] that [the alleged inaccuracies] must be on the application.” Reply at 4. Plaintiff

Inaccuracies in Subsequent Correspondence

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Plaintiff also argues that any alleged inaccuracies in the September 2015 application were not material
because it is clear from the Board’s letter that it had read the Order and “nowhere d[id it] state [it was]
‘relying on’ or ‘following’ . . . the Court’s decision.” See Mot. at 11–12. This Court cannot resolve the
issue of the materiality of the alleged inaccuracies because that is an issue for the Register. See
17 U.S.C. § 411(b)(2); see also supra note 4.
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purports to base this argument on the plain language of section 411(b)(1)(A), which

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provides that “[a] certificate of registration satisfies the requirements of this section and

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section 412 regardless of whether the certificate contains any inaccurate information,

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unless . . . the inaccurate information was included on the application for copyright

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registration with knowledge that it was inaccurate.” See, e.g., Mot. at 4–5 (quoting 17

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U.S.C. § 411(b)(1)(A)) (emphasis in original). Plaintiff claims that this language would

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necessarily exclude “arguments made in a reconsideration/appeal related to a valid

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copyright application that contains no inaccuracies or indicia of fraud.” Id. at 5.

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The Court is not persuaded that fraud on the Copyright Office encompasses only

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statements contained in the application form itself, and not those contained in subsequent

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registration materials, including requests for reconsideration and other correspondence

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with the Office. Section 409 of the Copyright Act specifies that “[t]he application for

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copyright registration . . . shall include . . . any other information regarded by the Register

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of Copyrights as bearing upon . . . the existence, ownership, or duration of the copyright.”

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17 U.S.C. § 409(10). Correspondence with the Register seeking reconsideration of a

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refusal of registration would appear to fit within the plain language of this definition. As

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explained in the Code of Federal Regulations, “[a] request for reconsideration must include

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the reasons the applicant believes registration was improperly refused, including any legal

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arguments in support of those reasons and any supplementary information.” 37 C.F.R.

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§§ 202.5(b)(1), (c)(1). Importantly, the Office (in the case of a first reconsideration) or the

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Board (in the case of a second) “will base its decision on the applicant’s written

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submissions.” Id. (emphasis added). A request for reconsideration is therefore “other

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information regarded by the Register of Copyrights as bearing upon . . . the existence . . .

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of the copyright.” See 17 U.S.C. § 409(10).

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This conclusion is bolstered by the statutory scheme for the registration process. The

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Register issues a registration only “[w]hen, after examination, the Register of Copyrights

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determines that, in accordance with the provisions of this title, the material deposited

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constitutes copyrightable subject matter and that the other legal and formal requirements
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of this title have been met.” 17 U.S.C. § 410(a). “This examination process often involves

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a dialogue between the Copyright Office and the applicant.” Brief for the United States as

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Amicus Curiae, Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571,

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2018 WL 2264108, at *3 (U.S. May 16, 2018). “For example, an examiner may ‘discover[]

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that the applicant failed to provide sufficient information in a particular field or space of

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the application or elsewhere in the registration materials, or [that] the applicant otherwise

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failed to meet the registration requirements.’” Id. (quoting Compendium § 605.3(B)). “In

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the course of such correspondence, an owner can clarify the scope of his application or

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may withdraw or otherwise abandon his claim.” Id. (citing Compendium §§ 605.3(B),

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605.7, 605.9).

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Such a conclusion is also borne out by the legislative history. According to Nimmer,

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“[t]he legislative history for the PRO IP Act explains that the amendment aims to close the

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loophole whereby ‘intellectual property thieves’ argue ‘that a mistake in the registration

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documents, such as checking the wrong box on the registration form, renders a registration

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invalid and thus forecloses the availability of statutory damages.’” 2 Nimmer on Copyright

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§ 7.20 (2018). It would appear that Congress intended fraud on the Copyright Office to

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encompass more than just the application form itself, but also the additional registration

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materials. See, e.g., Copyright Registration Practice § 4:25 (2018) (explaining that “the

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application, the deposit copy(ies), the filing fee, all other material that has been submitted

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to the Office, and all communications between the applicant and the Office relating to the

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registration of the claim . . . are collectively known as the ‘registration materials’”)

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(footnote omitted).

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Further, to conclude that the reconsideration requests were not part of the

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“application” for registration for purposes of fraud on the Copyright Office would subvert

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the policies underlying the defense. As Defendants note, see Opp’n at 13 (citing 2 Howard

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B. Abrams, Law of Copyright § 16:11 (2017); Campinha-Bacote v. Rearden, No. 3:10-

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CV-00139-JDR, 2011 WL 1343343, at *3 (D. Alaska Apr. 8, 2011)), one of the

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justifications of the fraud on the Copyright Office defense is that “there is a duty of candor
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when communicating with the Copyright Office.” Another is that “the official public

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record of claims to copyright is full and accurate.” Opp’n at 13 (citing U.S. Copyright

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Office, Compendium of U.S. Copyright Office Practices § 602.1 (3d ed. 2017)). Allowing

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an applicant to lie with impunity in subsequent registration materials so long as she is

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candid in the application form itself would defeat these policies and eviscerate the defense.

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Finally, Plaintiff’s cases do not stand for the proposition that “a misstatement [must]

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be made in the application for registration.” See Reply at 3. Plaintiff cannot extrapolate

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from cases in which the defense was predicated on misstatements made in the application

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form that the defense can only be predicated on misstatement made in the application form.

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See, e.g., Mot. at 5 (“Plaintiff has been unable to locate any authority supporting

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Defendants[’] claim that there can be fraud on the copyright office related to argument

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made in a reconsideration/appeal.”). The Court therefore concludes that Plaintiff is not

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entitled to judgment on the pleadings on the ground that the alleged inaccuracies were

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communicated to the Office outside of the application form.

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SellPoolSuppliesOnline.com LLC v. Ugly Pools Ariz. Inc., No. CV-15-01856-PHX-BSB,

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2017 WL 6420464, at *12 (D. Ariz. June 9, 2017) (alleged inaccuracies in email and

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affidavit sent to Office after submitting application), reconsideration denied, 2017 WL

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6415370 (D. Ariz. July 11, 2017).

See, e.g.,

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B.

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Having concluded that Defendants’ defense may be predicated upon alleged

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inaccuracies in the reconsideration letters, see supra Section I.A, the Court turns to the

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alleged inaccuracies concerning the September 2015 Application. Defendants’ allegations

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are predicated on Plaintiff’s “mischaracteriz[ation of] the holding in the Court’s May 12,

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2017 summary judgment order in correspondence to the Copyright Office, [and] omi[ssion

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of] key facts and details which led the Review Board to issue the registration.” Am. Ans.

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¶ 65(d). In particular, Defendants allege that, in his second reconsideration request,

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Plaintiff “falsely stat[ed] that ‘[t]he basis for this second reconsideration is that the Court

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ruled at Summary Judgment on May 9, 2017, that “there is little doubt that the jokes at

Inaccuracies Concerning the September 2015 Application

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issue merit copyright protection,”’ and that, “[i]n light of the Court’s [sic] that my client’s

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material has met the originality requirement for copyright protection, and the previous joke

3

registrations, my client respectfully requests that the work listed above be allowed to

4

register,” id. ¶ 60, whereas “the Court’s summary judgment order made no such

5

determination.” Id.

6

The issue therefore is whether the Court “ruled” that the Tom Brady joke merited

7

copyright protection, as Plaintiff claims and represented to the Office, or whether these

8

statements were “dicta,” as Defendants contend, rendering Plaintiff’s representation

9

inaccurate. Some would say that “no satisfactory definition [for ‘holding’] has yet to

10

emerge.” Michael Abramowicz & Maxwell Stearns, Defining Dicta, 57 Stan. L. Rev. 953,

11

958 (2005). Messrs. Abramowicz and Stearns suggest that “[a] holding consists of those

12

propositions along the chosen decisional path or paths of reasoning that (1) are actually

13

decided, (2) are based upon the facts of the case, and (3) lead to the judgment. If not

14

a holding, a proposition stated in a case counts as dicta.” Id. at 1065; see also Opp’n at 6.

15

Ultimately, the Court agrees with Plaintiff: “There can be no [ruling as to] ‘thin’ or

16

‘broad’ protection . . . unless [the Court first] reach[es] the threshold issue of whether the

17

material merits copyright protection.” Reply at 10. Here, the level of copyright protection

18

to which Plaintiff’s jokes are entitled was clearly before the Court, with Defendants arguing

19

in their motion for summary judgment that, “to the extent that Kaseberg’s jokes are entitled

20

to any copyright protection, such protection is ‘thin.’” ECF No. 70-1 at 15. The Court

21

agreed with Defendants, “conclud[ing] that Plaintiff’s joke are entitled to only ‘thin’

22

copyright protection.” ECF No. 131 at 21. A necessary intermediate conclusion was that

23

“the jokes at issue merit copyright protection.” See id. (citing Feist, 499 U.S. at 345;

24

Bleistein, 188 U.S. at 251). Implied in this finding, and in the parenthetical to the citation

25

to Feist, was the conclusion that the jokes met the originality requirements for

26

copyrightability.

27

Consequently, Plaintiff’s counsel did not mischaracterize dicta in the Court’s

28

May 12, 2017 Order as a holding or ruling. Could Plaintiff’s counsel have been more
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forthright with the Office by clarifying in his letter that the Court concluded that the jokes

2

were entitled only to thin protection? Certainly. Should Plaintiff’s counsel have included

3

that in his letter? Perhaps.

4

Even if omission of the Court’s ultimate conclusion that the jokes were entitled only

5

to thin copyright protection were misleading, however, the Court would have to conclude

6

that there was no intent to defraud here. It is undisputed that Plaintiff’s counsel attached a

7

copy of the Court’s full Order to the letter to the Office. See Lorenzo Decl. Ex. 2, ECF

8

No. 167-4 at 10–51. Had Plaintiff been attempting to pull a fast one on the Office by

9

misrepresenting the Court’s Order, he would not have provided the Office with a means of

10

verifying that deception. Defendants’ affirmative defense for Fraud on the Copyright

11

Office therefore fails to the extent it is predicated upon the alleged inaccuracies concerning

12

the September 2015 Application.

13

C.

14

Regarding the August 2016 Application, Defendants claim that Plaintiff failed to

15

disclose: (1) the July 20, 2016 rejection of the September 2015 Application; (2) the

16

March 23, 2017 second refusal of the September 2015 Application; or (3) the prior

17

publication of the Tom Brady joke on Twitter. See Am. Ans. ¶ 65(a)–(c).

Inaccuracies Concerning the August 2016 Application

18

Plaintiff counters that the registration that issued on the August 2016 Application

19

“no longer contains any Tom Brady information,” and therefore Defendants “are

20

attempting to invalidate and/or render unenforceable a registration that has nothing to do

21

with this case.” Mot. at 13. “Further, any allegation of intent to defraud related to this

22

application has no merit” because “[t]here is no dispute that Plaintiff’s counsel spoke to

23

Ted Hirakawa of the Copyright Office in August 2015, [at which time Plaintiff’s counsel]

24

was advised a single application and collective work application could be submitted for the

25

same joke.” Id. (citing Lorenzo Decl. ¶ 7). And “on April 21, 2017, . . . Plaintiff sent a

26

letter to the copyright office advising the Copyright Office of the pending lawsuit, the

27

application history of the Tom Brady joke, as well as the collective work application filed

28

on August 10, 2016.” Id. (citing Lorenzo Decl. ¶ 8 & Ex. 6).
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In their Opposition, Defendants do not argue that this conduct amounts to fraud on

2

the Copyright Office, but rather that these “other instances of inequitable conduct by

3

Kaseberg . . . before the Copyright Office” support their affirmative defense of unclean

4

hands. See Opp’n at 9. Under Ninth Circuit precedent, the Court therefore considers

5

Defendants to have abandoned their affirmative defense of fraud on the Copyright Office

6

to the extent it is predicated upon any of the alleged inaccuracies concerning the August

7

2016 Application. See Jenkins v. Cnty. of Riverside, 398 F.3d 1093, 1095 n.4 (9th Cir.

8

2005) (dismissing causes of action as abandoned where plaintiff did not oppose dismissal

9

in her opposition); Shull v. Ocwen Loan Servicing, LLC, No. 13-CV-2999 BEN (WVG),

10

2014 WL 1404877, at *2 (S.D. Cal. Apr. 10, 2014) (“Where a party fails to address

11

arguments against a claim raised in a motion to dismiss, the claims are abandoned and

12

dismissal is appropriate.”); see also Walsh v. Nev. Dep’t of Human Res., 471 F.3d 1033,

13

1037 (9th Cir. 2006) (holding that the plaintiff forfeited her right to raise an issue on appeal

14

because her opposition to a motion to dismiss failed to suggest a continuing interest in

15

pursuing the claim and therefore “effectively abandoned” it).

16

In any event, the Court concludes that the alleged inaccuracies concerning the

17

August 2016 Application do not arise to fraud on the Copyright Office. The alleged

18

inaccuracies Defendants have identified in the August 2016 Application are in the form of

19

omissions. It is true that intentional, material omissions may support a defense of fraud on

20

the Copyright Office, see, e.g., Apple Computer, Inc. v. Microsoft Corp., 759 F. Supp.

21

1444, 1454 (N.D. Cal.) (quoting Eckes v. Card Prices Update, 736 F.2d 859 (2d Cir.

22

1984)), on reconsideration, 779 F. Supp. 133 (N.D. Cal. 1991), aff’d, 35 F.3d 1435 (9th

23

Cir. 1994); however, Defendants have failed to identify, and the Court has not found, any

24

authority imposing on Plaintiff a duty to disclose to the Copyright Office the prior

25

publication of the Tom Brady joke on Twitter or the prior refusals of the September 2015

26

///

27

///

28

///
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Application.6 See, e.g., Andren v. Alere, Inc., 207 F. Supp. 3d 1133, 1141 (S.D. Cal. 2016)

2

(“In order to state a claim of fraudulent omissions under the UCL/FAL, CLRA, or as a

3

claim of common law fraud, a plaintiff must allege facts either showing that the

4

alleged omissions are ‘contrary to a representation actually made by the defendant, or

5

showing an omission of a fact the defendant was obliged to disclose.’”).

6

It is clear that Plaintiff is under no obligation to disclose everything related to the

7

Tom Brady joke to the Office. For example, Plaintiff is required to include, among other

8

things, “the year in which creation of the work was completed” and, “if the work has been

9

published, the date and nation of its first publication.” See 17 U.S.C. §§ 409(7)–(8).

10

Plaintiff is not required, however, to provide the geographical coordinates for where he

11

composed the work, what he ate for breakfast that morning, or what color underwear he

12

was wearing at the time, see generally 17 U.S.C. § 409, unless that is “information regarded

13

by the Register of Copyrights as bearing upon the preparation or identification of the work

14

or the existence, ownership, or duration of the copyright.” 17 U.S.C. § 409(10). As with

15

the September 2015 Application, see supra Section I.B, it is possible that Plaintiff’s

16

counsel could have been more forthcoming with the Office by taking it upon himself to

17

inform the Office of the prior rejections of the September 2015 Application. In the absence

18

of any authority imposing upon Plaintiff’s counsel a duty to disclose those rejections,

19

however, the Court must conclude that they do not arise to fraud on the Office.

20

The Court therefore GRANTS Plaintiff’s Motion for Judgment on the Pleadings and

21

DISMISSES Defendants’ Ninth Affirmative Defense for Fraud on the Copyright Office. 7

22
23

6

26

As to the “prior publication,” it appears from the parties’ prior summary judgment briefing that the Tom
Brady joke was first published on Twitter on February 3, 2015, at 8:49 a.m., and subsequently published
on Plaintiff’s blog that same day thirteen minutes later, at 9:02 a.m. See Sep. Stmt., ECF No. 97-1, ¶ 59.
The Date of Publication and Nation of First Publication on Plaintiff’s registration therefore appear
accurate, see Lorenzo Decl. Ex. 4, ECF No. 167-4 at 56, despite the fact that the Tom Brady joke was first
“published” thirteen minutes earlier on Twitter.

27

7

24
25

28

The Court declines to convert Plaintiff’s Motion into one for summary judgment; however, the additional
evidence introduced by Plaintiff but inappropriate for consideration on a motion for judgment on the
pleadings would further support dismissal of Defendant’s ninth affirmative defense on the alternative
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II.

Tenth Affirmative Defense: Unclean Hands

2

“To establish unclean hands, a defendant must demonstrate (1) inequitable conduct

3

by the plaintiff; (2) that the plaintiff’s conduct directly relates to the claim which it has

4

asserted against the defendant; and (3) plaintiff’s conduct injured the defendant.” Metro-

5

Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197, 1223 (C.D. Cal.

6

2007) (quoting Survivor Productions LLC v. Fox Broadcasting Co., No. CV01-3234 LGB

7

(SHX), 2001 WL 35829270, at *3 (C.D. Cal. June 12, 2001) (citing Fuddruckers, Inc. v.

8

Doc’s B.R. Others, Inc., 826 F.2d 837, 847 (9th Cir. 1987)).

9

the unclean hands doctrine is generally a fact intensive inquiry,” Morfin-Arias v. Knowles,

10

No. 16-CV-06114-BLF, 2018 WL 1710369, at *8 (N.D. Cal. Apr. 9, 2018), and the

11

“defense is recognized only rarely.” 4 Nimmer on Copyright § 13.09 (2018) (citing Dream

12

Games of Ariz., Inc. v. PC Onsite, 561 F.3d 983, 990 (9th Cir. 2009); L.A. News Serv. v.

13

Tullo, 973 F.2d 791, 799 (9th Cir. 1992)).

“The application of

14

In addition to the allegations underlying their fraud on the Copyright Office

15

affirmative defense, see Am. Ans. ¶ 70, Defendants’ unclean hands affirmative defense is

16

premised upon alleged inequitable conduct related to discovery in this case. See id. ¶¶ 73–

17

74. Specifically, Defendants allege that Plaintiff: (1) “repeatedly and knowingly withheld

18
19
20
21
22
23
24
25
26
27
28

grounds that, even if there were actionable omissions in the August 2016 Application, there was no
prejudice to Defendants or intent to defraud the Office. Under Ninth Circuit precedent, “[t]he case law is
overwhelming that inadvertent mistakes on registration certificates do not invalidate a copyright and thus
do not bar infringement actions, unless the alleged infringer has relied to its detriment on the mistake, or
the claimant intended to defraud the Copyright Office by making the misstatement.” Urantia Found. v.
Maaherra, 114 F.3d 955, 963 (9th Cir. 1997); see also Harris v. Emus Records Corp., 734 F.2d 1329,
1335 (9th Cir. 1984) (“Absent intent to defraud and prejudice, inaccuracies in copyright registrations do
not bar actions for infringement.”). Whichever of those two standards applies, it is not met here. First,
Defendants do not—and cannot—claim prejudice as a result of the alleged inaccuracies in or omissions
from the August 2016 Application, particularly given that the August 2016 Application no longer has any
direct bearing on the instant litigation. Further, in August 2015, Plaintiff’s attorney, Jayson Lorenzo,
spoke with Ted Hirakawa of the United States Copyright Office (“Office”), who informed Mr. Lorenzo
that a single application and a collective work application could be submitted for the same joke. Lorenzo
Decl. ¶ 7. This is what Mr. Lorenzo did on Plaintiff’s behalf. See Am. Ans. ¶¶ 49–50. Absent any
authority imposing upon Mr. Lorenzo a duty to disclose the rejections of the single application, the Court
must conclude that Plaintiff and Mr. Lorenzo—although less forthcoming that they could have been—
lacked an intent to defraud the Office.
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responsive, relevant documents and information directly related to the validity of his

2

asserted copyrights,” id. ¶ 73; and (2) “attempted to hide the withheld documents . . . by

3

knowingly providing inaccurate information in response to an interrogatory request.” Id.

4

¶ 74.

5

Plaintiff argues that, to the extent Defendants’ unclean hands defense is premised

6

upon the same allegations as their fraud on the Office defense, Defendant’s unclean hands

7

defense must fail for the same reasons. See Opp’n at 14–15. With respect to the alleged

8

discovery misconduct, Plaintiff argues that “[a]ny alleged inequitable conduct has been

9

addressed” because Plaintiff has “produced all information after the Summary Judgment

10

Order” and the “Court ruled as Summary Judg[]ment that Defendant would be permitted

11

to reopen discovery and bring another dispositive motion on the issue of fraud on the

12

copyright office.” Id. at 15.

13

It is true that, generally speaking, “a defense of unclean hands may not be based

14

on discovery misconduct.” Synopsys, Inc. v. Magma Design Automation, Inc., No. C-04-

15

3923 MMC, 2007 WL 420184, at *5 (N.D. Cal. Feb. 6, 2007) (citing Ellison Educ. Equip.,

16

Inc. v. Chen, No. SACV02-1184-JVS(ANX), 2004 WL 3154592 at *20 (C.D. Cal. Dec.

17

21, 2004) (“To the extent [intervenor]’s unclean hands are caused by alleged discovery

18

abuses, . . . the proper remedy is a motion to compel or a motion for sanctions”); X-It

19

Products, L.L.C. v. Walter Kidde Portable Equip., Inc., 155 F. Supp. 2d 577 (E.D. Va.

20

2001) (striking unclean hands defense to the extent based on litigation misconduct and

21

holding that the “appropriate remedy is . . . a motion to compel and/or a motion for

22

sanctions”)). This is because a party aggrieved by discovery abuses may seek relief under

23

Federal Rule of Civil Procedure 37. See, e.g., Ellison Educ. Equip., Inc., 2004 WL

24

3154592, at *20. There is a line of cases, however, suggesting that the unclean hands

25

defense may be available where the other party engaged in discovery misconduct to conceal

26

fraud concerning the underlying intellectual property rights at issue in the litigation. See

27

McCormick v. Cohn, No. CV 90-0323 H, 1992 WL 687291, at *4 (S.D. Cal. July 31, 1992)

28

(reversing judgment on grounds on unclean hands where “plaintiffs have made clear
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1

misstatements regarding their ownership of the copyright before and during litigation and

2

have violated a court order involving discovery that was highly relevant to the defense of

3

the copyright claims”), aff’d, 17 F.3d 395 (9th Cir. 1994); see also Intamin, Ltd. v.

4

Magnetar Techs. Corp., 623 F. Supp. 2d 1055, 1077 (C.D. Cal. 2009) (summarily

5

adjudicating non-infringement of patent based on unclean hands where plaintiff

6

misrepresented ownership of patent and “failed to produce the forged assignments or

7

disclose their existence during the court of discovery in this case”), aff’d, 404 F. App’x 496

8

(Fed. Cir. 2010).

9

The Court need not attempt to reconcile these authorities, however, because it has

10

found that Plaintiff’s conduct does not rise to the level of fraud on the Office.

11

Consequently, the Court must agree with Plaintiff that Defendants’ only recourse for the

12

claimed discovery misconduct is under Rule 37. Accordingly, the Court GRANTS

13

Plaintiff’s Motion and DISMISSES Defendants’ Tenth Affirmative Defense for Unclean

14

Hands.

15

CONCLUSION

16

For the foregoing reasons, the Court GRANTS Plaintiff’s Motion for Judgment on

17

the Pleadings (ECF No. 167) and DISMISSES Defendants’ Ninth Affirmative Defense for

18

Fraud on the Copyright Office and Tenth Affirmative Defense for Unclean Hands. The

19

parties SHALL FILE a proposed schedule of pre-trial dates within fourteen (14) days of

20

the electronic docketing of this Order.

21

IT IS SO ORDERED.

22
23

Dated: November 15, 2018

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