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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
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`Civil Action No. 13-cv-02691-WYD-MEH
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`MALIBU MEDIA, LLC,
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`Plaintiff,
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`v.
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`BEN MILLER,
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`Defendant.
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`RECOMMENDATION OF UNITED STATES MAGISTRATE JUDGE
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`Michael E. Hegarty, United States Magistrate Judge.
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`Before the Court is Plaintiff’s Motion to Strike Defendant’s Affirmative Defenses [filed
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`April 7, 2014; docket #21]. In accordance with 28 U.S.C. § 636(b)(1)(B) and D.C. Colo. LCivR
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`72.1C, the motion is referred to this Court for recommendation. (Docket #22.) The motion is fully
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`briefed and the Court finds that oral argument will not assist in the adjudication of the motion. For
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`the reasons that follow, the Court RECOMMENDS Plaintiff’s Motion be granted in part and
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`denied in part.1
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`1Be advised that all parties shall have fourteen (14) days after service hereof to serve and
`file any written objections in order to obtain reconsideration by the District Judge to whom this
`case is assigned. Fed. R. Civ. P. 72. The party filing objections must specifically identify those
`findings or recommendations to which the objections are being made. The District Court need not
`consider frivolous, conclusive or general objections. A party’s failure to file such written
`objections to proposed findings and recommendations contained in this report may bar the party
`from a de novo determination by the District Judge of the proposed findings and recommendations.
`United States v. Raddatz, 447 U.S. 667, 676-83 (1980); 28 U.S.C. § 636(b)(1). Additionally, the
`failure to file written objections to the proposed findings and recommendations within fourteen
`(14) days after being served with a copy may bar the aggrieved party from appealing the factual
`findings of the Magistrate Judge that are accepted or adopted by the District Court. Thomas v. Arn,
`474 U.S. 140, 155 (1985); In re Garcia, 347 F. App’x 381, 382-83 (10th Cir. 2009).
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`Case 1:13-cv-02691-WYD-MEH Document 28 Filed 05/20/14 USDC Colorado Page 2 of 8
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`BACKGROUND
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`Plaintiff initiated this action on October 3, 2013, alleging that then-John Doe Defendant,
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`identified only by his Internet Protocol (“IP”) address, infringed on Plaintiff’s copyrighted work
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`by using the internet and a “BitTorrent” protocol to reproduce, distribute, display, or perform
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`Plaintiff’s protected films. In an effort to identify the alleged infringer, Plaintiff requested
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`permission from the Court to serve limited, immediate discovery on the Doe Defendant’s Internet
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`Service Provider (“ISP”) prior to the Rule 26(f) conference. Docket #6. The Court determined that
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`Plaintiff had shown good cause for limited expedited discovery and granted Plaintiff’s motion in
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`part. Docket #9. In particular, the Court authorized Plaintiff to serve a third party subpoena
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`pursuant to Fed. R. Civ. P. 45 on the identified ISP for the limited purpose of ascertaining the
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`identity of the Doe Defendant as set forth in Plaintiff’s Complaint. The Court directed that the
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`subpoena be limited to providing Plaintiff with the true name, address, telephone number, and email
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`address of the Defendant to whom the ISP had assigned an IP address. With the subpoena, the Court
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`directed Plaintiff to serve a copy of its order. Finally, the Court emphasized that Plaintiff could only
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`use the information disclosed in response to the subpoenas for the purpose of protecting and
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`enforcing its rights as set forth in its Complaint (docket #1). The Court cautioned Plaintiff that
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`improper use of this information could result in sanctions.
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`In accordance with the Court’s order, Plaintiff served a Rule 45 subpoena on Defendant’s
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`ISP and obtained his identity. Thereafter, Plaintiff filed an Amended Complaint on January 16,
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`2014, naming Mr. Miller as a Defendant. Docket #12. Defendant filed an Answer to Plaintiff’s
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`Amended Complaint on March 17, 2014, asserting fourteen (14) affirmative defenses. Docket #19.
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`Plaintiff filed the present motion on April 7, 2014 seeking to strike certain affirmative
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`2
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`Case 1:13-cv-02691-WYD-MEH Document 28 Filed 05/20/14 USDC Colorado Page 3 of 8
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`defenses listed in the Answer. Docket #21. Defendant timely filed his response to the motion on
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`May 1, 2014 (docket #26); however, although provided the opportunity to do so, Plaintiff did not
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`file a reply brief in support of its motion. The Court is now sufficiently advised and recommends
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`as follows.
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`LEGAL STANDARDS
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`Rule 12(f) permits the Court to “strike from a pleading an insufficient defense or any
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`redundant, immaterial, impertinent, or scandalous matter.” Fed. R. Civ. P. 12(f). “The purpose of
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`Rule 12(f) is to save the time and money that would be spent litigating issues that will not affect the
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`outcome of the case.” Kimpton Hotel & Rest. Group, LLC v. Monaco Inn, Inc., No. 07-cv-01514-
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`WDM, 2008 WL 140488, at *1 (D. Colo. Jan. 11, 2008) (citing United States v. Shell Oil Co., 605
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`F. Supp. 1064, 1085 (D. Colo. 1985)). Striking a portion of a pleading is a drastic remedy; the
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`federal courts generally view motions to strike with disfavor and infrequently grant such requests.
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`5C Arthur R. Miller & Mary Kay Kane, Federal Practice and Procedure § 1380 (3d ed. 2011).
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`Whether to strike an affirmative defense rests within the discretion of the trial court. Anderson v.
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`Van Pelt, No. 09-cv-00704-CMA, 2010 WL 5071998, at *1 (D. Colo. Dec. 7, 2010) (citing
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`Vanderhurst v. Colo. Mountain Coll. Dist., 16 F. Supp. 2d 1297, 1303 (D. Colo. 1998)).
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`“An affirmative defense is insufficient if, as a matter of law, the defense cannot succeed
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`under any circumstance.” Unger v. US West, Inc., 889 F. Supp. 419, 422 (D. Colo. 1995). The
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`standard articulated in Unger continues to be the appropriate standard. For the reasons stated herein,
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`the Court holds that an affirmative defense is sufficient if stated “in short and plain terms” pursuant
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`to Rule 8(b)(1)(A), and if the movant fails to demonstrate that the defense cannot succeed under any
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`circumstance.
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`3
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`Case 1:13-cv-02691-WYD-MEH Document 28 Filed 05/20/14 USDC Colorado Page 4 of 8
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`ANALYSIS
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`Plaintiff’s motion seeks to strike Defendant’s second, third, fourth, fifth, seventh, and eighth
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`affirmative defenses. Defendant does not oppose an order striking his second defense titled
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`“laches,” third defense titled “estoppel,” fifth defense titled “waiver,” and seventh defense titled
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`“forfeiture or abandonment,” and the Court finds these defenses cannot succeed under any
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`circumstance in this case; thus, the Court will recommend striking the second, third, fifth, and
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`seventh defenses. The Court’s remaining analysis will focus on the fourth defense titled “unclean
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`hands,” and the eighth defense titled “copyright misuse.” With the aforementioned legal principles
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`in mind, the Court will consider each of the challenged defenses in turn.
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`I.
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`Fourth Defense: Unclean Hands
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`Defendant’s fourth defense asserts: “Plaintiff’s claims are barred by the doctrine of unclean
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`hands, including by purposefully neglecting to request identifying information from the service
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`provider related to the IP address at issue in this case for each alleged download of Plaintiff’s works,
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`and because Plaintiff’s copyrights are invalid and/or unenforceable and/or violate 19 U.S.C. § 2257.”
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`(Docket #19 at 6.) However, Defendant argues in response to the present motion that Plaintiff’s
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`alleged violation of a criminal statute, Colo. Rev. Stat. § 18-5.5-102(1), by connecting to
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`Defendant’s IP address without authorization, supports the defense.
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`In copyright actions, the doctrine of unclean hands is only applied “where the wrongful acts
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`‘in some measure affect the equitable relations between the parties in respect of something brought
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`before the court for adjudication.’” Mitchell Bros. Film Grp. v. Cinema Adult Theater, 604 F.2d
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`852, 863 (5th Cir. 1979), cert. denied, 445 U.S. 917 (1980) (quoting Keystone Driller Co. v. Gen.
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`Excavator Co., 290 U.S. 240, 245 (1933)). Where asserted, unclean hands “must be pled with the
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`4
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`specific elements required to establish the defense.” Cartel Asset Mgmt. v. Ocwen Fin. Corp., No.
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`01-cv-01644-REB-CBS, 2010 WL 3522409, at *3 (D. Colo. Aug. 11, 2010) (citing MPC
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`Containment Sys., Ltd. v. Moreland, No. 05 C 6973, 2008 WL 1775501, at *5 (N.D. Ill. April 17,
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`2008)). These elements include a showing that the party seeking equitable relief is “(1) guilty of
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`conduct involving fraud, deceit, unconscionability, or bad faith, (2) directly related to the matter at
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`issue, (3) that injures the other party, and [4] affects the balance of equities between the litigants.”
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`Id. (citing In re New Valley Corp., 181 F.3d 517, 523 (3d Cir. 1999)). Because the alleged
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`inequitable conduct “must be connected ... to the matters before the court for resolution,” a court
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`should “not refuse relief to a party merely because it has engaged in misconduct which is unrelated
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`to the claims before the court.” New Valley Corp., 181 F.3d at 525.
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`This Court has recently addressed a similarly stated affirmative defense by a defendant in
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`a substantively similar case. See Malibu Media, LLC v. Cuddy, No. 13-cv-02385-WYD-MEH, at
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`9-11 (D. Colo. Apr. 24, 2014) (unpublished). To the extent the Defendant here argues that the
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`enforceability of Plaintiff’s copyright is invalid due to violations of Colo. Rev. Stat. § 18-5.5-102(1),
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`the Court must conclude that the defense of “illegality” is not properly invoked in a copyright action.
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`See Mitchell Bros. Film Group, 604 F.2d at 863 (“The alleged wrongdoing of the plaintiff does not
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`bar relief unless the defendant can show that he has personally been injured by the plaintiff’s
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`conduct.”); Dream Games of Ariz., Inc. v. PC Onsite, 561 F.3d 983, 990-91 (9th Cir. 2009) (“illegal
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`use or operation of a work by the copyright owner [does not] preclude[] the award of actual or
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`statutory damages for copyright infringement”); Flava Works, Inc. v. Gunter, 689 F.3d 754, 755 (7th
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`Cir. 2012) (“the prevailing view is that even illegality is not a bar to copyrightability”).
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`The Court agrees with the analyses of the Fifth, Seventh, and Ninth Circuits in finding that
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`5
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`“illegality” is typically not a valid defense to a copyright claim and should be raised only in rare
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`circumstances when a party can show he or she has been injured by the opposing party’s illegal
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`conduct. Here, Defendant has not alleged and cannot show that he was injured by any violation by
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`Plaintiff of a statute prohibiting access to a computer without authorization, when Defendant denies
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`accessing any of the Plaintiff’s copyrighted works. Compare Amended Complaint, ¶¶ 16-20, docket
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`#16 with Answer, ¶¶16-20, docket #19. To the extent Defendant believes he was injured by
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`Plaintiff’s access to his IP address before the first alleged infringement, he has alleged no such
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`injury.
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`Moreover, this Court is wary of a defense for which the Court is asked to, and necessarily
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`must, adjudicate in a civil case whether the opposing party engaged in violation(s) of a criminal
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`statute. Defendant has provided no case law on this point.
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`Defendant’s Answer and briefing fail to identify any inequitable conduct which is connected
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`or related to the matters before the Court in this action. Therefore, the Court recommends the
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`District Court grant Plaintiff’s motion to strike Defendant’s fourth defense.
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`II.
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`Eighth Defense: Copyright Misuse
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`In his eighth defense, Defendant asserts “Plaintiff’s claims are barred by the doctrine of
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`misuse of copyright.” Answer, docket #19 at 6. The copyright misuse doctrine is an equitable
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`defense to a copyright infringement action that forbids the use of a copyright to secure an exclusive
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`right or limited monopoly not granted by the copyright office and is contrary to public policy to
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`grant. Home Design Servs., Inc. v. B&B Custom Homes, LLC, No. 06-cv-00249-WYD-GJR, 2008
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`WL 2302662, at *2 (D. Colo. May 30, 2008) (citing 185 ALR Fed 123 and Alcatel USA, Inc. v. DGI
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`Techs., Inc., 166 F.3d 772, 792 (5th Cir. 1999)). Defendant must prove that Plaintiff “illegally
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`6
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`extended its monopoly beyond the scope of the copyright or violated the public policies underlying
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`the copyright laws.” Id. (quoting In re Indep. Serv. Orgs. Antitrust Litig., 85 F. Supp. 2d 1130, 1175
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`(D. Kan. 2000)).
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`Here, Defendant contends that “Plaintiff uses the same procedures of monitoring
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`unsuspecting members of the public, directly connecting with the individual’s IP address, providing
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`no ‘cease and desist’ notice, waiting until the evidence is destroyed, filing suit, and then offering to
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`settle in exchange for dismissing the suit.” Response, docket #26 at 8. Plaintiff counters that “all
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`it has ever done with respect to its copyrights is bring suits to enforce them; as a matter of law, doing
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`so is not copyright misuse.” Motion, docket #21 at 8.
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`The Court finds that Defendant’s allegations are sufficient to support the affirmative defense.
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`To the extent that the Plaintiff argues Defendant has failed to demonstrate, through his allegations,
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`that the Plaintiff has “misused” the copyright law, the Court finds that such theory necessarily
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`involves the issue of motive, which is generally reserved for the factfinder. See In re Indep. Serv.
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`Orgs. Antitrust Litig., 85 F. Supp. at 1175 (defendant must prove plaintiff “illegally extended its
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`monopoly beyond the scope of the copyright or violated the public policies underlying the copyright
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`laws”). Likewise, to the extent that the Plaintiff argues a “misuse” defense cannot be asserted if the
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`allegation is merely that Plaintiff has filed a suit for infringement, the Court finds that Defendant
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`has sufficiently argued more than the single allegation.
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`Accordingly, the Court recommends the District Court deny Plaintiff’s motion to strike the
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`Defendant’s eighth affirmative defense.
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`CONCLUSION
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`As described above, the Court finds that Defendant’s second, third, fourth, fifth, and seventh
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`7
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`Case 1:13-cv-02691-WYD-MEH Document 28 Filed 05/20/14 USDC Colorado Page 8 of 8
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`defenses should be stricken, but concludes that Defendant’s eighth affirmative defense is properly
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`alleged. Accordingly, this Court respectfully RECOMMENDS that Plaintiff’s Motion to Strike
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`Defendant’s Affirmative Defenses [filed April 7, 2014; docket #21] be granted in part and denied
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`in part as set forth herein.
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`Entered and dated at Denver, Colorado, this 20th day of May, 2014.
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`BY THE COURT:
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`Michael E. Hegarty
`United States Magistrate Judge
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`8