PK Studios, Inc. v. R.L.R. Investments, LLC et al
Filing
74
ORDER granting 55 Plaintiff's Motion to Dismiss Golden Ocala Defendants' Counterclaims and dismissing counterclaim counts I-V without prejudice and counts VI and VII with prejudice; granting in part and denying in part 57 Plaintiff& #039;s Motion to Strike Golden Ocala Defendants' Affirmative Defenses; and denying without prejudice to refile 69 Plaintiff's Motion to Extend Trial Dates and Other Deadlines and 72 Stock Defendants' Motion to Extend Trial Dates and Other Deadlines. See Opinion and Order for details. Signed by Judge John E. Steele on 8/30/2016. (KP)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
PK STUDIOS, INC.,
Plaintiff,
v.
Case No: 2:15-cv-389-FtM-99CM
R.L.R.
INVESTMENTS,
LLC,
EAGLES LANDING VILLAS AT
GOLDEN OCALA, LLC, GOLDEN
OCALA GOLF & EQUESTRIAN CLUB
MANAGMENT,
LLC,
STOCK
DEVELOPMENT, LLC, and BRIAN
STOCK,
Defendants.
OPINION AND ORDER
This matter comes before the Court on Plaintiff's Motion to
Strike Defendants’ Affirmative Defenses (Doc. #57) filed on March
3, 2016.
Defendants filed a Response in Opposition (Doc. #61) on
March 21, 2016.
Also before the Court is Plaintiff’s Motion to
Dismiss Defendants’ Counterclaims (Doc. #55) filed on February 24,
2016, to which Defendants filed a Response in Opposition (Doc.
#60) on March 18, 2016.
For the reasons stated and as set forth
below, Plaintiff’s Motion to Strike is granted in part and denied
in part, and Plaintiff’s Motion to Dismiss is granted.
I.
Plaintiff PK Studios, Inc. (Plaintiff) filed suit on June 29,
2015 against R.L.R. Investments, LLC, Eagles Landing Villas at
Golden
Ocala,
LLC,
and
Golden
Ocala
Golf
&
Equestrian
Club
Management,
LLC
(collectively,
Golden
Stock
Ocala
Defendants
Defendants),
and
also
against
Development)
and
Brian
Stock
Defendants).
The three-count Complaint (Doc. #1) asserts a claim
(Mr.
Development,
Stock)
LLC
or
(Stock
(collectively
Stock
of copyright infringement against all five defendants, and claims
of
breach
of
Defendants.
contract
and
declaratory
relief
against
Stock
Plaintiff contends that Golden Ocala Defendants have
been utilizing Plaintiff’s copyrighted architectural plans for
commercial gain without Plaintiff’s permission, and in violation
of the limited future-use license granted in a Release Agreement
that Plaintiff entered into with Stock Defendants.
On February 5, 2016, Golden Ocala Defendants filed an Answer
(Doc. #54) to the Complaint, which also asserts thirty affirmative
defenses,
seven
declaratory-judgment
and
four
counterclaims
crossclaims
against
(the
Counterclaim
Complaint),
Defendants. 1
Plaintiff now moves to strike twenty-three of the
affirmative defenses and dismiss six of the counterclaims.
Stock
The
Court will first resolve the Motion to Strike and then decide the
Motion to Dismiss.
1
Mr. Stock and Stock Development each filed an Answer and
Affirmative Defenses to the Complaint (Docs. ##28, 29), and they
jointly filed an Answer and Affirmative Defenses to Golden Ocala
Defendants’ crossclaims (Doc. #56).
- 2 -
II.
A.
Plaintiff’s Motion to Strike Twenty-Three of Golden Ocala
Defendants’ Affirmative Defenses
The Federal Rules require defendants to “affirmatively state
any avoidance or affirmative defense.”
Fed. R. Civ. P. 8(c).
“An
affirmative defense is generally a defense that, if established,
requires judgment for the defendant even if the plaintiff can prove
his case by a preponderance of the evidence.”
Corp., 187 F.3d 1287, 1303 (11th Cir. 1999).
Wright v. Southland
Pursuant to Rule
12(f), courts may strike “insufficient defense[s]” from a pleading
upon a motion so requesting or sua sponte.
The
recurring
argument
throughout
Fed. R. Civ. P. 12(f).
Plaintiff’s
Motion
to
Strike is that Golden Ocala Defendants’ affirmative defenses are
bare-bones, conclusory statements that fail to provide Plaintiff
adequate notice of the grounds upon which each rests. In response,
Defendants contend that they are not required to plead facts in
support of the affirmative defenses and point to select case law
in which judges in this District have declined to apply the
heightened Twombly/Iqbal standard when determining the pleading
adequacy of affirmative defenses. 2
2
Defendants also argue that denial of the Motion to Strike is
warranted because Plaintiff failed to comply with its obligation
under Local Rule 3.01(g) to meet and confer prior to filing.
Although such failure can serve as grounds for a denial, the Court
finds good cause to address the merits of Plaintiff’s Motion.
- 3 -
1)
Pleading Standard for Affirmative Defenses
As this Court recently discussed in some detail, affirmative
defenses must comply with two separate pleading requirements.
First, the defense, as plead, must contain “some facts establishing
a nexus between the elements of an affirmative defense and the
allegations in the complaint,” so as to provide the plaintiff fair
notice of the grounds upon which the defense rests.
Daley v.
Scott, No: 2:15-cv-269-FtM-29DNF, 2016 WL 3517697, at *3 (M.D.
Fla. June 28, 2016). 3
Boilerplate pleading – that is, merely
listing the name of the affirmative defense without providing any
supporting facts – is insufficient to satisfy Rule 8(c), because
it does not provide notice sufficient to allow the plaintiff to
rebut or properly litigate the defense. 4
Preferred
Research,
Inc.,
885
F.2d
Id. (citing Grant v.
795,
797
(11th
Cir.
1989); Hassan v. U.S. Postal Serv., 842 F.2d 260, 263 (11th Cir.
1988)).
Requiring defendants to allege some facts linking the
defense to the plaintiff’s claims “streamlines the pleading stage,
helps the parties craft more targeted discovery requests, and
reduces litigation costs.”
3
Id. (citations omitted).
Daley was decided after the parties briefed the Motion to Strike.
4
This pleading requirement does not “unfairly subject defendants
to a significant risk of waiving viable defenses for which they do
not yet have supporting facts,” since courts routinely grant filing
extensions and freely afford leave to amend pleadings.
Daley,
2016 WL 3517697, at *3.
Often, it is even deemed sufficient
“notice" to raise the affirmative defense in a dispositive motion
or in the pretrial statement or order. Id.
- 4 -
Second, a defendant must avoid pleading shotgun affirmative
defenses,
viz.,
“affirmative
defenses
[that]
address[]
the
complaint as a whole, as if each count was like every other count.”
Byrne v. Nezhat, 261 F.3d 1075, 1129 (11th Cir. 2001), abrogated
on other grounds as recognized by, Nurse v. Sheraton Atlanta Hotel,
618 F. App'x 987, 990 (11th Cir. 2015); see also Paylor v. Hartford
Fire Ins. Co., 748 F.3d 1117, 1127 (11th Cir. 2014).
Rather, each
defense must address a specific count or counts in the complaint
or clearly indicate that (and aver how) the defense applies to all
claims.
See Byrne, 261 F.3d at 1129; see also Lee v. Habashy, No.
6:09–cv–671–Orl–28GJK, 2009 WL 3490858, at *4 (M.D. Fla. Oct. 27,
2009).
shotgun
District courts have a sua sponte obligation to identify
affirmative
replead.
defenses
and
strike
them,
with
leave
to
See Paylor, 748 F.3d at 1127; Morrison v. Executive
Aircraft Refinishing, Inc., 434 F. Supp. 2d 1314, 1318 (S.D. Fla.
2005).
With these two pleading requirements in mind, the Court
turns to the twenty-three challenged affirmative defenses.
2)
Affirmative Defenses One, Three, Five, and Twenty-Four
Golden Ocala Defendants’ first, third, fifth, and twentyforth affirmative defenses allege, respectively: that Plaintiff
has failed to state viable causes of action; that Plaintiff’s
copyright
registration
is
invalid
and/or
does
not
contain
copyrightable materials; that Counts I (copyright infringement)
and II (breach of contract) are barred because Plaintiff has not
- 5 -
suffered damages; and that the works which allegedly infringe
Plaintiff’s
copyright
copyrighted material.
“are
not
substantially
similar”
to
the
Plaintiff argues that none of these are
proper “affirmative” defenses.
The Court agrees.
Possessing a valid copyright registration for material that
is copyrightable is part of the prima facie case for copyright
infringement.
Thornton v. J Jargon Co., 580 F. Supp. 2d 1261,
1287 (M.D. Fla. 2008); Home Design Servs., Inc. v. Hibiscus Homes
of Fla., Inc., No. 6:03-CV-1860-ORL-19KRS, 2005 WL 3445522, at *6
(M.D. Fla. Dec. 14, 2005).
So too must the allegedly-infringing
work be “substantially similar” to the copyrighted work to be able
to state a claim for infringement.
Bateman v. Mnemonics, Inc., 79
F.3d 1532, 1542 (11th Cir. 1996); see also Liberty Am. Ins. Grp.,
Inc. v. WestPoint Underwriters, L.L.C., 199 F. Supp. 2d 1271, 1289
(M.D. Fla. 2001).
Accordingly, insofar as each of these four
“affirmative defenses” either alleges that Plaintiff has failed to
state a claim or “points out a defect in Plaintiff’s prima facie
case,” all are “general” defenses, rather than proper affirmative
defenses.
In re Rawson Food Serv., Inc., 846 F.2d 1343, 1349 &
n.9 (11th Cir. 1988).
The Court thus grants Plaintiff’s request
to strike these defenses.
3)
See Daley, 2016 WL 3517697, at *4.
Affirmative Defense Two – Fair Use
Golden Ocala Defendants assert that, to the extent they used
Plaintiff’s copyrighted material, it was a “fair use” under 17
- 6 -
U.S.C. § 107.
“Under certain circumstances, the doctrine of fair
use allows the limited use of copyrighted materials in a reasonable
ma[nn]er without the consent of the copyright holder,” however, a
“[f]air use analysis ‘must always be tailored to the individual
case.’”
Tingley Sys., Inc. v. HealthLink, Inc., 509 F. Supp. 2d
1209, 1220 (M.D. Fla. 2007) (quoting Harper & Row Publishers, Inc.
v. Nation Enters., 471 U.S. 539, 552 (1985)).
This analysis
requires the court to consider, at a minimum, the four factors set
forth
in
mention.
Section
107,
none
of
which
Golden
Ocala
Defendants
This bare-bones, conclusory pleading of “fair use” does
not suffice under Rule 8(c), because it leaves unclear the grounds
upon which the defense rests.
See Luxottica Grp. S.P.A. v. Cash
Am. E., Inc., No. 6:16-cv-728-Orl-31DAB, --- F. Supp. 3d ---, 2016
WL 4157211, at *4 (M.D. Fla. Aug. 2, 2016).
The Court strikes
this affirmative defense with leave to replead.
4)
Affirmative Defense Four – Consent and Acquiescence
Golden Ocala Defendants’ fourth affirmative defense contends
that Plaintiff consented or acquiesced to Defendants’ use of
Plaintiff’s copyrighted materials.
Consent and acquiescence are
distinct affirmative defenses to an infringement claim.
Consent
requires “an intent by the copyright proprietor to surrender rights
in his work” and acquiescence requires an active representation
that the proprietor “would not assert a right or claim.”
Malibu
Media, LLC v. Zumbo, No. 2:13-CV-729-JES-DNF, 2014 WL 2742830, at
- 7 -
*2-3 (M.D. Fla. June 17, 2014) (quotation omitted).
Not only is
this defense pled in improper shotgun fashion indiscriminately
against “the relief requested in the Complaint,” Golden Ocala
Defendants
have
alleged
acquiescence theories.
no
facts
supporting
and
The Court strikes affirmative defense four
with leave to replead as two distinct defenses.
5)
consent
Id. at *3.
Affirmative Defense Six - Authority,
Necessity, Justification, and Privilege
Legal
Right,
Affirmative defense six asserts that Plaintiff’s claims are
barred because Golden Ocala Defendants “had the authority, legal
right, necessity, justification and/or were privileged to act as
they did.”
This one sentence asserts five distinct potential
affirmative
defenses,
stricken.
yet
no
supporting
facts,
and
will
be
To the extent Golden Ocala Defendants wish to replead
some or all of these theories, they should do so as separate
affirmative defenses and allege supporting facts for each.
6)
Affirmative Defenses Eight, Nine,
Assent, Breach, Statute of Frauds
and
Ten
–
Mutual
These three affirmative defenses raise theories of lack of
mutual assent, no breach, and statute of frauds, and are directed
to Count II – Plaintiff’s breach of contract claim.
Plaintiff
argues that because Count II is asserted only against the Stock
Defendants, not against Golden Ocala Defendants, these defenses
should
be
stricken
as
immaterial
- 8 -
or
impertinent.
The
Court
agrees. 5
See Baltzell v. Arnold, No. 3:14-CV-2831-L, 2015 WL
356901, at *4 (N.D. Tex. Jan. 27, 2015) (finding no “legal basis
that allows [a defendant] to assert an affirmative defense to a
claim not asserted against it”).
7)
Affirmative Defense Thirteen – No Attorneys’ Fees
Defendants’
thirteenth
affirmative
defense
asserts
that
Plaintiff cannot recover attorneys’ fees for potential violations
of the Copyright Act, since Plaintiff did not “timely register”
its architectural plans with the Copyright Office.
Section 412 of
the Copyright Act precludes an award of attorneys’ fees when the
alleged infringement of “an unpublished work commenced before the
effective date of [the copyright] registration.”
412(1).
17 U.S.C. §
Where infringement of a “published” work is alleged, 6
attorneys’
fees
are
not
recoverable
when
the
copyright
was
registered more than three months after publication of the work
and the infringement occurred prior to registration. Id. § 412(2).
Based on the allegations in the Complaint, the Court presumes
that the copyrighted works at issue (architectural plans) are
“unpublished.”
Accordingly, if Golden Ocala Defendants’ alleged
5
Affirmative defenses eight and nine are stricken for the
additional reason that they merely allege defects in Plaintiff’s
prima facie case for breach of contract.
6
As relevant here, the Copyright Act defines “publication” as “the
distribution [or ‘offering to distribute’] of copies . . . of a
work to the public by sale or other transfer of ownership, or by
rental, lease, or lending.” 17 U.S.C. § 101.
- 9 -
infringement of Plaintiff’s copyright began prior to the effective
date of Plaintiff’s registration of that copyright, Plaintiff will
likely not be able to recover attorneys’ fees.
Plaintiff
argues
that
this
affirmative
defense
should
nevertheless be stricken as “immaterial,” since the Copyright Act
also states that a district court has discretion to “allow the
full recovery of costs.”
17 U.S.C. § 505.
However, Section 505
also states: “Except as otherwise provided by this title, the Court
may also award a reasonable attorney’s fee to the prevailing party
as part of costs.”
Since “this title” (Section 412) “otherwise
provides” that attorneys’ fees are not appropriate in certain
circumstances - which may be implicated here - the Court disagrees
that the affirmative defense is immaterial.
As pled, the defense
also provides Plaintiff adequate notice since, according to the
allegations in paragraphs 18 and 22 of the Complaint, Plaintiff
discovered
the
infringement
before
applying
registration for its unpublished works.
for
a
copyright
See Malem Med., Ltd. v.
Theos Med. Sys., Inc., No. C-13-5236 EMC, 2014 WL 3568885, at *3
(N.D. Cal. July 18, 2014).
The Court denies the motion to strike
affirmative defense thirteen.
8)
Affirmative Defense Sixteen – Innocent Infringement
Affirmative defense sixteen claims that, if Golden Ocala
Defendants
did
“innocently.”
infringe
Plaintiff’s
copyright,
they
did
so
But “[i]nnocent infringement of a copyright is not
- 10 -
an affirmative defense to an infringement action.”
Lizalde v.
Advanced Planning Servs., Inc., 875 F. Supp. 2d 1150, 1165 n.11
(S.D. Cal. 2012) (citing Nimmer on Copyright § 13.08 (2012)); see
also Playboy Enters., Inc. v. Frena, 839 F. Supp. 1552, 1559 (M.D.
Fla. 1993) (“Intent or knowledge is not an element of [copyright]
infringement, and thus even an innocent infringer is liable for
infringement . . . .” (citing D.C. Comics Inc. v. Mini Gift Shop,
912 F.2d 29 (2d Cir. 1990)).
On the other hand, “innocent infringement” may be used to
limit statutory damages for infringement.
17 U.S.C. § 504(c)(2).
It appears, however, that “[t]he cases are divided on the question”
of whether a statutory limitation on damages is properly raised as
an affirmative defense. 7
Carter v. United States, 333 F.3d 791,
796 (7th Cir. 2003); see also Taylor v. United States, 485 U.S.
992, 993 (1988) (White, J., dissenting) (noting the “conflict among
the Courts of Appeals” as to whether a “statutory limitation on
damages . . . is an affirmative defense . . . under the Federal
Rules”).
In any case, although Plaintiff does seek statutory
damages for infringement as an alternative form of relief, (Doc.
#1, ¶ 41(C)), the Court agrees that the boilerplate pleading of
7
Compare Simon v. United States, 891 F.2d 1154, 1157 (5th Cir.
1990) (state statute limiting malpractice damages is Rule 8(c)
affirmative defense to be set forth in defendant's responsive
pleading), with Bradford Co. v. Jefferson Smurfit Corp., No. 20001511, 2001 WL 35738792, at *10 (Fed. Cir. Oct. 31, 2001) (statutory
limitation on damages for patent infringement “is not an
affirmative defense for purposes of . . . Fed. R. Civ. P. 8(c).”).
- 11 -
“innocent
infringement”
is
insufficient.
Affirmative
Defense
Sixteen is stricken with leave to replead.
9)
Affirmative Defense Seventeen – De Minimis
Golden Ocala Defendants also argue that any infringement was
“de minimis.”
A de minimis defense consists of qualitative and
quantitative components.
Malibu Media, LLC v. Fitzpatrick, No.
1:12-CV-22767, 2013 WL 5674711, at *4 (S.D. Fla. Oct. 17, 2013);
see also Peter Letterese and Assocs. v. World Inst. of Scientology
Enters., 533 F.3d 1287, 1306—07 (11th Cir. 2008).
Golden Ocala
Defendants have addressed neither, so this affirmative defense
will be stricken with leave to replead.
10)
Affirmative Defense Eighteen – Copyright Notice
The
eighteenth
affirmative
defense
contends
(in
improper
shotgun fashion) that Plaintiff’s “claims for relief are barred”
because
Plaintiff
copyrighted work.
did
not
“properly
place
notice”
of
the
The Court presumes that Golden Ocala Defendants
mean that Plaintiff’s unpublished architectural plans did not
contain the three “notice” elements set forth in 17 U.S.C. §
401(b): (1) the © symbol or the word “Copyright”; (2) the copyright
year; and (3) the copyright owner’s name.
Even if true, Section
401’s notice policy applies only to “published” works.
Donald
Frederick Evans & Assocs., Inc. v. Cont'l Homes, Inc., 785 F.2d
897, 908 (11th Cir. 1986) (citing 17 U.S.C. § 401(a)).
Moreover,
“since the Berne Convention Implementation Act of 1988 . . . notice
- 12 -
is no longer a prerequisite to copyright protection,” Norma Ribbon
& Trimming, Inc. v. Little, 51 F.3d 45, 48 (5th Cir. 1995), and
thus, the failure to notice a copyright is not an affirmative
defense. 8
Mike Rosen & Assocs., P.C. v. Omega Builders, Ltd., 940
F. Supp. 115, 119 (E.D. Pa. 1996).
Accordingly, the Court strikes
affirmative defense eighteen.
11)
Affirmative Defenses
Copyright Misuse
Nineteen
and
Twenty-Three
–
For their nineteenth affirmative defense, Defendants contend
that Plaintiff’s claims are barred under the copyright misuse
doctrine. “Copyright misuse, a doctrine derived from the equitable
defenses of patent misuse and unclean hands, forbids a copyright
holder from using a copyright ‘to secure an exclusive right or
limited monopoly not granted by the Copyright Office and which it
is contrary to public policy to grant.’”
Hibiscus Homes, 2005 WL
3445522, at *10 (quoting Alcatel USA, Inc. v. DGI Techs., Inc.,
166 F.3d 772, 792 (5th Cir. 1999)).
“The purpose of the defense
is to prevent a litigant from securing an exclusive right which
exceeds what has already been granted via the copyright,” and the
8
Rather than operate as a forfeiture of copyright, the failure to
properly notice a copyright now serves only to buttress an
infringer’s claim that any infringement was “innocent.” See 17
U.S.C. § 401(d) (“If a notice of copyright in the form and position
specified by this section appears on the published copy or copies
to which a defendant in a copyright infringement suit had access,
then no weight shall be given to such a defendant's interposition
of a defense based on innocent infringement in mitigation of actual
or statutory damages . . . .”).
- 13 -
doctrine thus “bar[s] recovery for a copyright owner who attempts
to extend its limited copyright rights to property not covered by
the copyright.”
Id. (citations omitted).
Plaintiff challenges the viability of copyright misuse as an
affirmative defense.
Although the Eleventh Circuit “has not
recognized . . . misuse as a defense for infringement suits,”
neither has it “rejected” misuse as a valid defense. Telecom Tech.
Servs. Inc. v. Rolm Co., 388 F.3d 820, 831 (11th Cir. 2004).
undersigned
previously
refused
to
dismiss
a
copyright
The
misuse
defense where the basis asserted for dismissal was the defense’s
potential non-viability and will also decline to do so here.
Fine's Gallery, LLC v. From Europe to You, Inc., No. 2:11-CV-220FTM-29, 2011 WL 5583334, at *2 (M.D. Fla. Nov. 16, 2011).
The question then, is whether Golden Ocala Defendants have
adequately
pled
facts
supporting
the
defense.
Specifically,
Defendants allege that “Plaintiff’s claims are barred by the
doctrine of copyright misuse in that, among other things, Plaintiff
has attempted to enforce copyrights in the alleged copyright
work(s) in a suit by improperly claiming original creation in nonoriginal common designs, layouts, dimensions, features and other
non-original elements.”
(Doc. #54 p. 13 (emphasis added).)
These
allegations – though terse - appear consistent with the contours
of the copyright misuse doctrine and are sufficient to provide
Plaintiff notice of the grounds upon which the defense rests.
- 14 -
The
Court
thus
Nineteen.
denies
the
request
to
strike
Affirmative
Defense
The Court will, however, strike Affirmative Defense
Twenty-Three, which alleges that “[a]ll or some of Plaintiff’s
claims are barred by the doctrine of copyright misuse,” because it
is both redundant and insufficiently pled.
See Total Containment
Sols., Inc. v. Glacier Energy Servs., Inc., No. 2:15-CV-63-FTM38CM, 2015 WL 5057146, at *2 (M.D. Fla. Aug. 26, 2015).
12)
Affirmative Defense Twenty-One – Equitable Estoppel
Defendants’ twenty-first affirmative defense alleges that
Plaintiff’s
estoppel.
claims
are
barred
by
the
doctrine
of
equitable
Equitable estoppel is appropriate “in copyright cases
when the copyright owner is aware of the infringing conduct, yet
the owner acts in such a[] way as to induce the infringer to
reasonably rely upon such actions, causing the infringer to suffer
a legal detriment.”
Hibiscus Homes, 2005 WL 3445522, at *9
(citations omitted).
As pled, however, the affirmative defense is
wholly devoid of facts indicating why estoppel applies in this
case.
The Court strikes the defense with leave to replead.
13)
Affirmative Defense Twenty-Two – Unclean Hands
This affirmative defense contends that the equitable relief
Plaintiff seeks is barred under the doctrine of unclean hands.
The Eleventh Circuit has observed that to successfully invoke the
unclean hands doctrine requires a defendant to establish two
things:
“First,
the
defendant
- 15 -
must
demonstrate
that
the
plaintiff's wrongdoing is directly related to the claim against
which it is asserted.
Second, even if directly related, the
plaintiff's wrongdoing does not bar relief unless the defendant
can show that it was personally injured by her conduct.”
Calloway
v. Partners Nat’l Health Plans, 986 F.2d 446, 450–51 (11th Cir.
1993) (citations omitted).
Golden Ocala Defendants have not
alleged any facts showing they actually believe the unclean hands
defense applies in this case.
with leave to replead.
The defense will thus be stricken
Groves v. Patricia J. Dury, M.D., P.A.,
No. 2:06-CV-338-FTM-99SPC, 2006 WL 2556944, at *2 (M.D. Fla. Sept.
1, 2006) (striking unclean hands defense containing no facts).
14)
Affirmative Defense Twenty-Five - Apportionment
Affirmative
defense
twenty-five
states
that
“Plaintiff’s
claims are barred and/or mitigated by the doctrine of copyright
apportionment.”
The Court presumes that Golden Ocala Defendants
mean that any damages to which Plaintiff is entitled should be
apportioned.
“[A]pportionment of damages is appropriate in a
copyright action[] . . . when ‘the evidence is sufficient to
provide a fair basis of division so as to give the copyright
proprietor all the profits that can be deemed to have resulted
from the use of what belonged to him.’”
Dawes-Ordonez v. Forman,
No. 09-60335-CIV-COHN, 2009 WL 3273898, at *2 (S.D. Fla. Oct. 9,
2009) (quoting Roulo v. Russ Berrie & Co., Inc., 886 F.2d 931, 941
(7th Cir. 1989)) (additional citations omitted); see also 17 U.S.C.
- 16 -
§ 504(b) (“The copyright owner is entitled to recover the actual
damages suffered by him or her as a result of the infringement,
and any profits of the infringer that are attributable to the
infringement and are not taken into account in computing the actual
damages.” (emphases added)); Aerospace Servs. Int'l v. LPA Grp.,
Inc., 57 F.3d 1002, 1004 (11th Cir. 1995) (affirming district
court’s award of damages based on “the amount of [defendant’s]
profits which were attributable to the infringement”).
Though courts disagree on whether statutory limitations on
damages are proper Rule 8(c) defenses, absent Eleventh Circuit
authority on the issue, the Court finds it premature to strike
such
a
defense.
See
Dawes-Ordonez,
2009
WL
3273898,
at
*2
(upholding damages apportionment affirmative defense in copyright
infringement action).
Further, as pled, this defense is adequate
because it provides Plaintiff notice that Golden Ocala Defendants
will seek to reduce Plaintiff’s recoverable damages on the ground
that
at
least
a
portion
of
Defendants’
attributable to the infringement.”
15)
“were
not
17 U.S.C. § 504(b).
Affirmative Defense Twenty-Six – False Information/Fraud
Defendants’
Plaintiff
profits
twenty-sixth
obtained
its
information and/or fraud.”
affirmative
copyright
defense
registration
claims
that
“by
false
To the extent Defendants are alleging
that Plaintiff committed fraud on the Copyright Office, the Court
notes the conflicting authorities on whether this is a proper
- 17 -
affirmative defense, rather than a “general” defense based on the
inability to establish a prima facie case of infringement. 9
any event, as pled, the defense is factually unsupported.
In
The
Court will strike this defense with leave to replead. 10
16)
Affirmative
Limitations
Defense
Twenty-Eight
–
Statute
of
Golden Ocala Defendants assert that Plaintiff’s claims are
barred under the statute of limitations, but they reference neither
the applicable statute(s) of limitations nor the date(s) upon which
the statute(s) began to run.
boilerplate pleading.
This is the epitome of insufficient
Schmidt v. Synergentic Commc'ns, Inc., No.
2:14-CV-539-FTM-29CM, 2015 WL 997828, at *2 (M.D. Fla. Mar. 5,
2015).
Affirmative defense twenty-eight will be stricken with
leave to replead.
9
Compare Thornton, 580 F. Supp. 2d at 1271 n.1 (treating
defendant’s “fraud on the Copyright Office” theory as challenge to
plaintiff’s prima facie case, rather than as affirmative defense),
and 5 Patry on Copyright § 17:126 (“[F]raud on the Copyright Office
is not an affirmative defense: while a certificate of registration
[affords] the holder prima facie validity, this is not the same as
having made out a prima facie case of infringement.”), with Mon
Cheri Bridals, Inc. v. Wen Wu, 383 F. App'x 228, 232 (3d Cir. 2010)
(“Fraud on the Copyright Office is an affirmative defense to claims
of copyright infringement.”), and Lennon v. Seaman, 84 F. Supp. 2d
522, 525 (S.D.N.Y. 2000) (“An allegation of fraud on the Copyright
Office is typically brought in an infringement action as an
affirmative defense to the enforcement of a registered copyright
certificate.” (collecting cases)).
10
When repleading this defense, Golden Ocala Defendants should
consider whether compliance with Federal Rule 9(b)’s heightened
pleading standards is necessary.
- 18 -
17)
Affirmative Defense
Necessary Parties
Affirmative
defense
Twenty-Nine
twenty-nine
–
Failure
contends,
in
to
Join
bare-bones
fashion, that Plaintiff failed to join all necessary parties to
its lawsuit. Because Defendants have failed to provide any details
about who else is needed “for a just adjudication of these issues”
– and why - the defense will be stricken with leave to replead.
18)
Affirmative Defense Thirty – Merger and Scenes a Faire
Golden Ocala Defendants’ final affirmative defense seeks to
bar Plaintiff’s infringement claim pursuant to the merger and
scenes a faire doctrines.
“The merger doctrine provides that
expression is not protected in those instances where there is only
one or so few ways of expressing an idea that protection of the
expression
itself.”
would
effectively
accord
protection
to
the
idea
BUC Int'l Corp. v. Int'l Yacht Council Ltd., 489 F.3d
1129, 1142 (11th Cir. 2007) (quotation omitted).
Under the scenes
a faire doctrine, “incidents, characters, or settings that are
indispensable or standard in the treatment of a given topic are
not copyrightable.”
Corwin v. Walt Disney Co., 475 F.3d 1239,
1251 (11th Cir. 2007) (alterations and citations omitted).
The Court is not certain whether merger and scenes a faire
are properly raised as affirmative defenses here, since courts
have also applied these doctrines to “filter[] out the unoriginal
elements contained in a copyrightable work” when evaluating a
plaintiff’s prima facie case of infringement.
- 19 -
Liberty Am. Ins.
Grp., 199 F. Supp. 2d at 1290 (rejecting plaintiff’s argument that
“[b]ecause the merger and scenes a faire doctrines are defenses to
a claim of infringement, . . . the Court should have placed the
burden of proving the defenses on [d]efendant . . . , not on
[p]laintiff to disprove the defenses”); see also Bateman, 79 F.3d
at 1545 (discussing interplay between these doctrines and element
filtration).
Even assuming these are proper affirmative defenses,
the Answer provides no indication of how they are implicated here.
Affirmative Defense Thirty is stricken with leave to replead.
B.
Plaintiff’s Motion to Dismiss Defendants’ Counterclaims
Plaintiff also moves to dismiss counts I-IV, VI, and VII in
the Counterclaim Complaint.
Counts I-IV request declarations that
Golden Ocala Defendants did not infringe Plaintiff’s copyright;
that Plaintiff’s
impermissible,
copyright
false
or
registration
fraudulent
“is
claims,
invalid,
contains
statements
and/or
information and is unenforceable”; that Plaintiff does not own the
works allegedly protected by copyright; and that “Plaintiff is not
the
proper
works. 11
author,
creator,
or
claimant”
of
the
copyrighted
In Count VI, Defendants ask the Court to declare “that
the asserted copyright registration in suit should be cancelled by
the U.S. Copyright Office.”
Count VII seeks a declaration that
Defendants are entitled to recover attorneys’ fees and costs.
11
Count V requests a declaration that Golden Ocala Defendants may
“use and promote” their architectural plans and conduct their
business operations “free and clear” of Plaintiff’s claims.
- 20 -
1)
Pleading Standard for Counterclaims
“Counterclaims
are
applied to complaints.”
held
to
the
same
pleading
standards
Hill v. Nagpal, No. 12-21495-CIV, 2013 WL
246746, at *1 (S.D. Fla. Jan. 22, 2013) (citing Manuel v. Convergys
Corp., 430 F.3d 1132, 1141 (11th Cir. 2005)).
A pleading stating
a claim for relief must contain a “short and plain statement of
the claim showing that the pleader is entitled to relief.”
R. Civ. P. 8(a)(2).
Fed.
In evaluating a Rule 12(b)(6) motion seeking
to dismiss a counterclaim for failing to comply with Rule 8(a),
the Court must accept as true all factual allegations in the
counterclaim
complaint
and
“construe
them
favorable to the [counterclaim-]plaintiff.”
in
the
light
most
Baloco ex rel. Tapia
v. Drummond Co., 640 F.3d 1338, 1345 (11th Cir. 2011).
However,
mere “[l]egal conclusions without adequate factual support are
entitled to no assumption of truth.”
Mamani v. Berzain, 654 F.3d
1148, 1153 (11th Cir. 2011) (citations omitted).
By extension, “[a] motion to dismiss a counterclaim pursuant
to Federal Rule of Civil Procedure 12(b)(6) is evaluated in the
same manner as a motion to dismiss a complaint.”
Sticky Holsters,
Inc. v. Ace Case Mfg., LLC, No. 2:15-CV-648-FTM-29CM, 2016 WL
1436602, at *6 (M.D. Fla. Apr. 12, 2016) (quoting Geter v. Galardi
S. Enters., Inc., 43 F. Supp. 3d 1322, 1325 (S.D. Fla. 2014)).
Thus, to avoid dismissal under Rule 12(b)(6), each counterclaim
must contain sufficient factual allegations to “raise a right to
- 21 -
relief above the speculative level.”
550 U.S. 544, 555 (2007).
Bell Atl. Corp. v. Twombly,
To do so requires “enough facts to state
a claim to relief that is plausible on its face.”
This
plausibility
pleading
obligation
Id. at 570.
demands
“more
than
labels and conclusions, and a formulaic recitation of the elements
of a cause of action will not do.”
Id. at 555 (citation omitted);
see also Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (“Threadbare
recitals of the elements of a cause of action, supported by mere
conclusory statements, do not suffice.”); Chaparro v. Carnival
Corp., 693 F.3d 1333, 1337 (11th Cir. 2012) (“Factual allegations
that are merely consistent with a defendant’s liability fall short
of being facially plausible.” (citation omitted)).
Instead, the
counterclaim complaint must contain enough factual allegations as
to the material elements of each claim to raise the plausible
inference that those elements are satisfied, or, in layman’s terms,
that the counterclaim-plaintiff has suffered a redressable harm
for which the counterclaim-defendant may be liable.
2)
The “Redundant” Counterclaims (Counts I-IV)
Plaintiff argues that Counts I-IV merely reiterate certain
affirmative defenses and should be dismissed as redundant. 12
In
response, Defendants argue that mere redundancy is not a sufficient
12
Plaintiff’s Motion cites several cases, some from this district,
in support of its claim that “when the declaratory relief sought
is redundant in light of the claims raised in the complaint and/or
Affirmative
Defenses,
federal
courts
favor
dismissal
of
declaratory judgment counterclaims.” (Doc. #55, pp. 3-4.)
- 22 -
basis for dismissal - particularly since Plaintiff does not argue
that allowing the counterclaims to survive is prejudicial - and
further, that their counterclaims serve the “useful purpose” of
allowing
Defendants
to
obtain
declarations
on
Plaintiff’s
copyright rights (or lack thereof), should Plaintiff later choose
not to proceed with its claims. 13
The
Eleventh
Circuit
has
not
addressed
whether
duplication/redundancy is a sufficient ground on which to dismiss
a non-prejudicial counterclaim.
The undersigned is inclined to
agree with those courts declining to strike counterclaims on
redundancy grounds, absent a showing of prejudice by the party
seeking dismissal.
E.g., Regions Bank v. Commonwealth Land Title
Ins. Co., No. 11-23257-CIV, 2012 WL 5410609, at *4-5 (S.D. Fla.
Nov.
6,
2012).
Notwithstanding,
Defendants’
Counterclaim
Complaint falls well short of what is required under Rule 8 and
must be dismissed.
Each of the seven counts contains only two
paragraphs, the first of which “realleges and reavers all factual
allegations set forth” in the ten-paragraph “Facts Common to All
Counterclaim
Counts”
declaratory
relief
paragraphs
contain
section;
sought.
the
In
allegations
second
turn,
states
the
regarding
first
the
specific
five
Defendants’
“fact”
business
success and reputation that have seemingly nothing to do with the
13
Like Plaintiff, Golden Ocala Defendants cite a variety of case
law to support their position that the counterclaims, even if
“duplicative,” should not be dismissed. (Doc. #60, pp. 3-5.)
- 23 -
Counterclaims;
the
latter
five
contain
conclusory
assertions
either unsupported by facts or dependent upon the allegations in
Plaintiff’s Complaint as a whole.
Insofar
as
Defendants
base
their
claims
for
declaratory
relief on the allegations contained in Plaintiff’s Complaint – as
opposed to pleading facts or at least specifically indicating which
allegations in the Complaint apply to each counterclaim count the Counterclaim Complaint is a shotgun pleading that must be
dismissed, with leave to amend. 14
Sheriff's
Office,
Anticipating,
792
however,
F.3d
that
See Weiland v. Palm Beach Cty.
1313,
1321
Defendants
(11th
will
Cir.
2015).
an
amended
file
pleading, the Court finds it prudent to address the merits of
Plaintiff’s substantive dismissal arguments for Counts VI and VII.
3)
Judicial Authority to Cancel a Copyright Registration
Count VI of Golden Ocala Defendants’ Counterclaim Complaint
requests a declaration that Plaintiff’s copyright registration
“should be cancelled by the U.S. Copyright Office.”
Plaintiff
moves for dismissal of this cause of action on the ground that a
district
court
registration.
lacks
jurisdiction
to
cancel
a
copyright
If Plaintiff is correct, then Defendants have pled
no judicially “redressable injury,” and a declaration as to what
14
Because the relief ordered herein may alter the dates proposed
in the two pending Motions to Extend Trial Dates and Other
Deadlines (Docs. ##69, 72), those Motions are denied without
prejudice to refile.
- 24 -
the U.S. Copyright Office should do would likely “amount to an
advisory opinion prohibited by Article III’s case and controversy
requirement.”
Church v. City of Huntsville, 30 F.3d 1332, 1335
(11th Cir. 1994) (citing Americans United for Separation of Church
& State, 454 U.S. 464, 471–72 (1982)).
After
weighing
in
reviewing
on
the
the
case
law,
“cancellability”
the
of
Court
concludes
Plaintiff’s
that
copyright
registration would indeed amount to an improper advisory opinion.
Although “the Eleventh Circuit has not yet addressed the role of
courts in the cancellation of copyright registrations,” Li v.
Affordable Art Co., No. 1:12-CV-03523-RLV, 2014 WL 11862796, at *7
(N.D.
Ga.
Feb.
10,
2014),
several
courts
have
held
that
cancellation is an administrative process handled directly with
the Copyright Office, not an issue to be resolved judicially in
the first instance.
E.g., Brownstein v. Lindsay, 742 F.3d 55, 75
(3d Cir. 2014) (“Courts have no authority to cancel copyright
registrations because that authority resides exclusively with the
Copyright Office.”); App Dynamic ehf v. Vignisson, 87 F. Supp. 3d
322, 331 (D.D.C. 2015) (“The authority to invalidate or cancel
Defendant's copyright registration lies with the Copyright Office
itself.”); Li, 2014 WL 11862796, at *7 (“[F]ederal district courts
have
no
inherent
or
statutory
authority
to
cancel
copyright
registrations.”); cf. Syntek Semiconductor Co. v. Microchip Tech.
Inc., 307 F.3d 775, 782 (9th Cir. 2002) (referring issue of
- 25 -
copyright
registration
cancellation
to
Register
of
Copyrights
pursuant to “primary jurisdiction” doctrine).
Because this Court
does
that
not
have
the
authority
to
declare
a
copyright
registration should (or should not) be cancelled, Count VI is
dismissed with prejudice. 15
4)
Entitlement to Attorneys’ Fees as Stand-Alone Claim
Count VII seeks a declaration that Golden Ocala Defendants
are entitled to an award of attorneys’ fees, costs, and expenses.
Plaintiff contends that this counterclaim should be dismissed
because Defendants have not cited the authority under which they
are
demanding
attorneys’
fees,
and
because
entitlement
to
attorneys’ fees should not be pled as a separate cause of action.
Defendants’ Response does not address the challenge to Count VII.
Under
the
“American
Rule”
of
attorneys’
fees,
“[e]ach
litigant pays his own attorney's fees, win or lose, unless a
statute
or
contract
provides
otherwise.”
15
Hardt
v.
Reliance
Defendants argue that judicial authority to cancel a copyright
registration is found in Section 1324 of the Copyright Act, which
authorizes courts to cancel the registration “of a design under
this chapter.” 17 U.S.C. § 1324. “This chapter” – also known as
the “Vessel Hull Design Protection Act” – deals only with vessel
hulls and decks. 17 U.S.C. § 1301; Maverick Boat Co. v. Am. Marine
Holdings, Inc., No. 02-14102-CIV, 2004 WL 1093035, at *3, 16 (S.D.
Fla. Feb. 10, 2004), aff'd, 418 F.3d 1186 (11th Cir. 2005). That
Congress deemed it appropriate to carve out a judicial cancellation
power in one specific area undercuts Defendants’ contention that
courts have the general authority to cancel (or to declare that
the Copyright Office should cancel) copyright registrations.
Brownstein, 742 F.3d. at 76.
Indeed, “[Section] 1324 would be
superfluous if Congress intended for courts to already have the
general authority to cancel copyright registrations.” Id.
- 26 -
Standard
Life
omitted).
Ins.
Co.,
560
U.S.
242,
243
(2010)
(citation
Even where a statute or contract entitles a prevailing
party to recover attorneys’ fees, such fees should typically be
requested in a “prayer for relief” section of the complaint, not
pled as a stand-alone cause of action.
Carroll Co. v. Sherwin-
Williams Co., 848 F. Supp. 2d 557, 570 (D. Md. 2012); Soloski v.
Adams, 600 F. Supp. 2d 1276, 1372 (N.D. Ga. 2009); see also Davis
v. Passman, 442 U.S. 228, 239 (1979) (“[[W]hether a litigant has
a ‘cause of action’ is analytically distinct and prior to the
question of what relief, if any, a litigant may be entitled to
receive.”).
Count VII is dismissed with prejudice.
Accordingly, it is hereby
ORDERED:
1.
Plaintiff’s Motion to Strike Golden Ocala Defendants’
Affirmative Defenses is granted in part and denied in part.
The
Motion to Strike is denied as to affirmative defenses thirteen,
nineteen, and twenty-five.
The Motion to Strike is granted as to
affirmative defenses one, two, three, four, five, six, eight, nine,
ten, sixteen, seventeen, eighteen, twenty-one, twenty-two, twentythree, twenty-four, twenty-six, twenty-eight, twenty-nine, and
thirty.
Within twenty-ones days from the date of this Order,
Golden Ocala Defendants may replead affirmative defenses two,
four, six, sixteen, seventeen, twenty-one, twenty-two, twenty-six,
twenty-eight, twenty-nine, and thirty.
- 27 -
2.
Plaintiff’s Motion to Dismiss Golden Ocala Defendants’
Counterclaims is granted.
The Counterclaim Complaint is dismissed
in its entirety as a shotgun pleading without prejudice to refile,
except for Counts VI and VII, which are dismissed with prejudice.
3.
Plaintiff’s
and
Stock
Defendants’
Motions
to
Extend
Trial Dates and Other Deadlines (Docs. ##69, 72) are denied without
prejudice to refile.
DONE and ORDERED at Fort Myers, Florida, this 30th day of
August, 2016.
Copies:
Counsel of Record
- 28 -
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