Jolie Design & Decor, Inc. et al v. CeCe Caldwell's Paints, LLC et al

Filing 40

ORDER AND REASONS granting in part and denying in part 24 Motion to Strike Certain Affirmative Defenses; granting in part and denying in part 24 Motion to Dismiss Counterclaims. Signed by Judge Helen G. Berrigan on 06/28/2013. (kac, )

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA

JOLIE DESIGN & DÉCOR, INC., and
ANNIE SLOAN INTERIORS, LTD.

CIVIL ACTION

VERSUS

NO.: 2:12-CV-2387

CECE CALDWELL'S PAINTS, LLC
,
DALLAS FAUX FINISHING, LLC, and
DONNA SCHULTZ

JUDGE: HELEN G. BERRIGAN
MAGISTRATE: DANIEL KNOWLES

ORDER AND REASONS1
Before the Court is a Motion to Strike Certain Affirmative Defenses and to Dismiss Counter-claims
against Jolie Design and Décor, Inc. filed by Plaintiffs Jolie Design and Décor, Inc. and Annie Sloan Interiors,
Ltd. (“Jolie Design,” “Annie Sloan Interiors” or “Plaintiffs”). Rec. Doc. 24. Defendants CeCe Caldwell’s
Paints, LLC and Donna Shultz (“CeCe,” “Shultz” or Defendants”) oppose parts of the motion. Rec. Doc. 34.
Having considered the applicable law, the record, and the memoranda of counsel, the Court finds that the
Motion to Strike Certain Affirmative Defenses is GRANTED IN PART and DENIED IN PART and the
Motion to Dismiss Counter-claims against Jolie Design and Décor, Inc. is DENIED for the following reasons.
I. BACKGROUND
This Motion comes before the Court in order to settle the question of whether certain affirmative
defenses outlined in Defendants’ Answer, Defenses, and Counter-Claims meet the requisite pleading standard
under Federal Rule of Civil Procedure 8(b) in order to survive a motion to strike under Federal Rule of Civil
Procedure 12(f). Rec. Doc. 20. This Motion also sets before the Court the issue of whether certain counter-

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Victoria Jowers, a second-year student at Paul M. Herbert Law Center, Louisiana State University, assisted in the
preparation of this Order and Reasons.

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claims meet the requisite pleading standard under Federal Rule of Civil Procedure 8(a) to survive a motion
to dismiss under Federal Rule of Civil Procedure 12(b)(6).
Annie Sloan Interiors is a company organized under the laws of the United Kingdom, owned in part
by decorative artist Annie Sloan. Rec. Doc. 12, p. 3. Annie Sloan is somewhat of a public figure in the arts
and crafts community, and has used her success to create and market decorative paint. Id. at 4. This paint,
named by Annie Sloan for its finish, is trademarked as “CHALK PAINT.” Id. While there is some dispute
as to the exclusivity of use, Annie Sloan Interiors has allegedly used the CHALK PAINT trademark in
interstate commerce since 2004. Id. at 5. On October 30, 2012, the CHALK PAINT trademark was duly
registered on the Principle Register of the United States Patent and Trademark Offices. Id.
Jolie Design is the exclusive licensee of the CHALK PAINT trademark in the United States and the
exclusive distributer of CHALK PAINT decorative paint. Rec. Doc. 12, p. 2. Shultz was a retailer of CHALK
PAINT decorative paint up until September 2011. Rec. Doc. 20, p. 3; Rec. Doc. 12, p. 7. Sometime after the
end of her retailer relationship with Jolie Designs, Shultz became involved in CeCe Caldwell, which began
to sell “Chalk and Clay Paint.” Rec. Doc. 12, p. 7.
Plaintiffs filed this suit seeking damages arising from the alleged violation of the CHALK PAINT
trademark under both the Lanham Act and various state laws. Rec. Doc. 1; Rec. Doc. 12. Defendants
answered, asserting twenty-one affirmative defenses and two counter-claims. Rec. Doc. 20, p. 6-9. The first
counter-claim seeks a declaratory judgment under 28 U.S.C. §2201 and §2202 stating that the Defendants
use of the trademark “CECE CALDWELL’S CHALK & CLAY PAINT” does not infringe on Plaintiffs
CHALK PAINT trademark. Id. at 10-11. In the second counter-claim, Defendants seek an order cancelling
Annie Sloan Interior’s federal trademark registration under 15 U.S.C. §1119. Id. at 11-12.
II. LAW AND ANALYSIS
A. Motion to Strike Certain Affirmative Defenses
1. Standard of Review--FED.R.CIV.P. 12(f) Motion to Strike

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Under Federal Rule of Civil Procedure 8(a), a claim for relief must contain a short and plain statement
of the grounds on which the pleader is entitled to relief. Under Federal Rule of Civil Procedure (8)(c), a party
must state any affirmative defense in its claim for relief. Federal Rule of Civil Procedure 12(f) states that the
Court may strike any defense that is insufficient, redundant, immaterial, impertinent, or scandalous either on
its own motion, or on motion by a party. A motion to strike is appropriate when the allegations are prejudicial
to the opposing party or immaterial to the lawsuit. Johnson v. Harvey, 1998 WL 596745, at *7 (E.D.La.
1998). An allegation is immaterial to the lawsuit when the challenged allegations do not bear on the subject
matter of the litigation. Bayou Fleet P’ship, LLC v. St. Charles Parish, 2011 WL 2680686, at *5 (E.D.La.
Jul. 8, 2011). The Court will not decide a disputed question of fact on a motion to strike. Gonzalez v. State
Farm Mut. Auto. Ins. Co., 2011 WL 2607096 at*5 (E.D.La. July 1, 2011).
2. Analysis
Plaintiffs move to strike the fifth, eighth, thirteenth, fourteenth, and sixteenth defenses under
Federal Rule of Civil Procedure 12(f) on the grounds of failure to meet the applicable pleading standards
of Federal Rule of Civil Procedure 8. Rec. Doc. 24, p. 1. In Defendants’ Memorandum in Opposition to
this motion, Defendants consented to strike the fifth, fourteenth, and sixteenth affirmative defenses. Rec.
Doc. 34, p. 2. Defendants also consented to dismiss the second counter-claim, for cancelation of a federal
trademark registration, as to Jolie Design only. Id. at 5. The Court strikes the defenses that Defendants
have consented to strike and dismisses the part of the second counter-claim, that pertains to cancelation of
a federal trademark as to Jolie Design.
In a Fifth Circuit case that directly addresses the pleading standard of affirmative defenses, Woodfield
v. Bowman, an insurance company faced losing its “consent to settle” defense because it was not pled
explicitly, but could be inferred from some “boilerplate” language. 193 F.3d 354, 362 (5th Cir. 1999). When
the Fifth Circuit found a failure to plead that affirmative defense, it articulated three important standards for
pleading affirmative defenses. First, Woodfield held that an affirmative defense requires the same pleading

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standard as the complaint. Id. Second, Woodfield articulated a “fair notice” standard for pleading affirmative
defenses which requires enough specificity so that the plaintiff is not a victim of unfair surprise. Id. Lastly,
according to Woodfield, “boilerplate” defense pleading is not sufficient under Federal Rule of Civil Procedure
(8)(c). Id.
However, Woodfield was decided before two recent Supreme Court cases on pleading standards. The
first, Bell Atlantic v. Twombly, dealt with the pleading requirement for a complaint when plaintiffs alleged
the existence of an anti-trust conspiracy. 550 U.S. 544, 550, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). The
Twombly plaintiffs alleged very few facts as to the existence of the conspiracy they claimed entitled them to
relief. Id. at 551. They merely stated that they believed the defendant companies to have entered into an
agreement due to a lack of competition between them. Id. In finding those pleadings insufficient to state a
claim, Twombly held that in order to meet the requirements of Federal Rules of Civil Procedure (8), a claim
for relief must be “plausible on its face.” Id. at 570. The second case, Ashcroft v. Iqbal, dealt with a detainee
who made many assertions of discrimination in his pleadings. 556 U.S. 662, 680-682, 129 S.Ct. 1937, 19511952, 173 L.Ed.2d 868 (2009). The Court found that many of these assertions were not entitled to an
assumption of truth because these assertions were legal conclusions and not facts. Id. The Court held that
when considering the factual allegations of the complaint as true, a claim must cross the line “from
conceivable to plausible” and allow one to draw the “reasonable inference” that the defendant is liable.
Ashcroft v. Iqbal, 556 U.S. at 680.
Under these two cases, a claim for relief must plead enough facts so that, taken in the light most
favorable to the pleader, it is plausible that the pleader is entitled to relief. Bell Atlantic v. Twombly, 550 U.S.
at 550; Ashcroft v. Iqbal, 556 U.S. at 680-682.2 While it is clear that Iqbal and Twombly apply the plausibility
standard to pleading a claim for relief, the pleading standard for affirmative defenses has not been clarified.

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An example of where the Fifth Circuit applied the Iqbal and Twombly plausibility standard to a well-pleaded claim
for relief was in Rhodes v. Prince. 360 F.App’x. 555, 557-558 (Fifth Cir. 2010).

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After Twombly, the Fifth Circuit addressed the pleading standard for affirmative defenses in a case
involving whether affirmative defenses were waived for lack of specificity. In Rogers v. McDorman, the court
used a “fair notice” pleading standard. 521 F.3d 381, 385 (5th Cir. 2008). The “fair notice” standard
articulated in that case requires enough factual particularity to avoid unfair surprise to the plaintiff. Id. The
court determined that an affirmative defense is waived when a plaintiff is prejudiced in his ability to respond.
Id.
The Fifth Circuit has not addressed the pleading standards for affirmative defenses after Iqbal.
However, several district courts have addressed the issue. In a case before this Court, Cosmetic Warriors
Limited v. Lush Boutique LLC, the Court cited to the Twombly pleading standard for affirmative defenses,
and applied the lower fair notice standard, finding the defenses clearly insufficient. No. 09-6381, 2010 WL
4871229 at *2 (E.D. La. Feb. 4, 2010). Similar to the case before the Court, in Cosmetic Warriors, damages
allegedly arose from trademark infringement. Id. at *1. Defendants pled affirmative defenses such as
“Plaintiff’s claims are barred by laches” or “Plaintiff’s claims are barred by the Plaintiff’s abandonment of
the trademark at issue” without any further explanation. Id. at *2. The defenses addressed in Cosmetic
Warriors were found to be “boilerplate” defenses, and thus neither the “fair notice” standard nor the
plausibility standard were met. Id. at *2-3.
Likewise, in Harris v. USA Insurance Companies, the court found that while it is unclear whether
or not an affirmative defense must meet the heightened pleading standard of Twombly and Iqbal, the
affirmative defense must “at least” meet the fair notice requirement of Woodfield. Harris v. USA Insurance
Companies No. 11-201, 2011 WL 3841869, at *2 (E.D. La. Aug. 30, 2011). The court again acknowledges
the lack of clarity as to the pleading standard for affirmative defenses in Schlosser v. Metropolitan Property.
NO. 12-1301, 2012 WL 3879529, at *2 (E.D. La. Sept. 6, 2012). The Schlosser court, applying Woodfield,
states that an affirmative defense must meet “at least” the “minimal fair notice” standard. Schlosser v.
Metropolitan Property, NO. 12-1301, 2012 WL 3879529, at *2. In Schlosser, because the minimum standard

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was not met, the court found it unnecessary to address whether or not the heightened pleading standard of
Twombly and Iqbal should apply. Id. The Schlosser court did not dismiss the possibility that the plausibility
standard would apply had the “minimum” requirement of fair notice been met. Id.
Two principles are made clear from the cases cited above. The first is that Woodfield is still applicable
to motions to strike affirmative defenses. The second is that the “fair notice” standard is a “minimum” and
therefore lower threshold than the “plausibility” standard articulated by Twombly and Iqbal. The Fifth Circuit
held in Woodfield that affirmative defenses are held to the same pleading standard as the complaint. 193 F.3d
at 362. In Rhodes, the Fifth Circuit cites both Twombly and Iqbal with favor, holding that the complaint is
held to the plausibility standard. Rhodes v. Prince, 360 Fed.App’x. at 557-558.
3. The Eighth Defense
The Defendants state in their Memorandum in Opposition that they asserted the Eighth Defense
because Plaintiffs allege throughout their pleadings that third parties have caused the Plaintiffs harm. Rec.
Doc. 34, p. 3.3 The Court begins by determining whether or not the defense gives “fair notice” to Plaintiffs
of the defense being advanced. Woodfield, 193 F.3d at 362. This is a fact specific analysis which determines
if the defense is sufficiently articulated so that the plaintiff is not the victim of “unfair surprise.” Id. The Court
finds that the Eighth Defense does not give sufficient facts to constitute “fair notice” to the Plaintiff and
prevent unfair surprise. The Eighth defense alleges no facts that might suggest to the Plaintiffs what grounds
the defense is based on, and appears to be exactly the type of “boilerplate” language that Woodfield stated
was insufficient under Federal Rule of Civil Procedure 8(c). Id. While the Eighth Defense asserts that
Plaintiff’s claims may be barred by the comparative fault of third parties, it fails to even suggest who some
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In Defendants’ Memorandum in Opposition, counsel refers to the Eighth Defense as stating that the claims are “barred,
in whole or in part, to the extent that indispensable parties have not been joined and their absence from the present
litigation subjects the remaining parties to a substantial risk of incurring multiple or inconsistent obligations.” Rec. Doc.
34, p. 3. However, Defendants’ Answer lists the Eighth Defense as the claims are “barred, either in whole or in part, to
the extent that the loss and/or damages alleged were caused by the fault of persons, including a third-party and/or thirdparties, for whom Defendants are not directly or vicariously liable or otherwise responsible.” Rec. Doc. 20, p. 7. As
Defendants’ arguments are easily construed to apply to the challenged defense, the Court shall read them to apply to the
Eighth Defense as stated in the answer, and ignore the improper reference.

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of these parties might be, or to what degree they might be at fault. Rec. Doc. 24-1, p. 8. This defense does
not require a detailed list of names or a specific situation to be plausible. However, Defendants must allege
enough facts that a reasonable person could infer that a third party may have been at least partially at fault.
Thus, the applicable pleading standard of plausibility is not met. The Court grants the Motion to Strike the
Eighth Defense, pursuant to Federal Rule of Civil Procedure 8(c), without prejudice to Defendants’ right to
seek leave to amend its Answer to plead with greater specificity.
4. The Thirteenth Defense
The Thirteenth Defense states that “Pursuant to La. R.S. 51: 1409(A), Plaintiffs are liable to
Defendants for reasonable attorneys’ fees and costs incurred by Defendants in defending against Plaintiffs
groundless, bad faith, and harassing alleged claims for unfair trade practices.” Rec. Doc. 20, p. 8.
According to Louisiana Revised Statutes 51: 1409, upon a finding that the lawsuit was brought for the
purposes of harassment or in bad faith, the court may award reasonable attorney’s fees. Defendants note
in their Memorandum in Opposition that the evidence as to Plaintiffs’ intent to harass by this lawsuit
would rarely be known at this stage in the litigation. Rec. Doc. 34, p. 4. Courts must be cautious about
striking affirmative defenses when Defendants have not had the opportunity to prove that the allegations
in those defenses may be true. Owens v. UNUM Life Ins. Co., 285 F. Supp. 2d 778, 780 (E.D. Tex. 2003).
It is impossible to know at this stage of the litigation if Defendants are entitled to demand attorney’s fees.
In re Cemetery Dev. Corp., 59 B.R. 115, 128 (Bankr. M.D. La. 1986). Moreover, it is rare for a Court to
decide an issue of attorney’s fees before a verdict. Cambridge Strategies, LLC v. Cook, 3:10-CV-2167-L,
2012 WL 176587, at *8 (N.D. Tex. Jan. 23, 2012). The statutory citation is enough to give Plaintiffs the
context of the defense, and does not put the Plaintiffs at risk of becoming the victims of unfair surprise.
Not only is the fair notice standard met, the defense is plausible on its face. Defendants have
alleged enough facts that it is plausible that this statute may bear on the subject matter of this litigation.
Rec. Doc. 34. The lawsuit will be litigated under Louisiana law, and under Louisiana law, groundless

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personal actions can result in an award of attorney’s fees. La. R.S. 51: 1409. Thus, the Court declines to
strike the Thirteenth Defense.
B. Motion to Dismiss Counter-Claim
1. Standard of Review—Federal Rules of Civil Procedure 12(b)(6) Motion to Dismiss
Under Federal Rules of Civil Procedure 8(a), a claim for relief must contain a “short and plain
statement of the claim showing that the pleader is entitled to relief. If the claim fails to state a claim upon
which relief may be granted, the court may dismiss the claim upon motion from a party under Federal Rules
of Civil Procedure 12(b)(6). The Supreme Court recently clarified in Bell Atlantic v. Twombly that in order
to state a claim, the pleadings must contain enough facts that the claim is “plausible on its face.” 550 U.S.
544, 570. This standard is further clarified in Ashcroft v. Iqbal, where the Supreme Court stated that the
pleadings must give rise to the “reasonable inference” that the defendant is liable. 556 U.S. 662, 680. When
reading the pleadings for the purposes of deciding a Motion to Dismiss, the court takes the factual allegations
as true, and draws all reasonable inferences in favor of the plaintiff. Lormand v. U.S. Unwired, Inc., 565 F.3d
228, 232 (5th Cir. 2009).
2. Analysis—Dismissal of Claim for Declaratory Judgment against Jolie Designs
In order for a district court to rule on a declaratory judgment claim, the Court must take three steps.
First, the Court must determine that the claim is justiciable, meaning that there is an actual controversy
between the parties. Orix Credit Alliance, Inc. v. Wolfe, 212 F.3d 891, 895 (5th Cir. 2000). Second, the Court
must determine that it has authority to grant the declaratory relief action. Id. Lastly, the Court must exercise
its broad discretion in deciding whether to decide or dismiss the motion for declaratory judgment. This
counterclaim for declaratory judgment is challenged under Federal Rules of Civil Procedure 12(b)(6). At this
stage the claim is evaluated on its facial plausibility, not its merits. See generally, Ashcroft v. Iqbal, 556 U.S.
at 680. Thus, only the first two considerations are important to determining whether or not the Defendants,
as third-party plaintiffs, have stated a claim upon which relief can be granted.

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Reading the facts in the light most favorable to the pleader, it is plausible that the first consideration,
an actual controversy between the parties, exists due to the CHALK PAINT trademark. As the trademark has
been duly registered on the Principle Register of the United States Patent and Trademark Office, and
Defendants are currently using a similar name for their product, Defendants need to know whether their use
of the term “Chalk Paint” is suggestive of a type of product, or actually an infringement on a descriptive
trademark. Rec. Doc. 12, p. 5.
When the matter is justicable and the court has subject matter jurisdiction, it has the authority to grant
declaratory relief. The Sherwin-Williams Co. v. Holmes Cnty., 343 F.3d 383, 387-388 (5th Cir. 2003).
Diversity jurisdiction is present under 28 U.S. §1332, so the Court has the authority to exercise its discretion
to grant or dismiss a claim for declaratory judgment. Rec. Doc. 12, p. 5. Defendants have alleged enough facts
that, when read in the light most favorable to the pleader, the counter claim for declaratory judgment is
plausible on its face.
Accordingly,
IT IS ORDERED that Plaintiff’s Motion to Strike Certain Affirmative Defenses is GRANTED IN
PART and DENIED IN PART. Rec. Doc. 24.
IT IS FURTHER ORDERED that Plaintiff’s Motion to Dismiss Counterclaims is GRANTED as to
the second counter-claim, for cancellation of a federal trademark registration as to Jolie Design only, which
Defendants consented to dismiss. Otherwise, the Motion is DENIED. Rec. Doc. 24.
New Orleans, Louisiana, this 28th day of June, 2013.

______________________
HELEN G. BERRIGAN
UNITED STATES DISTRICT JUDGE

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