Kaseberg v. Conaco, LLC et al
Filing
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ORDER Granting 154 Motion for Leave to File an Amended Answer. Signed by Judge Janis L. Sammartino on 4/13/2018. (mpl)
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UNITED STATES DISTRICT COURT
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SOUTHERN DISTRICT OF CALIFORNIA
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ROBERT ALEXANDER KASEBERG,
Case No.: 15-CV-1637 JLS (RNB)
Plaintiff,
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ORDER GRANTING MOTION FOR
LEAVE TO FILE AN AMENDED
ANSWER
v.
CONACO, LLC; TURNER
BROADCASTING SYSTEM; TIME
WARNER, INC.; CONAN O’BRIEN;
JEFF ROSS; MIKE SWEENEY; DOES
1–10, inclusive,
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(ECF No. 154)
Defendants.
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Presently before the Court is Defendants’ Motion for Leave to File an Amended
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Answer, (“MTN,” ECF No. 154). Also before the Court is Plaintiff’s Response in
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Opposition to the Motion, (“Opp’n,” ECF No. 156), and Defendants’ Reply in Support of
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the Motion, (“Reply,” ECF No. 158). In sum, Defendants seek leave to amend their answer
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“to include the affirmative defenses of (1) fraud on the Copyright Office and (2) unclean
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hands, in light of Plaintiff Robert Alexander Kaseberg and his counsel’s misconduct before
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the Copyright Office and this Court.” (MTN 5.)1 After considering the Parties’ arguments
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and the law, the Court rules as follows.
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Pin citations refer to the CM/ECF page numbers electronically stamped at the top of each page.
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15-CV-1637 JLS (RNB)
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BACKGROUND
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Plaintiff Robert Alexander Kaseberg filed a Complaint against Defendants Conaco,
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LLC; Turner Broadcasting System; Time Warner, Inc.; Conan O’Brien; Jeff Ross; and
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Mike Sweeney alleging copyright infringement. (“Compl,” ECF No. 1.) Defendants filed
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answers to the Complaint. (ECF No. 3 (by Conaco, LLC); ECF No. 11 (by Time Warner,
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Inc., and Turner Broadcasting System); ECF No. 11 (by Conan O’Brien, Jeff Ross, and
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Mike Sweeney).) Plaintiff then filed an Amended Complaint, (“FAC,” ECF No. 58), and
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all Defendants answered, (“Answer,” ECF No. 59). In sum, Plaintiff brought suit for
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Defendants’ alleged infringement of five of Plaintiff’s jokes. (FAC ¶¶ 14–27.) The present
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Motion relates only to the “Tom Brady Joke.”
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Defendants filed a Motion for Summary Judgment, (“MSJ,” ECF No. 70-1). The
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Court granted in part and denied in part the Motion. (“MSJ Order,” ECF No. 131.) As
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relevant to the Tom Brady Joke, Defendants moved for summary judgment arguing that
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Plaintiff lacked standing to maintain an infringement action as to this joke. Defendants
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argued Plaintiff had not produced copyright applications or registrations for the Tom Brady
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Joke. (MSJ Order 8.) Plaintiff then attached copyright applications for the joke to his
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opposition to the MSJ. (Id.) The Court concluded that Plaintiff’s failure to timely disclose
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his copyright applications was not outcome-determinative. (Id.) While Plaintiff had failed
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to timely produce the required disclosure, this failure was harmless within the meaning of
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Rule 37(c) and Defendants were not prejudiced. (Id. at 9.) The Court denied summary
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judgment for this ground but permitted Defendants leave to reopen discovery and leave to
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file a dispositive motion if warranted, i.e., if Defendants “discover fatal deficiencies in
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Plaintiff’s applications.” (Id. at 10.)
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Also in their MSJ, Defendants requested summary judgment on the following issue:
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Plaintiff’s “allegedly infringed works are entitled to, at best, ‘thin’ copyright protection,
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and he cannot establish that the allegedly infringing works are ‘virtually identical’ to his
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works.” (Id. at 7 (citing ECF No. 70, at 1).) The Court stated “that Plaintiff’s jokes are
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entitled to only ‘thin’ copyright protection.” (Id. at 21.) As to the Tom Brady joke, the
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15-CV-1637 JLS (RNB)
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Court found “while not exactly identical, [Plaintiff’s and Defendant’s] jokes are
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sufficiently objectively virtually identical to create a triable issue of fact regarding whether
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a jury would find these objective similarities to be virtually identical within the context of
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the entire joke.” (Id. at 23.) The Court denied summary judgment on this issue.
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After the MSJ Order, Plaintiff produced documents to Defendants. Based on these
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documents, Defendants now request leave to add two affirmative defenses to their answer
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based on alleged misrepresentations in Plaintiff’s various correspondences with the
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Copyright Office.
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LEGAL STANDARD
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Under Federal Rule of Civil Procedure 15(a), a plaintiff may amend its complaint
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once as a matter of course within specified time limits. Fed. R. Civ. P. 15(a)(1). “In all
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other cases, a party may amend its pleading only with the opposing party’s written consent
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or the court’s leave. The court should freely give leave when justice so requires.” Fed. R.
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Civ. P. 15(a)(2).
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While courts exercise broad discretion in deciding whether to allow amendment,
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they have generally adopted a liberal policy. See United States ex rel. Ehmcke Sheet Metal
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Works v. Wausau Ins. Cos., 755 F. Supp. 906, 908 (E.D. Cal. 1991) (citing Jordan v. Cnty.
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of L.A., 669 F.2d 1311, 1324 (9th Cir. 1982), rev’d on other grounds, 459 U.S. 810 (1982)).
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Accordingly, leave is generally granted unless the court harbors concerns “such as undue
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delay, bad faith or dilatory motive on the part of the movant, repeated failure to cure
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deficiencies by amendments previously allowed, undue prejudice to the opposing party by
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virtue of allowance of the amendment, futility of amendment, etc.” Foman v. Davis, 371
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U.S. 178, 182 (1962). The non-moving party bears the burden of showing why leave to
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amend should not be granted. Genentech, Inc. v. Abbott Labs., 127 F.R.D. 529, 530–31
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(N.D. Cal. 1989).
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15-CV-1637 JLS (RNB)
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ANALYSIS
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As noted above, Defendants seek to amend their answer to include the affirmative
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defenses of (1) fraud on the Copyright Office; and (2) unclean hands. (MTN 5.) The Court
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analyzes both proposed affirmative defenses.
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I.
Fraud on the Copyright Office
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A certificate of registration from the Copyright Office constitutes “prima facie
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evidence of the validity of the copyright and of the facts stated in the certificate.” 17 U.S.C.
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§ 410(c). “To rebut the presumption [of validity], an infringement defendant must simply
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offer some evidence or proof to dispute or deny the plaintiff’s prima facie case of
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infringement.” United Fabrics Int’l, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1257 (9th Cir.
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2011). A defendant may rebut the presumption of validity by showing evidence that the
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certificate of registration contains inaccurate information that: (1) was included with
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knowledge that it was inaccurate; and (2) would have caused the Register of Copyrights to
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refuse registration.
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certificates do not invalidate a copyright and thus do not bar infringement actions, unless
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the alleged infringer has relied to its detriment on the mistake, or the claimant intended to
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defraud the Copyright Office by making the misstatement.” Urantia Found. v. Maaherra,
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114 F.3d 955, 963 (9th Cir. 1997). “Absent intent to defraud and prejudice, inaccuracies
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in copyright registration do not bar actions for infringement.” Harris v. Emus Records
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Corp., 734 F.2d 1329, 1335 (9th Cir. 1984).
17 U.S.C. § 411(b)(1).
“[I]nadvertent mistakes on registration
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In support of their allegation of fraud, Defendants point to Plaintiff’s May 30, 2017
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letter to the Copyright Office, wherein he requested the Copyright Office reconsider
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registering the Tom Brady Joke (“the work”). (See ECF No. 156-1, at 91.) In this letter,
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Plaintiff noted that the Copyright Office had previously refused his request for registration
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and also refused his first request for reconsideration. He again requested reconsideration,
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noting the pending litigation in this Court and stating that “the basis for this second
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reconsideration is that the Court ruled at Summary Judgment on May 9, 2017 that ‘there is
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little doubt that the jokes at issue merit copyright protection.’” (Id. (citing and attaching
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15-CV-1637 JLS (RNB)
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the MSJ Order).) The Copyright Office then reversed its previous refusal to register the
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copyright claim in the work and registered the work.
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Defendants argue that Plaintiff misrepresented to the Copyright Office that the Court found
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the Tom Brady joke met the originality requirements of the Copyright Act. Defendants
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argue the language Plaintiff quoted from the MSJ Order was only dicta and “it was assumed
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that all of the jokes at issue were copyrightable for the purpose of determining ‘the
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appropriate standard for evaluating the level of similarity between the works here at
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issue.’” (MTN 12 (quoting MSJ Order 18).) Plaintiff argues Defendants’ proposed
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affirmative defenses are futile for various reasons and asks that the Court to treat his
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(ECF No. 156-2, at 9–10.)2
opposition as his motion to dismiss the affirmative defenses. (Opp’n 6.)
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“[A] proposed amendment is futile only if no set of facts can be proved under the
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amendment to the pleadings that would constitute a valid and sufficient claim or defense.”
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Miller v. Rykoff-Sexton, Inc., 845 F.2d 209, 214 (9th Cir. 1988). Courts ordinarily do not
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consider the validity of a proposed amended pleading in deciding whether to grant leave to
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amend, and instead defer consideration of challenges to the merits of a proposed
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amendment until after leave to amend is granted and the amended pleadings are filed.
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Netbula, LLC v. Distinct Corp., 212 F.R.D. 534, 539 (N.D. Cal. 2003) (citation omitted);
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accord Green Valley Corp. v. Caldo Oil Co., No. 09cv4028-LHK, 2011 WL 1465883, at
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*6 (N.D. Cal. Apr. 18, 2011) (noting “the general preference against denying a motion for
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leave to amend based on futility”). Arguments concerning the sufficiency of the proposed
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pleadings, even if meritorious, are better left for briefing on a motion to dismiss. Lillis v.
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Plaintiff requests the Court take judicial notice of the Copyright Office’s “decision reversing the refusal
to register the September 3, 2015 Tom Brady Joke application.” (ECF No. 156-2, at 1.) Defendants do
not oppose this request. The Court GRANTS the request and takes judicial notice of the letter from the
Copyright Office dated July 17, 2017. (See ECF No. 156-2, at 9–10.) Plaintiff also requests the Court
take judicial notice of two other documents, “Form TX,” and “the Public Catalog for registration
TX0008351767.” (ECF No. 156-2.) The Court finds the requested judicial notice unnecessary for these
two documents and therefore DENIES the request.
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15-CV-1637 JLS (RNB)
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Apria Healthcare, No. 12cv52-IEG (KSC), 2012 WL 4760908, at * 1 (S.D. Cal. Oct. 5,
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2012).
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Although Plaintiff requests the Court treat his opposition as a motion to dismiss, the
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Court finds it would be more appropriate to consider a fully-briefed dispositive motion
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regarding the affirmative defenses, if Plaintiff deems one is appropriate. See id. (“[T]he
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Court will not indulge Defendants’ attempt to convert Plaintiff’s motion to amend into a
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premature motion to dismiss.”). The Court finds that justice requires granting Defendants
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leave to amend their answer to add the affirmative defense of fraud on the copyright office.
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II.
Unclean Hands
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The doctrine of unclean hands “bars relief to a plaintiff who has violated conscience,
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good faith or other equitable principles in his prior conduct, as well as to a plaintiff who
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has dirtied his hands in acquiring the right presently asserted.” Dollar Sys., Inc. v. Avcar
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Leasing Sys., Inc., 890 F.2d 165, 173 (9th Cir. 1989). To prevail on a defense of unclean
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hands, a defendant must demonstrate “that the plaintiff’s conduct is inequitable and that
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the conduct relates to the subject matter of [the plaintiff’s] claims.” Fuddruckers Inc. v.
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Doc’s B.R. Others, Inc., 826 F.2d 837, 847 (9th Cir. 1987) (citing CIBA–GEIGY Corp. v.
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Bolar Pharm., 747 F.2d 844, 855 (3d Cir. 1984)); see also TrafficSchool.com, Inc. v.
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Edriver, Inc., 653 F.3d 820, 833 (9th Cir. 2011) (holding that a defendant must demonstrate
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that an unclean hands defense applies with “clear, convincing evidence”).
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Defendants’ allegation of unclean hands is broader than their allegation of fraud on
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the copyright office. (Reply 11.) The proposed unclean hand defense covers more of
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Plaintiff’s communication with the Copyright Office than just the May 30, 2017 letter.
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(MTN 14.) Plaintiff again argues futility, arguing that Defendants cannot plead unclean
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hands as a matter of law. (Opp’n 20.) For the same reason as addressed above, the Court
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finds the defense of futility is better left for briefing on a separate motion. The Court finds
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that justice requires granting Defendants leave to amend their answer to add the affirmative
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defense of unclean hands.
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15-CV-1637 JLS (RNB)
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III.
Sanctions
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Plaintiff requests the Court sanction Defendants for bringing the present Motion.
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(Opp’n 21.) The Court does not find a basis for sanctions and DENIES Plaintiff’s request.
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CONCLUSION
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The Court GRANTS Defendants’ Motion for Leave to File an Amended Answer.
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Defendants SHALL file the amended answer attached to their Motion within five (5) days
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of the electronic docketing of this Order.
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IT IS SO ORDERED.
Dated: April 13, 2018
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