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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE EASTERN DISTRICT OF VIRGINIA
`Alexandria Division
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`Civil Action No. 1:14-cv-1544
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`MALIBU MEDIA, LLC,
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`v.
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`MATT GUASTAFERRO,
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`Plaintiff,
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`Defendant.
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` j)
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`MEMORANDUM OPINION
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`This matter comes before the Court on a Motion to Strike Affirmative Defenses by
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`Plaintiff Malibu Media, LLC ("Malibu Media"). Dkt. No. 18. The matter has been fully briefed
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`by the parties and the Court heard oral argument on July 24, 2015. For the reasons set forth
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`below, as well as those stated in open court, the motion will be granted in part and denied in part.
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`I.
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`Background
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`On November 17, 2014, Malibu Media commenced this copyright infringement action
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`against Defendant Matt Guastaferro, alleging that he copied and distributed sixty-two of
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`Plaintiffs copyrighted works without its consent. Malibu Media requests that the Court order
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`Defendant to delete and permanently remove Plaintiff’ s copyrighted works as well as enjoin him
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`from infringing its works in the future.
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`It also seeks statutory damages and reasonable attorneys’
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`fees and costs pursuant to 17 U.S.C. §§ 504-05.
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`On May 22, 2015, Defendant filed his Answer, in which he denied ever having
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`downloaded or distributed any of Malibu Media's movies. He also raised nine affirmative
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`defenses, eight of which form the basis of this motion. Particularly relevant here, Defendant has
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`1
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`alleged that Malibu Media “appears to seek to obtain its principal revenue through litigation
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`rather than through its monthly service fee of $19.99 .
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`.
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`. .” Answer 1] 34. He further states that
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`“IPP or another agent of Malibu Media is responsible for initially seeding some of Malibu’s
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`content onto BitTorrent in the first place and for facilitating infringing downloads by BitTorrent
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`users” in an attempt to “to extract exorbitant sums from individuals for alleged copyright
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`infringement?” Def.’s Opp’n 11-12.
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`11.
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`Legal Standard
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`Rule l2(f) allows a district court to “strike from a pleading an insufficient defense or any
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`redundant, immaterial, impertinent, or scandalous matter.” Fed. R. Civ. P. l2(f). Courts
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`generally view Rule 12(t) motions “with disfavor because striking a portion of a pleading is a
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`drastic remedy and because it is often sought by the movant simply as a dilatory tactic.” Waste
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`Mgmt. Holdings, Inc. v. Gilmore, 252 F.3d 316, 347 (4th Cir. 2001) (citation and internal
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`quotation marks omitted); cf Conley v. Gibson, 355 U.S. 41, 47-48 & n. 9 (1957) (noting that
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`the purpose of procedural motions, including 12(1) motions, is “to disclose more precisely the
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`basis of both claim and defense and to define more narrowly the disputed facts and issues”).
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`“Traditionally, [Rule l2(f)] imposes a sizable burden on the movant, and courts typically strike
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`defenses only when they have no possible relation to the controversy.” Lopez v. Asmar's
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`Mediterranean Food, Inc., No. 1:10-cv-1218, 2011 WL 98573, at *1 (E.D. Va. Jan. 10, 2011)
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`(internal citations and quotation marks omitted). A party may meet this high burden by showing
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`that “a defense
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`is clearly insufficient as a matter of law.” Hanzlik v. Birach, No. 1:09-cv-221,
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`2009 WL 2147845, at *4 (E.D. Va. July 14, 2009) (citations omitted). Nonetheless, under the
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`liberal amendment policy prescribed by Rule l5(a), whenever a motion to strike is granted, “the
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`' For reasons unknown, this highly pertinent allegation was not included in the Answer.
`2
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`

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`defendant should generally be given leave to amend.” Lopez, 2011 WL 98573, at *1 (citation
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`and internal quotation marks omitted); accord Fed. R. Civ. P. 15(a)(2).
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`111.
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`Analysis
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`Malibu Media has moved to strike certain portions of Defendant’s Answer for failure to
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`comply with the pleading requirements of Rule 8. Specifically, it argues that certain paragraphs
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`should be stricken because Defendant asserted invalid or inapplicable affirmative defenses and
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`improperly pleaded “negative defenses” as affmnative defenses.
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`Rule 8(c) requires that all “avoidance or affmnative defenses” be affirmatively pled in
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`the answer. Fed. R. Civ. P. 8(c). The Fourth Circuit has defined an affirmative defense as “the
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`defendant’s assertion raising new facts and arguments that, if true, will defeat the plaintiffs .
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`.
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`.
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`claim, even ifall allegations in the complaint are true.” Emergency One, Inc. v. Am. Fire Eagle
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`Engine Co., 332 F.3d 264, 271 (4th Cir. 2003) (emphasis added). Particularly relevant here, this
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`Court has held that the heightened pleadings requirements of Iqbal and Twombly do not apply to
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`affirmative defenses. E. g., Lopez v. Asmar’s Mediterranean Food, Inc., No. 1:10-cv-1218, 2011
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`WL 98573, at *2 (E.D. Va. Jan. l0, 2011) (“This Court will not import [the “entitled to relief"]
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`language [of Rule 8(a)], nor Twombly and Iqbal's interpretations of it, to a different rule that
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`lacks that language”). Rather, affirmative defenses are sufficient if they provide “fair notice of
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`the nature of the defense.” Clem v. Corbeau, 98 F. App'x 197, 203 (4th Cir. 2004). Under this
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`lenient standard, the Court will address each challenged affirmative defense.
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`a. First Aflirmative Defense—Fair Use
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`“Fair use” is a statutory defense that allows a person to infringe a copyrighted work for
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`“purposes such as criticism, comment, news reporting, teaching, scholarship, or research.” 17
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`U.S.C. § 107; Thomas M. Gilbert Architects, P.C. v. Accent Builders & Developers, LLC, 629 F.
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`3
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`

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`Supp. 2d 526, 533 (E.D. Va. 2008), ajfd, 377 F. App'x 303 (4th Cir. 2010). “The rationale for
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`the fair use doctrine is that, when the free flow of information is sufficiently vital, it should
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`override the copyright holder’s interest in the exclusive control of the work.” Advanced
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`Computer Serv. ofMich., Inc. v. M41 Sys. Corp., 845 F. Supp. 356, 364 (E.D. Va. 1994).
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`Malibu Media moves to strike this defense as deficient because Defendant has “fail[ed]
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`to state the required plain and short statement of supporting facts.” Pl.’s Mot. Strike 4. Under
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`the liberal notice pleading standard, however, Defendant’s allegations that his “use of any works,
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`if any, was non-commercial,” and that Malibu Media “routinely shared [its films] for free”
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`certainly provide Plaintiff with fair notice as to the substance of his defense. Answer 1] 33; Clem,
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`98 F. App'x at 203. The Court will therefore deny the motion to strike this defense.
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`b. Second Affirmative Defense—Copyright Misuse
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`The copyright misuse defense aims to prevent abuse of the public policy embodied by the
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`Copyright Act——namely, to “promote the Progress of Science and useful Arts.” Lasercomb Am.,
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`Inc. v. Reynolds, 91] F.2d 970, 975-77 (4th Cir. 1990) (quoting U.S. CONST., art. I, § 8, cl. 8).
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`Although violations of antitrust law or other anti-competitive behavior has been found to be an
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`example of copyright misuse, the defense “is viable outside of anti-trust violations.” Thomas M.
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`Gilbert Architects, 629 F. Supp. 2d at 536. Indeed, the defense applies when “the copyright is
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`being used in a manner violative of the public policy embodied in the grant of a copyright.”
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`Lasercomb, 91 I F.2d at 978.
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`Here, Malibu Media asserts that the defense fails because Defendant “does not and
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`cannot allege that Plaintiff engages in any anti-competitive behavior or otherwise seeks to secure
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`an exclusive right or limited monopoly not authorized by the Copyright Office.” Pl.’s Mot.
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`Strike 5. As stated above, however, the defense is not limited to these circumstances. Because
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`4
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`

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`the validity of the defense is an inquiry better suited for resolution following discovery, it is
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`premature at this stage for the Court to conclude that the defense is “clearly insufficient as a
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`matter of law.” Hanzlik, 2009 WL 2147845, at *4. Defendant has also given fair notice of the
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`basis of his defense—that is, Plaintiffs use of its copyrights “to obtain its principal revenue
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`through litigation rather than through its monthly service fee .
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`.
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`. .” Answer 1] 34. For these
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`reasons, the motion to strike this defense will be denied.
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`c. Third Aflirmative Defense——UncIean Hands
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`The doctrine of unclean hands allows a court to deny injunctive relief where the party
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`seeking the relief ‘“encouraged, invited, aided, compounded, or fraudulently induced’ the other
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`party's wrongfiil conduct.” Gitter v. Cardiac & Thoracic Surgical Assocs., Ltd, 338 F. App'x
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`348, 349 (4th Cir. 2009) (quoting Perel v. Brannan, 267 Va. 691, 706 (2004)). Additionally,
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`there must be a “close nexus” between the plaintiffs misconduct and the “transaction or subject
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`matter sued on.” Worldcom, Inc. v. Bayne, 68 F. App'x 447, 451 (4th Cir. 2003) (citations and
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`internal quotation marks omitted). The Fourth Circuit has applied the doctrine in copyright
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`infringement actions to estop the plaintiffs from asserting infringement where the infringement
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`“was caused and brought about, in part at least, by
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`the dereliction of their own agent.” Tempo
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`Music, Inc. v. Myers, 407 F.2d 503, 507 (4th Cir. 1969).
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`In this case, Defendant has alleged that Plaintiffs claims are barred by the doctrine
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`“as Plaintiffs use of its copyrights violates public policy.” Answer 1l 35. Such an allegation
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`does not appear to trigger the doctrine because it says nothing of how Malibu Media
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`“encouraged, invited, aided, compounded, or fraudulently induced” Defendant’s allegedly
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`wrongful conduct. Gmer, 338 F. App'x at 349. Defendant’s response to this motion, however,
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`sets forth factual averments that do appear to support his invocation of the doctrine. For
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`5
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`instance, he asserts that “IPP or another agent of Malibu Media is responsible for initially
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`seeding some of Malibu’s content onto BitTorrent in the first place and for facilitating infringing
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`downloads by BitTorrent users” in an attempt to “to extract exorbitant sums from individuals for
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`alleged copyright infringement.” Def.’s Opp’n 11-12.
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`Malibu Media has moved to strike this defense on the basis that he has “not sufficiently
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`alleged copyright misuse.” Pl.’s Mot. Strike 6.
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`In support thereof, he relies upon a recent
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`decision of this Court, in which it granted Malibu Media’s motion to strike “because Plaintiff
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`cannot have unclean hands if Defendant did not sufficiently plead copyright misuse.” Malibu
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`Media, LLC v. Alfred Popp, No. 1:14-cv-700, Dkt. No. 20 at 8 (E.D. Va. April 13, 2015). The
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`Court respectfully disagrees with this conclusion and considers the defense one that is better
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`suited for resolution following discovery. Indeed, the Fourth Circuit did not premise its decision
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`barring the copyright infringement claim pursuant to the doctrine of unclean hands on an
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`associated defense of copyright misuse. Tempo Music, 407 F.2d at 507. Thus, the pleading
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`requirement that Plaintiff urges here does not appear to exist.
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`Accordingly, because Plaintiff is on notice of Defendant’s allegations that it “seeded”
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`some of its content onto BitTorrent for the purpose of extracting settlements in the numerous
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`copyright infringement suits that it has filed, the Court will decline to strike this defense as well.
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`d. Fourth Affirmative Defense—AbandonmenI
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`In copyright infringement actions, abandonment occurs when “there is an intent by the
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`copyright proprietor to surrender rights in his work.” E.g., Dam Thingsfrom Den. v. Russ Berrie
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`& Co., Inc., 290 F.3d 548, 560 (3d Cir. 2002) (citing 4 Melville B. Nimmer & David Nimmer,
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`Nimmer on Copyright § 13.06 (2001)). “[I]t is undisputed that there must be either an act, or a
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`failure to act, from which we can readily infer an intent to abandon the right.” Id. Malibu Media
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`6
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`

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`has moved to strike this defense because “Defendant does not, and cannot, allege any set of facts
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`that would evince Plaintiffs intent to surrender its rights in the works or ‘acquiesce’ to the
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`alleged infringement.” Pl.’s Mot. Strike 7.
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`In support of his abandonment defense, Defendant has alleged that “Plaintiff failed to
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`send a notice under 17 U.S.C. §5 l2(c)(3)(A)(i-vi) to the online service provider hosting the hash
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`files identified in Exhibit B of the Amended Complaint.” Answer 1] 36. Under the liberal
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`pleading standard, this allegation certainly gives Malibu Media “notice of the nature of the
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`defense.” Clem, 98 F. App'x at 203. Moreover, whether Plaintiffs failure to send a notice,
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`allegedly required by statute, “evidenced an intent to abandon its copyrights is a question of fact
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`to be determined at a later phase of this litigation.” Malibu Media, LLC v. Does, No. l2-cv-
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`2078, 2013 WL 1702549, at *6 (E.D. Pa. Mar. 6, 2013) (citing Capitol Records, Inc. v. Naxos of
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`Am.. Inc., 372 F.3d 471, 483 (2d Cir. 2004)) (denying motion to strike copyright abandonment
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`affirmative defense). Accordingly, the Court will deny the motion to strike this defense.
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`e. Fiflh Affirmative Defense—Mim'maI Creativity
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`The “sine qua non of copyright is originality.” Feist Pub] 'ns, Inc. v. Rural Tel. Serv. C0.,
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`499 U.S. 340, 345 (1991). “To be ‘original,’ the work in question must have been
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`‘independently created by the author (as opposed to copied from other works),’ and it must
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`‘possess[ ] at least some minimal degree of creativity.” Darden v. Peters, 488 F.3d 277, 286
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`(4th Cir. 2007) (quoting Feisl, 499 U.S. at 345). The Supreme Court has set the bar for creativity
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`very low, explaining that “[t]he vast majority of works make the grade quite easily, as they
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`possess some creative spark, no matter how crude, humble or obvious it might be.” Feist, 499
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`U.S. at 345 (citation and internal quotation marks omitted). Nevertheless, “[t]here remains a
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`narrow category of works in which the creative spark is utterly lacking or so trivial as to be
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`virtually nonexistent.” Id. at 359.
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`Malibu Media has moved to strike this defense, stating that “Plaintiffs motion picture
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`works meet this low requirement as a matter of law and common sense.” Pl.’s Mot. Strike 8.
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`This is, of course, an assertion of disputed fact. As is evident from the caselaw, a determination
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`on the validity of the defense entails a factual analysis, thereby rendering it inappropriate for
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`resolution on a motion to strike. See Popp, No. 1:14-cv-700, Dkt. 20 at 10 (denying motion to
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`strike because determination of whether Plaintiffs works are creative enough to meet low
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`threshold standard is a question of fact). Because Defendant has given fair notice as to the nature
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`of this defense, the Court will not strike it.
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`f Sixth Affirmative Defense—InvaIidi!y
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`In his sixth affirmative defense, Defendant states that “Plaintiff's copyrights are invalid
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`and/or unenforceable.” Answer 1] 38. Malibu Media has moved to strike this defense as
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`conclusory as well as an improperly pleaded negative defense—that is, it constitutes a denial
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`rather than an affinnative defense. Because Defendant does not oppose the Court striking this
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`defense without prejudice, Def.’s Opp’n I4, the Court will do so.
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`g. Seventh Aflirmative Defense—Inn0cem lnfringer
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`In his seventh affirmative defense, Defendant claims that, if he infringed at all, he is an
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`“innocent infiinger under Section 504 of the Copyright Act”. Answer 1] 29. That statute
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`provides as follows:
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`In a case where the infiinger sustains the burden of proving, and
`the court finds, that such infringer was not aware and had no
`reason to believe that his or her acts constituted an infringement of
`copyright, the court in its discretion may reduce the award of
`statutory damages to a sum of not less than $200.
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`8
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`

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`17 U.S.C. § 504(c)(2). Furthermore, a person who innocently infringes in reliance on an
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`authorized copy of a work that omitted the copyright notice “incurs no liability for actual or
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`statutory damages under section 504 .
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`.
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`.
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`if such person proves that he or she was misled by the
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`omission of notice.” 17 U.S.C. § 405(b) (emphasis added); cf 17 U.S.C. § 402(d) (“If a notice of
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`copyright .
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`.
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`. appears on the published phonorecord or phonorecords to which a defendant in a
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`copyright infringement suit had access, then no weight shall be given to such a defendant's
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`interposition of a defense based on innocent infringement”).
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`Malibu Media argues that Defendant’s state of mind is irrelevant in copyright
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`infringement actions.
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`It also maintains that the statutory sections cited do not constitute an
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`affirmative defense because they merely provide for a reduction in statutory damages and
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`therefore cannot “defeat” the claim. Pl.’s Mot. Strike 9 (citing Black’s Law Dictionary (10th ed.
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`2014) (defining “affirmative defense” as “[a] defendant's assertion of facts and arguments that, if
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`true, will defeat the plaintiffs .
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`.
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`. claim, even if all the allegations in the complaint are true”)).
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`As the statute explicitly states, however, an innocent infringer “incurs no liability for actual or
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`statutory damages under section 504"—the sole section relied upon by Malibu Media in its
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`request for damages. See Compl. 1| 33(A)—(F). Because the statute appears to give Defendant a
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`basis for defeating Plaintiffs claim for damages, “even if all the allegations in the complaint are
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`true,” the Court will deny the motion to strike this defense.
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`/1. Eighth Affirmative Defense—FaiIure to Mitigate Damages
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`The “essence” of a failure to mitigate damages affirmative defense is that “all or a part of
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`the plaintiffs damage should reasonably have been avoided by the plaintiff .
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`.
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`. .” Bossalina v.
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`Lever Bros., 849 F.2d 604 (4th Cir. 1988) (quoting 22 Am. Jur. 2d Damages § 200 (1965));
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`

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`accord Malibu Media, 2013 WL 1702549, at *8 (describing failure to mitigate damages as an
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`“equitable defense[] that foreclose[s] or limit[s] a plaintiffs ability to recover from an injury due
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`to its own misconduct). Some courts have recognized that a plaintiff's knowing failure to stop
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`ongoing copyright infringement may represent a failure to mitigate. E. g., Tingley Sys., Inc. v.
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`HeaIthLink, Inc., 509 F. Supp. 2d 1209, 1219 (M.D. Fla. 2007) (finding genuine issue of material
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`fact existed on failure to mitigate damages defense where there was a dispute over whether
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`copyright holder sent warning letter to defendant); Malibu Media, LLC v. Zumbo, No. 2: 1 3-cv-
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`729, 2014 WL 2742830, at *4 (M.D. Fla. June 17, 2014) (denying motion to strike where
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`defendant alleged that plaintiff “purposefully avoided taking sufficient steps to protect their
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`copyrighted material because it is more profitable to allow their subscribers to distribute content
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`and seek judgments and/or settlements from the subscribers”). Although typically only applied
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`to claims for actual damages, the defense may be relevant to claim requesting statutory damages
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`because “one purpose of statutory damages is to approximate actual damages that are difficult to
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`prove.” Malibu Media, LLC v. Doe, No. 2:13-cv-135, 2014 WL 1031336, at *2 (N .D. Ind. Mar.
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`17, 2014).
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`Here, Malibu Media claims that the defense is inapplicable because the statute cited by
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`Defendant is a “safe harbor” provision that protects service providers only. However, Defendant
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`does not claim that Plaintiffs failure to send a notice is required under the provision. Instead, he
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`avers that its failure to do so, given that the statutory procedure exists for the purpose of
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`deterring copyright infringement, shows a failure to mitigate damages. Apparently, such notices
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`10
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`

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`are rather routine.2 Accordingly, because Defendant has given fair notice of his defense under
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`the liberal pleading standard, the Court will deny the motion to strike this last defense.
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`IV.
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`Conclusion
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`For the foregoing reasons, the Court will strike only the sixth affirmative defense of
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`invalidity without prejudice, as Defendant has stated he does not oppose such a ruling by the
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`Court.
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`An appropriate Order shall issue.
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`Ju1yf)f'Q, 2015
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`Alexandria, Virginia
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` /s/
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` l.iui11O'Grttdy
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`United States District
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`ge
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`1 Defendant states that “[m]ainstream copyright owners now send takedown notices for more than 6.5 million
`infringing files, on over 30,000 sites, each month." Def.‘s Opp‘n l2 n.4 (citing Center for the Protection of
`Intellectual Property, The Failure ofthe DMCA Notice and Takedown System, GEORGE MASON UNIV. SCH. OF L.
`(Dec. 5, 20 l 3), http://cpip.gmu.edu/20 I 3/ l 2/05/the-failure-of-the-dmca-notice-and-takedown-system-2/).
`ll