Sream, Inc. v. MLF Tobacco Shop, LLC

Filing 18

Order on Plaintiffs Motion to Strike denying 14 Motion to Strike. Signed by Judge Robert N. Scola, Jr on 10/24/2017. (lan)

United States District Court
for the
Southern District of Florida
Sream, Inc., Plaintiff,

)
)
v.
) Civil Action No. 17–22518-Civ-Scola
)
MLF Tobacco Shop, LLC, Defendant. )
Order on Plaintiff’s Motion to Strike
The Plaintiff, Sream, Inc. (“Plaintiff”), brings this lawsuit against MLF
Tobacco Shop LLC (“Defendant”), asserting claims of trademark counterfeiting,
trademark infringement, and false designation of origin. This matter is before
the Court upon the Plaintiff’s Motion to Strike Defendant’s Answer and
Affirmative Defenses (ECF No. 14). For the reasons set forth in this Order, the
Court denies the motion.
1. Background
The Plaintiff has filed approximately 95 actions in the Southern District
of Florida since September 2016, all of which allege similar claims of
counterfeiting, trademark infringement, and false designation of origin. On July
6, 2017, the Plaintiff filed its complaint against the Defendant. (ECF No. 1.) On
August 22, 2017, the Defendant filed its Answer and Affirmative Defenses
asserting nine affirmative defenses. (ECF No. 9.) Pursuant to Federal Rule of
Civil Procedure 12(f), the Plaintiff now moves to strike affirmative defenses six,
seven, and nine, claiming that each is actually a mere denial of the complaint’s
allegations and therefore not properly pled as an affirmative defense. (Mot. at 34, ECF No. 14.)
2. Legal Standard
Federal Rule of Civil Procedure 12(f) provides that a court may “strike
from a pleading an insufficient defense or any redundant, immaterial,
impertinent, or scandalous matter.” A court has broad discretion in ruling on a
motion to strike. Badilo v. City of Deerfield Beach, No. 13-60057-CIV, 2013 WL
3762338, at *1 (S.D. Fla. July 16, 2013) (Rosenbaum, J.). “Striking allegations
from a pleading, however, ‘is a drastic remedy to be resorted to only when
required for the purposes of justice’ and only when the stricken allegations
have ‘no possible relation to the controversy.’” Id. (quoting Augustus v. Bd. of
Pub. Instruction of Escambia Cty., Fla., 306 F.2d 862, 868 (5th Cir. 1962)). In
addition, “pleadings are only allegations, and allegations are not evidence of the
truth of what is alleged.” Wright v. Farouk Sys., Inc., 701 F.3d 907, 911 n. 8

(11th Cir. 2012). Nevertheless, affirmative defenses will be stricken if
insufficient as a matter of law. See Morrison v. Exec. Aircraft Refinishing, Inc.,
434 F. Supp. 2d 1314, 1319 (S.D. Fla. 2005) (Ryskamp, J.).
3. Analysis
An affirmative defense is a defense “that admits to the complaint, but
avoids liability, wholly or partly, by new allegations of excuse, justification, or
other negating matters.” Adams v. Jumpstart Wireless Corp., 294 F.R.D. 668,
671 (S.D. Fla. 2013) (Cohn, J.). A defense that addresses a defect in the
plaintiff’s claim is not, however, an affirmative defense. Id. An affirmative
defense is insufficient as a matter of law where: “‘(1) in the face of the
pleadings, it is patently frivolous, or (2) it is clearly invalid as a matter of law.’”
Home Mgmt. Solutions, Inc. v. Prescient, Inc., No. 07-20608-CIV, 2007 WL
2412834, at *2 (S.D. Fla. Aug. 21, 2007) (Torres, J.) (quoting Microsoft Corp. v.
Jesse’s Computers & Repair Inc., 211 F.R.D. 681, 683 (M.D. Fla. 2002)).
A. The Standing Defenses
The Defendant’s sixth affirmative defense asserts that the Plaintiff lacks
standing to the extent that it had not acquired rights in writing to its mark
prior to the alleged infringement. (Answer at 6, ECF No. 9.) Similarly, the
Defendant’s seventh affirmative defense asserts that the Plaintiff’s claim should
be barred because the Plaintiff, lacking an exclusive license of the mark at
issue, has no standing to pursue any relief. (Id.)
The Plaintiff moves to strike the Defendant’s sixth and seventh
affirmative defenses because the defenses are mere denials of the Plaintiff’s
prima facie case, and therefore not proper affirmative defenses. (Mot. at 3-4,
ECF No. 14.) The Plaintiff argues in the alternative that the Defendant’s sixth
and seventh affirmative defenses should be treated as denials. (Id.) The
Defendant responds that many courts have allowed standing to be pled as an
affirmative defense. (Resp. at 1-2, ECF No. 15.)
Although many courts differ in their position as to whether standing
qualifies as an affirmative defense, the Eleventh Circuit has held that “[t]he
party invoking federal jurisdiction bears the burden of proving standing.”
Bischoff v. Osceola Cty., 222 F.3d 874, 878 (11th Cir. 2000) (citing Lujan v.
Defenders of Wildlife, 504 U.S. 555, 561 (1992)). The Eleventh Circuit has also
noted that “it is well established that the party asserting an affirmative defense
usually has the burden of proving it.” In re Rawson Food Serv., Inc., 846 F.2d
1343, 1349 (11th Cir. 1988) (internal quotation omitted). This means that,
under Eleventh Circuit jurisprudence, the Defendant’s standing defenses do
not qualify as affirmative defenses.
However, the Defendant’s standing defense “whether regarded as a
specific denial or an affirmative defense . . . still ‘serve[s] the laudable purpose

of placing [p]laintiff and the [c]ourt on notice of certain issues [d]efendant
intends to assert against [p]laintiff’s claim.’” Muschong v. Millennium Physician
Grp., LLC, No. 2:12-CV-705, 2014 WL 3341142, at *3 (M.D. Fla. July 8, 2014)
(quoting Inlet Harbor Receivers, Inc. v. Fid Nat’l Prop. & Cas. Inc. Co., No. 6:08CV-346, 2008 WL 3200691, at *1 (M.D. Fla. Aug. 6, 2008)). “An affirmative
defense is sufficient when it raises substantive factual or legal questions and
there is no showing of prejudice to the movant.” Guididas v. Cmty. Nat. Bank
Corp., No. 8:11-CV-2545, 2013 WL 230243, at *2 (M.D. Fla. Jan. 22, 2013).
The Defendant’s sixth and seventh affirmative defenses “provide
sufficient notice to [P]laintiff of the grounds on which” the Defendant seeks to
defend the lawsuit. Boldstar Technical, LLC v. Home Depot, Inc., 517 F. Supp.
2d 1283, 1292 (S.D. Fla. 2007) (Hurley, J.). The Defendant’s affirmative
defenses on standing are “not insufficient nor frivolous and should not be
stricken.” Guididas, 2013 WL 230243, at *2. Therefore, the Court denies the
Plaintiff’s motion as it relates to the Defendant’s sixth and seventh affirmative
defenses.
B. The Innocent Infringer Defense
The Defendant’s ninth affirmative defense asserts that even if the
Defendant were to be held liable for any infringement, the Defendant was
without knowledge or wrongful intent and therefore cannot be held to have
willfully infringed. (Answer at 6, ECF No. 9.) The Plaintiff moves to strike the
ninth affirmative defense, arguing that it is merely a denial of the Plaintiff’s
allegation in paragraph 32 of the complaint. (Mot. at 4.) The Defendant
responds that the ninth affirmative defense asserts the innocent infringer
defense, which goes to the Plaintiff’s available remedies. (Resp. at 2.)
Essentially, the ninth affirmative defense suggests that the Plaintiff’s damages
are statutorily limited by 15 U.S.C § 1117(b) and that the Plaintiff therefore is
not entitled to treble damages. The Plaintiff does not respond to this
clarification. (See generally, Reply at 1-4.)
Although innocent infringement may be used to limit statutory damages
awarded in an infringement claim, it is not an affirmative defense to liability for
an infringement claim. 15 U.S.C § 1117(b); PK Studios, Inc. R.L.R. Invs., LLC,
No. 2:15-CV-389, 2016 WL 4529323, at *4 (M.D. Fla. Aug. 30, 2016). As to
whether this statutory limitation qualifies as an affirmative defense, however,
“courts are divided as to whether [the] statutory limitation is an affirmative
defense.” Sream, Inc. v. Smoke Box, Inc., No. 17-cv-61338, 2017 WL 4518462,
at *4 (S.D. Fla. Oct. 10, 2017) (Bloom, J.) (citing Carter v. United States, 333
F.3d 791, 796 (7th Cir. 2003)). Given the disagreement among courts as to
whether the statutory limitation is an affirmative defense, the Defendant’s
ninth affirmative defense is not invalid as a matter of law. See Home Mgmt.

Solutions, Inc., 2007 WL 2412834, at *2. As such, the Court denies the motion
to strike as it relates to the Defendant’s ninth affirmative defense.
4. Conclusion
Accordingly, the Court denies the Motion to Strike Defendant’s Answer
and Affirmative Defenses (ECF No. 14).
Done and ordered at Miami, Florida, on October 24, 2017.

________________________________
Robert N. Scola, Jr.
United States District Judge