Robert J. Bernstein and Robert W. Clarida ()
This quotation from 18th century poet and satirist Charles Churchill1 (often misattributed to Winston) brings to mind the recent Southern District of California decision in Kaseberg v. Conaco, Case No. 15-cv-1637 JLS (DHB) (S.D. Cal. May 12, 2017), 2017 WL 1969300, wherein Robert Kaseberg claimed that five jokes he wrote and published on his blog or Twitter feed were infringed by jokes told by Conan O’Brien in his late-night monologues. Each of the jokes was based on a current news item and delivered in a standard format of set-up (factual premise from news) and delivery (punchline). In denying defendants’ motion for summary judgment on three of the five jokes at issue, U.S. District Court Judge Janis L. Sammartino considered arguments on copying (access and similarities) versus independent creation, protected expression (or not), and scope of protection (“thin” copyright or broader protection). Serious issues indeed!
The Jokes at Issue
Kaseberg Tom 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.”
Conan Tom Brady joke: “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.”
Kaseberg Washington 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.”
Conan Washington Monument joke: “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.”
Kaseberg 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.”
Conan Jenner joke: “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.”
Kaseberg University of Alabama-Birmingham joke (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?’”
Conan University of Alabama-Birmingham joke: “Big news in sports. University of Alabama-Birmingham ["UAB"] 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?’”
Kaseberg Delta joke: “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.”
Conan 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.”
The court considered all of Kaseberg’s jokes to be within the subject matter of copyright as enumerated in §102(a) of the Copyright Act, 17 U.S.C. §102(a), namely, the category of “literary works,” defined as “works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, … .”2 The court also considered the jokes to merit copyright protection as original works, independently created and possessing some minimal creative spark, “no matter how crude, humble or obvious it might be.” Kaseberg, 2017 WL 1969300, at *10 (citing Feist Publications v. Rural Telephone Service Co., 499 U.S. 340, 345 (1991)). Whether the jokes were copied, and, if so, whether the copied parts consisted of protected expression, presented more challenging questions.
The Court’s Analysis
Judge Sammartino was guided by the Ninth Circuit’s two-part test to determine infringement: (1) an “extrinsic” test focusing on “objective similarities” probative of copying; and (2) a subjective, “intrinsic” test focusing on whether the ordinary, reasonable observer would consider the total concept and feel of the protectable expression in defendant’s work to be substantially the same as plaintiff’s. Under Ninth Circuit precedent, only the “extrinsic” test is applied on summary judgment. See, e.g., Kouf v. Walt Disney Pictures & Television, 16 F.3d 1042, 1045 (9th Cir. 1994)).
Copying by defendant is an essential element of plaintiff’s claim. Where, as here, direct evidence of copying is unavailable, the plaintiff must first demonstrate that defendant had “access” to plaintiff’s work. Access cannot be established by a bare possibility that defendant saw or heard plaintiff’s work; rather, plaintiff must show that defendant had a “reasonable opportunity” to view plaintiff’s work. But access alone does not establish copying; there must also be sufficient similarities—in the Ninth Circuit it is called “substantial similarity”—from which the court can reasonably infer copying.3
The defendant may counter the claim of copying by proving independent creation (including prior creation) or the use of publicly available information or common sources pre-dating plaintiff’s work. Another way to defeat assertions of access or copying is through direct evidence that defendant did not copy plaintiff’s works. Defendants were able to do so with respect to the Delta joke with evidence that a Conan writer submitted that joke by email to Conan five hours before plaintiff posted his Delta joke. The court therefore granted summary judgment to defendants on the Delta joke. Although defendants also argued prior creation as to the Washington Monument joke, the court denied summary judgment on this joke because it found a genuine dispute concerning whether defendants’ prior joke—created a year before the Washington Monument joke—was the same. As to the remaining three jokes, the court—noting that it was a “close call”—found sufficient evidence of the opportunity to view plaintiffs’ jokes on his blog or twitter feed, including evidence of some contacts between Kaseberg and defendants, such that “the Court cannot at this time say that as a matter of law Defendants did not have access to Plaintiff’s jokes.” Kaseberg, 2017 WL 1969300, at *9.
Turning to the question of similarity under the “extrinsic” test, the court found that three of plaintiff’s and defendants’ jokes “objectively share sufficient protectable similarities to preclude summary judgment.” Id., at *11. However, in response to defendants’ separate motion for summary adjudication on scope of protection, the court found that plaintiff’s jokes were only entitled to “thin” copyright protection. In the court’s view, to the extent that the jokes were premised on publicly available facts (which they were) and limited by their two-line format of set-up (factual premise) and delivery (punchline), they were not protectable. Although the court considered the punchlines to be creative and qualifying for copyright protection, it found that there are a limited number of punchline variations that would be humorous as applied to the factual premises and would have mass appeal. Id., at *10. The court therefore applied the Ninth Circuit test for infringement of a “thin” copyright which requires that there be “some form of ‘virtual identity’” between the works. Id.
With respect to the UAB Joke, the court granted summary judgment to defendants based on its conclusion that there was no genuine issue of material fact that there was no virtual identity between the parties’ jokes. With respect to the remaining three jokes, the court denied defendants’ motion for summary judgment based on the genuine dispute regarding whether the parties’ Tom Brady joke, Washington Monument joke, and Jenner joke were virtually identical. The court did not elucidate the meaning of “some sort of virtual identity” (emphasis added), except to state that the test does not require that the jokes be “exactly identical.” But where on the spectrum a work ceases to be “virtually identical” and instead becomes sufficiently different to avoid infringement is an elusive line to draw.
The reader may re-read plaintiff’s jokes set forth above and ask why the court is convinced that the number of punchline variations is so limited by the factors it cites. Are they not, in fact, primarily limited by the creativity of their writers? In particular, how is the court equipped, on the summary adjudication motion, to determine that only a relatively small number of variations would have mass appeal? This finding appears to be both highly subjective and speculative—two qualities that are not generally associated with summary determinations. In the absence of an interlocutory appeal resulting in a less stringent standard, Kaseberg will have a hard row to hoe at trial.
1. The quoted line appears at the end of this poem published in a 1762 collection of Churchill’s poetry:
Great use they have, when in the hands
Of one like me, who understands,
Who understands the time and place,
The person, manner, and the grace,
Which fools neglect; so that we find,
If all the requisites are join’d,
From whence a perfect joke must spring,
A joke’s a very serious thing.
Charles Churchill, “The Ghost,” 1762, Book IV, lines 1379-1387
2. The definition of “literary works” is set forth in §101 of the Act, 17 U.S.C. §101.
3. In the Second Circuit, such similarities are often called “probative similarities” in order to avoid the confusion that may arise when the term “substantial similarity” is used in determining both copying (the Ninth Circuit’s “extrinsic test”), and the ultimate issue of unlawful appropriation (the Ninth Circuit’s “intrinsic test”).