Opinion
No. 05 Civ. 624 (SAS).
April 5, 2005
Kenneth Feldman, Esq., STEPHEN E. FELDMAN, P.C., New York, NY, for Plaintiff.
Jeffrey A. Kopczynski, Esq., LAW OFFICES OF JEFFREY A. KOPCZYNSKI, Glendale, CA, for Defendants.
MEMORANDUM OPINION AND ORDER
I. BACKGROUND
Plaintiff has moved to strike certain affirmative defenses and to dismiss a counterclaim raised in defendants' February 10, 2005 Answer to plaintiff's complaint. Specifically, plaintiff requests that "Defendants['] Affirmative Defenses paragraph 40 through 43 and Defendants['] Counterclaim paragraph 44 through 46 be stricken and dismissed because (1) Defendants plead inapplicable legal principles and statutes, and (2) Defendants fail to plead with sufficient particularity to give proper notice."
See Plaintiff's Memorandum of Law in Support of Motion to Strike Defendants' Affirmative Defenses and to Dismiss Defendants' Counterclaims ("Pl. Mem.").
See id. at 1.
II. LEGAL STANDARD
A. Motion to Strike
Federal Rule of Civil Procedure 12(f) permits the Court to "order stricken from any pleading any insufficient defense or any redundant, immaterial, impertinent, or scandalous matter." Courts are generally "very reluctant to determine disputed or substantial issues of law on a motion to strike." Indeed, "[m]otions to strike will be granted only where it appears to a certainty that a defense would fail despite any state of facts which could be proved."
Simon v. Manufacturers Hanover Trust, 849 F. Supp. 880, 882 (S.D.N.Y. 1994).
United States v. Mobil Oil Corp., No. 96 Civ. 1432, 1997 WL 1048911, at *8 (E.D.N.Y. Sept. 11, 1997) (citing Simon, 849 F. Supp. at 882).
B. Motion to Dismiss
Under Rule 12(b)(6), a motion to dismiss should be granted only if "`it appears beyond doubt that the [nonmovants] can prove no set of facts in support of [their] claim[s] which would entitle [them] to relief.'" The task of the court in ruling on a Rule 12(b)(6) motion is "merely to assess the legal feasibility of the [claim], not to assay the weight of the evidence which might be offered in support thereof." When deciding a motion to dismiss, courts must accept all factual allegations as true, and draw all reasonable inferences in the nonmovants' favor.
Weixel v. Board of Educ. of New York, 287 F.3d 138, 145 (2d Cir. 2002) (quoting Conley v. Gibson, 355 U.S. 41, 45-46 (1957)).
Levitt v. Bear Stearns Co., Inc., 340 F.3d 94, 101 (2d Cir. 2003) (quotation marks and citations omitted).
See Chambers v. Time Warner Inc., 282 F.3d 147, 152 (2d Cir. 2002).
III. DISCUSSION
"This is an action for copyright infringement and related claims arising under the Copyright Act of 1976, 17 U.S.C. [§] 101 et seq. [the "Copyright Act"], and related statutes and common law." Plaintiff asserts no claims pursuant to Title 35 of the United States Code, which governs patents. Defendants' Answer makes no mention of the Copyright Act, but rather sets forth a number of affirmative defenses and one counterclaim that cite to Title 35.
Complaint ¶ 10.
Specifically, the Answer contains four "Affirmative Defenses:"
40. The copyrights in suit, or any claim thereof, are invalid for failure to comply with the requirements of 35 U.S.C. § 112 and § 251.
41. The copyrights in suit, or any claim thereof, are invalid for failure to comply with the statutory requirements of patentability. 35 U.S.C. § 102.
42. The copyrights in suit, or any claim thereof, are invalid for failure to meet the requirements of 35 U.S.C. § 101.
43. The copyrights in suit, or any claim thereof, are invalid in that any differences, if any, between the prior art and the subject matter of the copyrights as a whole would have been obvious at the time the subject of the alleged copyright was made to a person having ordinary skill in the art to which the subject matter pertains, making the copyrights invalid under 35 U.S.C. § 103.
Answer ¶¶ 40-43.
The Answer also contains the following "Counterclaim" for declaratory relief:
46. Declaratory relief is requested to the effect that the copyrights alleged to be infringed, or any of them are neither infringed nor valid on the same basis set forth in the affirmative defenses, namely the copyrights do not meet the requirements of 35 U.S.C. § 112, § 251, § 102, § 101 and § 103.
Id. ¶ 46.
Plaintiff correctly notes that "35 U.S.C. has nothing to do with copyright law or its requirements." Indeed, because plaintiff does not assert that defendants violated Title 35, defendants' patent law-based affirmative defenses are entirely inapposite. Defendants do nothing to clarify their positions. Rather, in opposition to plaintiff's motion to strike, defendants merely rehash their affirmative defenses. Because the question of whether plaintiff's designs are patentable is wholly irrelevant to the question of whether defendants infringed plaintiff's copyright, paragraphs 40 through 43 of the Answer are stricken.
Pl. Mem. at 3.
Plaintiff also undertakes the exercise of transposing defendants' citations to the Copyright Act, in an attempt to discern whether defendants' repeated citations to Title 35 were simply typographical errors. This effort is fruitless. See Pl. Mem. at 4. As plaintiff notes, 17 U.S.C. § 112 governs sound recordings, which are not at issue in this case, and 17 U.S.C. § 251 does not exist. See id.
See Memorandum of Law in Opposition to Instant Motion ("Opp.") at 2-3 (restating affirmative defenses and conceding that references to Title 35 were "erroneous," but making no attempt to withdraw or explain defendants' patent-based affirmative defenses).
Defendants attempt to bring their putative counterclaim within the scope of this case, asserting that "[d]efendants['] counterclaim [is] a remedy provided by 17 U.S.C. § 502, which allows the Court . . . to grant temporary and final injunction . . . which is the declaratory relief sought by Defendants herein." Defendants' efforts are unavailing. Section 502 permits the Court to "grant temporary and final injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright" — not, as the Answer seeks, to declare that certain copyrights do not meet various requirements of the patent laws. In any case, if defendants seek an injunction, they should request one, rather than shoehorn a claim for declarative relief into the injunction provisions of the Copyright Act. Accordingly, defendants' counterclaim is dismissed.
Id. at 3 (ellipsis in original).
I note that, even if defendants' later submissions are ignored, and their counterclaim for a declaratory judgment is allowed to stand as it appears on the face of the Answer, defendants do not satisfy the requirements for declaratory judgment under 28 U.S.C. § 2201.
A district court's jurisdiction under the Declaratory Judgment Act extends only to those cases in which there is an `actual controversy' between the parties. 28 U.S.C. § 2201(a). In an action brought to establish the absence of patent infringement, the `actual controversy' requirement is satisfied if: (1) plaintiff has produced or is prepared to produce the allegedly infringing product; and (2) defendant's conduct created an objectively reasonable apprehension on the part of plaintiff that it will face a lawsuit if the allegedly infringing activity continues.Epling v. Golden Eagle/Satellite Archery, Inc., 17 F. Supp. 2d 207, 209 (W.D.N.Y. 1998) (citing Fina Research, S.A. v. Baroid Ltd., 141 F.3d 1479, 1481 (Fed. Cir. 1998); GAF Bldg. Materials Corp. v. Elk Corp., 90 F.3d 479, 481 (Fed. Cir. 1996)). Defendants have no objectively reasonable apprehension that plaintiff will bring a patent lawsuit against defendants for infringement of its registered.
IV. CONCLUSION
Plaintiff's motions are granted. Paragraphs 40 through 43 of the Answer are hereby stricken, and the counterclaim for declaratory relief is dismissed.
SO ORDERED.