Isringhausen Imports, Inc. v. Nissan North America, Inc. et al
Filing
51
OPINION entered by Judge Sue E. Myerscough on 12/5/2011. The Combined Motion (d/e 39) is GRANTED in part and DENIED in part. (SEE WRITTEN ORDER) This case is REFERRED back to Judge Cudmore for further pre-trial proceedings. (MAS, ilcd)
E-FILED
Monday, 05 December, 2011 04:43:17 PM
Clerk, U.S. District Court, ILCD
IN THE UNITED STATES DISTRICT COURT
FOR THE CENTRAL DISTRICT OF ILLINOIS
SPRINGFIELD DIVISION
ISRINGHAUSEN IMPORTS, INC.,
Plaintiff,
v.
NISSAN NORTH
AMERICA, INC., et al.,
Defendants.
)
)
)
)
)
)
)
)
)
)
No. 10-CV-3253
OPINION
SUE E. MYERSCOUGH, U.S. District Judge:
This matter is before the Court on Plaintiff Isringhausen Import,
Inc.’s (Isringhausen) Motion to Dismiss and Strike Pursuant to Federal
Rules of Civil Procedure 12(b)(6) and 12(f). See d/e 39 (the “Combined
Motion”). Isringhausen has filed a Memorandum in Support of its
Combined Motion (see d/e 40 (“Memorandum in Support”)). Defendant
Nissan North America, Inc. (“NNA”) has filed its Response to Plaintiff’s
Motion to Dismiss and Strike and Alternative Motion for Leave to
Amend Answer, Affirmative Defenses, and Counterclaim (see d/e 48
Page 1 of 31
(Response)). For the reasons that follow, Isringhausen’s Combined
Motion is granted in part and denied in part.
BACKGROUND
On October 29, 2010, Isringhausen filed its nine-count Corrected
Complaint (d/e 13) against NNA and the following related defendants:
Nissan Motor Corp., Ltd., Nissan Design American, Inc., and Nissan
Jidosha Kaisha, Trading as Nissan Motor Co., Ltd. (the related
defendants are hereinafter collectively referred to as “the Affiliated
Companies”). On April 6, 2011, this Court dismissed Count V of the
Corrected Complaint. See d/e 28. Also, on Isringhausen’s motion,
Nissan Design America, Inc., has been dismissed from this case without
prejudice. See Text Order of May 18, 2011.
On May 4, 2011, NNA filed its Answer and Affirmative Defenses
to Plaintiff’s Corrected Complaint. See d/e 33 (“Answer”). The Answer
raised 23 affirmative defenses and brought a counterclaim against
Isringhausen seeking a declaratory judgment on Isringhausen’s trademark
(Count I of Corrected Complaint) and copyright (Count II of Corrected
Page 2 of 31
Complaint) claims. Moreover, NNA asked that the Court “[a]ward
Infiniti its costs and attorneys’ fees incurred in defending against
Isringhausen’s Complaint and asserting its Counterclaim, including
without limitation those fees for which an award is proper pursuant to 15
U.S.C. § 117(a)[.]” Isringhausen has filed its Combined Motion, and
NNA has responded. The Court now issues this opinion.
ANALYSIS
As stated, NNA has asserted 23 affirmative defenses. In its
Combined Motion, Isringhausen claims that affirmative defenses
numbered 1, 3-6, 8-16, and 19-23 are insufficient and must be stricken.
Isringhausen also maintains that NNA’s claim for attorneys’ fees and
costs as set forth in NNA’s Counterclaim must be dismissed under Rule
12(b)(6).
A. Motion to Strike NNA’s Affirmative Defenses
Rule 12(f) provides that “the court may strike from a pleading an
insufficient defense or any redundant, immaterial, impertinent, or
scandalous matter.” Fed.R.Civ.P. 12(f). As a general rule, motions to
Page 3 of 31
strike are disfavored because such motions often serve only to delay
proceedings. See Heller Financial, Inc. v. Midwhey Powder Co., Inc., 883
F.2d 1286, 1294 (7th Cir. 1989) (citing United States v. 416.81 Acres of
Land, 514 F.2d 627, 631 (7th Cir. 1975)). The Court is “reluctant to
strike affirmative defenses because the plaintiff is not required to file a
responsive pleading and is deemed to have denied all allegations in the
affirmative defenses.” Central Laborers’ Pension, Welfare & Annuity
Funds v. Parkland Environmental Group, Inc., 2011 WL 4381429, at *1
(C.D. Ill. 2011) (citing Fed.R.Civ.P. 7(a) and 8(b)(6)). However, if a
motion to strike removes unnecessary clutter from the case, the motion
can serve to expedite, not delay. See Heller Financial, Inc., 883 F.2d at
1294.
“Ordinarily, defenses will not be struck if they are sufficient as a
matter of law or if they present questions of law or fact.” Heller
Financial, Inc., 883 F.2d at 1294. To be legally sufficient, affirmative
defenses must be set forth in a “short and plain statement” of the
defense. Id. (citing Fed.R.Civ.P. 8(a); Bobbitt v. Victorian House, Inc.,
Page 4 of 31
532 F. Supp. 734, 737 (N.D. Ill. 1982)). Defenses that are essentially
reiterations of the defendant’s answers are redundant and may be
stricken. See Convergence Aviation, Ltd. v. United Technologies Corp.,
2011 WL 1337099, at *2 (N.D. Ill. 2009). If an affirmative defense is
defective, leave to amend should be freely granted as justice requires
under Federal Rule of Civil Procedure 15(a). See Heller, 883 F.2d at
1294.
1. First Affirmative Defense
NNA’s first affirmative defense is that “Isringhausen fails to state a
claim upon which relief may be granted against Infiniti.” Courts have
not always agreed whether a party may properly assert “failure to state a
claim” as an affirmative defense or whether that defense must be raised in
a separate Rule 12(b)(6) motion. See Jackson v. Methodist Medical
Center of Illinois, 2007 WL 128001, at *2 (C.D. Ill. 2007) (collecting
cases). As noted in Jackson, more than “bare bones” pleading of the legal
standard is necessary, even by those courts that have allowed the
affirmative defense of failure to state a claim. Jackson, 2007 WL
Page 5 of 31
128001, at *2. Here, NNA has done no more than recite the legal
standard, which is insufficient. Therefore, NNA’s first affirmative
defense is stricken. Moreover, no purpose would be served by allowing
NNA to replead this defense as this Court has already allowed NNA’s
motion to dismiss brought pursuant to Rule 12(b)(6) with respect to
Count V of the Corrected Complaint and denied it with respect to all
other counts.
2. Third Through Sixth Affirmative Defenses
NNA’s third through sixth affirmative defenses, i.e., acquiescence,
estoppel, consent, and waiver respectively, are equitable defenses that
must be pled with the specific elements required to establish the defense.
See Yash Raj Films (USA) Inc. v. Atlantic Video, 2004 WL 1200184, at
*3 (N.D. Ill. 2004). NNA’s affirmative defenses based on these doctrines
are all based on the allegation that Isringhausen knew of Infiniti’s use of
transitory gestures for an extensive time period prior to filing the lawsuit
and that Isringhausen never indicated to Infiniti that it had a claim
against Infiniti’s use of the gestures. Isringhausen alleges that these
Page 6 of 31
affirmative defenses are defective because they do not allege that
“Isringhausen engaged in active conduct in addition to the mere passage
of time and claimed prejudice to NNA.”
i. Third Affirmative Defense: Acquiescense
Acquiescence is a “defense to trademark infringement in ‘cases
where the trademark owner, by affirmative word or deed, conveys its
implied consent to another.’” Trans Union LLC v. Credit Research, Inc.,
142 F.Supp.2d 1029, 1041 (N.D. Ill. 2001) (quoting TMT North
America, Inc. v. Magic Touch GmbH, 124 F.3d 876, 885 (7th Cir.
1997)). “Acquiescence merges with laches when it is based on silence.”
Trans Union LLC, 142 F.Supp.2d at 1041. “Unlike laches, acquiescence
implies active consent to an infringing use of the mark and requires a
defendant to establish that (1) the senior user actively represented it
would not assert a right or a claim; (2) the delay between the active
representation and assertion of the right or claim was not excusable; and
(3) the delay caused the defendant undue prejudice.” Bobak Sausage Co.
v. A & J Seven Bridges, Inc., 2011 WL 1131385, at *6 (N.D. Ill. 2011);
Page 7 of 31
see also ProFitness Physical Therapy Ctr. v. Pro–Fit Orthopedic and
Sports Physical Therapy P.C., 314 F.3d 62, 67 (2d Cir. 2002) (noting
that while both laches and acquiescence connote consent by the owner to
an infringing use of his mark, acquiescence implies active consent, while
laches only requires passive consent)1; Emmpresa Cubana Del Tabaco v.
Culbro Corp., 213 F.Supp.2d 247, 276 (S.D.N.Y. 2002) (affirmative
defense of acquiescence is used only in those cases where trademark
owner conveys its consent to another by affirmative word or deed).
NNA’s third affirmative defense of acquiescence does not sufficiently
allege active consent or an affirmative word or deed conveying consent by
Isringhausen and, therefore, must be stricken with leave to replead.
ii. Fourth Affirmative Defense: Estoppel
This case is distinguishable from Profitness Physical Therapy Center, 314
F.3d at 68-69, because in that case the plaintiff’s silence came after letters were
exchanged between the parties, including a cease and desist letter from the plaintiff to
the defendant. The defendant responded by letter with a proposal to change its name
and requested a response from the plaintiff with the caveat that the failure to respond
would be understood as an agreement to the name change. The plaintiff did not
respond. Here, there is no similar allegation of an implicit assurance by Isringhausen
that it would not assert its rights.
1
Page 8 of 31
“For estoppel to apply, the alleged infringer must show that the
copyright owner was aware of the infringing conduct and yet acted in a
way that induced the infringer to reasonably rely upon such action to his
detriment.” Ty, Inc. v. West Highland Publishing, Inc., 1998 WL
698922, at * 11 (N.D. Ill. 1998). Misleading conduct may include
specific statements, action, inaction, or silence where there is a clear duty
to speak. R2 Medical Systems, Inc. v. Katecho, Inc., 931 F.Supp.1397,
1416 (N.D. Ill. 1996); Emmpresa Cubana Del Tabaco, 213 F.Supp.2d at
276 (affirmative defense of equitable estoppel requires a misleading
communication with plaintiff’s knowledge of the true facts). While
silence or inaction may constitute misleading conduct, it must be
combined with other facts involving the relationship or communication
between the parties to give rise to the necessary inference that the
plaintiff would not enforce its rights. R2 Medical Systems, Inc., 931
F.Supp. at 1416. While awareness of the defendant’s challenged
activities may be a necessary factor, it is not sufficient to render the
inaction misleading. Id. “[C]ourts have required communication
Page 9 of 31
between the parties either somehow encouraging the challenged activity
or indicating an intent to enforce the rights [] followed by inaction.” Id.
Here, NNA only alleges Isringhausen knew of NNA’s use of the
transitory gestures for an extended period of time prior to filing the
lawsuit and never indicated to Infiniti that Isringhausen had a claim.
NNA does not allege a communication between the Parties encouraging
the challenged activity or indicating an intent to enforce Isringhausen’s
rights followed by inaction. Therefore, NNA has not adequately pleaded
the defense of estoppel.2 This defense is stricken with leave to replead.
iii. Fifth Affirmative Defense: Consent
The parties seem to agree that consent and acquiescence are closely
related, if not indistinct. “As a general matter, while ‘consent is a defense
The Court notes that some courts in trademark infringement cases, instead of
treating estoppel as a separate defense, have referred to the defense of estoppel in
conjunction with the defenses of acquiescence and laches. See Sara Lee Corp. v.
Kayser-Roth Corp., 81 F.3d 455, 462-63 (4th Cir. 1996) (referring to doctrines of
“estoppel by acquiescence” and “estoppel by laches”); see also 5 McCarthy on
Trademarks § 31:41 (“[T]o preserve some semantic sanity in the law, it is appropriate
to use the word ‘acquiescence’ for use only in those cases where the trademark owner,
by affirmative word or deed, conveys its implied consent to another. That is, laches
denotes a merely passive consent, while acquiescence implies active consent. In this
set of definitions, we would have ‘estoppel by laches’ as distinct from ‘estoppel by
acquiescence.’”)
2
Page 10 of 31
only with respect to acts undertaken before an effective termination of
the consent, reliance on the consent or acquiescence of the trademark
owner can create an estoppel which will preclude an effective termination
of the consent.’” Bobak Sausage Co., 2011 WL 1131385, at *7 (quoting
Trace Minerals Research, L.C. v. Mineral Resources Intern’l, Inc., 505
F.Supp.2d 1233, 1241 (D. Utah 2007)). NNA’s fifth affirmative defense
of consent, like NNA’s third affirmative defense of acquiescense, does not
allege active consent, or an affirmative word or deed conveying consent,
by Isringhausen and, therefore, will be stricken with leave to replead.
iv. Sixth Affirmative Defense: Waiver
“Waiver is an intentional relinquishment of a known right.” Phico
Ins. Co. v. Aetna Casualty and Surety Co. of America, 93 F.Supp. 2d
982, 993 (S.D. Ind. 2000) (citations omitted). “Although mere silence
can be a basis for a claim of estoppel when a legal duty to speak exists,
waiver must be manifested in an unequivocal manner.” Duncan v. Office
Depot, 973 F.Supp. 1171, 1177 (D. Or. 1997). In this case, NNA
alleges Isringhausen had knowledge of Infiniti’s, and other companies’,
Page 11 of 31
use of transitory gestures for an extended period of time and took no
action to cease or curb those uses. However, “failure to act, without
more, is insufficient evidence of a trademark owner’s intent to waive its
right to claim infringement.” Novell, Inc. v. Weird Stuff, Inc., 0094 WL
16458729, at *13 (N.D. Cal. 1993). NNA has not adequately pleaded
the affirmative defense of waiver. This affirmative defense is stricken
with leave to replead.
3. Eighth and Ninth Affirmative Defenses
NNA’s eighth and ninth affirmative defenses assert that
“Isringhausen’s alleged federal trademark is not incontestable” and that
“the silhouette element in Isringhausen’s alleged trademarks is generic
and/or merely descriptive and not entitled to protection”, respectively.
“A defendant is free to argue that a mark should never have become
incontestible because the mark is generic for the goods.” Northwestern
Corp. v. Gabriel Mfg. Co., Inc., No. 95 C 2004, 1996 WL 966144, at
*18 (N.D. Ill. 1999) (citing 15 U.S.C. § 1065(4)). Accordingly, NNA’s
assertion that Isringhausen’s alleged federal trademark is not
Page 12 of 31
incontestable3 and that the silhouette element of the trademark is generic
are proper affirmative defenses. The motion to strike, as it relates to the
eighth and ninth affirmative defenses, is denied.
4. Tenth Affirmative Defense
NNA’s tenth affirmative defense is that Isringhausen has not used
the silhouette standing alone in commerce and, therefore, has no
common law rights in the silhouette alone. NNA’s Answer denies that
Isringhausen has used the silhouette standing alone in commerce.
Answer, Answer to ¶¶ 9, 11, and 14 of the Corrected Complaint.
Therefore, the matter raised by the tenth affirmative defense has already
been put at issue by NNA’s denials and the affirmative defense will be
stricken because it is redundant. See Convergence Aviation, Ltd., 2011
WL 1337099, at *2. However, to the extent NNA intended to raise
some affirmative matter here, the Court will give NNA an opportunity to
replead.
Because the eighth and ninth affirmative defenses are closely related, the
Court will allow NNA’s eight affirmative defense that the trademark is not
incontestable to stand even though such a defense would be redundant because NNA
has already put the contestability of the trademark at issue by denying that the
trademark is incontestable in its Answer to ¶ 10 of the Corrected Complaint.
3
Page 13 of 31
5. Eleventh Affirmative Defense
NNA’s eleventh affirmative defense is that “Infiniti has not and
does not infringe the alleged trademarks and is not subject to liability for
infringement of the alleged trademarks.” The concept of raising an
affirmative defense requires the responding party to admit the allegations
in the complaint but then allows the responding party to assert it is
excused from liability for some legal reason. Reis Robotics USA, Inc. v.
Concept Indus., 462 F.Supp.2d 897, 906 (N.D. Ill. 2006). NNA’s denial
that it infringed the alleged trademarks is not a proper affirmative
defense. See Sloan Valve Co. v. Zurn Industries, Inc., 712 F.Supp.2d
743, 756 (N.D. Ill. 2010) (striking affirmative defense that denied the
defendant infringed a patent because it is not actually an affirmative
defense). Therefore, the eleventh affirmative defense is stricken with
prejudice.
6. Twelfth Affirmative Defense
NNA’s twelfth affirmative defense is that:
Isringhausen’s alleged trademarks are distinguishable from the
transitory gestures used by Infiniti. The literal elements, not
Page 14 of 31
the silhouette, are the dominant portion of Isringhausen’s
alleged trademarks. Vehicle outlines and silhouettes are
commonly used in the automotive industry and are not
entitled to a high level of trademark protection. Isringhausen
has not pled actual confusion or any facts to substantiate a
likelihood of confusion, and Infiniti is not aware of any
consumer confusion. There is no likelihood of confusion and
Isringhausen’s alleged trademark claims fail.
NNA’s Answer denied there is a likelihood of confusion. Answer,
Answer, Answer to ¶¶ 25, 52, 57, 62, 63, and 64. Therefore, the matter
raised by the twelfth affirmative defense has already been put at issue by
NNA’s denials and the affirmative defense will be stricken because it is
redundant. See Convergence Aviation, Ltd., 2011 WL 1337099, at *2.
However, to the extent NNA intended to raise some affirmative matter
here, the Court will give NNA an opportunity to replead.
7. Thirteenth Affirmative Defense
NNA’s thirteenth affirmative defense states that “Isringhausen’s
alleged trademarks are not famous in the general population.
Consequently, Isringhausen cannot maintain a federal trademark dilution
claim.” NNA’s Answer denies that Isringhausen’s trademarks are famous.
Answer, Answer to ¶¶ 9, 21, 22, and 23 of the Corrected Complaint.
Page 15 of 31
Therefore, the matter raised by the thirteenth affirmative defense has
already been put at issue by NNA’s denials, and the affirmative defense
will be stricken because it is redundant. See Convergence Aviation, Ltd.,
2011 WL 1337099, at *2. However, to the extent NNA intended to
raise some affirmative matter here, the Court will give NNA an
opportunity to replead.
8. Fourteenth Affirmative Defense
NNA’s fourteenth affirmative defense alleges:
Infiniti utilizes gestures that reflect descriptive characteristics
of Infiniti’s products. Based upon information and belief, this
selection was made without knowledge of Isringhausen’s
trademarks. At all times, Infiniti’s conduct was and is lawful,
justified, reasonable, in good faith, and with innocent intent
based upon the facts known at the time it acted, thereby
precluding Isringhausen, even if it prevails, from recovering
treble damages, attorneys’ fees and/or costs, or any other
enhanced damages.
Isringhausen contends this is not a proper affirmative defense because
NNA, by asserting this defense, is not admitting the validity of the claims
in the Corrected Complaint, but is instead raising issues which attack the
allegations of the Corrected Complaint.
Page 16 of 31
The Supreme Court has stated that the affirmative defense of fair
use is “available to a party whose ‘use of the name, term, or device
charged to be an infringement is a use, otherwise than as a mark, . . . of a
term or device which is descriptive of and used fairly and in good faith
only to describe the goods or services of such party, or their geographic
origin.’” KP Permanent Make–Up, Inc. v. Lasting Impression I, Inc., 543
U.S. 111, 118–22 (2004) (quoting 15 U.S.C. § 1115(b)(4)). NNA’s
Answer to the Corrected Complaint denied that Infiniti has used the
gestures as trademarks. Moreover, NNA asserts that the use of the
gestures was in good faith. This is sufficient to put Isringhausen on
notice of NNA’s affirmative defense of fair use. Isringhausen’s motion to
strike this defense is denied.
9. Fifteenth Affirmative Defense
NNA’s fifteenth affirmative defense alleges “Infiniti has not and
does not infringe Isringhausen’s alleged copyright and is not subject to
liability for infringement of the alleged copyright.” NNA has already put
this matter at issue in its Answer when it denied that its acts constitute
Page 17 of 31
infringement of Isringhausen’s copyright. Answer, Answer to ¶ 44 of the
Corrected Complaint. The matter raised by the fifteenth affirmative
defense has already been put at issue by NNA’s denials, and the
affirmative defense will be stricken because it is redundant. See
Convergence Aviation, Ltd., 2011 WL 1337099, at *2. However, to the
extent NNA intended to raise some affirmative matter here, the Court
will give NNA an opportunity to replead.
10. Sixteenth Affirmative Defense
NNA’s sixteenth affirmative defense alleges that “[t]he silhouette
portion of Isringhausen’s copyright is a common design which lacks a
sufficient minimal level of creativity and originality. Said silhouette is,
thus, not entitled to copyright protection. Where the silhouette is the
only element of similarity alleged by Isringhausen, Isringhausen’s
copyright claims fail.” NNA has denied that Isringhausen’s silhouette is
creative or original, or that the silhouette standing alone is copyrighted.
Answer, Answer to ¶ 10 of the Corrected Complaint. The matter raised
by the sixteenth affirmative defense has already been put at issue by
Page 18 of 31
NNA’s denials, and the affirmative defense will be stricken because it is
redundant. See Convergence Aviation, Ltd., 2011 WL 1337099, at *2.
However, to the extent NNA intended to raise some affirmative matter
here, the Court will give NNA an opportunity to replead.
11. Nineteenth Affirmative Defense
NNA’s nineteenth affirmative defense is that “[t]here is no
substantial similarity between protectable elements of Isringhausen’s
alleged copyright and the gestures used by Infiniti. Consequently,
Isringhausen’s copyright claims fail.” To establish copyright
infringement, a plaintiff must prove “(1) ownership of a valid copyright,
and (2) copying of constituent elements of the work that are original.”
Feist Publications, Inc. v. Rural Telephonic Service Co., Inc., 499 U.S.
340, 361 (1991). While substantial similarity is not a separate element
under the Feist test4, the copying inquiry entails questions of substantial
In a pre-Feist case, the Seventh Circuit stated substantial similarity between
the works was an element of copyright infringement. The court stated the plaintiff in
a copyright infringement case must establish: (1) that she owns the copyright in
question; (2) that the defendant had access to the copyrighted work; and (3) there is
substantial similarity between the two works. Roulo v. Russ Berrie & Co., Inc., 886
F.2d 931, 939 (7th Cir. 1989).
4
Page 19 of 31
similarity. See Ocean Atlantic Woodland Corp, 2003 WL 1720073, at
*11. To state that Isringhausen’s copyright claim fails because there is no
substantial similarity between the protectable elements of Isringhausen’s
alleged copyright and the gestures used by Infiniti is another way of
saying that Infiniti did not copy Isringhausen’s gesture. This is denying
an element of Plaintiff’s prima facie case and is therefore not a proper
affirmative defense. NNA’s nineteenth affirmative defense is stricken
with prejudice.
12. Twentieth Affirmative Defense
NNA’s twentieth affirmative defense is that “[a]ny use by Infiniti of
Isringhausen’s copyright is a de minimis use where the average audience
would not recognize the appropriation due to the lack of substantial
similarity between the works. Consequently, Isringhausen’s copyright
claims fail.” “To establish that the infringement of a copyright is de
minimis, and therefore not actionable, the alleged infringer must
demonstrate that the copying of the protected material is so trivial as to
fall below the quantitative threshold of substantial similarity, which is
Page 20 of 31
always a required element of actionable copying.” Interplan Architects,
Inc., 2010 WL 4366990, at *47 (S.D. Tex. 2010) (quoting Sandoval v.
New Line Cinema Corp., 147 F.3d 215, 217 (2d Cir. 1998). NNA’s de
minimis infringement defense is properly plead. In this affirmative
defense, NNA is not alleging there is no substantial similarity like its
nineteenth affirmative defense. Instead, NNA is saying that any
infringement is so trivial as to fall below the quantitative threshold of
substantial similarity. This will be at issue in this case, and the Court
sees no purpose that would be served by dismissing this affirmative
defense. Therefore, the motion to strike this defense is denied. See
Huthwaite, Inc. v. Ecolab, Inc., 2006 WL 929262, at *1 (N.D. Ill. 2006)
(where court did not strike affirmative defense that the use “was de
minimis and/or constitutes fair use under 17 U.S.C. § 107” when
essentially the same issue was raised in counterclaim and would be an
issue in the lawsuit).
13. Twenty-First Affirmative Defense
As stated, to establish copyright infringement, a plaintiff must
Page 21 of 31
prove “(1) ownership of a valid copyright, and (2) copying of constituent
elements of the work that are original.” Feist Publications, Inc., 499 U.S.
at 361. NNA’s twenty-first affirmative defense is that “[u]pon
information and belief, Infiniti’s gestures were independently created
without knowledge of and without copying Isringhausen’s copyright.
Consequently, Isringhausen’s copyright claims fail.” Courts differ on
whether independent creation is an affirmative defense. For example, the
Second and Sixth Circuits allow independent creation as an affirmative
defense. See Procter & Gamble Co. v. Colgate-Palmolive Co., 199 F.3d
74, 77 (2nd Cir. 1999) (“[i]f the plaintiff establishes a prima facie case of
infringement, the defendant may rebut it by proving the affirmative
defense of independent creation”); Wrench LLC v. Taco Bell Corp., 256
F.3d 446, 459-60 (6th Cir. 2001) (referring to independent creation as an
affirmative defense). However, the Fourth and Eleventh Circuits have
stated independent creation is not an affirmative defense. See Keeler
Brass Co. v. Continental Brass Co., 862 F.2d 1063, 1066 (4th Cir. 1988)
(“‘independent creation’ is not an affirmative defense”); Calhoun v.
Page 22 of 31
Lillenas Publishing, 298 F.3d 1228, 1230 n.3 (11th Cir. 2002) (under
copyright law, “independent creation is not an affirmative defense.
Rather, independent creation attempts to prove the opposite of the
[plaintiff's] primary claim, i.e., copying”).
The Seventh Circuit has not spoken on this issue. However, this
Court agrees5 with the Keeler Brass Co. court’s analysis of the issue where
the court stated “[the plaintiff’s] prima facie case advanced the
proposition that the defendants copied the design. Evidence of
independent creation simply tends to prove the reverse of that
proposition, i.e., that the design was not copied.” Keeler Brass Co., 862
F.2d at 1066. This view, that independent creation is not an affirmative
defense, is consistent with the idea that the concept of raising an
affirmative defense requires the responding party to admit the allegations
in the complaint but then allows the responding party to assert it is
The Court recognizes that the Northern District referred to independent
creation as an affirmative defense in Ocean Atlantic Woodland Corp. v. DRH
Cambridge Homes, Inc., 2003 WL 1720073, at *11 (N.D. Ill. 2003). However, in
that case the plaintiff only argued that the defense lacked merit and credibility. The
plaintiff did not argue that independent creation is not an affirmative defense as
Plaintiff does here.
5
Page 23 of 31
excused from liability for some legal reason. See Reis Robotics USA, Inc.,
462 F.Supp.2d at 906. NNA’s defense that Infiniti’s gestures were
independently created does not admit the allegation of copying in
Isringhausen’s Corrected Complaint. Instead, arguing Infiniti’s gestures
were independently created denies the allegation of copying and is an
attempt to negate an element of Isringhausen’s copyright infringement
claim, i.e., that Infiniti copied constituent elements of Isringhausen’s
work that are original. Therefore, NNA’s twenty-first affirmative defense
is stricken with prejudice because it is not an affirmative defense.6
14. Twenty-Second Affirmative Defense
NNA’s twenty-second affirmative defense is that Isringhausen’s
state causes of action are preempted by the federal Copyright Act. In an
April 6, 2011 Order (d/e 28), this Court adopted United States
Magistrate Judge Byron Cudmore’s Report and Recommendation (d/e
23) in which Judge Cudmore determined that, under the facts and
This is not to say NNA cannot argue Infiniti’s gestures were independently
created. NNA could rebut a presumption of copying based on access and substantial
similarity if NNA can show that Infiniti’s gestures were independently created. See
Nielson Co. (US), LLC v. Truck Ads, LLC, 2011 WL 3857122, at *18 (N.D. Ill.
2011).
6
Page 24 of 31
circumstances alleged in the Corrected Complaint, Isringhausen’s state
law claims are not preempted. For the reasons stated in Judge Cudmore’s
Report and Recommendation, NNA’s claim that Isringhausen’s state law
claims are preempted fails as a matter of law. Accordingly, NNA’s
twenty-second affirmative defense is stricken. See Wilson v. City of
Chicago, 900 F.Supp. 1015, 1024 (N.D. Ill. 1995) (striking affirmative
defense that failed as a matter of law). Because the preemption ruling
was based on the facts and circumstances as alleged in the Corrected
Complaint, NNA will be given leave to replead this defense should: (1)
another amended complaint be filed and (2) the facts and circumstances
alleged in any amended complaint that are relevant to the preemption
issue differ from those facts and circumstances that were alleged in the
Corrected Complaint (d/e 13).
15. Twenty-Third Affirmative Defense
NNA’s twenty-third affirmative defense is that “Isringhausen’s
damages are limited under 17 U.S.C. § 504(b) and (c) and 17 U.S.C. §
505. Isringhausen is specifically not entitled to recover statutory
Page 25 of 31
damages and attorneys’ fees.” NNA should allege some minimal facts to
explain how this defense applies. See Central Laborers’ Pension, Welfare
& Annuity Funds, 2011 WL 4381429, at *1 (stating the party raising an
affirmative defense should allege some minimal facts to explain how each
such defense applies to that case). This affirmative defense is stricken
with leave to replead.
B. Isringhausen’s Motion to Dismiss NNA’s Claim for Attorneys’ Fees
and Costs in NNA’s Counterclaim
In its Counterclaim, NNA asks the Court to “[a]ward Infiniti its
costs and attorneys’ fees in defending against Isringhausen’s Complaint
and asserting its Counterclaim, including without limitation those fees
for which an award is proper pursuant to 15 U.S.C. § 1117(a).”
Isringhausen maintains NNA’s claim for fees in its Counterclaim must be
dismissed pursuant to Rule 12(b)(6).
Under Rule 12(b)(6), dismissal is proper where a complaint fails to
state a claim upon which relief can be granted. Fed.R.Civ.P. 12(b)(6).
To state a claim upon which relief can be granted, a complaint must
provide a “short and plain statement of the claim showing that the
Page 26 of 31
pleader is entitled to relief.” Fed.R.Civ.P. 8(a)(2). That statement must
be sufficient to provide the defendant with “fair notice” of the claim and
its basis. Tamayo v. Blagojevich, 526 F.3d 1074, 1081 (7th Cir. 2008);
Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007). This means
that (1) “the complaint must describe the claim in sufficient detail to give
the defendant ‘fair notice of what the . . . claim is and the grounds upon
which it rests” and (2) its allegations must plausibly suggest that the
plaintiff has a right to relief, raising that possibility above a “speculative
level.” EEOC v. Concentra Health Services, Inc., 496 F.3d 773, 776 (7th
Cir. 2007). While detailed factual allegations are not needed, a
“formulaic recitation of a cause of action's elements will not do.”
Twombly, 550 U.S. at 555. Conclusory allegations are “not entitled to
be assumed true.” Ashcroft v. Iqbal, 129 S.Ct. 1937, 1951 (2009) (citing
Twombly, 550 U.S. at 554-55). “In ruling on Rule 12(b)(6) motions, the
court must treat all well-pleaded allegations as true and draw all
inferences in favor of the non-moving party.” In re marchFIRST Inc.,
589 F.3d 901, 904 (7th Cir. 2009) (citing Tamayo, 526 F.3d at 1081).
Page 27 of 31
As stated, NNA’s Counterclaim contains the request for attorneys’
fees and costs “including without limitation those fees for which an
award is proper pursuant to 15 U.S.C. § 1117(a).” Isringhausen claims
this request must be dismissed in the absence of allegations which
establish NNA is entitled to such relief. Specifically, Isringhausen
maintains that § 1117(a) allows attorneys’ fees to be awarded to a
prevailing defendant in cases brought under the Lanham Act only in
“exceptional cases” where there was an abuse of process by the plaintiff.
See Nightingale Home Healthcare, Inc. v. Anodyne Therapy, LLC, 626
F.3d 958, 963-64 (7th Cir. 2010) (concluding “that a case under the
Lanham Act is ‘exceptional,’ in the sense of warranting an award of
reasonable attorneys' fees to the winning party, if the losing party was the
plaintiff and [the plaintiff] was guilty of abuse of process in suing”).
According to Isringhausen, “[t]he claim for fees set forth in NNA’s
Counterclaim must be dismissed in the absence of allegations which
establish NNA is entitled to such relief.”
Neither party has submitted authority as to whether a complaint, or
Page 28 of 31
in this case a counterclaim, must plead “exceptional circumstances” in
order to request attorney fees under § 1117. However, the court in
Mosolino v. Prudential Insurance Co. of America, 1996 WL 19459, at *3
(N.D. Ill. 1996), addressed this issue and stated as follows: “Section
1117 imposes no requirement that a complaint plead that the violation
complained of is ‘exceptional’ and as a practical matter, the court fails to
see what purpose such requirement would serve.” The court then denied
the request to dismiss the prayer for attorney fees. In the absence of
contrary authority submitted by the parties, this Court agrees with the
Mosolino court. Therefore, Isringhausen’s Motion to Dismiss NNA’s
prayer for relief will be denied.
CONCLUSION
THEREFORE, the Combined Motion (d/e 39) is GRANTED in
part and DENIED in part.
1.
The portion of the Combined Motion requesting that the Court
strike NNA’s Eighth, Ninth, Fourteenth, and Twentieth Affirmative
Defenses is DENIED. Those Affirmative Defenses survive.
Page 29 of 31
2.
NNA’s Third, Fourth, Fifth, Sixth, Tenth, Twelfth, Thirteenth,
Fifteenth, Sixteenth, Twenty-Second, and Twenty-Third
Affirmative Defenses are STRICKEN WITH LEAVE TO
REPLEAD.
3.
NNA’s First, Eleventh, Nineteenth, and Twenty-First Affirmative
Defenses are STRICKEN WITH PREJUDICE.
4.
The portion of Isringhausen’s Combined Motion seeking dismissal
of the request in NNA’s Counterclaim for attorney’s fees and costs
is DENIED.
This case is REFERRED back to Judge Cudmore for further pre-trial
proceedings.
IT IS SO ORDERED.
ENTERED: December 5, 2011.
FOR THE COURT:
s/ Sue E. Myerscough
SUE E. MYERSCOUGH
UNITED STATE DISTRICT JUDGE
Page 30 of 31
Page 31 of 31
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?