Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA365714
`ESTTA Tracking number:
`08/30/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91195500
`Plaintiff
`Activision Publishing, Inc.
`MICHAEL CULVER
`MILLEN WHITE ZELANO & BRANIGAN, PC
`2200 CLARENDON BLVD., SUITE 1400
`ARLINGTON, VA 22201
`UNITED STATES
`culver@mwzb.com, major@mwzb.com
`Motion to Strike
`Michael Culver
`culver@mwzb.com
`/michaelculver/
`08/30/2010
`motion to strike.pdf ( 5 pages )(220472 bytes )
`Appendix strike.pdf ( 29 pages )(2432645 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91 195500
`App. No. 77616864
`Mark: HIP HOP HERO
`
`) )
`
`) )
`
`)
`)
`)
`)
`)
`
`ACTIVISION PUBLISHING, INC.,
`
`Opposer
`
`V.
`
`OBERON MEDIA, INC.
`
`Applicant
`
`OPPOSER’S MOTION TO STRIKE APPLICANTS AFFIRMATTVE DEFENSES
`
`fursuant to Rule l2(t) of the Federal Rules of Civil Procedure, Opposer brings
`
`this motion to strike the three Affirmative Defenses pleaded in the Answer dated August
`
`5, 2010 by Applicant. The applicable defenses are pleaded as follows:
`
`1.
`
`2.
`
`3.
`
`Opposer fails to state a claim upon which relief can be granted.
`
`There is no likelihood of confusion herein.
`
`Opposer’s claims are barred by the doctrine of unclean hands.
`
`Within the meaning of Rule 12(1), the first and third defenses are insufficient and the
`
`second defense is redundant. Accordingly, all three should be stricken for the reasons set
`
`forth below.
`
`A.
`
`The “No Likelihood of Confusion Defense” is Redundant
`
`Opposer’s Notice of Opposition in paragraphs 9 and 10 pleaded a likelihood of
`
`confusion between Opposer’s marks and Applicanfs mark, and Applicant denied those
`
`allegations in the corresponding paragraphs of its Answer. Accordingly, the second
`
`affirmative defense is simply redundant of Applicanfs denials and therefore should be
`
`stricken. See Texrron, Inc. v. Gillette Co., 180 USPQ 152, 154 (TTAB 3973).
`
`

`
`B.
`
`Opposer has Stated a Claim Upon Which Relief can be Granted
`
`To state a claim upon which relief can be granted, an opposer needs only to ailege
`
`standing and a valid ground to oppose. See Order Sons ofItaly in America v. Profumi
`
`Fratelli Nostra AG, 36 USPQ2d 1221, 1222 (TTAB 1995). When those elements are
`
`met, an appiicanfs affirmative defense of failure to state a claim upon which relief can be
`
`granted must be stricken.
`
`Id. at 1222; American Vitamin Products Inc. v. DowBrarzds
`
`Inc, 22 USPQ2d 1313, 13i4('1[‘TAB 1992); SC. Johnson :5’: Son, Inc. v. GAF Corp, 177
`
`USPQ 720 (TTAB 1973).
`
`Opposer has pleaded that it is the owner of various marks having at least one
`
`component word—»»HERO~—that is identical to that component in Applicant’s mark; that
`
`Opposer has priority of use over Applicant; that the goods identified by Applicant’s mark
`
`(“computer and electronic game software”) are identical or essentially the same as the
`
`goods identified by 0pposer’s marks; that a likelihood of confusion wilt result from the
`
`use of Applicanfs mark; and that Opposer would be harmed by the issuance of any
`
`registration for Applicanfs mark. See Notice of Opposition W 2, 3, and 7—i 1. Opposer
`
`cleariy has asserted a valid ground to oppose under Sections 2(d) and 43(c) of the
`
`Trademark Act, 15 U.S.C. §§ 105201) and 1125(0), and has established standing in that it
`
`is a competitor in the field of relevant goods and not a mere intermeddler. Thus, this
`
`opposition is proper under Section 13, 15 U.S.C. § 1063, and Applicant’s second
`
`affirmative defense should be stricken as insufficient.
`
`

`
`C.
`
`The Uncle-an Hands Defense is Insufficient
`
`The pleading of an affirmative defense “should include enough detail to give the
`
`plaintiff fair notice of the basis for the defense.” TBMP § 31 l..02(b) at n. 223 (2d Ed).
`
`Applicant’s third affirmative defense is merely a bald allegation of “unclean hands”
`
`without any supporting facts. Thus, its defense does not provide the requisite fair notice.
`
`This deficiency alone is sufficient basis for striking the defense. See Board ofEducation
`
`of Thornton Township High School District 205 v. Board ofEducation ofArgo
`
`Community High School District 217, 2006 WL 2460590 at *4 (N .D. E11,), Global Poly
`
`Inc. 12. Fred ’s Inc, 2004 WL 532844 at *6 (ND. Ill.). See also Cyrzergy Ergonomics, Inc.
`
`v. Ergonomics Partners, Inc, 2008 WL 281”/l06 at *5 (ED. Mo.) (pleading of unclean
`
`hands and inequitable conduct). Compare MPC Containment Systems, Ltd. v. Moreland,
`
`2008 WL 1775501 at "‘5~6 (N.D. Ill.) (in copyright infringement action, insufficient facts
`
`to support defense), Safe Bed Technologies Co. v. KC] USA, Inc, 2003 WL 21183948 at
`
`*5 (N.D. Ill.) (in patent infringement action, insufficient facts to support defense).*
`
`The lack of specificity in this affirrnative defense is demonstrated by the
`
`additional unknown defenses that may be encompassed within the allegation of unclean
`
`hands. For example, Applicant’s unspecified defense may harbor a collateral attack on
`
`the validity of one or more of Opposer’s registrations and, in that event, the grounds must
`
`be stated by way of a counterclaim. See 37 CFR § 2.l06(b)(2). Additionally, Applicanfs
`
`defense may harbor a defense based on fraud. See Horrzblower cl’: Weeks, Inc. v.
`
`Homblower & Weeks, Inc. 60 USPQ2d 1733, 1738 (TTAB 2001) (“[a]ssertion of the
`
`Copies of all of the foregoing cases published electronically by Westlaw are submitted
`in an Appendix hereto.
`
`

`
`defense of unciean hands
`
`[is] often based on allegations of fraud”).
`
`in that regard,
`
`Rule 9(b) of the Federal Rules of Civil Procedure would require pleading with
`
`particularity.
`
`The defense of unclean hands also must relate directiy to Opposer’s claim. “it
`
`thus seems clear that misconduct in the abstract, unrelated to the claim in which it is
`
`asserted as a defense, does not constitute unclean hands.” Wamaco Inc. v. Adventure
`
`Knits, Inc, 210 USPQ 307, 313 (TTAB 1981). See also VIP Foods Inc. v. VIP. Food
`
`Products, 200 USPQ 105, 113 (TTAB 1978) (“the defense of unclean hands may not be
`
`considered independently of the merits of the plaintiff’s claim”). In the absence of
`
`specifics, Appiicant’s pleading must be regarded as insufficient to meet the relatedness
`
`requirement. This is another, independent basis for striking the unclean hands defense.
`
`In short, App1icant’s unspecified allegation of unclean hands does not provide fair
`
`notice of the defense and fails to indicate how the defense relates to Opposer’s claim.
`
`Further, this defense may refer to conduct that should he pleaded by counterclaim or with
`
`particularity under Rule 9(b). Accordingly, this defense is insufficient and should be
`
`stricken.
`
`D.
`
`Conclusion
`
`In View of the foregoing deficiencies is Applicant’s pleading and in consideration
`
`of the appiicable law, Opposer respectfully submits that Applicant’s three affirmative
`
`defenses must be stricken from its Answer, and that this motion must be granted.
`
`Date: August 30, 2010
`
`By:
`
`Scott 3. Maj or
`Michael Culver
`
`

`
`Millen, White, Zelano & Branigan, RC.
`2200 Clarendon Blvd., Suite 1400
`Tel: 703-243-6333 Fax: 703-243-6410
`
`major@mwzb.com; eu1ver{a;111wzb.c0m
`Attorneys for Opposer
`
`Certificate of Service
`
`This is to certify that a copy of the foregoing motion with Appendix was served
`this _Z6fEiay of August 2010 by first-ciass mail, postage prepaid, on the foliowing as
`Appiicanfs attorney of record:
`
`Joel Kami Schmidt, Esq.
`COWAN, LIEBOWITZ & LATMAN, RC.
`1133 Avenue of the Americas
`
`New York, NY 10036-6710
`
`By: g
`Attorney for Opposer
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ACTIVISEON PUBLISHING, INC.,
`
`Opposer
`
`V.
`
`OBERON MEDIA, INC.
`
`Applicant
`
`‘V-./\~./\_-/"~._./‘\....f'\—/\—/\-—/\—/
`
`Opposition No. 91 195 500
`App. No. 77616864
`Mark: HIP HOP HERO
`
`OPPOSER’S MOTION TO STRIKE APPLICANTS AFFIRMATIVE DEFENSES
`
`Appendix
`
`

`
`Westtavv,
`
`Not Reported in F.Supp.2d
`Not Reported in F.Supp.2d, 2006 WL 2460590 (N .D.1ll.)
`(Cite as: 2005 WL 2460590 (N.D.Iil.))
`
`is
`Only the Westlaw citation is currently availabie.
`
`United States District Court,
`N.D. Illinois, Eastern Division.
`BOARD OF EDUCATION OF THORNTON
`TOWNSHIP HIGH SCHOOL. DISTRICT 205 et 211.,
`Plaintiffs,
`v.
`
`BOARD OF EDUCATION OF ARGO COM-
`MUNITY HIGH SCHOOL DISTRICT 2% 7 et ai.,
`Defendants.
`No. 06 C 2005.
`
`Aug. 2i, 2006.
`Matthew J. Piers, Hughes Socoi Piers Resnick 8:
`Dym Ltd, Care A.
`I-iendriclcson, Joshua Karsh,
`Gessier, Hughes, Socol, Piers, Resnick & Dym,
`Ltd, Chicago, iL, for Plaintiffs.
`
`Burton S. Odelson, Amy Elaina Zale, Brian Mi~
`chaei Begiey, Felicia I... ‘Frazier, Odeison & Sterk,
`Ltd, Evergreen Park, IL, Frank Bennett Garrett, ill,
`Barbara Endoy, Joseph James Perkoski, Susan W.
`Glover, Robbins, Schwartz, Nicholas, Litton &
`Taylor, Ltd., Chicago, IL, for Defendants.
`
`MEMORANDUM OPINION AND ORDER
`CONLON, J.
`
`*1 Two high schooi districts in Thornton, Iiiinois,
`together with 16 parents and students from the dis-
`tricts, ‘{FNi] sued 13 suburban Chicago high school
`districts [FN2] for racial discrimination. Defendants
`answered the second amended complaint
`interpos-
`ing seven amended affirmative defenses. Plaintiffs
`now move to strike each amended affirmative de-
`fense. For the reasons set forth below, the motion is
`granted in part and denied in part.
`
`FN1. Plaintiffs are Board of Education of
`Thornton Township High School District
`205, Board of Education of Thornton Frac-
`
`Page 2 of 6
`
`Page I
`
`tionai High Schooi District 215, Billye
`Bine, Denise Sneiiing, Jeanita Eaves, Key~
`etta
`Jenkins, David Frazier, Constance
`Staniey (by her parent Nicole Young),
`Darren Rogers II,
`Ike and Angela Riley,
`Jerry T. and iacques Jones, Margery I-Ian-
`son, Darrell Pope,
`Jr., Ryan Maxie, Mi-
`ehaei Akinpelu, and Shea Kapovich.
`
`FN2. Defendants are Board of Education
`of Argo Community High School District
`217, Board of Education of Bradiey Boer»
`bonnais Comrnunity High School District
`307, Board of Education of Bremen High
`School District 228, Board of Education of
`Community High
`Schooi District
`218,
`Board of Education of Consoiidated High
`School District 230, Board of Education of
`iiomewood Fiossrnoor Community High
`Schooi District 233, Board of Education of
`Joiiet Township High Schooi District 204,
`Board of Education of Lincoin-Way Co:n—
`munity High School District 210, Board of
`Education of Lockport Township High
`School District 205, Board of Education of
`Oak Lawn Community High Schooi Dis~
`trict 229, Board of Education of ‘Reavis
`High School District 220, Board of Educa—
`tion of Vaiiey View Community Unit
`School District 365U, and Board of Educa-
`tion of Evergreen Park Community High
`Schooi District 23 1.
`
`BACKGROUND
`This case arises out of defendants‘ withdrawal from
`the South inter~Conference Association. The asso-
`ciation, founded in 1972, organized extracurricular
`activities for high school students in the south and
`southwest Chicago suburbs. Second Am. Compl. at
`‘mi 6-7. Prior to defendants’ withdrawal, the associ-
`ation served stndents from 33 high schoois in i9
`schooi districts,
`including the party districts.
`Id.
`Whiie the student populations were predominantly
`African American in piaintiff districts, and predom-
`
`© 2010 Thomson Reuters. No Ciairn to Orig. US Gov. Works.
`
`http://web2.westlaw.com/print/printstream.aspx?sv=
`
`Splitdcdestination=atp&utidflI &prid“"—=ia7449736. ..
`
`8/26/2010
`
`

`
`Not Reported in F.Supp.2d
`Not Reported in F.Supp.2d, 2006 WL 2460590 (N.D.ill.)
`(Cite as: zses WL 2460598 (N.D.iIII.))
`
`the party d1's~
`inantly white in defendant districts,
`tricts‘ joint participation made the association ra-
`ciaiiy diverse. Ia’. at 1]] 2,
`i9—49. in December 2694,
`defendants withdrew from the association, and di-
`vided themselves into two new conferences. Id. at
`1]] 9~i0. Alleging the withdrawal resuited in three
`racially segregated conferences, piaintiffs brought
`this case under 42 U.S.C. §§
`1983,
`1985,
`the
`Illinois Civil Rights Act of 2003, 740 ILL. COMP.
`STAT. 23/5 et seq., and common iaw civil conspir-
`acy. Id. at ‘ifii 10-11, 50-60. Piaintiffs seek iniunct»
`ive relief and attorneys‘ fees.
`
`in their amended answer, defendants deny all ma
`terial allegations, and aiiege piaintiffs agreed to dis-
`solve the association on December 8, 2004. See
`Am. Answer at 6/]. Defendants do not provide any
`details of the aileged agreement or any subsequent
`events. Nor do they aiiege any other facts concern-
`ing their withdrawai from the association. They in-
`terpose seven amended affirmative defenses:
`1. All or some of [p]§aintiffs’ claims may be
`barred, in whole or in part, by the applicable stat-
`ute of limitations.
`
`2. Ali or some of {p]laintiffs' ciaims may be
`barred, in whole or in part, by their failure to ex»
`haust ali administrative remedies by not pursuing
`the
`administrative
`relief
`available
`to
`them
`
`through the Cook County Human Rights Co1n—
`mission,
`the
`illinois Department of Human
`Rights and the iliinois State Board of Education
`or any other state or federal administrative body.
`3. To the extent that [pjiaintiffs seek equitable re—
`lief,
`their claims may be barred in whole or in
`part by the doctrines of release, waiver, unclean
`hands, misrepresentation, andfor laches related to
`the [p]laintiff Esichool {d]istricts‘ vohintary vote
`to dissolve {the association] and create new ath-
`ietic conferences governing the parties.
`4. Defendants‘ actions in dissolving [the associ-
`ation} and creating new athietic conferences were
`[taken] in good faith and they did not
`intention»
`aiiy or willfully discriminate against
`[p]laintiffs
`in violation of any federai law or [c]onstitutionai
`provision.
`
`Page 3 of 6
`
`Page 2
`
`[The two conferences formed by defend
`*2 5.
`ants] are racialiy diverse with regard to student-
`athletes and non—athletic extracurricular activities
`and therefore the formation of these conferences
`does not violate federai or state law.
`6. Plaintiffs are estopped from asserting all or
`some of their claims for injunctive relief on the
`basis of the [s]chooi {d]istricts' voiuntary agree»
`ment and affirmative votes to dissoive [the asso-
`ciation}.
`7'. Piaintiffs do not have standing to seek relief
`for any school district or individual not a party to
`the lawsuit.
`Id. at 22~23. Plaintiffs move to strike each amended
`affirmative defense.
`
`DlSCUSSi0N
`
`I. Legai Standard
`
`Courts generally disfavor motions to strike afiinn~
`ative defenses. Wz'lliam.s v. Jader Fuel Co,
`Inc.,
`944 F.2d 1388, I400 (7th Cir.l99i). The court wiii
`grant a motion to strike only if the rnovant demon—
`strates the affirmative defenses in question are "pat-
`entiy defective and could not succeed under any
`circumstances." Kiswcini
`1:. Phoenix Sec."
`/igency,
`Inc, No. 05 C 4559, 2006 WL 463383, at *4
`(N.D.Iil. Feb.22, 2006) (Darrah, .l.); see also Zia v.
`Italian Gov’! Travel Qffice, 130 F.Supp.2d 991, 999
`(N.D.ili.2001) (Bncklo, J.) ("[the movant bears] the
`burden of showing that [defendant] could not pre-
`vail on its affirmative defense under any set of
`facts"). In determining whether to strike an affinnn
`ative defense,
`the court appiies a three—prong test:
`(1) whether the matter is properly pieaded as an af-
`firrnative defense; (2) whether it is pieaded in com-
`pliance with Fed.R.Civ.P. 8 and 9; and (3) whether
`it sufficiently states a claim under Fed.R.Civ.P.
`'12(b)(6). Weber Shandwick Worldwide v. Reid, No.
`05 C 0709, 2005 WL l65iO30, at *2 (N.D.Ill. May
`l2, 2005) (Conlon, J.) (citing cases).
`
`Under this test, an affirmative defense must set
`forth a "short {and] plain statement of the claim
`showing that the pleader is entitled to reiief." Id.
`it
`must also include either direct or inferential ailega—
`
`© 2010 Thomson Reuters. No Ciaim to Orig. US Gov. Works.
`
`http://web2.westiaw.co1n/print/printstrearn.aspx?sv=Sp1i1;&destination=atp&1.itid"el &prid=ia7449736...
`
`8/26/20} 0
`
`

`
`Page 4 of 6
`
`Page 3
`
`Not Reported in F.Supp.2d
`Not Reported in F.Supp.2d, 2006 WL 2460590 (N.D.lll.)
`(Cite as: 2006 WL 2460590 (N.D.I!l.))
`
`tions that, viewed as true, establish all material ele-
`ments of the defense.
`Id. An affirmative defense
`cannot withstand a motion to strike if it sketches
`oniy "bare bones conclusory allegations." Id. Nor
`can it survive by simply naming a iegal
`theory
`without connecting the theory to the case. Renaids
`1:. S.R.G. Rest. Group,
`l19 F.Supp.2d 800, 803
`{N.D.lll.2000) (Alesia, 5.).
`
`ii. First Amended Affirmative Defense-—Statute of
`Limitations
`
`Consistent with Fed.R.Civ.l’. 8(c), defendants plead
`an affirmative defense based on statute of limita-
`tions. While plaintiffs allege defendants’ withdraw-
`al took place in December 2004, it is unciear how
`far back the alleged conspiracy may extend. In their
`motion to strike, plaintiffs do not identify the limit-
`ations periods for their claims. Nor do they explain
`why defendants may not raise a statute of limita-
`tions defense. They cite two cases for support, but
`neither involves a statute of limitations defense. See
`Am. Top English v. Lexicon Mkrg.
`(USA),
`.Im:., No.
`03 C 7201, 2004 WL 2271838, at *lO (N.D.lil. Oct.
`4, 2004) (Conlon, 3.); Codesr Eng'g 1:. Hyatt Fm’!
`Corp, 954 F.Supp. 1224, 1230-3;
`(N.D.lll.l996)
`(Coar, 3.). Because plaintiffs fail to show defend-
`ants cannot prevaii based on statute of limitations
`grounds, their motion to strike must be denied with
`respect to defendants‘ first amended affinnative de-
`fense.
`
`Second Amended Affirmative Defense-
`ill.
`-Exhaustion of Administrative Remedies
`
`*3 Plaintiffs correctly argue that because they need
`not exhaust administrative remedies before filing
`this case, defendants
`iack legal basis
`for
`their
`second amended affirmative defense. See Patsy v.
`Bd. of Regents, 45'? U.S. 496, 507, 102 S.Ct. 2557,
`73 l...i3d.2d 172 (1982) ("exhaustion of state admin-
`istrative remedies is not a prerequisite to an action
`under § 1983").
`in response, defendants argue that
`this defense meets the notice pleading standard.
`They also argue they may develop this defense
`through discovery. But even given the benefit of the
`
`doubt, they fail to provide any legal basis that ex-
`haustion of administrative remedies has any bearing
`on this case. Under Patsy, they have no defense, as
`a matter of law, based on failure to exhaust admin»
`istrative remedies. Patsy, 457 U.S. at 507. Accord-
`ingly,
`their second amended affirmative defense
`must be stricken.
`
`IV. Third and Sixth Amended Affirmative Defenses
`
`in their third and sixth amended affirmative de-
`fenses, defendants string together six iegal theories:
`release, waiver,
`iaches, unclean hands, misrepres-
`entation, and estoppel. According to defendants,
`plaintiffs are subject to these defenses because they
`agreed to dissolve the association at a meeting on
`December 8, 2004. Am. Answer at 6-7. Plaintiffs
`move to strike these defenses, and their arguments
`are addressed in turn.
`
`A. Release, Waiver, and Laches
`
`Piaintiffs correctly state that to plead an affirmative
`defense based on release or waiver, defendants
`must aliege plaintiffs voluntarily relinquished their
`claims through an agreement. See Insritzczo Ncrcion»
`at‘ De Comercialiracz'on Agricola (Indeed) 1:. Com’!
`Ill. Nat? Bank &: Trust C0,, 576 F.Supp. 985, 990
`(N.iI).lll.1983) (Shadur, J.) ("release is a contract by
`which one person abandons claims against anoth-
`er“). Plaintiffs argue defendants fail to plead a valid
`agreement. This argument
`ignores defendants‘ al-
`legation that on December 8, 2004, plaintiffs agreed
`to dissolve the association. Viewed in the light
`most favorable to defendants,
`the allegation couid
`support an inference that a voiuntary relinquish-
`ment or intentional waiver existed. See Ocean Atl.
`Woodland Corp. v. DRH Carnbridge Homes, Inc.,
`No. {)2 C 2523, 2003 WL 1720073, at *4 (N.l).'£!l.
`lViar.31, 2003) (Guzman, 3.) (an allegation of an
`agreement defeats a motion to strike an affirmative
`defense based on waiver). Because this allegation
`puts plaintiffs on notice, defendants
`sufficiently
`plead an affirmative defenses based on release and
`waiver.Id.
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`http://web2.westlaw.corn/print/printstre
`
`arn.aspx?svmSplit&destination=atp&.utid“'41&pridwia74«<i9736...
`
`8/26/2010
`
`

`
`Not Reported in F.Supp.2d
`Not Reported in F.Supp.2d, 2006 WL 2460590 (N.D.l.i1.)
`(Cite as: 2006 WL 2460590 (N.D.Iii.))
`
`to aiiege any
`Piaintiffs aiso argue defendants fail
`facts to support an affirmative defense based on
`laches. Defendants do not allege plaintiffs were
`diiatory in bringing this case. Nor do they claim
`any prejudice resuiting from delay. Because de—
`fendants fail to provide any basis for an inference
`of plaintiffs‘ unreasonable delay,
`their affirmative
`defense based on laches must be stricken. Fleet
`Bus. Credit Corp.
`12. Net’! City Leasing Corp, 391
`I-“.R.D. 568, 569-70 (N.li).ill.i999)
`(Aspen, C..l.)
`(striking a "bare bones" iaches defense)
`
`B. Unclean i-lands, Misrepresentation, and Estoppei
`
`*4 Plaintiffs correctly argue that affirmative de—
`fenses based on unclean hands, misrepresentation,
`and estoppel
`are subject
`to Fed.R.Civ.P. 9(b)'s
`heightened
`pleading
`requirements.
`See,
`e.g.,
`.S'iemens Credit Corp. v. Steve Kakos,
`.D.D.S., Ltd,
`No. 94 C 5365, 1995 WL 29618, at ‘ill
`(N.D.lll.
`Jan.24, 1995) (Conlon, J.) {striking an affirmative
`defense based on misrepresentation because de-
`fendant "faiis to ailege the time, dates, or places of
`the material misrepresentations"). Defendants do
`not respond to this argument.
`Instead,
`they argue
`plaintiffs have sufficient notice of these defenses.
`Defendants‘ argument
`iacks merit. An affirmative
`defense based on unclean hands, misrepresentation,
`or estoppel requires defendants to allege plaintiffs
`"acted in a way that constitutes fraud, misconduct
`or
`bad
`faith." Weber
`Sharzdwick,
`2005 WL
`l65l030, at ~~——5-6. Nowhere in the amended an~
`swer do defendants suggest plaintiffs committed
`fraud. For this reason alone, defendants‘ argument
`must fail. Id. at *2. Moreover, absent even a con
`ciusory allegation of fraud, defendants faii to plead
`fraud with particuiarity.
`Id. Accordingiy, defend-
`ants‘ affirmative defenses based on unciean hands,
`misrepresentation, and estoppei must be stricken.
`
`V. Fourth Amended Affirmative Defense--Good
`Faith
`
`interpose an af—
`Plaintiffs argue defendants cannot
`firrnative defense based on good faith. This argu~
`rnent contradicts Gomez 1:. Toledo, M6 US. 635,
`
`Page 5 of 6
`
`Page 4
`
`640-41, 100 S.Ct. 1920, 64 L.Ed.2d 572 (1980),
`holding good faith is a valid affirmative defense in
`a § I983 action. See also Chavis v. Rowe, 643 F.2d
`1281, 1288 (7th Cir.'l98i) ("this court has treated
`the question of good faith as an affirmative defense
`in a § 1983 action"). Accordingly, piaintiffs' mo-
`tion must be denied with respect
`to defendants‘
`fourth amended affirmative defense.
`
`Vi. Fifth Amended Affirmative Defense-—Raciai
`Diversity
`
`Plaintiffs argue defendants may not piead an af-
`firmative defense based on an ailegation that they
`formed racially diverse conferences. As defendants
`concede, whether their new conferences are raciaily
`diverse is probative of their alleged discriminatory
`intent, which is in dispute. A defense based on a
`factuai dispute is not an affirmative defense. See In—
`srituto Naciomzl, 576 F.Supp. at 988 ("an affirmat-
`ive defense is an admission of the facts aileged in
`the complaint") (emphasis in original). Moreover,
`the burden to prove discriminatory intent faits upon
`plaintiffs. See Williams v. Senzfif 342 F.3d 774, 788
`I1. 13 (7th Cir.2003) ("E § i983 ciaims] require ulti~
`rnately proof of discriminatory intent").
`"{A} de-
`fense is an affirmative defense [only if defendants
`bear} the burden of proof." Brunswick Leasing
`Corp. v. Wis. Cent, Ltd, 136 F.3d. 521, 530 (7th
`Cir.l998). Because defendants have no burden to
`prove their conferences are racially diverse,
`they
`may not iabei a factual argument as an affirmative
`defense. Accordingly, their fifth amended affumat—
`ive defense must be stricken.
`
`V11. Seventh Afiirrnative Defense-—Stand.ing
`
`*5 Piaintiffs move to strike as unnecessary clutter
`defendants’ seventh amended affirmative defense,
`which asserts plaintiffs tack “standing to seek relief
`for any school district or individuai not a party to
`the lawsuit." Am. Answer at 23. Without any iegai
`support, defendants respond that
`they shouid be
`permitted to preserve a standing defense because
`the scope of injunctive relief sought by plaintiffs is
`unclear. Defendants’ failure to provide iegai support
`
`(33 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`http://web2.westiaw.com/print/printstrearn.aspx?sv:Sp1it&destinati0n==atp&utidr« I &prid=ia7449736...
`
`8/26/20 1 0
`
`

`
`Page 6 of 6
`
`Page 5
`
`Not Reported in F.Supp.2d
`Not Reported in F.Supp.2d, 2006 WL 2460590 (N.D.1E1.)
`(Cite as: 2006 WL 2460590 (N.I).llt.))
`
`for their argument is hardly surprising: "standing, is
`jurisdictional and may be raised at any time by the
`parties [or by the court}." Jones; v. City of Los
`Angeles, 444 F.3d 1138, N26 (9th Cir.2006). Be—
`cause "tack of standing is not an affirmative tie»
`fense,” defendants’
`seventh amended affinnative
`defense must be stricken. E.g., Ocean AIL, 2003
`WL 1720073, at *4; Calm v. Taco Belt CO!'p., No.
`92 C 5852,
`1995 WL 247996, at *5 €N.D.I§l.
`Apr.24, 1995) (Ncrdbeagg, J.) (same).
`
`CONCLUSi0N
`For the reasons set forth above, plaintiffs‘ motion to
`strike defendants’ amended affirmative defenses is
`granted in part and denied in part. Defendants‘
`second, fifth, sixth, and seventh amended aftirmat~
`ive
`defenses
`are
`stricken. Defendants‘
`third
`amended affirmative defense is stricken with re-
`spect to the aiiegaticns of unclean hands, misrep-
`resentation, and laches.
`
`Not Reported in F.Supp.2d, 2006 WL 2460590
`{N.D.IEl.)
`
`END OF DOCUMENT
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`http://web2.west1aw.corn/print/printstrearn.aspx?s\/WSp}it&destinationmatp&utid=1&prid=ia74-49736...
`
`8/26/20 10
`
`

`
`Wésttavu.
`
`Not Reported in F.Supp.2d
`Not Reported in ‘F.Snpp.2d, 2004 WL 532844 (N.D.1ll.)
`(Cite as: 2{}€}4 WL 532844 {N.D.I.ll.))
`
`Eng:
`Only the Westlaw citation is currently available.
`
`United States District Court,
`ND. Illinois, Eastern Division.
`GLOBAL POLY INC., an Illinois Corporation,
`Piaintiff,
`v.
`
`FRED’S ENG, a Tennessee Corporation, Defendant.
`No. 03 C 4561.
`
`March ll, 2004.
`Michael P. Conneily, Cory D. Anderson, Connelly,
`Roberts & McGivney, Chicago,
`IL,
`for plaintiff.’
`countendefendant.
`
`Edward Abbott,
`James
`Barry G. Bollinger,
`Boliinger, Ruberry and Garvey, Chicago,
`IL,
`for
`defendant/counter—clairnant.
`
`MEMORANDUM OPINION AND ORDER
`SCHENKEER, Magistrate J .
`
`*1 The plaintiff, Global Poly, Inc. ("Global Poly")
`has filed a motion (a) to dismiss or, in the alternat-
`ive,
`stay the defendant, Fred's,
`inc.
`("Fred's"),
`counterclaims, and (b) to strike Fred's affirmative
`defenses (doc. # ll). For the following reasons, the
`motion to stay the counterclaims is granted; the mo-
`tion to strike the affirmative defenses is granted in
`part and denied in part.
`
`i.
`Global Poly has brought a two-count complaint
`against Fred's in connection with a business rela-
`tionship that existed between the two parties.
`In
`Count I, Global Poly aileges a claim for an account
`stated,
`based
`on
`three
`invoices
`for products
`provided by Global Poly that Fred‘s has failed to
`pay.
`In Count
`ll, Global Poly alleges a breach of
`contract as a result of Fred's alleged failure to pay
`those same three invoices, as weii as for an alleged
`failure to pay for other goods ordered but not yet
`shipped. This complaint was originally filed in the
`
`Page 2 of
`
`Page 1
`
`Circuit Court of Cook County, Illinois and was then
`removed to the Northern District of Illinois pursu-
`ant to 2.8 U.S.C. § 144-1(a), pursuant to this Court's
`diversity jurisdiction.
`In its answer and counter-
`claim, Fred‘s admits to withholding payment but
`claims it did so for justifiable reasons. In addition,
`Fred's
`raises
`five
`affinnative
`defenses:
`setoff,
`waiver, laches, estoppel and unclean hands.
`
`counterclaim
`three~count
`a
`asserts
`also
`Fred's
`against Giobal Poly and Tom Wolf, individually, as
`owner and president of Global Poly. Count 1 of the
`counterclaim asserts a claim for breach of contract;
`Count
`il asserts a breach of warranty claim; and
`Count ill asserts a claim for nonconforming goods.
`Fred's counterclairns all are based on three purchase
`orders issued by Fred‘s to Strategic Merchandising
`Solutions ("Sl\/18*‘)
`in January, February and April
`2002 {see Motion to Dismiss, Ex. B, Count
`I
`filfil
`8—i0), and SlVlS's alleged failure to perform on
`those purchase orders (Id, at Count
`I,
`'{§'ii 12-14;
`Count
`II,
`iii} E"/‘~20; Count
`II,
`llfil
`l7»-i8). Fred’s
`seeks to hold Global Poly and Mr. Wolf liable for
`alleged conduct of SMS, another company ai-
`iegedly owned. by Wolf, under a "piercing the cor-
`porate veil" theory.
`
`SMS (not a party here) has -filed a complaint against .
`Fred’s that currently is pending in the Circuit Court
`of Cook County.
`in that compiaint, SMS asserts a
`claim for account stated based on three invoices
`that SMS issued to Fred's (different than those ifrom
`Global Poly that are at issue in this case), but that
`Fred‘s aliegediy has not paid.
`In the SMS suit,
`Fred's has asserted a counterclaim against SMS that
`sets forth the same three contract ciairns alleged in
`Fred‘s counterclairns this case, based on the same
`allegations Fred's has made in this case, and that
`seeks the same monetary recovery that Fred's seek-
`ing in this case (see Motion to Dismiss, Ex. D,
`Count 1, {Hi 4-6, 8-10; Count ll",
`‘it'll E2-15; Count 111,
`tlfil
`12-E3). The ‘only difference between Fred's
`counterclairns in the two cases is that here Fred's
`asserts a piercing the corporate veil theory to im—
`
`((3 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`http://web2.westlaW.corn/print/prin1;stream.aspx?svL"“Split&destination=atp&utide~1&prid:ia744979d. . .
`
`8/26/2010
`
`

`
`Page 3 of 6
`
`i’age 2
`
`Not Reported in F.Supp.2d
`Not Reported in F.Supp.2d, 2004 WL 532844 (N.E).lll.)
`(Cite as: 2004 WL 532844 (N.l).iiI.))
`
`pose liability on Global Poly and Mr. Wolf along
`with SMS, but does not do so in the SMS case
`pending in state court.
`
`11.
`*2 Global Poly argues that Fred’s counterclairns
`should
`be
`dismissed
`based
`on
`735
`iLCS
`5f2—6l9(a)(3), which states that an Illinois court
`may dismiss a pending action if "there is any other
`action pending between the same parties for the
`same
`cause." Fred's
`rejoinder
`is
`that Section
`2—619(a)(3) does not apply to this case, based on
`AXA Corporate Solzriirms v. Underwrr'ters Reinszir—
`once Corp, 347 F.3d 272 (7th Cir.2003). Fred's is
`right: In AXA, the Seventh Circuit held that Section
`2~6l9(a)(3) is a procedural rule for illinois courts to
`follow, and that under Erie RR. Co. v. Tompkins,
`304 U.S. 64, 58 S.Ct. 817, 82 L.Ed. 1188 (1938),
`federal courts may not dismiss a case arising under
`federal diversity jurisdiction on that basis. AX/l,
`347 F.3d at 276-78.
`
`However, that determination does not end the mat-
`ter, because Global Poly and Mr. Wolf argue in the
`alternative that
`the counterciaims should be dis-
`missed or stayed under Colorado River Water Con-
`.s'ervarion District v. United States, d24 US. 800,
`96 S.Ct.
`l236, 47 L.Ed.2d 483 (1976). Under Col-
`orado River, "a federal court may stay or dismiss a
`suit when there is a concurrent state court proceed-
`ing and the stay or dismissal would promote ’wise
`judicial administration." ‘ AXA, 347 F.3d at 278
`(quoting Colorado River, 424 US. at 818). In de
`ciding whether Colorado River abstention applies, a
`court first must consider whether two lawsuits are
`parallel, which means that " ‘substantially the same
`parties are contemporaneously litigating substan-
`tially the same issues in another forum." ' Id. If that
`is so, then the court must consider ten factors in de-
`ciding whether
`to abstain.
`Ia‘.
`"[T}he decision
`whether to defer to the state court is necessarily left
`to the discretion of the district court in the first in-
`stance." Moses H. Corie Mam’! Hosp. v. Mercury
`Constr. Corp, 460 US.
`i, 19. 103 S.Ct. 927, 7'4
`Ll-3d.2d 765 (5983).
`
`Employing the analysis required under Colorado
`River and AXA, this Court finds that the underlying
`state court lawsuit and the case before us are paral-
`lel and that, on balance, the relevant factors weigh
`in ‘favor of abstention.
`
`ill.
`the question of whether Fred's
`We address first
`counterclaims in the state court and in this Court
`are parallel. Suits are parallel when substantially
`the same parties are litigating snbst'onn'al1y the
`same issues. AXA, 347 F.3d at 278. "{T]he mere
`presence of additional parties or issues in one of the
`cases will not necessarily preclude a finding that
`they are parallel." AAR Inr’l,
`Inc.
`v. Nimelias
`En