`
`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
`
`
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`Case 2:15-cv-00389-UA-CM Document 74 Filed 08/30/16 Page 2 of 28 PageID 494
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`
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`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).
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`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.
`
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`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.
`
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`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
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`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
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`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
`
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`*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
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`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.
`
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`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
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`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).”).
`
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`“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
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`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 . . . .”).
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`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
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`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
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`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.
`
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` 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
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`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.
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`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.
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`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.
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`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