`
`
`
`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`ORLANDO DIVISION
`
`
`SYSTEMATIC HOME STAGING, LLC,
`
`
`
`v.
`
`MHM PROFESSIONAL STAGING, LLC,
`
`
`
`
`Plaintiff,
`
`Defendant.
`
`Case No: 6:17-cv-1327-Orl-41TBS
`
`
`
`
`ORDER
`
`Pending before the Court is the Motion of Defendant/Counter-Plaintiff, MHM
`
`Professional Staging, LLC (“MHM”) to Strike Plaintiff/Counter-Defendant, Systematic
`
`Home Staging, LLC’s (“SHS”) Affirmative Defenses to Amended Counterclaim (Doc. 24).
`
`SHS has filed its response (Doc. 25). Upon review, the motion is GRANTED, in part and
`
`DENIED, in part.
`
`SHS initiated this action by filing a complaint seeking a finding of invalidity and/or
`
`non-infringement of MHM’s alleged intellectual property rights (Doc. 1). A (Corrected)
`
`First Amended Complaint for Declaratory Relief was subsequently filed (Doc. 9). MHM
`
`answered the amended complaint and filed a counterclaim against SHS alleging counts
`
`of trade dress infringement, copyright infringement, and unfair competition (Doc. 20). An
`
`amended counterclaim was subsequently filed (Doc. 21). SHS filed its answer and
`
`affirmative defenses to MHM’s amended counterclaim on September 21, 2017 (Doc. 22).
`
`The instant motion seeks to strike the twenty-two affirmative defenses alleged by SHS,
`
`contending that each is legally deficient.
`
`
`
`
`
`Case 6:17-cv-01327-CEM-TBS Document 26 Filed 10/18/17 Page 2 of 10 PageID 259
`
`
`
`
`General Principles
`
`“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). A court
`
`has the authority to “strike from a pleading an insufficient defense or any redundant,
`
`immaterial, impertinent, or scandalous matter.” Rule 12(f) FED. R. CIV. P. Pursuant to Rule
`
`12(f), courts may strike “insufficient defense[s]” from a pleading, either upon a motion or
`
`sua sponte. Daley v. Scott, No. 2:15-CV-269-FTM-29DNF, 2016 WL 3517697, at *1 (M.D.
`
`Fla. June 28, 2016). Motions to strike are generally disfavored and are often considered
`
`“time wasters.” Somerset Pharm., Inc., v. Kimball, 168 F.R.D. 69, 71 (M.D. Fla.1996).
`
`When it evaluates a motion to strike, the court “must treat all well pleaded facts as
`
`admitted and cannot consider matters beyond the pleadings.” Florida Software Systems
`
`v. Columbia/HCA Healthcare Corp., No. 97–2866–cv–T–17B, 1999 WL 781812 *1 (M.D.
`
`Fla. Sept. 16, 1999).
`
`When pleading affirmative defenses, a defendant should “state in short and plain
`
`terms its defenses to each claim asserted against it,” FED. R.C IV. P. 8(b)(1)(A), and
`
`“affirmatively state any avoidance or affirmative defense.” FED. R. CIV. P. 8(c). While
`
`courts have differed as to whether the pleading standard for complaints articulated by the
`
`Supreme Court in Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 127 S.Ct. 1955, 167
`
`L.Ed.2d 929 (2007) and Ashcroft v. Igbal, 556 U.S. 662, 129 S.Ct. 1937, 173 L.Ed.2d 868
`
`(2009) applies to affirmative defenses, it is clear that affirmative defenses “must give the
`
`plaintiff fair notice of issues that may be raised at trial.” Douqan v. Armitage Plumbing,
`
`LLC, No. 6:11–cv–1409–Orl–22KRS, 2011 WL 5983352, at *1 (M.D. Fla. Nov.14, 2011)
`
`(citing Hassan v. U.S. Postal Serv., 842 F.2d 260, 263 (11th Cir.1988) (“The purpose of
`
`
`
`- 2 -
`
`
`
`Case 6:17-cv-01327-CEM-TBS Document 26 Filed 10/18/17 Page 3 of 10 PageID 260
`
`
`
`
`Rule 8(c) is simply to guarantee that the opposing party has notice of any additional issue
`
`that may be raised at trial so that he or she is prepared to properly litigate it.”).) As Judge
`
`Presnell has observed: “While affirmative defenses may not have to meet the
`
`Twombly/Iqbal standard, they must be more than boilerplate.” Smith v. City of New
`
`Smyrna Beach, No. 6:11-CV-1110-ORL-31, 2011 WL 6099547, at *1 (M.D. Fla. Dec. 7,
`
`2011).
`
`Affirmative defenses that are insufficient as a matter of law can be stricken if they
`
`fail to meet the general pleading requirements. Microsoft Corp. v. Jesse's Computers &
`
`Repair, Inc., 211 F.R.D. 681, 683 (M.D.Fla.2002). If a defense is patently frivolous, invalid
`
`as a matter of law, or if it appears that the defendant cannot succeed under any set of
`
`facts which it could prove, the defense will be deemed insufficient and may be stricken.
`
`Florida Software Systems, 1999 WL 781812 *1; Microsoft Corp., 211 F.R.D. at 683.
`
`Analysis
`
`MHM argues that SHS’ affirmative defenses do not comport with the required
`
`pleading standard in that they are either conclusory boilerplate, fail to give enough factual
`
`information to constitute sufficient notice, or are in the nature of a general denial. In
`
`response, SHS argues that: affirmative defenses do not have to comply with the
`
`plausibility pleading standard articulated by the United States Supreme Court in Twombly
`
`and Ashcroft; to the extent a denial is mistakenly asserted as an affirmative defense, the
`
`remedy is not to strike the claim but to treat it as a specific denial; and the defenses here
`
`provide fair notice to MHM so “there is no need for a point-by-point refutation of MHM’s ...
`
`arguments about their supposed factual deficiencies.” (Doc. 25 at 6). I agree that the
`
`Twombly/Iqbal standard does not apply here. See Gonzales v. Midland Credit
`
`Management, Inc., No. 6:13-cv-1576-Orl-37TBS, 2013 WL 5970721, at *3 (M.D. Fla. Nov.
`
`
`
`- 3 -
`
`
`
`Case 6:17-cv-01327-CEM-TBS Document 26 Filed 10/18/17 Page 4 of 10 PageID 261
`
`
`
`
`8, 2013) (“This Court agrees with those courts which hold that the pleading standard
`
`explained in Twombly and Iqbal does not apply to affirmative defenses.”). I also agree
`
`that denials masquerading as affirmative defenses should not be stricken. However, a
`
`defense should respond to a specific count or counts and should contain sufficient
`
`information to constitute fair notice. I am also of the view that the shotgun pleading of
`
`boilerplate defenses clutters the docket and creates unnecessary work for the parties and
`
`the Court. For this reason, a “point-by-point” analysis of each defense is, unfortunately,
`
`necessary.
`
`First Affirmative Defense - SHS affirmatively asserts that Counts I, II, and III
`of MHM’s Amended Counterclaim fails to state a claim upon which relief can
`be granted.
`
`This is a denial, not a defense. Consistent with the above standard, the motion to
`
`strike is denied as to this defense.
`
`Second Affirmative Defense -As to Count II, SHS pleads the affirmative
`defense of unclean hands to the extent MHM has sought to assert rights in
`common unprotectable elements contained in the allegedly copyrighted
`work at issue and/or to the extent MHM and/or its assignor made
`misrepresentations to the U.S. Copyright Office during the registration
`process.
`
` While a close call, the motion to strike is denied as to this defense. This matter
`
`can be more fully explored in discovery.
`
`Third Affirmative Defense - As to Count II, SHS pleads the affirmative
`defense of fair use as to all elements of the allegedly copyrighted work at
`issue that copyright law does not protect including but not limited to: ideas,
`expressions necessarily incident to ideas, expressions already in the public
`domain, generic expressions, and any other unprotectable or
`noncopyrightable elements.
`
`The motion to strike is granted, as this defense does not sufficiently identify the
`
`grounds upon which it is based. As such, it does not constitute fair notice of a fair use
`
`defense. SHS may amend to include more specifics, if it can consistent with Rule 11.
`
`
`
`- 4 -
`
`
`
`Case 6:17-cv-01327-CEM-TBS Document 26 Filed 10/18/17 Page 5 of 10 PageID 262
`
`
`
`
`Fourth Affirmative Defense -As to Count II, SHS pleads the affirmative
`defense of nonoriginality to the extent that the allegedly copyrighted work at
`issue contains elements of nonoriginal material or material with a quantum
`of originality that is de minimus and therefore not copyrightable.
`
`This is a denial, not an affirmative defense. As above, the motion to strike is
`
`denied as to this defense.
`
`Fifth Affirmative Defense- As to Count II, SHS affirmatively asserts the
`merger doctrine as an affirmative defense because the idea and expression
`of the material allegedly covered by a registered copyright in this matter are
`so closely connected that there is only one or few ways to practically
`express the idea.
`
`The defense is stated so generally that it does not give fair notice of what is
`
`being asserted and provides no nexus between the defense and the claims.
`
`Absent an explanation how the merger doctrine applies here, the motion to strike is
`
`granted as to this defense, with leave to amend, if SHS can do so consistent with
`
`Rule 11.
`
`Sixth Affirmative Defense -As to Count II, SHS affirmatively asserts the
`independent creation doctrine as an affirmative defense to the extent the
`work MHM identified as infringing its allegedly copyrighted work was
`created independently of MHM’s work.
`
`I agree with MHM that Plaintiff should possess the facts to know if the independent
`
`creation doctrine applies. If it believes it does, it should plead so without qualification, and
`
`should provide the reason why. Absent explanation as to how the doctrine applies here,
`
`the motion to strike is granted as to this defense, with leave to amend, if SHS can do so
`
`consistent with Rule 11.
`
`Seventh Affirmative Defense -As to Count II, SHS affirmatively asserts that
`any protectable expression in MHM’s allegedly copyrighted work is not
`substantially similar to SHS’s displayed work.
`
` This is a denial, not an affirmative defense. As above, the motion to strike is
`
`denied as to this defense.
`
`
`
`- 5 -
`
`
`
`Case 6:17-cv-01327-CEM-TBS Document 26 Filed 10/18/17 Page 6 of 10 PageID 263
`
`
`
`
`Eighth Affirmative Defense -As to Count II, SHS affirmatively asserts that
`MHM has failed to mitigate its alleged damages, if any.
`
`Defendant has fair notice of this defense and the motion to strike it is denied.
`
`Ninth Affirmative Defense -As to Count II, SHS affirmatively asserts that
`MHM’s allegedly copyrighted work contains scenes a faire which are not
`copyrightable.
`
`This defense is stated so generally that it does not give fair notice of what is being
`
`asserted and provides no nexus between the defense and the claims. Absent an
`
`explanation as to how the scenes a faire doctrine applies here, the motion to strike is
`
`granted as to this defense, with leave to amend, if SHS can do so consistent with Rule
`
`11.
`
`Tenth Affirmative Defense -As to Count II, SHS affirmatively asserts that
`MHM is not entitled to any award of statutory damages or attorney’s fees for
`any copyright infringement attributable to SHS that commenced after the
`first publication of MHM’s work at issue and before the effective date of its
`registration. Concomitantly, SHS affirmatively asserts that MHM did not
`seek or obtain copyright registration for its work within three months after
`the first publication of the work.
`
`MHM argues that this defense is completely inapplicable as it did not request
`
`statutory damages or attorney’s fees for Count II under 17 U.S.C. § 412. I agree. Plaintiff
`
`needs to include in the defense some explanation of how it applies to this case;
`
`otherwise, the defense appears to be frivolous and is an example of an unacceptable,
`
`boilerplate approach to pleading. The motion to strike is granted as to this defense, with
`
`leave to amend, if SHS can do so consistent with Rule 11.
`
`Eleventh Affirmative Defense - As to Count II, SHS pleads the affirmative
`defense of copyright misuse to the extent that MHM has engaged in (1) anti-
`trust violations, (2) anti-competitive activity outside the scope of legitimate
`copyright monopoly, (3) activity violating public policy embodied in the grant
`of the alleged copyright at issue regardless of whether the activity is anti-
`competitive, (4) activity relating to securing an exclusive right or limited
`monopoly not granted by the U.S. Copyright Office and which is contrary to
`public policy for the U.S. Copyright Office to grant, (5) activity to extend
`
`
`
`- 6 -
`
`
`
`Case 6:17-cv-01327-CEM-TBS Document 26 Filed 10/18/17 Page 7 of 10 PageID 264
`
`
`
`
`limited exclusive rights to property not covered by a registered copyright
`and using such property to attempt to force a settlement or achieve an
`outright victory in litigation, (6) activity amounting to using its copyright or
`the copyright statute to interfere with the public’s right to be informed
`regarding generic or other matters of general interest or in the public
`domain, (7) licensing activity containing broad non-compete, non-
`development, or use restriction and exclusivity clauses, and (8) any other
`activity amounting to copyright misuse.
`
`This, too, is overbroad boilerplate. If Plaintiff believes Defendant has engaged in
`
`any of the eight activities generally alleged, it needs to say so and provide enough facts
`
`so that fair notice is given. As currently pled, the defense is alleged so broadly that it does
`
`not give Defendant (or the Court) adequate notice of what is being asserted or any nexus
`
`between the general doctrine of misuse and any of the claims alleged here. The motion to
`
`strike is granted as to this defense, with leave to amend if SHS can do so consistent with
`
`Rule 11.
`
`Twelfth Affirmative Defense - As to Count II, SHS affirmatively asserts that
`the first sale doctrine as codified in 17 U.S.C. §109 bars MHM’s
`enforcement of its allegedly copyrighted work.
`
`The motion to strike is granted as to this defense, with leave to amend if SHS can
`
`do so consistent with Rule 11. Again, the defense is stated so generally that it does not
`
`give fair notice of what is being asserted. If the defense is available, SHS should have
`
`facts to explain how it applies to the case.
`
`Thirteenth Affirmative Defense -As to Count II, SHS affirmatively asserts
`that MHM’s allegedly copyrighted work was sold or licensed to one or more
`third parties and those third parties own or control the distribution, display,
`and other rights associated with the work.
`
`The motion to strike is granted as to this defense, with leave to amend if SHS can
`
`do so consistent with Rule 11. The defense is stated so generally that it does not give fair
`
`notice of what is being asserted. If the defense is available, SHS should have facts to
`
`
`
`- 7 -
`
`
`
`Case 6:17-cv-01327-CEM-TBS Document 26 Filed 10/18/17 Page 8 of 10 PageID 265
`
`
`
`
`explain how it applies to the case. For example, SHS should identify the third parties it
`
`refers to.
`
`Fourteenth Affirmative Defense - As to Count I, SHS affirmatively asserts
`the affirmative defense of trade dress misuse to the extent MHM has
`misused its alleged marks/trade dress by engaging in (1) anti-trust
`violations, (2) anti-competitive activity outside the scope of legitimate trade
`dress rights, (3) activity violating public policy embodied in legitimate trade
`dress rights regardless of whether the activity is anti-competitive, (4) activity
`relating to securing any right not permitted by law and which is contrary to
`public policy, (5) activity to extend limited rights to its alleged trade dress
`beyond their legitimate scope and using such activity to attempt to force a
`settlement or achieve an outright victory in litigation, (6) activity amounting
`to using its alleged trade dress and/or the Lanham Act to interfere with the
`public’s right to be informed regarding generic or other matters of general
`interest or in the public domain, (7) licensing activity containing improperly
`or overly broad non-compete, non-development, or use restriction and
`exclusivity clauses, (8) making misrepresentations to the public in an
`attempt to increase the scope of its alleged trade dress, and (9) any other
`activity amounting to trade dress misuse.
`
`This defense is overbroad boilerplate. If SHS believes MHM engaged in any of the
`
`nine activities generally alleged, it needs to say so and provide enough facts so that fair
`
`notice is given. As currently pled, the defense is alleged so broadly that it does not give
`
`MHM (or the Court) adequate notice of what is being asserted or any nexus between the
`
`general doctrine of misuse and any of the claims alleged. The motion to strike is granted
`
`as to this defense, with leave to amend if SHS can do so consistent with Rule 11.
`
`Fifteenth Affirmative Defense -As to Count I, SHS affirmatively asserts the
`affirmative defense of the First Amendment of the Constitution of the United
`States of America to the extent any of MHM’s alleged trade dress are
`adjudged to be in the public domain and outside the protection of the
`Lanham Act.
`
`While a close call, the motion to strike this defense is denied. The factual basis of
`
`this defense can be flushed out in discovery.
`
`Sixteenth Affirmative Defense -As to Count I, SHS affirmatively asserts the
`affirmative defense that MHM lacks standing to maintain all or parts of its
`claims to the extent any of its predecessor(s) in interest failed to properly
`
`
`
`- 8 -
`
`
`
`Case 6:17-cv-01327-CEM-TBS Document 26 Filed 10/18/17 Page 9 of 10 PageID 266
`
`
`
`
`assign all necessary ownership and other rights to the alleged trade dress
`at issue and any and all goodwill associated therewith including but not
`limited to the right to sue for alleged and accrued acts of infringement or
`misappropriation to MHM and/or to the extent that ownership of the alleged
`trade dress at issue rests in a non-party to these proceedings.
`
`The motion to strike this defense is denied. MHM has been given fair notice that
`
`standing is at issue.
`
`Seventeenth Affirmative Defense –As to Count I, SHS affirmatively asserts
`the affirmative defense of fair use of MHM’s alleged trade dress.
`
`The motion to strike is granted as to this defense, with leave to amend if SHS can
`
`do so consistent with Rule 11. MHM and the Court have no idea what the basis for the
`
`assertion of this defense is. As such, it fails to give fair notice.
`
`Eighteenth Affirmative Defense –As to Count I, SHS affirmatively asserts the
`affirmative defense that MHM’s alleged trade dress is generic and not
`entitled to the protection of the Lanham Act; alternatively, MHM’s alleged
`trade dress contains non-protectible scenes a faire.
`
`The motion to strike the first part of this defense is denied, as it gives fair notice of
`
`SHS’s defense that the trade dress is generic. The motion to strike is granted as to the
`
`“alternative” second part of this defense, for the same reasons stated with respect to the
`
`Ninth Affirmative Defense. SHS may amend, if SHS can do so consistent with Rule 11.
`
`Nineteenth Affirmative Defense –As to Count I, SHS affirmatively asserts the
`affirmative defense of acquiescence and estoppel; i.e., MHM has failed to
`adequately police possible or allegedly infringing uses of its alleged trade
`dress rights and therefore allowed such uses.
`
`The motion to strike is granted as to this defense, with leave to amend if SHS can
`
`do so consistent with Rule 11. The defense is stated so generally that it does not provide
`
`fair notice. SHS needs to explain how acquiescence and estoppel apply to this case.
`
`Twentieth Affirmative Defense -As to Count I, SHS affirmatively asserts the
`affirmative defense of waiver; i.e., MHM has waived its alleged trade dress
`rights and therefore allowed such use thereof by others.
`
`
`
`
`- 9 -
`
`
`
`Case 6:17-cv-01327-CEM-TBS Document 26 Filed 10/18/17 Page 10 of 10 PageID 267
`
`
`
`
`The motion to strike is granted as to this defense, with leave to amend if SHS can
`
`do so consistent with Rule 11. The defense is stated so generally that it does not provide
`
`fair notice. SHS needs to explain how waiver applies to this case.
`
`Twenty-First Affirmative Defense -As to Count I, SHS affirmatively asserts
`the affirmative defense of naked licensing; i.e., that MHM permitted SHS
`and/or others to use the alleged trade dress at issue in such a manner that
`the goodwill associated with such dress inured to the benefit of SHS and/or
`others.
`
`The motion to strike is granted as to this defense, with leave to amend if SHS can
`
`do so consistent with Rule 11. The defense is stated so generally that it does not provide
`
`fair notice. SHS needs to include some facts to identify the “others” or otherwise
`
`particularize it to this case.
`
`Twenty-Second Affirmative Defense -As to Count III, SHS affirmatively
`incorporates herein all of the previous affirmative defenses to Counts I and
`II as if fully stated herein.
`
`This is the proverbial (and unacceptable) shotgun approach. The motion to strike is
`
`granted, as to this “defense,” without leave to amend.
`
`To the extent leave to amend has been granted above, SHS shall have seven days
`
`from the date of this Order In which to file appropriate amended affirmative defenses.
`
`DONE and ORDERED in Orlando, Florida on October 18, 2017.
`
`
`
`
`Copies furnished to Counsel of Record
`
`
`
`
`- 10 -
`
`