Malibu Media, LLC v. DOE

Filing 22

OPINION AND ORDER granting 9 Motion to Dismiss Defendant's Counterclaims. The Court strikes the counterclaim for declaratory relief as redundant and dismisses the abuse of process counterclaim for failure to state a claim upon which relief can be granted. Signed by Magistrate Judge Terence P Kemp on 2/4/2015. (agm1)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION
Malibu Media, LLC,

:

Plaintiff,

:

v.

:

Case No. 2:14-cv-821

:
John Doe,

:
Defendant.

Magistrate Judge Kemp

:

OPINION AND ORDER
This matter is before the Court on Malibu Media’s motion to
dismiss Defendant’s counterclaims.

The motion is fully briefed.

For the following reasons, Plaintiff’s motion to dismiss (Doc. 9)
will be granted.
I.
This case involves a claim of copyright infringement by
means of BitTorrent file sharing technology.

In its amended

complaint, Malibu alleges that defendant David Ricupero used
BitTorrent technology illegally to obtain and distribute Malibu’s
copyrighted movies.

This allegation is based on evidence that an

individual accessed and shared these copyrighted movies using Mr.
Ricupero’s IP address.

Malibu has identified twenty-six movies

that are at issue in this case.

See Exhibits A and B to the

Amended Complaint.
In his answer (Doc. 7), Mr. Ricupero asserts two
counterclaims: (1) a request for a declaratory judgment that he
did not infringe the copyrights; and (2) a claim for abuse of
process.

In support of his declaratory judgment counterclaim,

Mr. Ricupero alleges that an IP address is insufficient to
identify an infringer.

The abuse of process claim is based on

allegations that Malibu brought the lawsuit to extract money from
Mr. Ricupero and publicly humiliate him.
II.
Under Federal Rule of Civil Procedure 12(b)(6), a party may
move to dismiss a claim or counterclaim for failure to state a
claim upon which relief can be granted.

To present a valid

claim, a complaint must include direct or inferential allegations
for all material elements required for recovery under a viable
legal theory.
2005).

Mezibov v. Allen, 411 F.3d 712, 716 (6th Cir.

When evaluating a claim, the Court must accept the

factual allegations as true, construe them in favor of the
proponent, and determine whether the factual allegations present
a plausible claim.
555-557 (2007).

Bell Atl. Corp. v. Twombly, 550 U.S. 544,

A plaintiff must provide “more than labels and

conclusions, and a formulaic recitation of the elements of a
cause of action will not do.” Id. at 555; see also Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009).
III.
In his first counterclaim, Mr. Ricupero requests a
declaratory judgment that he is not an infringer. Malibu argues
that such relief would be repetitions because it is a mirrorimage to its copyright infringement claim and the issues raised
in the counterclaim will necessarily be resolved upon
adjudication of the infringement claim.

Mr. Ricupero contends

that the requested declaratory judgment is an independent form of
relief, and he further argues that he has requested declarations
that the copyrights are invalid, that he had an implied license,
and that Malibu has already recovered the maximum amount of
statutory damages.
A counterclaim can be stricken as redundant when “there is

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complete identity of factual and legal issues between the
complaint and the counterclaim.”

Principal Life Ins. Co. v.

Lawrence Rucker 2007 Ins. Trust, 674 F. Supp. 2d 562, 566 (D.
Del. 2009)(where the court did not find the counterclaim
redundant because the counterclaims involve new facts and issues
of law).

When a defendant counterclaims for “declaratory

judgment of non-infringement[, it] is no more than a restatement
of Defendant's general denial of liability. This is not a
pleading that complies with [minimum pleading requirements].”
Malibu Media, LLC v. Does 1, 13, 14 and 16, 2013 WL 1702549, *10
(E.D. Pa. Mar. 6, 2013)(internal quotations omitted); see also
Malibu Media, LLC v. Doe, 2014 WL 2581168, at *2 (N.D. Ill. June
9, 2014).

But if a defendant counterclaims for a judgment

declaring that a copyright is invalid, the counterclaim is not
redundant because adjudication of only plaintiff’s copyright
infringement claim could leave the defendant in fear of future
actions.

Riding Films, Inc. v. White, 2014 WL 3900236, at *3

(S.D. Ohio Aug. 11, 2014).
Here, Mr. Ricupero has labeled his first counterclaim
“Declaratory Judgment of Non-Infringement.”

It states only that

he “is entitled to a declaratory judgment … that he has not
infringed the copyrighted works” (Doc. 7, ¶ 70).

This

counterclaim is a mirror-image of Malibu’s claim that Mr.
Ricupero infringed Malibu’s copyright.

The other matters which,

according to Mr. Ricupero, go beyond the limits of the
infringement claim, simply do not exist in his declaratory
judgment counterclaim.

Thus, the motion to dismiss (or strike)

that counterclaim has merit.
IV.
In his second counterclaim, Mr. Ricupero asserts a claim for

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abuse of process.

Malibu moves to dismiss this counterclaim,

arguing that the counterclaim does not plead all the necessary
elements to support such a claim under Ohio law.

The focus of

the parties’ argument is whether a desire to settle a claim is
the kind of “ulterior motive” that can support a claim for abuse
of process.
Under Ohio law, a claim for abuse of process must allege:
“(1) that a legal proceeding has been set in motion in proper
form and with probable cause; (2) that the proceeding has been
perverted to attempt to accomplish an ulterior purpose for which
it was not designed; and (3) that direct damage has resulted from
the wrongful use of process.”

Hahn v. Star Bank, 190 F.3d 708,

718 (6th Cir. 1999) (citing Yaklevich v. Kemp, Schaeffer & Rowe
Co., 68 Ohio St.3d 294, 626 N.E.2d 115, 116 (1994)).

To prove

the second prong of the analysis, the party claiming abuse of
process “must show both an act committed during the process that
was not proper in the normal context of the proceeding and the
[non-moving party’s] ulterior motive.”

Beamer v. NETCO Inc., 411

F. Supp. 2d 882, 890 (S.D. Ohio 2005) (citing

Wolfe v.

Little, 2001 WL 427408, *3, 2001 Ohio App. LEXIS 1902 *7 (Ohio
2nd App.2001)).

Furthermore, “there is no liability [for abuse

of process] where [a party] has done nothing more than carry out
the process to its authorized conclusion, even though with bad
intentions.”

Id., (citing Yaklevich, 626 N.E.2d at 188).

Here, the parties focus on the second prong of the analysis:
whether Malibu brought the proceeding to accomplish an ulterior
purpose.

In his counterclaim, Mr. Ricupero alleges that Malibu

brought the claim to humiliate him and extract money from him.
But he pleads no facts to support either assertion.

Furthermore,

even if Malibu brought the lawsuit with the intention of settling

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the case short of litigating it to conclusion, that purpose is
not an ulterior motive because many claims are settled.

A

successful copyright lawsuit would result in money damages, so
seeking a settlement by filing a complaint does not qualify as an
ulterior motive, especially when the defendant admits that the
“legal proceeding has been set in motion in proper form and with
probable cause.” (Doc. 12 at 7-8). Further, the counterclaim does
not identify any act committed during the process that was
improper in the normal context of the proceeding, which is a
necessary showing under Ohio law.
V.
For the reasons stated above, the motion to dismiss
Defendant’s counterclaims (Doc. 9) is GRANTED.

The Court strikes

the counterclaim for declaratory relief as redundant and
dismisses the abuse of process counterclaim for failure to state
a claim upon which relief can be granted.
/s/ Terence P. Kemp
United States Magistrate Judge

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