throbber
Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 1 of 28 PageID 493
`
`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`FORT MYERS DIVISION
`
`
`PK STUDIOS, INC.,
`
`Plaintiff,
`
`
`
`Case No: 2:15-cv-389-FtM-99CM
`
`
`v.
`
`R.L.R. INVESTMENTS, LLC,
`EAGLES LANDING VILLAS AT
`GOLDEN OCALA, LLC, GOLDEN
`OCALA GOLF & EQUESTRIAN CLUB
`MANAGMENT,
`LLC,
`STOCK
`DEVELOPMENT, LLC, and BRIAN
`STOCK,
`
`
`
`Defendants.
`
`
`
`
`OPINION AND ORDER
`This matter comes before the Court on Plaintiff's Motion to
`Strike Defendants’ Affirmative Defenses (Doc. #57) filed on March
`3, 2016. Defendants filed a Response in Opposition (Doc. #61) on
`March 21, 2016. Also before the Court is Plaintiff’s Motion to
`Dismiss Defendants’ Counterclaims (Doc. #55) filed on February 24,
`2016, to which Defendants filed a Response in Opposition (Doc.
`#60) on March 18, 2016. For the reasons stated and as set forth
`below, Plaintiff’s Motion to Strike is granted in part and denied
`in part, and Plaintiff’s Motion to Dismiss is granted.
`I.
`
`Plaintiff PK Studios, Inc. (Plaintiff) filed suit on June 29,
`2015 against R.L.R. Investments, LLC, Eagles Landing Villas at
`Golden Ocala, LLC, and Golden Ocala Golf & Equestrian Club
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 2 of 28 PageID 494
`
`
`
`Management, LLC (collectively, Golden Ocala Defendants or
`Defendants), and also against Stock Development, LLC (Stock
`Development) and Brian Stock (Mr. Stock) (collectively Stock
`Defendants). The three-count Complaint (Doc. #1) asserts a claim
`of copyright infringement against all five defendants, and claims
`of breach of contract and declaratory relief against Stock
`Defendants. Plaintiff contends that Golden Ocala Defendants have
`been utilizing Plaintiff’s copyrighted architectural plans for
`commercial gain without Plaintiff’s permission, and in violation
`of the limited future-use license granted in a Release Agreement
`that Plaintiff entered into with Stock Defendants.
`On February 5, 2016, Golden Ocala Defendants filed an Answer
`(Doc. #54) to the Complaint, which also asserts thirty affirmative
`defenses,
`seven
`declaratory-judgment
`counterclaims
`(the
`Counterclaim Complaint), and four crossclaims against Stock
`Defendants.1 Plaintiff now moves to strike twenty-three of the
`affirmative defenses and dismiss six of the counterclaims. The
`Court will first resolve the Motion to Strike and then decide the
`Motion to Dismiss.
`
`
`
`
`1 Mr. Stock and Stock Development each filed an Answer and
`Affirmative Defenses to the Complaint (Docs. ##28, 29), and they
`jointly filed an Answer and Affirmative Defenses to Golden Ocala
`Defendants’ crossclaims (Doc. #56).
`
`
`
`- 2 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 3 of 28 PageID 495
`
`
`
`A.
`
`II.
`Plaintiff’s Motion to Strike Twenty-Three of Golden Ocala
`Defendants’ Affirmative Defenses
`
`
`The Federal Rules require defendants to “affirmatively state
`any avoidance or affirmative defense.” Fed. R. Civ. P. 8(c). “An
`affirmative defense is generally a defense that, if established,
`requires judgment for the defendant even if the plaintiff can prove
`his case by a preponderance of the evidence.” Wright v. Southland
`Corp., 187 F.3d 1287, 1303 (11th Cir. 1999). Pursuant to Rule
`12(f), courts may strike “insufficient defense[s]” from a pleading
`upon a motion so requesting or sua sponte. Fed. R. Civ. P. 12(f).
`
`The recurring argument throughout Plaintiff’s Motion to
`Strike is that Golden Ocala Defendants’ affirmative defenses are
`bare-bones, conclusory statements that fail to provide Plaintiff
`adequate notice of the grounds upon which each rests. In response,
`Defendants contend that they are not required to plead facts in
`support of the affirmative defenses and point to select case law
`in which judges in this District have declined to apply the
`heightened Twombly/Iqbal standard when determining the pleading
`adequacy of affirmative defenses.2
`
`
`
`2 Defendants also argue that denial of the Motion to Strike is
`warranted because Plaintiff failed to comply with its obligation
`under Local Rule 3.01(g) to meet and confer prior to filing.
`Although such failure can serve as grounds for a denial, the Court
`finds good cause to address the merits of Plaintiff’s Motion.
`
`
`
`- 3 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 4 of 28 PageID 496
`
`
`
`Pleading Standard for Affirmative Defenses
`1)
`As this Court recently discussed in some detail, affirmative
`
`defenses must comply with two separate pleading requirements.
`First, the defense, as plead, must contain “some facts establishing
`a nexus between the elements of an affirmative defense and the
`allegations in the complaint,” so as to provide the plaintiff fair
`notice of the grounds upon which the defense rests. Daley v.
`Scott, No: 2:15-cv-269-FtM-29DNF, 2016 WL 3517697, at *3 (M.D.
`Fla. June 28, 2016).3 Boilerplate pleading – that is, merely
`listing the name of the affirmative defense without providing any
`supporting facts – is insufficient to satisfy Rule 8(c), because
`it does not provide notice sufficient to allow the plaintiff to
`rebut or properly litigate the defense.4 Id. (citing Grant v.
`Preferred Research, Inc., 885 F.2d 795, 797 (11th Cir.
`1989); Hassan v. U.S. Postal Serv., 842 F.2d 260, 263 (11th Cir.
`1988)). Requiring defendants to allege some facts linking the
`defense to the plaintiff’s claims “streamlines the pleading stage,
`helps the parties craft more targeted discovery requests, and
`reduces litigation costs.” Id. (citations omitted).
`
`
`3 Daley was decided after the parties briefed the Motion to Strike.
` This pleading requirement does not “unfairly subject defendants
`to a significant risk of waiving viable defenses for which they do
`not yet have supporting facts,” since courts routinely grant filing
`extensions and freely afford leave to amend pleadings. Daley,
`2016 WL 3517697, at *3. Often, it is even deemed sufficient
`“notice" to raise the affirmative defense in a dispositive motion
`or in the pretrial statement or order. Id.
`
` 4
`
`
`
`- 4 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 5 of 28 PageID 497
`
`
`
`Second, a defendant must avoid pleading shotgun affirmative
`defenses, viz., “affirmative defenses [that] address[] the
`complaint as a whole, as if each count was like every other count.”
`Byrne v. Nezhat, 261 F.3d 1075, 1129 (11th Cir. 2001), abrogated
`on other grounds as recognized by, Nurse v. Sheraton Atlanta Hotel,
`618 F. App'x 987, 990 (11th Cir. 2015); see also Paylor v. Hartford
`Fire Ins. Co., 748 F.3d 1117, 1127 (11th Cir. 2014). Rather, each
`defense must address a specific count or counts in the complaint
`or clearly indicate that (and aver how) the defense applies to all
`claims. See Byrne, 261 F.3d at 1129; see also Lee v. Habashy, No.
`6:09–cv–671–Orl–28GJK, 2009 WL 3490858, at *4 (M.D. Fla. Oct. 27,
`2009). District courts have a sua sponte obligation to identify
`shotgun affirmative defenses and strike them, with leave to
`replead. See Paylor, 748 F.3d at 1127; Morrison v. Executive
`Aircraft Refinishing, Inc., 434 F. Supp. 2d 1314, 1318 (S.D. Fla.
`2005).
` With these two pleading requirements in mind, the Court
`turns to the twenty-three challenged affirmative defenses.
`2)
`Affirmative Defenses One, Three, Five, and Twenty-Four
`Golden Ocala Defendants’ first, third, fifth, and twenty-
`forth affirmative defenses allege, respectively: that Plaintiff
`has failed to state viable causes of action; that Plaintiff’s
`copyright registration is invalid and/or does not contain
`copyrightable materials; that Counts I (copyright infringement)
`and II (breach of contract) are barred because Plaintiff has not
`
`
`
`- 5 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 6 of 28 PageID 498
`
`
`
`suffered damages; and that the works which allegedly infringe
`Plaintiff’s copyright “are not substantially similar” to the
`copyrighted material. Plaintiff argues that none of these are
`proper “affirmative” defenses. The Court agrees.
`Possessing a valid copyright registration for material that
`is copyrightable is part of the prima facie case for copyright
`infringement. Thornton v. J Jargon Co., 580 F. Supp. 2d 1261,
`1287 (M.D. Fla. 2008); Home Design Servs., Inc. v. Hibiscus Homes
`of Fla., Inc., No. 6:03-CV-1860-ORL-19KRS, 2005 WL 3445522, at *6
`(M.D. Fla. Dec. 14, 2005). So too must the allegedly-infringing
`work be “substantially similar” to the copyrighted work to be able
`to state a claim for infringement. Bateman v. Mnemonics, Inc., 79
`F.3d 1532, 1542 (11th Cir. 1996); see also Liberty Am. Ins. Grp.,
`Inc. v. WestPoint Underwriters, L.L.C., 199 F. Supp. 2d 1271, 1289
`(M.D. Fla. 2001). Accordingly, insofar as each of these four
`“affirmative defenses” either alleges that Plaintiff has failed to
`state a claim or “points out a defect in Plaintiff’s prima facie
`case,” all are “general” defenses, rather than proper affirmative
`defenses. In re Rawson Food Serv., Inc., 846 F.2d 1343, 1349 &
`n.9 (11th Cir. 1988). The Court thus grants Plaintiff’s request
`to strike these defenses. See Daley, 2016 WL 3517697, at *4.
`3)
`Affirmative Defense Two – Fair Use
`Golden Ocala Defendants assert that, to the extent they used
`Plaintiff’s copyrighted material, it was a “fair use” under 17
`
`
`
`- 6 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 7 of 28 PageID 499
`
`
`
`U.S.C. § 107. “Under certain circumstances, the doctrine of fair
`use allows the limited use of copyrighted materials in a reasonable
`ma[nn]er without the consent of the copyright holder,” however, a
`“[f]air use analysis ‘must always be tailored to the individual
`case.’” Tingley Sys., Inc. v. HealthLink, Inc., 509 F. Supp. 2d
`1209, 1220 (M.D. Fla. 2007) (quoting Harper & Row Publishers, Inc.
`v. Nation Enters., 471 U.S. 539, 552 (1985)). This analysis
`requires the court to consider, at a minimum, the four factors set
`forth in Section 107, none of which Golden Ocala Defendants
`mention. This bare-bones, conclusory pleading of “fair use” does
`not suffice under Rule 8(c), because it leaves unclear the grounds
`upon which the defense rests. See Luxottica Grp. S.P.A. v. Cash
`Am. E., Inc., No. 6:16-cv-728-Orl-31DAB, --- F. Supp. 3d ---, 2016
`WL 4157211, at *4 (M.D. Fla. Aug. 2, 2016). The Court strikes
`this affirmative defense with leave to replead.
`4)
`Affirmative Defense Four – Consent and Acquiescence
`Golden Ocala Defendants’ fourth affirmative defense contends
`that Plaintiff consented or acquiesced to Defendants’ use of
`Plaintiff’s copyrighted materials. Consent and acquiescence are
`distinct affirmative defenses to an infringement claim. Consent
`requires “an intent by the copyright proprietor to surrender rights
`in his work” and acquiescence requires an active representation
`that the proprietor “would not assert a right or claim.” Malibu
`Media, LLC v. Zumbo, No. 2:13-CV-729-JES-DNF, 2014 WL 2742830, at
`
`
`
`- 7 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 8 of 28 PageID 500
`
`
`
`*2-3 (M.D. Fla. June 17, 2014) (quotation omitted). Not only is
`this defense pled in improper shotgun fashion indiscriminately
`against “the relief requested in the Complaint,” Golden Ocala
`Defendants have alleged no facts supporting consent and
`acquiescence theories. The Court strikes affirmative defense four
`with leave to replead as two distinct defenses. Id. at *3.
`5)
`Affirmative Defense Six - Authority, Legal Right,
`Necessity, Justification, and Privilege
`
`Affirmative defense six asserts that Plaintiff’s claims are
`barred because Golden Ocala Defendants “had the authority, legal
`right, necessity, justification and/or were privileged to act as
`they did.” This one sentence asserts five distinct potential
`affirmative defenses, yet no supporting facts, and will be
`stricken. To the extent Golden Ocala Defendants wish to replead
`some or all of these theories, they should do so as separate
`affirmative defenses and allege supporting facts for each.
`6)
`Affirmative Defenses Eight, Nine, and Ten – Mutual
`Assent, Breach, Statute of Frauds
`
`These three affirmative defenses raise theories of lack of
`mutual assent, no breach, and statute of frauds, and are directed
`to Count II – Plaintiff’s breach of contract claim. Plaintiff
`argues that because Count II is asserted only against the Stock
`Defendants, not against Golden Ocala Defendants, these defenses
`should be stricken as immaterial or impertinent. The Court
`
`
`
`- 8 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 9 of 28 PageID 501
`
`
`
`agrees.5 See Baltzell v. Arnold, No. 3:14-CV-2831-L, 2015 WL
`356901, at *4 (N.D. Tex. Jan. 27, 2015) (finding no “legal basis
`that allows [a defendant] to assert an affirmative defense to a
`claim not asserted against it”).
`7)
`Affirmative Defense Thirteen – No Attorneys’ Fees
`Defendants’ thirteenth affirmative defense asserts that
`Plaintiff cannot recover attorneys’ fees for potential violations
`of the Copyright Act, since Plaintiff did not “timely register”
`its architectural plans with the Copyright Office. Section 412 of
`the Copyright Act precludes an award of attorneys’ fees when the
`alleged infringement of “an unpublished work commenced before the
`effective date of [the copyright] registration.” 17 U.S.C. §
`412(1). Where infringement of a “published” work is alleged,6
`attorneys’ fees are not recoverable when the copyright was
`registered more than three months after publication of the work
`and the infringement occurred prior to registration. Id. § 412(2).
`Based on the allegations in the Complaint, the Court presumes
`that the copyrighted works at issue (architectural plans) are
`“unpublished.” Accordingly, if Golden Ocala Defendants’ alleged
`
`
`5 Affirmative defenses eight and nine are stricken for the
`additional reason that they merely allege defects in Plaintiff’s
`prima facie case for breach of contract.
` As relevant here, the Copyright Act defines “publication” as “the
`distribution [or ‘offering to distribute’] of copies . . . of a
`work to the public by sale or other transfer of ownership, or by
`rental, lease, or lending.” 17 U.S.C. § 101.
`
` 6
`
`
`
`- 9 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 10 of 28 PageID 502
`
`
`
`infringement of Plaintiff’s copyright began prior to the effective
`date of Plaintiff’s registration of that copyright, Plaintiff will
`likely not be able to recover attorneys’ fees.
`Plaintiff argues that this affirmative defense should
`nevertheless be stricken as “immaterial,” since the Copyright Act
`also states that a district court has discretion to “allow the
`full recovery of costs.” 17 U.S.C. § 505. However, Section 505
`also states: “Except as otherwise provided by this title, the Court
`may also award a reasonable attorney’s fee to the prevailing party
`as part of costs.” Since “this title” (Section 412) “otherwise
`provides” that attorneys’ fees are not appropriate in certain
`circumstances - which may be implicated here - the Court disagrees
`that the affirmative defense is immaterial. As pled, the defense
`also provides Plaintiff adequate notice since, according to the
`allegations in paragraphs 18 and 22 of the Complaint, Plaintiff
`discovered the infringement before applying for a copyright
`registration for its unpublished works. See Malem Med., Ltd. v.
`Theos Med. Sys., Inc., No. C-13-5236 EMC, 2014 WL 3568885, at *3
`(N.D. Cal. July 18, 2014). The Court denies the motion to strike
`affirmative defense thirteen.
`8)
`Affirmative Defense Sixteen – Innocent Infringement
`Affirmative defense sixteen claims that, if Golden Ocala
`Defendants did infringe Plaintiff’s copyright, they did so
`“innocently.” But “[i]nnocent infringement of a copyright is not
`
`
`
`- 10 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 11 of 28 PageID 503
`
`
`
`an affirmative defense to an infringement action.” Lizalde v.
`Advanced Planning Servs., Inc., 875 F. Supp. 2d 1150, 1165 n.11
`(S.D. Cal. 2012) (citing Nimmer on Copyright § 13.08 (2012)); see
`also Playboy Enters., Inc. v. Frena, 839 F. Supp. 1552, 1559 (M.D.
`Fla. 1993) (“Intent or knowledge is not an element of [copyright]
`infringement, and thus even an innocent infringer is liable for
`infringement . . . .” (citing D.C. Comics Inc. v. Mini Gift Shop,
`912 F.2d 29 (2d Cir. 1990)).
`On the other hand, “innocent infringement” may be used to
`limit statutory damages for infringement. 17 U.S.C. § 504(c)(2).
`It appears, however, that “[t]he cases are divided on the question”
`of whether a statutory limitation on damages is properly raised as
`an affirmative defense.7 Carter v. United States, 333 F.3d 791,
`796 (7th Cir. 2003); see also Taylor v. United States, 485 U.S.
`992, 993 (1988) (White, J., dissenting) (noting the “conflict among
`the Courts of Appeals” as to whether a “statutory limitation on
`damages . . . is an affirmative defense . . . under the Federal
`Rules”). In any case, although Plaintiff does seek statutory
`damages for infringement as an alternative form of relief, (Doc.
`#1, ¶ 41(C)), the Court agrees that the boilerplate pleading of
`
`
`7 Compare Simon v. United States, 891 F.2d 1154, 1157 (5th Cir.
`1990) (state statute limiting malpractice damages is Rule 8(c)
`affirmative defense to be set forth in defendant's responsive
`pleading), with Bradford Co. v. Jefferson Smurfit Corp., No. 2000-
`1511, 2001 WL 35738792, at *10 (Fed. Cir. Oct. 31, 2001) (statutory
`limitation on damages for patent infringement “is not an
`affirmative defense for purposes of . . . Fed. R. Civ. P. 8(c).”).
`
`
`
`- 11 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 12 of 28 PageID 504
`
`
`
`“innocent infringement” is insufficient. Affirmative Defense
`Sixteen is stricken with leave to replead.
`9)
`Affirmative Defense Seventeen – De Minimis
`Golden Ocala Defendants also argue that any infringement was
`“de minimis.” A de minimis defense consists of qualitative and
`quantitative components. Malibu Media, LLC v. Fitzpatrick, No.
`1:12-CV-22767, 2013 WL 5674711, at *4 (S.D. Fla. Oct. 17, 2013);
`see also Peter Letterese and Assocs. v. World Inst. of Scientology
`Enters., 533 F.3d 1287, 1306—07 (11th Cir. 2008). Golden Ocala
`Defendants have addressed neither, so this affirmative defense
`will be stricken with leave to replead.
`10) Affirmative Defense Eighteen – Copyright Notice
`The eighteenth affirmative defense contends (in improper
`shotgun fashion) that Plaintiff’s “claims for relief are barred”
`because Plaintiff did not “properly place notice” of the
`copyrighted work. The Court presumes that Golden Ocala Defendants
`mean that Plaintiff’s unpublished architectural plans did not
`contain the three “notice” elements set forth in 17 U.S.C. §
`401(b): (1) the © symbol or the word “Copyright”; (2) the copyright
`year; and (3) the copyright owner’s name. Even if true, Section
`401’s notice policy applies only to “published” works. Donald
`Frederick Evans & Assocs., Inc. v. Cont'l Homes, Inc., 785 F.2d
`897, 908 (11th Cir. 1986) (citing 17 U.S.C. § 401(a)). Moreover,
`“since the Berne Convention Implementation Act of 1988 . . . notice
`
`
`
`- 12 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 13 of 28 PageID 505
`
`
`
`is no longer a prerequisite to copyright protection,” Norma Ribbon
`& Trimming, Inc. v. Little, 51 F.3d 45, 48 (5th Cir. 1995), and
`thus, the failure to notice a copyright is not an affirmative
`defense.8 Mike Rosen & Assocs., P.C. v. Omega Builders, Ltd., 940
`F. Supp. 115, 119 (E.D. Pa. 1996). Accordingly, the Court strikes
`affirmative defense eighteen.
`11) Affirmative Defenses Nineteen and Twenty-Three –
`Copyright Misuse
`
`For their nineteenth affirmative defense, Defendants contend
`that Plaintiff’s claims are barred under the copyright misuse
`doctrine. “Copyright misuse, a doctrine derived from the equitable
`defenses of patent misuse and unclean hands, forbids a copyright
`holder from using a copyright ‘to secure an exclusive right or
`limited monopoly not granted by the Copyright Office and which it
`is contrary to public policy to grant.’” Hibiscus Homes, 2005 WL
`3445522, at *10 (quoting Alcatel USA, Inc. v. DGI Techs., Inc.,
`166 F.3d 772, 792 (5th Cir. 1999)). “The purpose of the defense
`is to prevent a litigant from securing an exclusive right which
`exceeds what has already been granted via the copyright,” and the
`
`
`8 Rather than operate as a forfeiture of copyright, the failure to
`properly notice a copyright now serves only to buttress an
`infringer’s claim that any infringement was “innocent.” See 17
`U.S.C. § 401(d) (“If a notice of copyright in the form and position
`specified by this section appears on the published copy or copies
`to which a defendant in a copyright infringement suit had access,
`then no weight shall be given to such a defendant's interposition
`of a defense based on innocent infringement in mitigation of actual
`or statutory damages . . . .”).
`
`
`
`- 13 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 14 of 28 PageID 506
`
`
`
`doctrine thus “bar[s] recovery for a copyright owner who attempts
`to extend its limited copyright rights to property not covered by
`the copyright.” Id. (citations omitted).
`Plaintiff challenges the viability of copyright misuse as an
`affirmative defense. Although the Eleventh Circuit “has not
`recognized . . . misuse as a defense for infringement suits,”
`neither has it “rejected” misuse as a valid defense. Telecom Tech.
`Servs. Inc. v. Rolm Co., 388 F.3d 820, 831 (11th Cir. 2004). The
`undersigned previously refused to dismiss a copyright misuse
`defense where the basis asserted for dismissal was the defense’s
`potential non-viability and will also decline to do so here.
`Fine's Gallery, LLC v. From Europe to You, Inc., No. 2:11-CV-220-
`FTM-29, 2011 WL 5583334, at *2 (M.D. Fla. Nov. 16, 2011).
`The question then, is whether Golden Ocala Defendants have
`adequately pled facts supporting the defense. Specifically,
`Defendants allege that “Plaintiff’s claims are barred by the
`doctrine of copyright misuse in that, among other things, Plaintiff
`has attempted to enforce copyrights in the alleged copyright
`work(s) in a suit by improperly claiming original creation in non-
`original common designs, layouts, dimensions, features and other
`non-original elements.” (Doc. #54 p. 13 (emphasis added).) These
`allegations – though terse - appear consistent with the contours
`of the copyright misuse doctrine and are sufficient to provide
`Plaintiff notice of the grounds upon which the defense rests. The
`
`
`
`- 14 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 15 of 28 PageID 507
`
`
`
`Court thus denies the request to strike Affirmative Defense
`Nineteen. The Court will, however, strike Affirmative Defense
`Twenty-Three, which alleges that “[a]ll or some of Plaintiff’s
`claims are barred by the doctrine of copyright misuse,” because it
`is both redundant and insufficiently pled. See Total Containment
`Sols., Inc. v. Glacier Energy Servs., Inc., No. 2:15-CV-63-FTM-
`38CM, 2015 WL 5057146, at *2 (M.D. Fla. Aug. 26, 2015).
`12) Affirmative Defense Twenty-One – Equitable Estoppel
`Defendants’ twenty-first affirmative defense alleges that
`Plaintiff’s claims are barred by the doctrine of equitable
`estoppel. Equitable estoppel is appropriate “in copyright cases
`when the copyright owner is aware of the infringing conduct, yet
`the owner acts in such a[] way as to induce the infringer to
`reasonably rely upon such actions, causing the infringer to suffer
`a legal detriment.” Hibiscus Homes, 2005 WL 3445522, at *9
`(citations omitted). As pled, however, the affirmative defense is
`wholly devoid of facts indicating why estoppel applies in this
`case. The Court strikes the defense with leave to replead.
`13) Affirmative Defense Twenty-Two – Unclean Hands
`This affirmative defense contends that the equitable relief
`Plaintiff seeks is barred under the doctrine of unclean hands.
`The Eleventh Circuit has observed that to successfully invoke the
`unclean hands doctrine requires a defendant to establish two
`things: “First, the defendant must demonstrate that the
`
`
`
`- 15 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 16 of 28 PageID 508
`
`
`
`plaintiff's wrongdoing is directly related to the claim against
`which it is asserted. Second, even if directly related, the
`plaintiff's wrongdoing does not bar relief unless the defendant
`can show that it was personally injured by her conduct.” Calloway
`v. Partners Nat’l Health Plans, 986 F.2d 446, 450–51 (11th Cir.
`1993) (citations omitted). Golden Ocala Defendants have not
`alleged any facts showing they actually believe the unclean hands
`defense applies in this case. The defense will thus be stricken
`with leave to replead. Groves v. Patricia J. Dury, M.D., P.A.,
`No. 2:06-CV-338-FTM-99SPC, 2006 WL 2556944, at *2 (M.D. Fla. Sept.
`1, 2006) (striking unclean hands defense containing no facts).
`14) Affirmative Defense Twenty-Five - Apportionment
`Affirmative defense twenty-five states that “Plaintiff’s
`claims are barred and/or mitigated by the doctrine of copyright
`apportionment.” The Court presumes that Golden Ocala Defendants
`mean that any damages to which Plaintiff is entitled should be
`apportioned. “[A]pportionment of damages is appropriate in a
`copyright action[] . . . when ‘the evidence is sufficient to
`provide a fair basis of division so as to give the copyright
`proprietor all the profits that can be deemed to have resulted
`from the use of what belonged to him.’” Dawes-Ordonez v. Forman,
`No. 09-60335-CIV-COHN, 2009 WL 3273898, at *2 (S.D. Fla. Oct. 9,
`2009) (quoting Roulo v. Russ Berrie & Co., Inc., 886 F.2d 931, 941
`(7th Cir. 1989)) (additional citations omitted); see also 17 U.S.C.
`
`
`
`- 16 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 17 of 28 PageID 509
`
` §
`
` 504(b) (“The copyright owner is entitled to recover the actual
`damages suffered by him or her as a result of the infringement,
`and any profits of the infringer that are attributable to the
`infringement and are not taken into account in computing the actual
`damages.” (emphases added)); Aerospace Servs. Int'l v. LPA Grp.,
`Inc., 57 F.3d 1002, 1004 (11th Cir. 1995) (affirming district
`court’s award of damages based on “the amount of [defendant’s]
`profits which were attributable to the infringement”).
`Though courts disagree on whether statutory limitations on
`damages are proper Rule 8(c) defenses, absent Eleventh Circuit
`authority on the issue, the Court finds it premature to strike
`such a defense. See Dawes-Ordonez, 2009 WL 3273898, at *2
`(upholding damages apportionment affirmative defense in copyright
`infringement action). Further, as pled, this defense is adequate
`because it provides Plaintiff notice that Golden Ocala Defendants
`will seek to reduce Plaintiff’s recoverable damages on the ground
`that at least a portion of Defendants’ profits “were not
`attributable to the infringement.” 17 U.S.C. § 504(b).
`15) Affirmative Defense Twenty-Six – False Information/Fraud
`Defendants’ twenty-sixth affirmative defense claims that
`Plaintiff obtained its copyright registration “by false
`information and/or fraud.” To the extent Defendants are alleging
`that Plaintiff committed fraud on the Copyright Office, the Court
`notes the conflicting authorities on whether this is a proper
`
`
`
`- 17 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 18 of 28 PageID 510
`
`
`
`affirmative defense, rather than a “general” defense based on the
`inability to establish a prima facie case of infringement.9 In
`any event, as pled, the defense is factually unsupported. The
`Court will strike this defense with leave to replead.10
`16) Affirmative
`Defense
`Twenty-Eight –
`Statute of
`Limitations
`
`Golden Ocala Defendants assert that Plaintiff’s claims are
`barred under the statute of limitations, but they reference neither
`the applicable statute(s) of limitations nor the date(s) upon which
`the statute(s) began to run. This is the epitome of insufficient
`boilerplate pleading. Schmidt v. Synergentic Commc'ns, Inc., No.
`2:14-CV-539-FTM-29CM, 2015 WL 997828, at *2 (M.D. Fla. Mar. 5,
`2015). Affirmative defense twenty-eight will be stricken with
`leave to replead.
`
`
`
`9 Compare Thornton, 580 F. Supp. 2d at 1271 n.1 (treating
`defendant’s “fraud on the Copyright Office” theory as challenge to
`plaintiff’s prima facie case, rather than as affirmative defense),
`and 5 Patry on Copyright § 17:126 (“[F]raud on the Copyright Office
`is not an affirmative defense: while a certificate of registration
`[affords] the holder prima facie validity, this is not the same as
`having made out a prima facie case of infringement.”), with Mon
`Cheri Bridals, Inc. v. Wen Wu, 383 F. App'x 228, 232 (3d Cir. 2010)
`(“Fraud on the Copyright Office is an affirmative defense to claims
`of copyright infringement.”), and Lennon v. Seaman, 84 F. Supp. 2d
`522, 525 (S.D.N.Y. 2000) (“An allegation of fraud on the Copyright
`Office is typically brought in an infringement action as an
`affirmative defense to the enforcement of a registered copyright
`certificate.” (collecting cases)).
`
`10 When repleading this defense, Golden Ocala Defendants should
`consider whether compliance with Federal Rule 9(b)’s heightened
`pleading standards is necessary.
`
`
`
`- 18 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 19 of 28 PageID 511
`
`
`
`17) Affirmative Defense Twenty-Nine – Failure to Join
`Necessary Parties
`
`Affirmative defense twenty-nine contends, in bare-bones
`fashion, that Plaintiff failed to join all necessary parties to
`its lawsuit. Because Defendants have failed to provide any details
`about who else is needed “for a just adjudication of these issues”
`– and why - the defense will be stricken with leave to replead.
`18) Affirmative Defense Thirty – Merger and Scenes a Faire
`Golden Ocala Defendants’ final affirmative defense seeks to
`bar Plaintiff’s infringement claim pursuant to the merger and
`scenes a faire doctrines. “The merger doctrine provides that
`expression is not protected in those instances where there is only
`one or so few ways of expressing an idea that protection of the
`expression would effectively accord protection to the idea
`itself.” BUC Int'l Corp. v. Int'l Yacht Council Ltd., 489 F.3d
`1129, 1142 (11th Cir. 2007) (quotation omitted). Under the scenes
`a faire doctrine, “incidents, characters, or settings that are
`indispensable or standard in the treatment of a given topic are
`not copyrightable.” Corwin v. Walt Disney Co., 475 F.3d 1239,
`1251 (11th Cir. 2007) (alterations and citations omitted).
`The Court is not certain whether merger and scenes a faire
`are properly raised as affirmative defenses here, since courts
`have also applied these doctrines to “filter[] out the unoriginal
`elements contained in a copyrightable work” when evaluating a
`plaintiff’s prima facie case of infringement. Liberty Am. Ins.
`
`
`
`- 19 -
`
`

`
`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 20 of 28 PageID 512
`
`
`
`Grp., 199 F. Supp. 2d at 1290 (rejecting plaintiff’s argument that
`“[b]ecause the merger and scenes a faire doctrines are defenses to
`a claim of infringement, . . . the Court should have placed the
`burden of proving the defenses on [d]efendant . . . , not on
`[p]laintiff to disprove the defenses”); see also Bateman, 79 F.3d
`at 1545 (discussing interplay between these doctrines and element
`filtration). Even assuming these are proper affirmative defenses,
`the Answer provides no indication of how they are implicated here.
`Affirmative Defense Thirty is stricken with leave to replead.
`B.
`Plaintiff’s Motion to Dismiss Defendants’ Counterclaims
`Plaintiff also moves to dismiss counts I-IV, VI, and VII in
`the Counterclaim Complaint. Counts I-IV request declarations that
`Golden Ocala Defendants did not infringe Plaintiff’s copyright;
`that Plaintiff’s copyright regist

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket