Court: District Court, S.D. California; November 14, 2018; Federal District Court
Plaintiff Robert Alexander Kaseberg filed a Motion for Judgment on the Pleadings and/or Partial Summary Judgment regarding Defendants' affirmative defenses of Fraud on the Copyright Office and Unclean Hands. The Court, after reviewing the parties' submissions and without oral argument, granted the Motion. Kaseberg's copyright infringement complaint, filed on July 22, 2015, alleged unauthorized use of jokes he authored, specifically the "Tom Brady joke." Despite efforts to register this joke, initial applications were refused due to insufficient originality. In September 2015, Kaseberg’s representative, Mr. Lorenzo, filed a registration application that was later rejected in July 2016. A subsequent application in August 2016 did not disclose the prior rejection. Defendants sought to challenge the validity of Kaseberg's copyright claims, asserting he failed to provide evidence of registration for the "Tom Brady joke" and arguing that his jokes merited only limited copyright protection. Ultimately, the Court decided in favor of Kaseberg, granting his motion.
On February 24, 2017, the Plaintiff submitted an opposition that included copies of applications from September 2015 and August 2016. The registrations for the Tom Brady joke were only provided to the Defendants after they had filed their summary judgment motion, with further correspondence not disclosed until May 2017. The Court required supplemental briefing to assess whether the Plaintiff's delay in disclosing the applications would affect the outcome. On May 12, 2017, the Court partially granted and partially denied the Defendants' summary judgment motion, ruling that the late disclosure should not be outcome-determinative due to the ability to reopen discovery, which mitigated any prejudice to the Defendants. The Court affirmed that the jokes in question warranted copyright protection, but ultimately determined they were entitled to only "thin" copyright protection.
Following this, on May 30, 2017, Mr. Lorenzo filed a second request for reconsideration regarding the September 2015 Application, citing the Court's previous ruling on copyright protection. The Court's May 12 order was attached to this request. Subsequently, the Office registered the August 2016 Application in June 2017. The Review Board later found the Tom Brady joke to exhibit copyrightable authorship, indicating it could be registered based on minimal creativity standards set by the U.S. Supreme Court. The Board cautioned that the copyright granted would be "thin" and aligned with prior decisions. Additionally, it noted that the registration for the Three Jokes Work needed to be corrected to exclude the Tom Brady joke, as previously registered material cannot be claimed in new registrations. Mr. Lorenzo acknowledged this correction during a July 5, 2017, communication with the Office.
On November 11, 2015, Defendants sought permission to amend their answer to include the affirmative defenses of fraud on the Copyright Office and unclean hands, citing misconduct by the Plaintiff and his counsel. The Court approved this motion on April 13, 2018, allowing the Plaintiff to file a dispositive motion regarding these defenses. Defendants filed their amended answer on April 18, 2018, incorporating these defenses. Subsequently, on May 9, 2018, the Plaintiff moved for judgment on the pleadings concerning these defenses.
Under the legal standard, a party may seek judgment on the pleadings post-closure of pleadings, challenging the legal sufficiency of claims. The Court must treat all allegations from the non-moving party as true and assess the pleadings favorably. Judgment is warranted when the moving party shows no material factual issues exist and is entitled to judgment as a matter of law. The Federal Rules encourage liberal interpretation of pleadings to ensure justice, emphasizing that cases should be resolved on their merits rather than on technicalities.
The analysis highlights that for the ninth affirmative defense (fraud on the Copyright Office), a copyright infringement action cannot commence until the copyright claim is registered. Registration requirements under 17 U.S.C. § 411(a) must be met, and inaccuracies in registration do not invalidate it unless knowingly false and critical to the registration process.
Claims of fraud regarding the Copyright Office must be pled with particularity as mandated by Rule 9(b) of the Federal Rules of Civil Procedure. Defendants allege that Plaintiff engaged in fraud through several actions: failing to disclose a July 20, 2016 rejection of a previous application when submitting a subsequent one, not revealing a March 23, 2017 second refusal until prompted by Defendants, omitting prior publication of a joke on Twitter, and mischaracterizing a court ruling in correspondence with the Copyright Office that influenced the registration decision.
Plaintiff seeks judgment on the pleadings or partial summary judgment, arguing that his correspondence does not constitute "information included on the application for copyright registration" under Section 411(b), that he did not provide "inaccurate information" or intend to defraud since relevant court orders were attached to his letters, and any inaccuracies regarding the August 2016 Application are inconsequential because the registration no longer includes the contested material.
The Court evaluates Plaintiff's arguments, noting that fraud claims can involve inaccuracies not only on the application itself but also in subsequent correspondence, including reconsideration requests. Section 409 of the Copyright Act indicates that such correspondence may contain relevant information regarding copyright existence, ownership, or duration.
A request for reconsideration of copyright registration must detail the reasons for the belief that registration was improperly denied, including legal arguments and supplementary information, as outlined in 37 C.F.R. 202.5. The Office or Board will base its decision on the applicant's written submissions. Such requests are classified as "other information" relevant to the existence of copyright under 17 U.S.C. 409(10). Registration is granted only when the Register confirms that the submitted material meets copyrightable subject matter criteria and other legal requirements, as per 17 U.S.C. 410(a). The registration process often involves communication between the Copyright Office and the applicant, allowing for clarification or withdrawal of claims if deficiencies are found in the application materials. Legislative history indicates that Congress sought to prevent misuse of registration errors to invalidate claims, thereby broadening the scope of fraud on the Copyright Office to include all registration materials, not just the application form. The duty of candor in communications with the Copyright Office is emphasized, as is the importance of maintaining an accurate public record of copyright claims. Allowing dishonesty in subsequent registration materials would undermine these principles and the defense against fraud on the Copyright Office.
Plaintiff cannot assert that a misstatement must originate solely from the registration application, as previous cases do not limit defenses to inaccuracies in that context. The Court finds no authority supporting the Defendants' claim of fraud regarding the reconsideration process, leading to the conclusion that the Plaintiff is not entitled to judgment based on inaccuracies communicated outside the application form. The Court then examines alleged inaccuracies related to the September 2015 Application, specifically claims that the Plaintiff mischaracterized the Court's May 12, 2017 summary judgment order in communications with the Copyright Office. Defendants argue that Plaintiff falsely stated the basis for a second reconsideration was the Court’s ruling on copyright protection for the jokes, while the Court's order did not explicitly make such a determination. The debate centers on whether the Court's statement constituted a holding or mere dicta. The Court aligned with the Plaintiff, stating that a determination of copyright protection cannot be made without first establishing that the material qualifies for such protection. The Court noted that the issue of the level of copyright protection for Plaintiff's jokes was addressed in the summary judgment, concluding they were entitled to only 'thin' protection, thus supporting the assertion that the jokes met the originality requirement for copyrightability.
Plaintiff's counsel did not mischaracterize the Court's May 12, 2017 Order regarding the copyright status of jokes, which were determined to be entitled only to thin protection. While counsel could have clarified this point in a letter to the Copyright Office, the omission did not indicate intent to defraud, especially since the full Court Order was attached for verification. Consequently, the Defendants' claim of Fraud on the Copyright Office related to the September 2015 Application is rejected.
Regarding the August 2016 Application, Defendants allege that Plaintiff failed to disclose the rejection of the September 2015 Application and prior publication of a joke. However, Plaintiff argues that the August 2016 registration is unrelated to the Tom Brady joke and thus cannot be invalidated based on those claims. Additionally, it is undisputed that Plaintiff's counsel had advised discussions with the Copyright Office, indicating no intent to deceive. Defendants, in their Opposition, do not substantiate claims of fraud but suggest other inequitable conduct to support a defense of unclean hands. Under Ninth Circuit precedent, the Court deems the fraud claim abandoned due to Defendants' lack of response regarding the August 2016 inaccuracies. Ultimately, the Court finds that these inaccuracies do not constitute fraud on the Copyright Office.
Allegations of inaccuracies in the August 2016 Application by the Defendants focus on omissions. While intentional, material omissions can support a fraud defense against the Copyright Office, the Defendants have not demonstrated any legal requirement for the Plaintiff to disclose the prior publication of a joke by Tom Brady or the refusals of the September 2015 Application. To claim fraudulent omissions under California statutes or common law, a plaintiff must show that the omissions contradict a representation made by the defendant or involve facts that the defendant was obligated to disclose. The Plaintiff is not required to disclose every detail regarding the work, such as geographical coordinates or personal information, unless it pertains to the work’s preparation or copyright status. Although Plaintiff’s counsel could have been more transparent about the prior application rejections, there is no legal obligation to disclose them, leading the Court to dismiss Defendants' Ninth Affirmative Defense for Fraud on the Copyright Office.
For the Tenth Affirmative Defense of Unclean Hands, the defendants must prove (1) the Plaintiff's inequitable conduct, (2) a direct relation of that conduct to the Plaintiff's claims, and (3) injury to the defendants resulting from that conduct. The application of this doctrine is fact-intensive and rarely recognized. In addition to the fraud allegations, the Defendants’ unclean hands defense also references alleged inequitable conduct concerning discovery in the case.
Defendants claim that Plaintiff (1) intentionally withheld relevant documents regarding his copyright validity and (2) provided false information in response to interrogatories to conceal this misconduct. Plaintiff counters that any unclean hands defense by Defendants, based on these allegations, fails for the same reasons as their fraud on the Office defense. Additionally, Plaintiff argues that any discovery misconduct has been rectified by producing all relevant information post-Summary Judgment Order, and that the Court allowed Defendants to reopen discovery on the fraud issue. Generally, unclean hands cannot be based on discovery misconduct; the appropriate remedy would involve a motion to compel or for sanctions under Federal Rule of Civil Procedure 37. However, some cases suggest that an unclean hands defense may be acceptable if discovery misconduct conceals fraud related to the intellectual property in question. The Court finds that Plaintiff's actions do not constitute fraud on the Office and agrees with Plaintiff that Defendants’ only recourse for discovery misconduct lies under Rule 37. Consequently, the Court grants Plaintiff's motion and dismisses Defendants' Tenth Affirmative Defense for Unclean Hands. The Court also dismisses Defendants' Ninth Affirmative Defense for Fraud on the Copyright Office and orders the parties to file a proposed pre-trial schedule within fourteen days.
The public catalog indicates a copyright date of September 11, 2015, while the parties reference a September 3, 2015 application; however, the exact application date is not crucial for the motion's determination. The Court can take judicial notice of the copyright catalog printouts provided by the Plaintiff, as established by case law. Judicial notice is appropriate for copyright registrations, and the Court may consider matters subject to judicial notice without changing the motion to one for summary judgment. Additionally, the Court can consider documents that are incorporated by reference in the pleadings if their authenticity is uncontested and they are essential to the parties' defenses. The Court finds that Exhibits 2 and 3 of the Lorenzo Declaration are valid for consideration in relation to the Defendants’ affirmative defenses.
In cases alleging inaccurate copyright information, the Court may seek guidance from the Register of Copyrights on whether such inaccuracies would have affected registration. However, the Court can first determine if a misstatement exists before making such a referral. If the Court finds no misstatement, it does not need to inquire further. The Plaintiff contends that any inaccuracies in the September 2015 application are not material, as the Board's letter indicates it did not rely on the Court's decision. The Court cannot resolve the materiality of these inaccuracies, which is a matter for the Register.
Regarding prior publication, it is established that a joke involving Tom Brady was first published on Twitter on February 3, 2015, at 8:49 a.m., followed by a publication on the Plaintiff's blog thirteen minutes later. The registration’s date of publication and nation of first publication appears accurate, despite the earlier Twitter publication.
The Court refuses to convert Plaintiff's Motion into one for summary judgment but notes that the additional evidence presented by the Plaintiff, although not suitable for judgment on the pleadings, supports the dismissal of Defendant's ninth affirmative defense. The defense lacks merit since, even if there were actionable omissions in the August 2016 Application, there is no evidence of prejudice to the Defendants or intent to defraud the Copyright Office. Citing Ninth Circuit precedent, it affirms that inadvertent mistakes in copyright registration do not invalidate the copyright or obstruct infringement claims unless the alleged infringer suffered detriment due to the mistake or the claimant intended to deceive the Copyright Office. The Court finds that no intent to defraud or prejudice exists in this case, as the inaccuracies from the August 2016 Application do not affect the current litigation. Furthermore, discussions between Plaintiff’s attorney and the Copyright Office clarified that a single application could be submitted alongside a collective work application for the same content. Since there is no obligation for the attorney to disclose rejections of the single application, the Court concludes that neither the Plaintiff nor the attorney intended to defraud the Office, despite being less forthcoming.
