By Patrick B. Monahan
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After a recent court decision, the comedic minds behind the late-night talk show “Conan”, who are currently facing claims in federal court of monologue joke theft, have two fewer affirmative defenses in their setlist.
On July 22, 2015, Alex Kaseberg (“Kaseberg”) filed a copyright infringement lawsuit in the United States District Court for the Southern District of California, alleging that five of his jokes were used by Conan O’Brien on “Conan” without his permission. Kaseberg alleged that copyright registrations were being sought for each of the five jokes at issue, which were as follows:
| Kaseberg’s Joke | Joke That Appeared On “Conan” | |
| The UAB Joke | The University of Alabama-Birmingham is shutting down its football program. To which the Oakland Raiders said; “Wait, so you can do that?”
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Big news in sports. University of Alabama-Birmingham has decided to discontinue its football team. Yeah. When they heard the news, New York Jets fans said, “Wait can you do that? It’s something you can do?”
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| The Delta Joke | Yesterday, a Delta flight from Cleveland to New York took off with just 2 passengers. Yet somehow, they spent the whole flight fighting over the armrest.
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A Delta flight this week took off from Cleveland to New York with just two passengers. And they fought over control of the armrest the entire flight.
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| The Brady Joke | Tom Brady said he wants to give his MVP truck to the man who won the game for the Patriots. So enjoy that truck, Pete Carroll. | Tom Brady said he wants to give the truck that he was given as Super Bowl MVP . . . to the guy who won the Super Bowl for the Patriots. Which is very nice. I think that’s nice. I do. Yes. So Brady’s giving his truck to Seahawks coach Pete Carroll.
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| The Monument Joke | The Washington Monument is ten inches shorter than previously thought. You know the winter has been cold when a monument suffers from shrinkage. | Yesterday surveyors[] announced that the Washington Monument is ten inches shorter than what’s been previously recorded. Yeah. Of course, the monument is blaming the shrinkage on the cold weather. Penis joke.
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| The Jenner Joke | Three towns, two in Texas, one in Tennessee, have streets named after Bruce Jenner and now they have to consider changing them to Caitlyn. And one will have to change from a Cul-De-Sac to a Cul-De-Sackless.
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Some cities that have streets named after Bruce Jenner are trying to change the streets’ names to Caitlyn Jenner. If you live on Bruce Jenner cul-de-sac it will now be cul-de-no-sack.
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While Kaseberg’s pending copyright applications were sufficient basis for his copyright infringement claims at the time he filed his lawsuit, it’s worth noting that, as a result of the Supreme Court’s recent decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, which held that copyright holders must receive a registration from the Copyright Office prior to filing a lawsuit claiming copyright infringement, to file a similar suit today, Kaseberg would have had to wait. At the time Kaseberg filed his suit, law in the Ninth Circuit, of which the United States District Court for the Southern District of California was a part, was that a copyright holder need only file an application to have grounds for an infringement suit.
In May of 2017, the court partially granted the Defendants’ motion for summary judgment and dismissed counts relating to the UAB Joke and the Delta Joke, but it determined that the Brady Joke, the Monument Joke and the Jenner Joke were entitled to “thin” copyright protection and counts relating to those jokes could proceed. In May of 2018, shortly after the Defendants were permitted to amend their Answer to include the affirmative defenses of fraud on the Copyright Office and unclean hands, Kaseberg filed a motion for judgment on the pleadings or partial summary judgment, seeking to eliminate those two defenses. For the reasons discussed below, the court granted the motion and dismissed both defenses.
Fraud on the Copyright Office
This defense only concerns Kaseberg’s attempts to obtain a copyright registration for the Brady Joke, and thus only applies to that joke. In September of 2015, shortly after the Complaint was filed, Kaseberg (through counsel) filed an application to register the Brady Joke with the Copyright Office, which was denied due to lack of original authorship, that is, because the Copyright Office found that the joke did not possess a minimal degree of creativity. Kaseberg filed a request for reconsideration of the refusal to register the Brady Joke, but that request was denied in July of 2016.
In August of 2016, Kaseberg’s counsel filed another application to register several jokes published in February of 2015, including the Brady Joke, without mentioning the Copyright Office’s refusal of the earlier attempt to register the Brady Joke. In May of 2017, Kaseberg filed a second request for reconsideration of the refusal to register the Brady Joke, citing the court’s decision in which the Brady Joke survived summary judgment, enclosing a copy of the court’s order denying summary judgment as to the Brady Joke but not specifically noting in the request that the Brady Joke was only entitled to “thin” copyright protection.
The Copyright Office granted registration to the works in the August 2016 application, including the Brady Joke. Following that, in July of 2017, the Copyright Office granted the second request for reconsideration of the September 2015 application for the Brady Joke, but noted that the Brady Joke would have to be removed from the registration resulting from the August 2016 application.
The Defendants argued that Kaseberg committed fraud by omission in his communications with the Copyright Office, both of the fact that the Copyright Office previously refused to register the Brady Joke, and of the court’s opinion that the Brady Joke was only entitled to “thin” protection.
The court found that, while Kaseberg could have been more forthcoming with the Copyright Office, his omissions did not rise to the level of fraud on the Copyright Office, and dismissed the defense. The court apparently found some humor in the Defendant’s claims, stating that there was no obligation for Kaseberg to have disclosed to the Copyright Office everything related to the Brady Joke, such as “the geographical coordinates for where he composed the work, what he ate for breakfast that morning, or what color underwear he was wearing.”
Unclean Hands
The unclean hands defense, a catch-all defense in which a defendant argues that the plaintiff’s inequitable conduct relating to the lawsuit injured the defendant, was based upon Kaseberg’s alleged failure to provide the Defendants with requested documents and information relating to the validity of the copyrights he asserted. The Court found that, unless Kaseberg was attempting to conceal evidence of fraud on the Copyright Office, the appropriate way for the Defendants to seek relief would be through discovery motions, such as a motion to compel and/or motion for sanctions. Because the Court found that Kaseberg’s actions did not rise to the level of fraud on the Copyright Office, the Defendants’ only recourse for Kaseberg’s discovery failings was through discovery motion practice, so the unclean hands defense was dismissed.
The case is set for a jury trial in May, so it remains to be seen whether Conan can win over one of his toughest audiences yet.