Erickson Beamon Ltd. v. CMG Worldwide, Inc. et al

Filing 57

MEMORANDUM AND ORDER. For the reasons in this Memorandum and Order, Erickson Beamon's motion to dismiss defendants' affirmative defenses and counterclaims is granted in part and denied in part. This Memorandum and Order resolves docket number 49, and as further set forth. Granting in part and denying in part 49 Motion to Dismiss. (Signed by Judge Naomi Reice Buchwald on 8/12/2014) Copies Mailed By Chambers. (rjm)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-------------------------------------X
ERICKSON BEAMON LTD.,
Plaintiff,
MEMORANDUM AND ORDER
- against 12 Civ. 5105 (NRB)
CMG WORLDWIDE, INC., and
THE ESTATE OF BETTE DAVIS
Defendants.
-------------------------------------X
NAOMI REICE BUCHWALD
UNITED STATES DISTRICT JUDGE
Plaintiff

Erickson

Beamon

Ltd.

(“Erickson

Beamon”

or

“plaintiff”) brings this action for a declaratory judgment of
trademark non-infringement, non-violation of section 43(a) of
the

Lanham

publicity
collection.
Estate

of

Act,
with

and

non-infringement

respect

Defendants
the

late

to
CMG

movie

its

“Bette

Worldwide,
star

Bette

of

certain

Davis
Inc.
Davis

rights

Eyes”

(“CMG”)
(the

of

jewelry
and

the

“Estate”)

(collectively, “defendants”) maintain that plaintiff’s jewelry
line does, in fact, infringe those intellectual property rights.
Presently before the Court is plaintiff’s motion to dismiss the
affirmative defenses and counterclaims asserted in defendants’
answer to the complaint.

For the reasons set forth below, we

grant plaintiff’s motion in part and deny it in part.

BACKGROUND
Erickson Beamon is a New York corporation that designs and
distributes jewelry for sale in seventy-five nations worldwide.
Compl. ¶¶ 1, 16.

In late 2010, plaintiff launched a jewelry

line called the “Bette Davis Eyes” collection.

Id. ¶ 2.

“Bette

advertisement,

Davis

Eyes”

name

was

used

in

the

The

marketing, and distribution of various jewelry items, including
necklaces, rings, earrings, and bracelets.

Countercl. ¶ 15.

The “Bette Davis Eyes” line of jewelry was made available both
at online retailers and at physical stores throughout the United
States.
It

Id. ¶ 18.
is

undisputed

that

plaintiff

used

the

name

“Bette

Davis” in connection with its jewelry without authorization from
either the Estate or from CMG, the Estate’s exclusive licensing
agent for Bette Davis’s intellectual property.
However,

plaintiff

maintains

that

its

Compl. ¶¶ 2, 21.
jewelry

actually

references “Bette Davis Eyes,” a song originally written in 1974
and which achieved popularity when recorded by Kim Carnes in
1981.

Id. ¶¶ 7–9.

While plaintiff asserts that “consumers

associate the phrase ‘Bette Davis Eyes’” with the song, id. ¶
15, defendants contend that “consumers will mistakenly believe”
that

plaintiff’s

actress

herself,

merchandise
Countercl.

is
¶

somehow

30.
2

In

affiliated
September

with

2011,

the
upon

learning about the jewelry line, CMG sent a letter to Erickson
Beamon which stated defendants’ belief that the use of Bette
Davis’s

name

was

unauthorized

and,

as

such,

constituted

an

infringement of the Estate’s rights in and to the actress’s name
and likeness.

Countercl. ¶ 20.

On June 29, 2012, plaintiff filed a lawsuit in this Court
seeking declaratory relief and an injunction which stated that
its use of the “Bette Davis Eyes” name for its jewelry line did
not

infringe

Compl.

¶

on

50.

defendants’

Defendants

intellectual

responded

on

property

December

17,

rights.
2012

by

filing a motion to dismiss or, in the alternative, to stay or
transfer this action to the U.S. District Court for the Southern
District of Indiana.1
2013.
Civ.

We denied this motion on September 25,

See Erickson Beamon Ltd. v. CMG Worldwide, Inc., No. 12
5105(NRB),

2013).

2013

Defendants

WL

then

5355010,

at

filed

motion

a

*9

(S.D.N.Y.
for

Sept.

25,

reconsideration,

which we denied on November 12, 2013.
Having

lost

their

motion

for

dismissal

or

transfer,

defendants answered plaintiff’s complaint on November 25, 2013.
The answer included eleven affirmative defenses and a sevenDefendants had filed their own lawsuit in the U.S. District Court for the
Southern District of Indiana on November 16, 2013, seeking damages and
injunctive relief based on plaintiff’s unauthorized use of the “Bette Davis”
name. See generally Complaint, CMG Worldwide, Inc. v. Erickson Beamon Ltd.,
No. 1:12-cv-1687 (JMS) (S.D. Ind. Nov. 16, 2012). This action was ultimately
transferred to this Court and then voluntarily dismissed by CMG and the
Estate on December 17, 2013.
1

3

count counterclaim.

On December 16, 2013, plaintiff filed a

motion to dismiss defendants’ affirmative defenses pursuant to
Federal Rules of Civil Procedure 12(c) and 12(h)(2), and to
dismiss defendants’ counterclaims under Federal Rule of Civil
Procedure 12(b)(6).

See Pl.’s Mot. to Dismiss Countercls. &

Affirmative Defenses (“Pl.’s Mot.”) at 1.

This motion was filed

in violation of Rule 2(B) of our Individual Practices, which
requires that parties submit a letter requesting a pre-motion
conference in advance of filing a non-discovery motion.

Despite

this violation, we considered the relative merits of plaintiff’s
motion

and

defendants’

teleconference

with

the

opposition
parties

brief
on

before

January

14,

conducting
2014.

a
In

discussing the case with the parties, we expressed our initial
concerns about the usefulness of plaintiff’s motion and voiced
skepticism regarding whether it had the potential to resolve or
even advance this litigation.

Nevertheless, plaintiff’s counsel

wished to proceed, and he filed the reply brief the next day.
DISCUSSION
I.

Motion to Strike Affirmative Defenses
A.

Legal Standard

Although

plaintiff

seeks

dismissal

of

defendants’

affirmative defenses pursuant to Rule 12(h)(2) of the Federal
Rules, the proper provision is actually Rule 12(f).
4

Compare

Fed.

R.

Civ.

P.

12(h)

(stating

the

rule

for

waiving

and

preserving defenses), with Fed. R. Civ. P. 12(f) (describing the
circumstances when a court may strike defenses from a pleading).
Under

Rule

12(f),

either

party

may

move

to

strike

from

a

pleading “any insufficient defense or any . . . immaterial [or]
impertinent”

allegations.

Fed.

R.

Civ.

P.

12(f).

“An

allegation is ‘impertinent’ or ‘immaterial’ when it is neither
responsive nor relevant to the issues involved in the action.”
Anderson v. Davis Polk & Wardwell LLP, 850 F. Supp. 2d 392, 416
(S.D.N.Y. 2012) (internal quotation marks omitted).
Motions

to

strike

affirmative

defenses

are

generally

disfavored, see Salcer v. Envicon Equities Corp., 744 F.2d 935,
939 (2d Cir. 1984), vacated on other grounds, 478 U.S. 1015
(1986),

and

in

considering

such

a

motion,

all

reasonable

inferences will be drawn in favor of the non-moving party, see
Diesel Props S.r.L. v. Greystone Bus. Credit II LLC, No. 07 Civ.
9580(HB), 2008 WL 4833001, at *4 (S.D.N.Y. Nov. 5, 2008).
plaintiff

to

prevail

on

a

motion

to

strike

an

For a

affirmative

defense: “(1) there must be no question of fact that might allow
the

defense

to

succeed;

(2)

there

must

be

no

substantial

question of law that might allow the defense to succeed; and (3)
the

plaintiff

defense.”

must

be

prejudiced

by

the

inclusion

of

the

Coach, Inc. v. Kmart Corps., 756 F. Supp. 2d 421, 425
5

(S.D.N.Y. 2010); accord Cognex Corp. v. Microscan Sys., Inc.,
990 F. Supp. 2d 408, 418 (S.D.N.Y. 2013).

Federal courts enjoy

broad discretion in granting motions to strike, see Orientview
Techs. LLC v. Seven for All Mankind, LLC, No. 13 Civ. 0538(PAE),
2013

WL

4016302,

at

*3

(S.D.N.Y.

Aug.

7,

2013),

but

courts

“should not tamper with the pleadings unless there is a strong
reason for so doing.”

Lipsky v. Commonwealth United Corp., 551

F.2d 887, 893 (2d Cir. 1976).
Despite the burden on the party moving to strike, plaintiff
argues

that

defendants’

affirmative

defenses

must

meet

the

plausibility standard outlined in Bell Atlantic Corporation v.
Twombly, 550 U.S. 544 (2008), and Ashcroft v. Iqbal, 556 U.S.
662 (2009).

See Pl.’s Mot. at 2.

Twombly

and

Iqbal

whether

[the]

decisions,

‘plausibility

defenses as well.”

“Since the Supreme Court’s

district

standard’

courts
applies

have
to

disputed

affirmative

Scott v. WorldStarHipHop, Inc., No. 10 Civ.

9538(PKC)(RLE), 2012 WL 5835232, at *2 (S.D.N.Y. Nov. 14, 2012);
compare

E.E.O.C.

v.

Kelley

Drye

&

Warren,

LLP,

No.

10

Civ.

655(LTS)(MHD), 2011 WL 3163443, at *2 (S.D.N.Y. July 25, 2011)
(“[M]ost lower courts that have considered the question of the
standard applicable to pleading of defenses have held that the
Rule

12(b)(6)

governs

the

standard,
sufficiency

as

elucidated
of

the
6

in

Twombly

pleading

of

and

Iqbal,

affirmative

defenses.”), with Hon-Hai Precision Indus. Co., Ltd. v. Wi-LAN,
Inc., No. 12 Civ. 7900(SAS), 2013 WL 2322675, at *9 (S.D.N.Y.
May 28, 2013) (“The majority of district courts in [the Second]
Circuit

to

consider

the

issue

have

held

that

affirmative

defenses are not subject to the pleading standard of Twombly.”).
We

disagree

with

plaintiff

and

hold

defendants

to

a

less

exacting standard than the one articulated in Twombly and Iqbal.
The reasons behind our conclusion are manifold.

First, the

text of the Federal Rules indicates that a plaintiff’s initial
pleading burden is more significant than that of a defendant
raising

an

governs

pleadings

‘show’

affirmative

the

that

pleader’s

defense.
state

While

claims,

entitlement

to

Rule

8(a)(2),

requires

that

relief[,]

.

“which

pleadings
.

.

Rule

8(c)(1), . . . which governs pleading affirmative defenses, only
requires

a

party

5835232,

at

to

*3.

‘state’

Twombly

the

and

defense.”

Iqbal

Scott,

clarified

the

2012

WL

pleading

requirement under Rule 8(a), but do not reference the standard
for affirmative defenses under Rule 8(c).
at 557; Iqbal, 556 U.S. at 678–79.
argument,

“Form

30

of

the

See Twombly, 550 U.S.

In addition to the textual

Federal

Rules

of

Civil

Procedure

indicates that notice pleading suffices to plead an affirmative
defense.”

Hon-Hai, 2013 WL 2322675, at *9.

equitable

perspective,

it

would
7

be

unfair

Moreover, from an
to

“hold[]

the

defendant to the same pleading standard as the plaintiff, when
the defendant has only a limited time to respond after service
of the complaint while plaintiff has until the expiration of the
statute of limitations.”

Tardif v. City of New York, No. 13–CV–

4056 (KMW)(FM), 2014 WL 2971004, at *3 (S.D.N.Y. July 2, 2014)
(quoting Bayer CropScience AG v. Dow AgroSciences LLC, Civ. 10–
1045, 2011 WL 6934557, at *1 (D. Del. Dec. 30, 2011)).

Finally,

the “low likelihood that motions to strike affirmative defenses
would expedite the litigation, given that leave to amend is
routinely granted” also militates against holding defendants to
the Twombly and Iqbal standard.
2011 WL 6934557, at *2).

Id. (quoting Bayer CropScience,

This final reason is particularly

salient in the context of this litigation, as we previously
advised

plaintiff’s

little

purpose

in

counsel
moving

that
this

the

instant

case

motion

toward

served

resolution.

Therefore, to survive plaintiff’s motion, defendants must only
state their affirmative defenses pursuant to Rule 8(c) and need
not meet the plausibility standard of Twombly and Iqbal.
B.
In
defenses.

Defendants’ Affirmative Defenses
their

answer,

defendants

raise

We will address them each in turn.

8

eleven

affirmative

1.

Bad Faith

Plaintiff

challenges

defendants’

first

affirmative

defense, bad faith, on the ground that “[t]here is no separable
‘bad faith’ alleged anywhere in the Answer and Counterclaims.”
Pl.’s Mot. at 3.
the

answer

in

This argument is misguided.

the

light

most

favorable

to

When we construe
defendants,

they

sufficiently claim that plaintiff acted in bad faith through its
alleged

misappropriation

bringing

the

wrongfully.

instant

of

the

lawsuit

Answer ¶¶ 50–51.

“Bette
when

Davis”

plaintiff

name
itself

and

by

acted

Whether defendants are ultimately

able to prove their allegations is another matter, but because
the question of bad faith is “very fact intensive,” we cannot
say that there is no question of fact that may allow the defense
to succeed.
Mgmt.,

Inc.,

Michelle Pommier Models, Inc. v. Men Women NY Model
No.

97

Civ.

(S.D.N.Y. Nov. 18, 1997).

6837(SAS),

1997

WL

724575,

at

*4

Defendants have stated their bad

faith defense in conformance with the requirements of Rule 8(c),
providing plaintiff with adequate notice of the defense; thus,
plaintiff’s motion to strike this affirmative defense is denied.
2.
Next,

Unclean Hands
plaintiff

objects

to

defendants’

unclean

hands

affirmative defense because it is “nothing more than a verbatim
recitation of the previous ‘defense’ of ‘bad faith.’”
9

Pl.’s

Mot. at 3 (emphasis in original).

However, this fact does not

render the affirmative defense inadequate.
faith

and

unclean

hands

travel

in

The defenses of bad

tandem,

so

the

same

allegations would plausibly apply to both affirmative defenses.
See Deere & Co. v. MTD Holdings, Inc., No. 00 Civ. 5936(LMM),
2004

WL

1794507,

at

*2

(S.D.N.Y.

Aug.

11,

2004)

(“It

is

undisputed that an unclean hands defense requires a finding of
bad faith.” (quoting Jones Apparel Grp., Inc. v. Piccone, No. 94
CIV. 0754 (LMM), 1994 WL 260767, at *4 (S.D.N.Y. June 8, 1994))
(internal quotation marks omitted)).
done

more

alleged
Davis”

than

that

the

plaintiff

name,

sufficiently

invoke

image,
provides

words

actually

and

Moreover, defendants have

“unclean

misappropriated

likeness.

plaintiff

hands”;

with

Answer
notice

¶
of

they

have

the

“Bette

52.

This

defendants’

position that Erickson Beamon does not come to this litigation
with clean hands.
F.

Supp.

2d

Cf. Obabueki v. Int’l Bus. Machs. Corp., 145

371,

401

(S.D.N.Y.

2001)

(“Pleading

the

words

‘unclean hands’ without more . . . is not a sufficient statement
of such defense.”).

Therefore, plaintiff’s motion to strike

this affirmative defense is denied.
3.

Failure to State a Claim for Relief

Plaintiff

asserts

that

in

stating

their

affirmative

defense of failure to state a claim for relief, defendants must
10

provide an “indication of which of Plaintiff’s claims Defendants
find

improper

and

what

specifically is lacking.”

element

failure-to-state-a-claim
defense

to

the

cause

Pl.’s Mot. at 4.

defendants to too high a burden.

affirmative

of

of

action

Again, this holds

“[I]t is well settled that the

defense
include

is

a
the

in

perfectly

appropriate

answer.”

S.E.C.

v.

Toomey, 866 F. Supp. 719, 723 (S.D.N.Y. 1992).

“Although the

defense

essentially

is

arguably

redundant

in

that

it

is

a

general denial, there is no prejudicial harm to plaintiff and
the

defense

need

not

be

stricken.”

Cnty.

Vanlines

Inc.

v.

Experian Info. Solutions, Inc., 205 F.R.D. 148, 153 (S.D.N.Y.
2002) (internal quotation marks omitted).

Accordingly, we deny

plaintiff’s motion to strike this affirmative defense.
4.
In

Illegality

stating

defendants

simply

their

affirmative

assert

that

“[e]ach

defense
and

of

every

illegality,
one

of

the

claims brought by Plaintiff in the Complaint are barred by the
doctrine of illegality.”

Answer ¶ 55.

“Under the doctrine of

illegality a party to an unlawful bargain cannot recover damages
for its breach.”
Cir. 1975).

Lowenschuss v. Kane, 520 F.2d 255, 266 (2d

There is no evidence of a “bargain” here between

the parties, let alone an unlawful one that plaintiff breached.
In fact, central to defendants’ claims is that Erickson Beamon
11

used

the

“Bette

Davis”

name

for

its

arrangement with the Estate or CMG.

jewelry

absent

any

See Countercl. ¶¶ 25–26.

Although we have repeatedly stated that defendants need only
“state” their affirmative defenses under Rule 8(c), “the law is
clear that the ‘mere recitation of . . . legal buzzwords’ is not
sufficient to state a valid counterclaim.”

Cartier Int’l AG v.

Motion in Time, Inc., No. 12 Civ. 8216(JMF), 2013 WL 1386975, at
*3 (S.D.N.Y. Apr. 5, 2013) (quoting In re Beacon Assocs. Litig.,
Nos.

09

3586129,

Civ.
at

777(LBS)(AJP),
*1

(S.D.N.Y.

marks omitted)).

10

Civ.

Aug.

11,

8000(LBS)(AJP),

2011)

(internal

2011

WL

quotation

There is no question of law that would allow

this defense to succeed, and “inclusion of a defense that must
fail as a matter of law prejudices the plaintiff because it will
needlessly
Coach,

increase

Inc.,

756

the
F.

duration
Supp.

2d

and

expense

at

426.

of

litigation.”

Therefore,

this

affirmative defense is stricken as impertinent and immaterial.
5.

Fraud

Defendants also assert fraud as an affirmative defense.
While other affirmative defenses must satisfy only the notice
requirements

of

Rule

8(c),

affirmative

defenses

alleging

required

Fed.

Civ.

by

R.

P.

“[d]efendants
fraud
9(b).”

with

must
the

Yurman

plead

their

particularity

Design

Inc.

v.

Chaindom Enters., Inc., No. 99 Civ. 9307(JFK), 2000 WL 897141,
12

at *3 (S.D.N.Y. July 5, 2000); see also Trustees of Local 813
Ins. Trust Fund v. Wilner’s Livery Serv., Inc., No. 11–CV–3180
(DLI)(CLP), 2012 WL 4327070, at *2 (E.D.N.Y. Sept. 19, 2012)
(“Rule 9(b) requires a defendant to plead affirmative defenses
alleging
plainly

fraud

with

failed

to

particularity.”).

meet

this

burden;

Here,
their

defendants

general

have

assertion

“[e]ach and every one of the claims brought by the plaintiff in
the complaint are barred by the doctrine of fraud” is far from
particularized.

Answer ¶ 56.

Consequently, we strike this

affirmative defense as inadequately pled.
6.

Lack of Standing

Defendants maintain that plaintiff lacks standing under
the Declaratory Judgment Act, 28 U.S.C. § 2201, to bring the
instant action.

See id. ¶¶ 58–60.

However, this Court has

previously ruled that plaintiff does, in fact, have the right to
bring

this

action

under

the

Declaratory

Judgment

Erickson Beamon, 2013 WL 5355010, at *4–6.

Act.

See

When an issue has

already been decided by a court, it is not properly raised again
as an affirmative defense.

See Middle East Bank v. Harmony

Sportswear, Inc., No. 93 Civ. 228 (JFK), 1994 WL 74057, at *6
(S.D.N.Y.
Declaratory

Mar.

10,

Judgment

1994).
Act,

Moreover,
there

is

as

required

clearly

an

by

the

“actual

controversy” here regarding the use of the Bette Davis name, a
13

fact

to

which

defendants

implicitly

assent

by

contesting

plaintiff’s complaint and filing an answer and counterclaim.
U.S.C. § 2201(a).

28

Therefore, plaintiff has standing, and we

grant the motion to strike this affirmative defense.
7.
The

Failure to Mitigate

answer

also

failure to mitigate.

includes

the

affirmative

Answer ¶¶ 61–62.

germane to the instant case.

defense

of

Such a defense is not

In order for failure to mitigate

to be a viable defense, the complaint must allege some form of
damages that the plaintiff failed to reduce.

See Coastal Power

Int’l, Ltd. v. Transcontinental Capital Corp., 10 F. Supp. 2d
345, 370 (S.D.N.Y. 1998) (“[T]he defense of failure to mitigate
requires the defendant to establish not only that the plaintiff
unreasonably

failed

to

mitigate,

would have reduced the damages.”).
declaratory
monetary
expenses.

judgment

compensation

and

a

sought

Compl. ¶ 50.

but

that

efforts

Here, the complaint seeks a

permanent
are

reasonable

injunction;

attorneys’

fees,

the
costs,

only
and

Given plaintiff’s right to bring this

action under the Declaratory Judgment Act, as we have previously
established, the costs of litigation do not constitute “damages”
that plaintiff should have “mitigated” by electing not to bring
this lawsuit.

Therefore, we strike this affirmative defense as

impertinent and immaterial.
14

8.

Acknowledgment

Defendants

also

plead

the

affirmative

defense

of

acknowledgment, stating that plaintiff’s own pleadings “concede
that defendants own the rights upon which defendants’ claims are
based.”

Answer ¶ 63.

Plaintiff counters that this assertion

“is demonstrably false on even a cursory reading of plaintiff’s
pleading.”

Pl.’s Mot. at 7.

We agree with plaintiff.

Although

plaintiff acknowledges using the name “Bette Davis Eyes” for a
jewelry

collection,

it

has

repeatedly

maintained

that

“[d]efendants have no subsisting trademarks in the name ‘Bette
Davis,’” and that
Eyes’

does

not

plaintiff’s “use of the name ‘Bette Davis
misappropriate

picture, or voice.”
affirmative

Ms.

Compl. ¶¶ 32, 46.

defenses

are

generally

Davis’s

name,

portrait,

While motions to strike
disfavored,

they

are

nonetheless appropriately granted when “the insufficiency of the
defense

is

clearly

apparent

on

the

face

of

the

pleading.”

Wireless Ink Corp. v. Facebook, Inc., 787 F. Supp. 2d 298, 314
(S.D.N.Y. 2011) (internal quotation marks omitted).

The plain

language of the complaint disproves the claim that plaintiff
acknowledged defendants’ ownership of the disputed intellectual
property rights -- if such an acknowledgment occurred, there
would be no case.

We therefore strike this affirmative defense.

15

9.

Acquiescence

The next affirmative defense alleged by defendants is that
“Plaintiff’s claims are barred by the doctrine of acquiescence.”
Answer ¶ 64.

“The defense of acquiescence is available when a

plaintiff has responded to a defendant’s actions with implicit
or

explicit

assurances

upon

which

the

defendant

relied.”

Empresa Cubana Del Tabaco v. Culbro Corp., 213 F. Supp. 2d 247,
276 (S.D.N.Y. 2002) (internal quotation marks omitted); see also
Johnson & Johnson v. Actavis Grp. hf, No. 06 Civ. 8209(DLC),
2008 WL 228061, at *9 (S.D.N.Y. Jan. 25, 2008) (holding that
“the defense of acquiescence embodies active consent” on the
part

of

the

plaintiff).

defense is illogical.

In

this

context,

the

acquiescence

If Erickson Beamon claimed that CMG and

the Estate acquiesced to its use of the “Bette Davis” name, such
a claim would be plausible, but there is no conceivable set of
facts under which plaintiff could have acquiesced to defendants’
conduct in this case.

Defendants’ assertion of acquiescence as

an affirmative defense is nonsensical, and we hereby strike it
as immaterial and impertinent.
10.
For

Defendants’ Actions Justified

their

penultimate

affirmative

defense,

defendants

assert that their “actions were and are fair, privileged and
justified.”

Answer ¶ 65.

We recognize the relatively low bar
16

for stating affirmative defenses and the fact that the list of
defenses identified in Rule 8(c) is nonexhaustive.
Bock, 549 U.S. 199, 212 (2007).

See Jones v.

However, defendants’ assertion

here is extremely vague and does not provide “plaintiff a fair
notice of the nature of the defense.”
at *6.

Tardif, 2014 WL 2971004,

Consequently, we strike this affirmative defense.
11.

Reservation of Affirmative Defenses Not Yet Known

Finally, defendants attempt to reserve the right to assert
additional affirmative defenses if and when information learned
during the course of discovery suggests that new defenses are
warranted.

Answer ¶ 66.

Plaintiff contends that this approach

subverts the Federal Rules of Civil Procedure, which indicates
that

the

appropriate

mechanism

for

defendants

to

add

new

affirmative defenses is to move to amend their pleadings under
Rule 15(a).
“Should

any

Pl.’s Mot. at 8–9.
facts

arise

during

We concur with plaintiff.
discovery

that

support

any

additional defenses, the proper avenue by which defendant can
and should proceed is detailed in Fed. R. Civ. P. 15(a).”
Vanlines, 205 F.R.D. at 158.

Cnty.

Accordingly, we grant plaintiff’s

motion to strike this affirmative defense.
*

*

*

In sum, the heightened pleading standard of Twombly and
Iqbal does not apply to affirmative defenses.
17

Therefore, it is

only required that defendants “state” their defenses in such a
fashion as to provide plaintiff adequate notice under Rule 8(c).
Nevertheless, the majority of the affirmative defenses alleged
by defendants fail to meet even the lowest of pleading burdens.
The affirmative defenses of illegality, failure to mitigate, and
acquiescence

are

immaterial

and

impertinent.

In

addition,

defendants’ allegations of fraud and acknowledgment are facially
deficient.
defense

Furthermore,

and

the

the

reservation

lack
of

of

standing

defenses

not

affirmative

yet

known

are

improper attempts to evade a previous ruling of this Court and
the

Federal

Rules

of

Civil

Procedure.

Finally,

defendants’

blithe assertion that their actions were justified is simply too
vague to provide plaintiff with sufficient notice under Rule
8(c).

Thus,

we

grant

plaintiff’s

motion

to

strike

the

defendants’ fourth through eleventh affirmative defenses.
Once we strike these affirmative defenses, three remain:
bad

faith,

relief.

unclean

hands,

and

failure

to

state

a

claim

for

Plaintiff’s motion to strike these affirmative defenses

is hereby denied.
II.

Motion to Dismiss Counterclaims
A.
In

Legal Standard
contrast

to

affirmative

defenses,

counterclaims

must

meet the pleading requirements of Rule 8(a), as interpreted by
18

Twombly

and

pursuant

Iqbal,

to

in

Federal

order

Rule

of

to

survive

Civil

a

motion

Procedure

to

dismiss

12(b)(6).

See

Orientview Techs., 2013 WL 4016302, at *2 (“A motion to dismiss
a counterclaim is evaluated under the same standard as a motion
to dismiss a complaint.” (quoting Revonate Mfg., LLC v. Acer Am.
Corp., No. 12 Civ. 6017(KBF), 2013 WL 342922, at *2 (S.D.N.Y.
Jan. 18, 2013))).

In considering defendants’ counterclaims, we

accept as true all factual allegations in the pleadings and draw
all

reasonable

inferences

in

the

non-moving

party’s

favor.

Harris v. Mills, 572 F.3d 66, 71 (2d Cir. 2009); Kassner v. 2nd
Ave.

Delicatessen,

Inc.,

496

F.3d

229,

237

(2d

Cir.

2007).

Nevertheless, the counterclaimant’s “[f]actual allegations must
be

enough

level.”
678

to

a

right

of

relief

above

the

speculative

Twombly, 550 U.S. at 555; see also Iqbal, 556 U.S. at

(finding

“more

raise

than

that
a

a

plaintiff’s

allegations

sheer

possibility

that

a

must

demonstrate

defendant

has

acted

unlawfully” in order to pass muster under Rule 12(b)(6)).

If

the counterclaimant has “not nudged [its] claims across the line
from

conceivable

to

plausible,”

the

dismissed.

Twombly, 550 U.S. at 570.

applies

“all

to

civil

actions.”

(internal quotation marks omitted).

19

counterclaim

must

be

This pleading standard

Iqbal,

556

U.S.

at

684

B.

Defendants’ Counterclaims

Defendants have filed seven counterclaims, each of which we
will address in turn.
1.

Unfair Competition and False
Origin under the Lanham Act

Designation

of

Section 43(a) of the Lanham Act (“Section 43(a)”) allows a
party to initiate a cause of action against a person who “uses
in commerce any word, term, name, symbol, or device, or any
combination thereof . . . [that] is likely to cause confusion,
or to cause mistake . . . as to the origin, sponsorship, or
approval of his or her goods.”
their

counterclaim,

defendants

15 U.S.C. § 1125(a)(1)(A).
have

enumerated

two

causes

In
of

action under Section 43(a): unfair competition (Count I) and
false

designation

of

origin

(Count

IV).

“Although

the

[counterclaim] lists unfair competition and false designation of
origin as separate counts, the two are in fact the same cause of
action under Section 43(a).”

Allied Interstate LLC v. Kimmel &

Silverman P.C., No. 12 Civ. 4204(LTS)(SN), 2013 WL 4245987, at
*5 (S.D.N.Y. Aug. 12, 2013); see also Medisim Ltd. v. BestMed
LLC, 861 F. Supp. 2d 158, 178 n.150 (“As the Supreme Court has
made clear, the same likelihood of confusion analysis applies
regardless of the name given to the trademark claim -- e.g.
false designation of origin, infringement, or something else.”

20

(citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 780
(1992))).

Therefore, we will analyze these two claims together.2

“To succeed on a section 43(a)(1)(A) claim, a plaintiff
must prove (1) that the mark or dress is distinctive as to the
source of the good or service at issue, and (2) that there is
the

likelihood

of

confusion

between

service and that of the defendant.”

the

plaintiff’s

good

or

ITC Ltd. v. Punchgini,

Inc., 482 F.3d 135, 154 (2d Cir. 2007); see also Savin Corp. v.
Savin

Grp.,

391

F.3d

439,

456

(2d

Cir.

2004)

(“A

claim

of

trademark infringement is analyzed under a familiar two-prong
test.

The test looks first to whether the plaintiff’s mark is

entitled to protection, and second to whether the defendant’s
use of the mark is likely to cause consumers confusion as to the
origin or sponsorship of the defendant’s goods.” (quoting Virgin
Enters.,
(internal

Ltd.

v.

Nawab,

quotation

335

F.3d

marks

and

141,

146

(2d

alterations

Cir.

2003))

omitted)).

“Preliminary to making this showing, however, a plaintiff must

Although defendants have pled two counterclaims when one would have
sufficed, we decline to dismiss either of the counterclaims at this stage.
We reach this decision because plaintiff experiences no prejudice as a result
of the continued inclusion of both counterclaims -- there is no possibility
for defendants to receive additional damages as a result of the duplicative
claim and the scope of future discovery remains unchanged -- and, as we
discuss, the Lanham Act claims are adequately pled. See Bangkok Crafts Corp.
v. Capitolo Di San Pietro in Vaticano, 03 Civ. 15(RWS), 2007 WL 1687044, at
*10 (S.D.N.Y. June 11, 2007) (declining to dismiss pleadings as redundant on
a motion to dismiss when the redundant claim may be valid).
2

21

demonstrate its own right to use the mark or dress in question.”
ITC Ltd., 482 F.3d at 154.
Defendants’ have sufficiently pled the required elements
to

survive

a

motion

defendants

maintain

affiliated

with

to

that

Bette

dismiss.
they

Davis;

As

own

all

based

on

an

initial

intellectual
this

matter,
property

averment,

it

is

plausible that defendants own the exclusive right to use the
“Bette Davis” name in commerce.
26.

It

may

be

that

See, e.g., Countercl. ¶¶ 3, 12,

neither

defendants

nor

their

licensees

actually used the mark in commerce, a fact which would undermine
defendants’ Lanham Act claims.

See ITC Ltd., 482 F.3d at 146

(stating “the well-established principle that trademark rights
are acquired and maintained through use of a particular mark”).
However, this is a question of fact ill-suited for determination
at the motion to dismiss phase.

So, too, is the question of the

likelihood of consumer confusion.

See Courtenay Commc’ns Corp.

v. Hall, 334 F.3d 210, 215 (2d Cir. 2003) (finding the pleadings
“insufficient

for

determining

the

critical

fact

of

how

the

public views” the mark at issue); Quality Serv. Grp. v. LJMJR
Corp., 831 F. Supp. 2d 705, 713 (S.D.N.Y. 2011) (deciding that
the comparison of two similar names in a likelihood of consumer
confusion

analysis

inappropriate

for

was

“a

fact-specific

determination
22

on

a

motion

inquiry
for

that

judgment

is
on

[the]

pleadings”).

And

finally,

the

name

“Bette

Davis”

is

certainly distinctive with regard to its source -- this was a
woman, after all, whose eyes inspired a chart-topping song well
after

her

popularity

Accordingly,

we

had

decline

peaked.

to

dismiss

See

Compl.

defendants’

¶¶

7–10.

counterclaims

under Section 43(a) of the Lanham Act.
2.

Common Law Unfair Competition

“The elements necessary to prevail on causes of action for
trademark
common

infringement

law

mirror

and

the

unfair

Lanham

competition

Act

claims.”

under

New

ESPN,

York

Inc.

v.

Quiksilver, Inc., 586 F. Supp. 2d 219, 230 (S.D.N.Y. 2011).

In

addition to pleading the Lanham Act elements, however, a party
stating a claim of unfair competition under New York law must
plead

that

the

alleged

infringer

acted

in

bad

faith.

See

Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d 462, 485 (2d
Cir. 2005); Genesee Brewing Co., Inc. v. Stroh Brewing Co., 124
F.3d

137,

defendants

149
have

(2d

Cir.

stated

1997).
a

claim

Because
for

we

unfair

have

found

competition

that
under

Section 43(a), the only remaining question is whether defendants
have adequately pled that plaintiff acted in bad faith.
In their counterclaim, defendants
“knowingly
rights

and

“with

intentionally
the

intent

infringed
to
23

allege that plaintiff
upon”

unfairly

their

trade

trademark
on

and/or

misappropriate the reputation and goodwill of
Davis.”

Countercl. ¶ 31.

the late Bette

We find this assertion of bad faith

sufficient at this stage of the litigation.

At the pleading

stage, “it is not the role of the Court . . . to sift through a
meager record and decide which litigant is acting in good or bad
faith.”

Streit v. Bushnell, 424 F. Supp. 2d 633, 638 (S.D.N.Y.

2006).

Therefore,

although

defendants’

allegations

of

plaintiff’s bad faith are reasonably thin at this point, they
are

still

adequate

to

state

the

counterclaim

of

unfair

competition under New York law.
3.

Unjust Enrichment

In order to state a claim for unjust enrichment under New
York

law,

defendants

must

allege

that

(1)

plaintiff

was

enriched, (2) at defendants’ expense, and (3) that it is against
equity and good conscience to permit plaintiff to retain what
defendants
Rieder,

aim

973

to

recover.

N.E.2d

743,

746

Georgia
(N.Y.

Malone

2012);

&

Co.,

Inc.

v.

see

also

Kaye

v.

Grossman, 202 F.3d 611, 616 (2d Cir. 2000) (“To prevail on a
claim

for

establish

unjust
(1)

enrichment

that

the

in

New

defendant

York,

a

plaintiff

benefitted;

(2)

at

must
the

plaintiff’s expense; and (3) that ‘equity and good conscience’
require restitution.”).

Here, defendants have adequately pled

each of the three elements.
24

First, defendants allege that plaintiff’s gross sales of
the

allegedly

infringing

Countercl. ¶ 24.
sufficient

to

merchandise

totaled

$163,980.

This sum certainly constitutes “enrichment”

meet

the

first

prong

of

the

test.

Second,

defendants’ assertion that they were in the exclusive position
to authorize the use of the “Bette Davis” name would presumably
entitle them to at least a portion of the jewelry sale proceeds.
See id. ¶ 26.
as

true,

a

Thus, taking the allegations in the counterclaim
portion

defendants’ expense.

of

Erickson

Beamon’s

profits

were

at

Third, if plaintiff did, in fact, profit

from the misappropriation of the defendants’ mark, it would be
against equity to allow it to retain the money earned from this
wrongful conduct.

Accordingly, defendants have adequately pled

their unjust enrichment counterclaim under New York law.
4.

Dilution

Defendants

have

also

filed

a

under both federal and state law.

counterclaim

for

dilution

To state a dilution claim

under the Lanham Act, 11 U.S.C. § 1125(c), a plaintiff must
plead that: “(1) its mark is famous; (2) the defendant is making
commercial use of the mark in commerce; (3) the defendant’s use
began after the mark became famous; and (4) the defendant’s use
of the mark dilutes the quality of the mark by diminishing the
capacity

of

the

mark

to

identify
25

and

distinguish

goods

and

services.”

Louis Vuitton Malletier v. Dooney & Bourke, Inc.,

454 F.3d 108, 118 (2d Cir. 2006) (quoting Savin Corp., 391 F.3d
at

448–49)

(internal

quotation

marks

omitted).

Plaintiff

focuses its argument on first prong of the test, claiming that
defendants have set forth “no more than a ‘threadbare recital’
of the fame element of a federal dilution cause of action.”
Pl.’s Mot. at 13.

However, defendants have pled that Bette

Davis is “widely recognized” and that she

had an “acclaimed

career [with] the attendant fame and prominence.”
11.

The

counterclaim

makes

clear

that

Bette

Countercl. ¶
Davis

was

not

someone who enjoyed only “brief fame in a small part of the
country, or among a small segment of the population.”

TCPIP

Holding Co., Inc. v. Haar Commc’ns, Inc., 244 F.3d 88, 99 (2d
Cir. 2001).

Rather, she was someone who achieved such renown

that, as plaintiff itself recognizes, a very popular song was
written about her eyes.

See Compl. ¶¶ 7–10.

We therefore find

it plausible that “Bette Davis” constitutes a famous mark and
decline to dismiss the federal dilution counterclaim.
To state a claim for dilution pursuant to New York General
Business Law § 360-l, a party must plead: “(1) a distinctive
mark capable of being diluted and (2) a likelihood of dilution.”
Akiro LLC v. House of Cheatham, Inc., 946 F. Supp. 2d 324, 342
(S.D.N.Y. 2013) (internal quotation marks omitted).
26

With regard

to the first element, because we find it plausible that “Bette
Davis” is a famous mark under federal law, it is sufficiently
distinctive under state law.

See Starbucks Corp. v. Wolfe’s

Borough Coffee, Inc., 588 F.3d 97, 114 (2d Cir. 2009) (“Unlike
federal
dilution

trademark
law

dilution

does

not

law

.

require

a

.

.

New

mark

to

protection against dilution to apply.”).

York’s
be

trademark

‘famous’

for

In meeting the second

prong, the key is that “New York law does not permit a dilution
claim unless the marks are ‘substantially’ similar.”

Id.; see

also Mobileye, Inc. v. Picitup Corp., 928 F. Supp. 2d 759, 782
(S.D.N.Y. 2013).

In the instant case, however, the substantial

similarity is obvious: both “Bette Davis,” the mark claimed by
defendants, and “Bette Davis Eyes,” the moniker used for the
jewelry

line,

distinctive

contain

fashion.

the
Thus,

actress’s

name

plaintiff

has

spelled

in

adequately

her
pled

dilution under New York state law as well.
5.

Deceptive Business Practices

Stating a claim for deceptive business practices under New
York General Business Law § 349 requires that a party “prove
three elements: first, that the challenged act or practice was
consumer-oriented; second, that it was misleading in a material
way; and third, that the [claimant] suffered injury as a result
of the deceptive act.”

Biosafe-One, Inc. v. Hawks, 639 F. Supp.
27

2d 358, 367 (S.D.N.Y. 2009), aff’d, 379 F. App’x 4 (2d Cir.
2010) (quoting Stutman v. Chem. Bank, 731 N.E.2d 608, 611 (N.Y.
2000)).

Plaintiff argues that defendants have failed to plead

the second and third elements: materiality and injury.
Mot. at 14–15.

Pl.’s

However, this argument is unavailing.

Focusing on the second element, defendants have claimed
that the term “Bette Davis Eyes” is materially misleading as to
the source of the merchandise, and we find that it is a question
of fact whether this label actually caused consumers to believe
that

the

Estate

had

endorsed

the

jewelry

at

issue.

See

Countercl. ¶ 30 (suggesting that “potential customers will be
misled

and

confused

products).

regarding

the

source”

of

plaintiff’s

This prong is akin to the “likelihood of consumer

confusion” element of an unfair competition claim -- in most
circumstances, including this one, the matter is not conducive
to resolution on the pleadings.
deceptive

business

practices

For the harm element of the
counterclaim,

defendants

have

adequately pled that plaintiff’s use of the “Bette Davis” mark
has caused them injury.

See id. ¶¶ 26, 27, 29.

Consequently,

plaintiff’s motion to dismiss this counterclaim is denied.
6.

Intentional
Interference
Economic Advantage

Defendants’

final

counterclaim

with
is

for

interference with prospective economic advantage.
28

Prospective
intentional
To state this

claim,

“four

business

conditions

relations

interfered

with

acted

a

for

improper

relationship.”

be

a

third

with

those

business

wrongful

means;

must

and

purpose
(4)

Catskill

met:

(1)

party;

relations;
or

the

used

L.L.C.

v.

Corp., 547 F.3d 115, 132 (2d Cir. 2008).
to dismiss this counterclaim is based on
“Defendants

nowhere

allege

that

plaintiff

(2)

defendant

the

(3)

they

acts
Park

had

the

defendant

dishonest,

defendant’s

Dev.,

the

unfair,
injured

Place

or
the

Entm’t

Plaintiff’s argument
its assertion that
had

any

ongoing

relationship with any third party nor that Plaintiff interfered
with such relationship.”

Pl.’s Mot. at 15.

Unlike its previous arguments, plaintiff’s reasoning for
dismissing this cause of action is compelling.

Rather than

allege any previous or current relationship with a third party,
defendants

counterclaim

agreements in the future.

references

only

potential

licensing

See Countercl. ¶ 26 (asserting that

plaintiff’s use of the “Bette Davis” name is “highly injurious
to [defendants’] collective ability to license and or enforce”
the intellectual property at issue).

While plaintiff’s conduct

may have harmed defendants’ ability to profit from the “Bette
Davis”

name

counterclaim

going
that

forward,

there

defendants

29

is

no

allegation

maintained

any

in

the

business

relationships with which plaintiff interfered.

Thus, we grant

plaintiff’s motion to dismiss defendants’ seventh counterclaim.
CONCLUSION
For

the

foregoing

reasons,

Erickson

Beamon’s

motion

to

dismiss defendants’ affirmative defenses and counterclaims is
granted in part and denied in part.

Defendants have adequately

stated the affirmative defenses of bad faith, unclean hands, and
failure to state a claim for relief, but we hereby strike the
remaining

affirmative

defenses.

With

regard

to

defendants’

counterclaims, we grant plaintiff’s motion to dismiss only the
seventh

count,

the

counterclaim

for

intentional

interference

with prospective economic advantage; the other six counterclaims
are sufficiently alleged, and plaintiff’s motion to dismiss them
is denied.
In closing, we note that over the course of many years,
this Court has developed a set of Individual Practices designed
to

preserve

judicial

resources,

streamline litigation.
submitting
Individual

a

relevant

issues,

and

In filing this motion without previously

pre-motion

Practices

clarify

and

letter,

plaintiff

necessitated

the

ignored

consideration

these
of

a

motion that, as demonstrated above, has not contributed to the
resolution

of

this

case.

In

fact,

we

advised

plaintiff’s

counsel, before briefing had been completed, that the instant
30

motion

would

meritorious,

likely
and

we

accomplish
suggested

little

that

See Richardson Greenshields Sec.,
(2d Cir.

1987)

he

even

if

we

reconsider

Inc. v. Lau,

found

its

it

filing.

825 F.2d 647,

(recognizing that pre-motion conferences

652

"serve

the useful purpose of narrowing and resolving conflicts between
the parties and preventing the

filing of unnecessary papers") ;

see also Raymond Weil, S.A. v. Theron,
90

(S.D.N.Y.

affirmative

2008)

motion

( " [A]

wastes

defenses

585 F. Supp. 2d 473, 489to

the

strike

client's

court's time.").

Nevertheless,

plaintiff's

proceed with the

instant motion,

and now,

boilerplate

money and

counsel

the

elected to

after much time has

been spent and much ink has been spilled, this case remains in a
nearly identical posture to where it was more than seven months
ago.

We

hope

and

anticipate

that

greater

judgment

will

be

exercised in the future.
This Memorandum and Order resolves docket number 49.

SO ORDERED.

Dated:

New York, New York
August ~, 2014

£::~

NAOMI REICE BUCHWALD
UNITED STATES DISTRICT JUDGE
31

Copies of the foregoing Order have been mailed on this date
to the following:
Attorneys for Plaintiff
Jeffrey Sonnabend, Esq.
SonnabendLaw
600 Prospect Avenue
Brooklyn, NY 11215
Attorneys for Defendants
Theodore J. Minch, Esq.
SovichMinch LLP
10099 Chesapeake Drive, Suite 100
McCordsville, IN 46055

Bonnie L. Mohr, Esq.
Law Offices of Bonnie L. Mohr, PLLC
225 West 34th Street, 9th Floor
New York, NY 10122

32