Live Face on Web, LLC v. Natchez Board of Realtors, Inc. et al
ORDER granting in part and denying in part 8 Motion to Strike. Signed by Honorable David C. Bramlette, III on March 9, 2018 (JBR)
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF MISSISSIPPI
LIVE FACE ON WEB, LLC
CAUSE NO. 5:17-CV-122-DCB-MTP
NATCHEZ BOARD OF REALTORS, INC.,
and JOE W. STEDMAN
ORDER AND OPINION
Before the Court is Plaintiff Live Face on Web, LLC’s Motion
to Strike [Doc. 9] the Affirmative Defenses of Natchez Board of
Live Face on Web, LLC (“Live Face”) owns a copyright to
software that allows a company to display on its website an image
of a walking, talking host. This “website spokesperson” introduces
a company’s website to online visitors.
The Natchez Board of Realtors, Inc. (the “Board”) and its
spokesperson video to promote the Board’s services.
Live Face sued Stedman and the Board, alleging the Board’s
website spokesperson video infringes on Live Face’s copyright. In
its Answer, the Board raised twelve affirmative defenses —— six of
which Live Face moves to strike.
Defenses raised by responsive pleading must be stated in short
and plain terms. FED. R. CIV. P. 8(b). If a defense is insufficient,
the Court may strike it from an answer. FED. R. CIV. P. 12(f). A
defense can be insufficient as a matter of pleading or as a matter
A defense is insufficient as a matter of pleading if it fails
to provide the plaintiff with fair notice of the defense raised.1
Woodfield v. Bowman, 193 F.3d 354, 362 (5th Cir. 1999). Fair notice
will ordinarily require a defendant to do more than “baldly name”
an affirmative defense. Id. at 362. But “bald naming” may suffice
for discovery-dependent defenses like contributory negligence. Id.
at 362 (citing American Motorists Ins. Co. v. Napoli, 166 F.2d 24,
26 (5th Cir. 1948)).
A defense is insufficient as a matter of law if it cannot
succeed under any circumstances. United States v. Renda, 709 F.3d
472, 479 (5th Cir. 2013).
1 The Court recognizes that the Fifth Circuit is yet to resolve a conflict
among the district courts as to the pleading standard —— “plausibility” or “fair
notice” —— that applies to affirmative defenses. That conflict is academic here:
most of the Board’s affirmative defenses are pleaded insufficiently under the
more lenient “fair notice” standard. Live Face, moreover, has not urged the
Court to apply the heightened “plausibility” standard.
Live Face asks the Court to strike six of the Board’s twelve
insufficient as a matter of pleading. And the remaining two
defenses, Live Face contends, are insufficient as a matter of law.
The Court addresses each challenged defense in turn.
affirmative defense, laches, because it is pleaded insufficiently.
That defense reads, “Plaintiff’s claims are barred by the doctrine
of laches.” See Doc. 5, ¶60. The Court will strike this defense,
but for a different reason.
Laches applies when the legislature has not provided a fixed
limitation period for the filing of a lawsuit. Petrella v. MetroGoldwyn-Mayer, Inc., 134 S. Ct. 1962, 1973 (2014). Because the
legislature has enacted a three-year statute of limitations for
this copyright infringement suit, 17 U.S.C. § 507(b), laches is
not a viable defense. See Oracle America, Inc. v. Hewlett Packard
Enterprise Co., 2017 WL 635291, at *2 (N.D. Cal. 2017) (striking
laches defense in copyright infringement action); Malibu Media,
LLC v. Zumbo, 2014 WL 2742830, at *5 (M.D. Fla. 2014) (same).
The Board did not file a response in opposition to Live Face’s Motion.
The Board’s laches defense is insufficient as a matter of
law. Because laches is not a viable defense to this copyright
circumstances. The Court therefore GRANTS Live Face’s Motion to
Strike the Board’s second affirmative defense, laches.
Live Face next asks the Court to strike the Board’s third
insufficiently. This defense is pleaded as generally as the last:
the Board states only that “Plaintiff’s claims are barred by the
doctrine of estoppel.” See Doc. 5, ¶62.
elements: “(1) the plaintiff must know the facts of the defendant’s
infringing conduct; (2) the plaintiff must intend that its conduct
shall be acted on or must so act that the defendant has a right to
believe that it is so intended; (3) the defendant must be ignorant
plaintiff’s conduct to its injury.” Carson v. Dynegy, Inc., 344
F.3d 446, 453 (5th Cir. 2003).
The Board’s one-sentence effort to plead the defense of
estoppel fails to provide Live Face the fair notice the Fifth
Circuit requires. As pleaded, the defense omits at least two key
facts: the conduct on which the Board contends it detrimentally
relied and the nature of Live Face’s alleged knowledge of the
Board’s infringing conduct.
The Board’s estoppel defense is insufficient as a matter of
pleading. The Court therefore GRANTS Live Face’s Motion to Strike
the Board’s third affirmative defense, estoppel, but accords the
Board leave to properly plead this defense should it wish to pursue
it in this case.
insufficiently. The defense states only that “Plaintiff’s claims
are barred by the doctrine of unclean hands.” Doc. 5, ¶63.
Unclean hands, if proved, defeats a plaintiff’s claim for
equitable relief. To avail itself of the defense, the defendant
must show that it was “personally” injured by the plaintiff’s
inequitable conduct. Mitchell Bros. Film Grp. v. Cinema Adult
Theater, 604 F.2d 852, 863 (5th Cir. 1979).
The Board fails to plead unclean hands with enough specificity
to provide Live Face fair notice. Without some indication of the
appropriately tailor its discovery on the issue. See Software
Publishers Ass’n v. Scott & Scott, LLP, 2007 WL 2325585, at *2
The Board’s unclean hands defense is insufficient as a matter
of pleading. The Court therefore GRANTS Live Face’s Motion to
Strike the Board’s fourth affirmative defense, unclean hands, but
accords the Board leave to properly plead this defense should it
wish to pursue it in this case.
Next, Live Face challenges the Board’s sixth affirmative
defense, which attempts to raise the issue of Live Face’s failure
to mitigate damages. The defense states, “[i]f plaintiff suffered
any damages, which is denied by this Defendant, Plaintiff failed
to take steps to mitigate any such damages.” Doc. 5, ¶65.
The defense of failure to mitigate resembles the defense of
contributory negligence; both are difficult to plead with any
specificity before reasonable discovery. And that is perhaps why
the Fifth Circuit has advised —— in dicta —— that contributory
negligence is a defense that may be pleaded by merely reciting its
name. Woodfield, 193 F.3d at 362 & n. 30 (internal citation
omitted). It follows that failure to mitigate, too, may be pleaded
with less specificity than other defenses.
It would be premature to strike the Board’s defense of failure
to mitigate before any discovery is conducted. See Two Men and a
Truck Int’l v. Two Guys Moving Bossier, LLC, 2015 WL 7573216, at
*2 (M.D. La. 2015). The Court therefore DENIES Live Face’s Motion
mitigate. Live Face may re-urge a motion to strike this defense
after reasonable discovery.
Live Face asks the Court to strike the Board’s seventh
insufficient, the Board insists, because innocent infringement is
not an affirmative defense to copyright infringement liability.
The Court agrees.
Innocent infringement reduces the amount of statutory damages
a court may award, Fitzgerald Pub. Co. v. Baylor Pub. Co., 807
F.2d 1110, 1113 (2d Cir. 1986), but does not negate infringement
liability. See, e.g., Sream, Inc. v. MLF Tobacco Shop, LLC, 2017
WL 4838788, at *3 (S.D. Fla. 2017); Pk Studios, Inc. v. R.L.R.
Investments, LLC, 2016 WL 4529323, at *4 (M.D. Fla. 2016); Lizalde
v. Advanced Planning Servs., Inc., 875 F. Supp. 2d 1150, 1164 n.
11 (S.D. Cal. 2012).
succeed under any set of facts because it is not, in fact, an
affirmative defense to infringement liability. And the innocence
of an infringer is not relevant where, as here, the plaintiff asks
Architects, Inc. v. C.L. Thomas, Inc., 2010 WL 4366990, at *46
(S.D. Tex. 2010). The Court therefore GRANTS Live Face’s Motion to
Finally, Live Face asks the Court to strike the Board’s eighth
affirmative defense, in which the Board asserts the $200 statutory
damage minimum for copyright actions. See 17 U.S.C. 504(c); Doc.
This affirmative defense is insufficient as a matter of law.
The statutory minimum set forth in 17 U.S.C. § 504(c)(2) does not
apply because Live Face elected to recover actual —— not statutory
—— damages.3 See 17 U.S.C. § 504(a); In re Isbell Records, Inc.,
774 F.3d 859, 873 (5th Cir. 2014). The Court therefore GRANTS Live
Face’s Motion to Strike the Board’s eighth affirmative defense.
The Board’s second, seventh, and eighth affirmative defenses
are insufficient as a matter of law. The Board’s third and fourth
3 Should Live Face alter its election to request statutory damages at any
point before entry of final judgment, the statutory minimum of 17 U.S.C. §
504(c)(2) and issues attendant thereto would become relevant, and the Court
would, of course, permit the Board to raise those issues in response to the
affirmative defenses are insufficient as a matter of pleading, but
the Court grants the Board leave to properly plead these defenses
if it wishes to pursue them in this case. The Board’s sixth
affirmative defense is pleaded sufficiently for this stage of the
IT IS HEREBY ORDERED that Live Face on Web, LLC’s Motion to
Strike [Doc. 9] the Affirmative Defenses of Natchez Board of
Realtors, Inc. is GRANTED IN PART as to Natchez Board of Realtors,
Inc.’s second, third, fourth, seventh, and eighth affirmative
defenses, but DENIED IN PART as to Natchez Board of Realtors,
Inc.’s sixth affirmative defense.
FURTHER ORDERED that the Natchez Board of Realtors, Inc.’s
second, third, fourth, seventh, and eighth affirmative defenses
are STRUCK from the record of this action.
FURTHER ORDERED that if the Natchez Board of Realtors, Inc.
wishes to pursue the affirmative defenses of estoppel and unclean
hands, it shall file an amended answer pleading these defenses
with sufficient specificity within ten days of entry of this Order.
SO ORDERED, this the 9th day of March, 2018.
/s/ David Bramlette_________
UNITED STATES DISTRICT JUDGE
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?