Case 6:17-cv-01327-CEM-TBS Document 26 Filed 10/18/17 Page 1 of 10 PageID 258
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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`ORLANDO DIVISION
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`SYSTEMATIC HOME STAGING, LLC,
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`v.
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`MHM PROFESSIONAL STAGING, LLC,
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`Plaintiff,
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`Defendant.
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`Case No: 6:17-cv-1327-Orl-41TBS
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`ORDER
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`Pending before the Court is the Motion of Defendant/Counter-Plaintiff, MHM
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`Professional Staging, LLC (“MHM”) to Strike Plaintiff/Counter-Defendant, Systematic
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`Home Staging, LLC’s (“SHS”) Affirmative Defenses to Amended Counterclaim (Doc. 24).
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`SHS has filed its response (Doc. 25). Upon review, the motion is GRANTED, in part and
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`DENIED, in part.
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`SHS initiated this action by filing a complaint seeking a finding of invalidity and/or
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`non-infringement of MHM’s alleged intellectual property rights (Doc. 1). A (Corrected)
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`First Amended Complaint for Declaratory Relief was subsequently filed (Doc. 9). MHM
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`answered the amended complaint and filed a counterclaim against SHS alleging counts
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`of trade dress infringement, copyright infringement, and unfair competition (Doc. 20). An
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`amended counterclaim was subsequently filed (Doc. 21). SHS filed its answer and
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`affirmative defenses to MHM’s amended counterclaim on September 21, 2017 (Doc. 22).
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`The instant motion seeks to strike the twenty-two affirmative defenses alleged by SHS,
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`contending that each is legally deficient.
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`General Principles
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`“An affirmative defense is generally a defense that, if established, requires
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`judgment for the defendant even if the plaintiff can prove his case by a preponderance of
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`the evidence.” Wright v. Southland Corp., 187 F.3d 1287, 1303 (11th Cir. 1999). A court
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`has the authority to “strike from a pleading an insufficient defense or any redundant,
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`immaterial, impertinent, or scandalous matter.” Rule 12(f) FED. R. CIV. P. Pursuant to Rule
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`12(f), courts may strike “insufficient defense[s]” from a pleading, either upon a motion or
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`sua sponte. Daley v. Scott, No. 2:15-CV-269-FTM-29DNF, 2016 WL 3517697, at *1 (M.D.
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`Fla. June 28, 2016). Motions to strike are generally disfavored and are often considered
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`“time wasters.” Somerset Pharm., Inc., v. Kimball, 168 F.R.D. 69, 71 (M.D. Fla.1996).
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`When it evaluates a motion to strike, the court “must treat all well pleaded facts as
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`admitted and cannot consider matters beyond the pleadings.” Florida Software Systems
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`v. Columbia/HCA Healthcare Corp., No. 97–2866–cv–T–17B, 1999 WL 781812 *1 (M.D.
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`Fla. Sept. 16, 1999).
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`When pleading affirmative defenses, a defendant should “state in short and plain
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`terms its defenses to each claim asserted against it,” FED. R.C IV. P. 8(b)(1)(A), and
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`“affirmatively state any avoidance or affirmative defense.” FED. R. CIV. P. 8(c). While
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`courts have differed as to whether the pleading standard for complaints articulated by the
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`Supreme Court in Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 127 S.Ct. 1955, 167
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`L.Ed.2d 929 (2007) and Ashcroft v. Igbal, 556 U.S. 662, 129 S.Ct. 1937, 173 L.Ed.2d 868
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`(2009) applies to affirmative defenses, it is clear that affirmative defenses “must give the
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`plaintiff fair notice of issues that may be raised at trial.” Douqan v. Armitage Plumbing,
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`LLC, No. 6:11–cv–1409–Orl–22KRS, 2011 WL 5983352, at *1 (M.D. Fla. Nov.14, 2011)
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`(citing Hassan v. U.S. Postal Serv., 842 F.2d 260, 263 (11th Cir.1988) (“The purpose of
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`Rule 8(c) is simply to guarantee that the opposing party has notice of any additional issue
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`that may be raised at trial so that he or she is prepared to properly litigate it.”).) As Judge
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`Presnell has observed: “While affirmative defenses may not have to meet the
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`Twombly/Iqbal standard, they must be more than boilerplate.” Smith v. City of New
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`Smyrna Beach, No. 6:11-CV-1110-ORL-31, 2011 WL 6099547, at *1 (M.D. Fla. Dec. 7,
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`2011).
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`Affirmative defenses that are insufficient as a matter of law can be stricken if they
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`fail to meet the general pleading requirements. Microsoft Corp. v. Jesse's Computers &
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`Repair, Inc., 211 F.R.D. 681, 683 (M.D.Fla.2002). If a defense is patently frivolous, invalid
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`as a matter of law, or if it appears that the defendant cannot succeed under any set of
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`facts which it could prove, the defense will be deemed insufficient and may be stricken.
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`Florida Software Systems, 1999 WL 781812 *1; Microsoft Corp., 211 F.R.D. at 683.
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`Analysis
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`MHM argues that SHS’ affirmative defenses do not comport with the required
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`pleading standard in that they are either conclusory boilerplate, fail to give enough factual
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`information to constitute sufficient notice, or are in the nature of a general denial. In
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`response, SHS argues that: affirmative defenses do not have to comply with the
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`plausibility pleading standard articulated by the United States Supreme Court in Twombly
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`and Ashcroft; to the extent a denial is mistakenly asserted as an affirmative defense, the
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`remedy is not to strike the claim but to treat it as a specific denial; and the defenses here
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`provide fair notice to MHM so “there is no need for a point-by-point refutation of MHM’s ...
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`arguments about their supposed factual deficiencies.” (Doc. 25 at 6). I agree that the
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`Twombly/Iqbal standard does not apply here. See Gonzales v. Midland Credit
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`Management, Inc., No. 6:13-cv-1576-Orl-37TBS, 2013 WL 5970721, at *3 (M.D. Fla. Nov.
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`8, 2013) (“This Court agrees with those courts which hold that the pleading standard
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`explained in Twombly and Iqbal does not apply to affirmative defenses.”). I also agree
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`that denials masquerading as affirmative defenses should not be stricken. However, a
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`defense should respond to a specific count or counts and should contain sufficient
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`information to constitute fair notice. I am also of the view that the shotgun pleading of
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`boilerplate defenses clutters the docket and creates unnecessary work for the parties and
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`the Court. For this reason, a “point-by-point” analysis of each defense is, unfortunately,
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`necessary.
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`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.
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`This is a denial, not a defense. Consistent with the above standard, the motion to
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`strike is denied as to this defense.
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`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.
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` While a close call, the motion to strike is denied as to this defense. This matter
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`can be more fully explored in discovery.
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`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.
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`The motion to strike is granted, as this defense does not sufficiently identify the
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`grounds upon which it is based. As such, it does not constitute fair notice of a fair use
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`defense. SHS may amend to include more specifics, if it can consistent with Rule 11.
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`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.
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`This is a denial, not an affirmative defense. As above, the motion to strike is
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`denied as to this defense.
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`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.
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`The defense is stated so generally that it does not give fair notice of what is
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`being asserted and provides no nexus between the defense and the claims.
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`Absent an explanation how the merger doctrine applies here, the motion to strike is
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`granted as to this defense, with leave to amend, if SHS can do so consistent with
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`Rule 11.
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`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.
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`I agree with MHM that Plaintiff should possess the facts to know if the independent
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`creation doctrine applies. If it believes it does, it should plead so without qualification, and
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`should provide the reason why. Absent explanation as to how the doctrine applies here,
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`the motion to strike is granted as to this defense, with leave to amend, if SHS can do so
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`consistent with Rule 11.
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`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.
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` This is a denial, not an affirmative defense. As above, the motion to strike is
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`denied as to this defense.
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`Eighth Affirmative Defense -As to Count II, SHS affirmatively asserts that
`MHM has failed to mitigate its alleged damages, if any.
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`Defendant has fair notice of this defense and the motion to strike it is denied.
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`Ninth Affirmative Defense -As to Count II, SHS affirmatively asserts that
`MHM’s allegedly copyrighted work contains scenes a faire which are not
`copyrightable.
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`This defense is stated so generally that it does not give fair notice of what is being
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`asserted and provides no nexus between the defense and the claims. Absent an
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`explanation as to how the scenes a faire doctrine applies here, the motion to strike is
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`granted as to this defense, with leave to amend, if SHS can do so consistent with Rule
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`11.
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`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.
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`MHM argues that this defense is completely inapplicable as it did not request
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`statutory damages or attorney’s fees for Count II under 17 U.S.C. § 412. I agree. Plaintiff
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`needs to include in the defense some explanation of how it applies to this case;
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`otherwise, the defense appears to be frivolous and is an example of an unacceptable,
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`boilerplate approach to pleading. The motion to strike is granted as to this defense, with
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`leave to amend, if SHS can do so consistent with Rule 11.
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`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
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`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.
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`This, too, is overbroad boilerplate. If Plaintiff believes Defendant has engaged in
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`any of the eight activities generally alleged, it needs to say so and provide enough facts
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`so that fair notice is given. As currently pled, the defense is alleged so broadly that it does
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`not give Defendant (or the Court) adequate notice of what is being asserted or any nexus
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`between the general doctrine of misuse and any of the claims alleged here. The motion to
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`strike is granted as to this defense, with leave to amend if SHS can do so consistent with
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`Rule 11.
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`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.
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`The motion to strike is granted as to this defense, with leave to amend if SHS can
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`do so consistent with Rule 11. Again, the defense is stated so generally that it does not
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`give fair notice of what is being asserted. If the defense is available, SHS should have
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`facts to explain how it applies to the case.
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`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.
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`The motion to strike is granted as to this defense, with leave to amend if SHS can
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`do so consistent with Rule 11. The defense is stated so generally that it does not give fair
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`notice of what is being asserted. If the defense is available, SHS should have facts to
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`explain how it applies to the case. For example, SHS should identify the third parties it
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`refers to.
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`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.
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`This defense is overbroad boilerplate. If SHS believes MHM engaged in any of the
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`nine activities generally alleged, it needs to say so and provide enough facts so that fair
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`notice is given. As currently pled, the defense is alleged so broadly that it does not give
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`MHM (or the Court) adequate notice of what is being asserted or any nexus between the
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`general doctrine of misuse and any of the claims alleged. The motion to strike is granted
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`as to this defense, with leave to amend if SHS can do so consistent with Rule 11.
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`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.
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`While a close call, the motion to strike this defense is denied. The factual basis of
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`this defense can be flushed out in discovery.
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`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
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`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.
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`The motion to strike this defense is denied. MHM has been given fair notice that
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`standing is at issue.
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`Seventeenth Affirmative Defense –As to Count I, SHS affirmatively asserts
`the affirmative defense of fair use of MHM’s alleged trade dress.
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`The motion to strike is granted as to this defense, with leave to amend if SHS can
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`do so consistent with Rule 11. MHM and the Court have no idea what the basis for the
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`assertion of this defense is. As such, it fails to give fair notice.
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`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.
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`The motion to strike the first part of this defense is denied, as it gives fair notice of
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`SHS’s defense that the trade dress is generic. The motion to strike is granted as to the
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`“alternative” second part of this defense, for the same reasons stated with respect to the
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`Ninth Affirmative Defense. SHS may amend, if SHS can do so consistent with Rule 11.
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`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.
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`The motion to strike is granted as to this defense, with leave to amend if SHS can
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`do so consistent with Rule 11. The defense is stated so generally that it does not provide
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`fair notice. SHS needs to explain how acquiescence and estoppel apply to this case.
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`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.
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`The motion to strike is granted as to this defense, with leave to amend if SHS can
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`do so consistent with Rule 11. The defense is stated so generally that it does not provide
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`fair notice. SHS needs to explain how waiver applies to this case.
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`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.
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`The motion to strike is granted as to this defense, with leave to amend if SHS can
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`do so consistent with Rule 11. The defense is stated so generally that it does not provide
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`fair notice. SHS needs to include some facts to identify the “others” or otherwise
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`particularize it to this case.
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`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.
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`This is the proverbial (and unacceptable) shotgun approach. The motion to strike is
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`granted, as to this “defense,” without leave to amend.
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`To the extent leave to amend has been granted above, SHS shall have seven days
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`from the date of this Order In which to file appropriate amended affirmative defenses.
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`DONE and ORDERED in Orlando, Florida on October 18, 2017.
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`Copies furnished to Counsel of Record
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