Kaseberg v. Conaco, LLC et al

Filing 164

ORDER Granting 154 Motion for Leave to File an Amended Answer. Signed by Judge Janis L. Sammartino on 4/13/2018. (mpl)

Download PDF
1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 ROBERT ALEXANDER KASEBERG, Case No.: 15-CV-1637 JLS (RNB) Plaintiff, 12 13 14 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, 15 16 17 (ECF No. 154) Defendants. 18 19 Presently before the Court is Defendants’ Motion for Leave to File an Amended 20 Answer, (“MTN,” ECF No. 154). Also before the Court is Plaintiff’s Response in 21 Opposition to the Motion, (“Opp’n,” ECF No. 156), and Defendants’ Reply in Support of 22 the Motion, (“Reply,” ECF No. 158). In sum, Defendants seek leave to amend their answer 23 “to include the affirmative defenses of (1) fraud on the Copyright Office and (2) unclean 24 hands, in light of Plaintiff Robert Alexander Kaseberg and his counsel’s misconduct before 25 the Copyright Office and this Court.” (MTN 5.)1 After considering the Parties’ arguments 26 and the law, the Court rules as follows. 27 28 1 Pin citations refer to the CM/ECF page numbers electronically stamped at the top of each page. 1 15-CV-1637 JLS (RNB) 1 BACKGROUND 2 Plaintiff Robert Alexander Kaseberg filed a Complaint against Defendants Conaco, 3 LLC; Turner Broadcasting System; Time Warner, Inc.; Conan O’Brien; Jeff Ross; and 4 Mike Sweeney alleging copyright infringement. (“Compl,” ECF No. 1.) Defendants filed 5 answers to the Complaint. (ECF No. 3 (by Conaco, LLC); ECF No. 11 (by Time Warner, 6 Inc., and Turner Broadcasting System); ECF No. 11 (by Conan O’Brien, Jeff Ross, and 7 Mike Sweeney).) Plaintiff then filed an Amended Complaint, (“FAC,” ECF No. 58), and 8 all Defendants answered, (“Answer,” ECF No. 59). In sum, Plaintiff brought suit for 9 Defendants’ alleged infringement of five of Plaintiff’s jokes. (FAC ¶¶ 14–27.) The present 10 Motion relates only to the “Tom Brady Joke.” 11 Defendants filed a Motion for Summary Judgment, (“MSJ,” ECF No. 70-1). The 12 Court granted in part and denied in part the Motion. (“MSJ Order,” ECF No. 131.) As 13 relevant to the Tom Brady Joke, Defendants moved for summary judgment arguing that 14 Plaintiff lacked standing to maintain an infringement action as to this joke. Defendants 15 argued Plaintiff had not produced copyright applications or registrations for the Tom Brady 16 Joke. (MSJ Order 8.) Plaintiff then attached copyright applications for the joke to his 17 opposition to the MSJ. (Id.) The Court concluded that Plaintiff’s failure to timely disclose 18 his copyright applications was not outcome-determinative. (Id.) While Plaintiff had failed 19 to timely produce the required disclosure, this failure was harmless within the meaning of 20 Rule 37(c) and Defendants were not prejudiced. (Id. at 9.) The Court denied summary 21 judgment for this ground but permitted Defendants leave to reopen discovery and leave to 22 file a dispositive motion if warranted, i.e., if Defendants “discover fatal deficiencies in 23 Plaintiff’s applications.” (Id. at 10.) 24 Also in their MSJ, Defendants requested summary judgment on the following issue: 25 Plaintiff’s “allegedly infringed works are entitled to, at best, ‘thin’ copyright protection, 26 and he cannot establish that the allegedly infringing works are ‘virtually identical’ to his 27 works.” (Id. at 7 (citing ECF No. 70, at 1).) The Court stated “that Plaintiff’s jokes are 28 entitled to only ‘thin’ copyright protection.” (Id. at 21.) As to the Tom Brady joke, the 2 15-CV-1637 JLS (RNB) 1 Court found “while not exactly identical, [Plaintiff’s and Defendant’s] jokes are 2 sufficiently objectively virtually identical to create a triable issue of fact regarding whether 3 a jury would find these objective similarities to be virtually identical within the context of 4 the entire joke.” (Id. at 23.) The Court denied summary judgment on this issue. 5 After the MSJ Order, Plaintiff produced documents to Defendants. Based on these 6 documents, Defendants now request leave to add two affirmative defenses to their answer 7 based on alleged misrepresentations in Plaintiff’s various correspondences with the 8 Copyright Office. 9 LEGAL STANDARD 10 Under Federal Rule of Civil Procedure 15(a), a plaintiff may amend its complaint 11 once as a matter of course within specified time limits. Fed. R. Civ. P. 15(a)(1). “In all 12 other cases, a party may amend its pleading only with the opposing party’s written consent 13 or the court’s leave. The court should freely give leave when justice so requires.” Fed. R. 14 Civ. P. 15(a)(2). 15 While courts exercise broad discretion in deciding whether to allow amendment, 16 they have generally adopted a liberal policy. See United States ex rel. Ehmcke Sheet Metal 17 Works v. Wausau Ins. Cos., 755 F. Supp. 906, 908 (E.D. Cal. 1991) (citing Jordan v. Cnty. 18 of L.A., 669 F.2d 1311, 1324 (9th Cir. 1982), rev’d on other grounds, 459 U.S. 810 (1982)). 19 Accordingly, leave is generally granted unless the court harbors concerns “such as undue 20 delay, bad faith or dilatory motive on the part of the movant, repeated failure to cure 21 deficiencies by amendments previously allowed, undue prejudice to the opposing party by 22 virtue of allowance of the amendment, futility of amendment, etc.” Foman v. Davis, 371 23 U.S. 178, 182 (1962). The non-moving party bears the burden of showing why leave to 24 amend should not be granted. Genentech, Inc. v. Abbott Labs., 127 F.R.D. 529, 530–31 25 (N.D. Cal. 1989). 26 /// 27 /// 28 /// 3 15-CV-1637 JLS (RNB) 1 ANALYSIS 2 As noted above, Defendants seek to amend their answer to include the affirmative 3 defenses of (1) fraud on the Copyright Office; and (2) unclean hands. (MTN 5.) The Court 4 analyzes both proposed affirmative defenses. 5 I. Fraud on the Copyright Office 6 A certificate of registration from the Copyright Office constitutes “prima facie 7 evidence of the validity of the copyright and of the facts stated in the certificate.” 17 U.S.C. 8 § 410(c). “To rebut the presumption [of validity], an infringement defendant must simply 9 offer some evidence or proof to dispute or deny the plaintiff’s prima facie case of 10 infringement.” United Fabrics Int’l, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1257 (9th Cir. 11 2011). A defendant may rebut the presumption of validity by showing evidence that the 12 certificate of registration contains inaccurate information that: (1) was included with 13 knowledge that it was inaccurate; and (2) would have caused the Register of Copyrights to 14 refuse registration. 15 certificates do not invalidate a copyright and thus do not bar infringement actions, unless 16 the alleged infringer has relied to its detriment on the mistake, or the claimant intended to 17 defraud the Copyright Office by making the misstatement.” Urantia Found. v. Maaherra, 18 114 F.3d 955, 963 (9th Cir. 1997). “Absent intent to defraud and prejudice, inaccuracies 19 in copyright registration do not bar actions for infringement.” Harris v. Emus Records 20 Corp., 734 F.2d 1329, 1335 (9th Cir. 1984). 17 U.S.C. § 411(b)(1). “[I]nadvertent mistakes on registration 21 In support of their allegation of fraud, Defendants point to Plaintiff’s May 30, 2017 22 letter to the Copyright Office, wherein he requested the Copyright Office reconsider 23 registering the Tom Brady Joke (“the work”). (See ECF No. 156-1, at 91.) In this letter, 24 Plaintiff noted that the Copyright Office had previously refused his request for registration 25 and also refused his first request for reconsideration. He again requested reconsideration, 26 noting the pending litigation in this Court and stating that “the basis for this second 27 reconsideration is that the Court ruled at Summary Judgment on May 9, 2017 that ‘there is 28 little doubt that the jokes at issue merit copyright protection.’” (Id. (citing and attaching 4 15-CV-1637 JLS (RNB) 1 the MSJ Order).) The Copyright Office then reversed its previous refusal to register the 2 copyright claim in the work and registered the work. 3 Defendants argue that Plaintiff misrepresented to the Copyright Office that the Court found 4 the Tom Brady joke met the originality requirements of the Copyright Act. Defendants 5 argue the language Plaintiff quoted from the MSJ Order was only dicta and “it was assumed 6 that all of the jokes at issue were copyrightable for the purpose of determining ‘the 7 appropriate standard for evaluating the level of similarity between the works here at 8 issue.’” (MTN 12 (quoting MSJ Order 18).) Plaintiff argues Defendants’ proposed 9 affirmative defenses are futile for various reasons and asks that the Court to treat his 10 (ECF No. 156-2, at 9–10.)2 opposition as his motion to dismiss the affirmative defenses. (Opp’n 6.) 11 “[A] proposed amendment is futile only if no set of facts can be proved under the 12 amendment to the pleadings that would constitute a valid and sufficient claim or defense.” 13 Miller v. Rykoff-Sexton, Inc., 845 F.2d 209, 214 (9th Cir. 1988). Courts ordinarily do not 14 consider the validity of a proposed amended pleading in deciding whether to grant leave to 15 amend, and instead defer consideration of challenges to the merits of a proposed 16 amendment until after leave to amend is granted and the amended pleadings are filed. 17 Netbula, LLC v. Distinct Corp., 212 F.R.D. 534, 539 (N.D. Cal. 2003) (citation omitted); 18 accord Green Valley Corp. v. Caldo Oil Co., No. 09cv4028-LHK, 2011 WL 1465883, at 19 *6 (N.D. Cal. Apr. 18, 2011) (noting “the general preference against denying a motion for 20 leave to amend based on futility”). Arguments concerning the sufficiency of the proposed 21 pleadings, even if meritorious, are better left for briefing on a motion to dismiss. Lillis v. 22 23 24 25 26 27 28 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. 2 5 15-CV-1637 JLS (RNB) 1 Apria Healthcare, No. 12cv52-IEG (KSC), 2012 WL 4760908, at * 1 (S.D. Cal. Oct. 5, 2 2012). 3 Although Plaintiff requests the Court treat his opposition as a motion to dismiss, the 4 Court finds it would be more appropriate to consider a fully-briefed dispositive motion 5 regarding the affirmative defenses, if Plaintiff deems one is appropriate. See id. (“[T]he 6 Court will not indulge Defendants’ attempt to convert Plaintiff’s motion to amend into a 7 premature motion to dismiss.”). The Court finds that justice requires granting Defendants 8 leave to amend their answer to add the affirmative defense of fraud on the copyright office. 9 II. Unclean Hands 10 The doctrine of unclean hands “bars relief to a plaintiff who has violated conscience, 11 good faith or other equitable principles in his prior conduct, as well as to a plaintiff who 12 has dirtied his hands in acquiring the right presently asserted.” Dollar Sys., Inc. v. Avcar 13 Leasing Sys., Inc., 890 F.2d 165, 173 (9th Cir. 1989). To prevail on a defense of unclean 14 hands, a defendant must demonstrate “that the plaintiff’s conduct is inequitable and that 15 the conduct relates to the subject matter of [the plaintiff’s] claims.” Fuddruckers Inc. v. 16 Doc’s B.R. Others, Inc., 826 F.2d 837, 847 (9th Cir. 1987) (citing CIBA–GEIGY Corp. v. 17 Bolar Pharm., 747 F.2d 844, 855 (3d Cir. 1984)); see also TrafficSchool.com, Inc. v. 18 Edriver, Inc., 653 F.3d 820, 833 (9th Cir. 2011) (holding that a defendant must demonstrate 19 that an unclean hands defense applies with “clear, convincing evidence”). 20 Defendants’ allegation of unclean hands is broader than their allegation of fraud on 21 the copyright office. (Reply 11.) The proposed unclean hand defense covers more of 22 Plaintiff’s communication with the Copyright Office than just the May 30, 2017 letter. 23 (MTN 14.) Plaintiff again argues futility, arguing that Defendants cannot plead unclean 24 hands as a matter of law. (Opp’n 20.) For the same reason as addressed above, the Court 25 finds the defense of futility is better left for briefing on a separate motion. The Court finds 26 that justice requires granting Defendants leave to amend their answer to add the affirmative 27 defense of unclean hands. 28 /// 6 15-CV-1637 JLS (RNB) 1 III. Sanctions 2 Plaintiff requests the Court sanction Defendants for bringing the present Motion. 3 (Opp’n 21.) The Court does not find a basis for sanctions and DENIES Plaintiff’s request. 4 CONCLUSION 5 The Court GRANTS Defendants’ Motion for Leave to File an Amended Answer. 6 Defendants SHALL file the amended answer attached to their Motion within five (5) days 7 of the electronic docketing of this Order. 8 9 IT IS SO ORDERED. Dated: April 13, 2018 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 7 15-CV-1637 JLS (RNB)

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.

Why Is My Information Online?