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UNITED STATES DISTRICT COURT

NORTHERN DISTRICT INDIANA

HAMMOND DIVISION

MALIBU MEDIA, LLC, )

)

Plaintiff, ) Civil Case No. 2:13-cv-00097-JD-JEM

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v. )

)

JOHN DOE subscriber assigned IP address )

98.220.153.245, )

)

Defendant. )

)

PLAINTIFF’S MOTION TO STRIKE DEFENDANT’S AFFIRMATIVE DEFENSES

Plaintiff, Malibu Media, LLC (“Plaintiff”), by and through undersigned counsel and

pursuant to Fed. R. Civ. P. 12(f) hereby moves for entry of an order striking Defendant’s

Affirmative Defenses, and files this memorandum in support:

I. INTRODUCTION

Plaintiff’s Complaint was filed on March 14, 2013 alleging direct copyright infringement

against Defendant. On October 17, 2013 Defendant filed his Answer asserting ten affirmative

defenses against Plaintiff’s Amended Complaint. Plaintiff, pursuant to Rule 12(f), hereby moves

for the entry of an order striking Defendant’s Fourth Affirmative Defense (Implied License),

Fifth Affirmative Defense (Copyright Misuse), Sixth Affirmative Defense (Abandonment),

Eighth Affirmative Defense (First Sale Doctrine), Ninth Affirmative Defense (Online Copyright

Infringement Liability Limitations Act), and Tenth Affirmative Defense (Unclean Hands). As

explained more fully below, each of these affirmative defenses is insufficient and, accordingly,

the Court should grant Plaintiff’s Motion.

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II. LEGAL STANDARD

The Court may strike from a pleading “an insufficient defense or any redundant,

immaterial, impertinent, or scandalous matter.” Fed. R. Civ. P. 12(f). “The decision whether to

strike material is left to the court's discretion.” E.E.O.C. v. New Indianapolis Hotels, LLC, 2011

WL 63909 (S.D. Ind. 2011) (citing Talbot v. Robert Matthews Distrib. Co., 961 F.2d 654, 665

(7th Cir.1992)). Motions to strike “may be granted if they remove unnecessary clutter from a

case and expedite, rather than delay, the case.” Spencer County Redevelopment Com'n v. AK

Steel Corp., 2011 WL 3806947 (S.D. Ind. 2011) (citation omitted).

“An affirmative defense is a pleading subject to Rule 8(a), and therefore must include a

short and plain statement of the defense.” Malibu Media, LLC v. Doe, 2013 WL 4048513, at *1

(N.D. Ind. Aug. 9, 2013) (granting motion to strike). When presented with a motion to strike,

“courts apply a three-part test: ‘(1) whether the matter is properly pled as an affirmative defense;

(2) whether the affirmative defense complies with Federal Rules of Civil Procedure 8 and 9; and

(3) whether the affirmative defense can withstand a Rule 12(b)(6) challenge.’” Id., citing Ortho–

Tain, Inc. v. Rocky Mountain Orthodontics, Inc., 2007 WL 1238917, at *1 (N.D.Ill. 2007).

Affirmative defenses “must include either direct or inferential allegations as to all elements of

the defense asserted, and bare bones conclusory allegations do not suffice.” Id. (Citation

omitted). Accordingly, where affirmative defenses “omit[] any short and plain statement of facts

and fail[] totally to allege the necessary elements of the alleged claims,” they are properly

stricken. Heller Fin., Inc. v. Midwhey Powder Co., Inc., 883 F.2d 1286, 1295 (7th Cir. 1989)

(internal citation omitted).

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III. ARGUMENT

A. Defendant’s Fourth Affirmative Defense (Implied License) Should be

Stricken

Defendant’s Fourth Affirmative Defense is conclusory and therefore insufficiently pled.

Defendant’s Fourth Affirmative Defense merely states that “Plaintiff Malibu authorized,

impliedly or explicitly, any infringing use of its works, and its claims . . . are therefore barred by

the doctrine of implied license.” Answer, p. 12. Defendant’s Fourth Affirmative Defense does

not contain any “explanation of how the[] defense[] purportedly appl[ies],” and as pled, “it is not

enough to survive the motion to strike.” Malibu Media, LLC v. Doe, 2013 WL 4048513, at *3

(N.D. Ind. 2013) (striking implied license affirmative defense).

Defendant has not alleged and has failed to establish the necessary elements for the Court

to find the existence of an implied license. Although the Copyright Act does not permit the

exclusive transfer of copyright ownership absent a writing, a court may find that a nonexclusive

license has been implied by either the conduct of, or an oral agreement between, the parties

involved. See I.A.E., Inc. v. Shaver, 74 F.3d 768, 776 (7th Cir. 1996). An implied license arises

where the following three elements are met: (1) the licensee requests the creation of a work; (2)

the licensor creates the work and delivers it to the licensee; and (3) the licensor intends that the

licensee copy and distribute the work. Id., citing Effects Assocs. v. Cohen, 908 F.2d 555, 558-59

(9th Cir. 1990). See also Kennedy v. Nat'l Juvenile Det. Ass'n, 187 F.3d 690, 694 (7th Cir. 1999).

None of the prongs of the Effects test above can be met in this instance. First, Defendant

has not and cannot allege that he or she requested the work in question from Plaintiff. Prior to

this lawsuit Plaintiff and Defendant were total strangers. Second, in the context of unauthorized

file sharing, under no set of circumstances can Defendant establish that Plaintiff created the work

and delivered it to Defendant pursuant to a “meeting of the minds.” See, e.g., Farr v. Ohio Oil

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Co., 129 F. Supp. 219, 220 (N.D. Ind. 1955) (holding that an implied contract “grows out of the

intentions of the parties and there must be a meeting of the minds.”); Ulloa v. Universal Music

and Video Distribution Corp., 303 F.Supp.2d 409, 416 (S.D.N.Y. 2004) (“In order to establish an

implied license, as for any implied contract, they must prove that there was a meeting of the

minds.”) Third, under the facts in this case, Plaintiff clearly did not intend for Defendant to copy

and distribute the work, since it is now suing Defendant for infringement. See, e.g., Luar Music

Corp. v. Universal Music Group, Inc., 861 F.Supp.2d 30, 37 (D.P.R. 2012) (“Nonexclusive

licenses may be granted if the copyright owner does not object to the putative infringer’s use of

copyrighted material.”).

“Defendant's Answer forecloses the possibility of an implied license defense.” Malibu

Media, LLC v. Doe, 2013 WL 4048513, at *4 (N.D. Ind. 2013). In short, Defendant has denied

using BitTorrent to commit the infringement alleged. Accordingly, he cannot satisfy the

elements of an implied license affirmative defense.

In his Answer, Defendant denies the allegations contained in this paragraph.

(Answer ¶ 30.) With this general denial, Defendant appears to be denying not

only that he copied and distributed the parts of Plaintiff's copyrighted works, but

that he used BitTorrent to do so. As such, Defendant cannot demonstrate that “he

requested Plaintiff's work via BitTorrent, that Plaintiff delivered the work, and

that Plaintiff intended [Defendant] to distribute it,” as required to establish an

implied license defense.

Id.

Accordingly, Defendant’s Fourth Affirmative Defense is insufficient and should be

stricken.

B. Defendant’s Fifth Affirmative Defense (Copyright Misuse) Should be

Stricken

Defendant’s conclusory Fifth Affirmative Defense should be stricken. For his Fifth

Affirmative Defense, Defendant states “[t]hat Plaintiff Malibu’s claims are barred by the

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doctrine of misuse of copyright.” Answer, p. 12. “The doctrine of ‘misuse prevents copyright

holders from leveraging their limited monopoly to allow them control of areas outside the

monopoly.’” Assessment Techs. of WI, LLC v. WIREdata, Inc., 350 F.3d 640, 647 (7th Cir. 2003)

(quoting A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1026–27 (9th Cir.2001)). The

defense of misuse of copyright “was first asserted in copyright cases in challenges to restrictive

licensing terms, although it has outgrown such antitrust like roots and now applies, inter alia, to

efforts to misrepresent or extend rights beyond the scope of one's copyright.” 5 Patry on

Copyright § 17:128.

Here, Defendant has not alleged that Plaintiff is attempting to unlawfully extend the

limited monopoly granted to it by the Copyright Act nor has it alleged any other improper

behavior with regard to the copyrights at issue. Defendant’s allegations fail to allege any

element of the defense of misuse of copyright. “There is no evidence here that plaintiffs seek to

control areas outside of their grant of monopoly. Rather, plaintiffs seek to control reproduction

and distribution of their copyrighted works, exclusive rights of copyright holders.” A&M

Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1027 (9th Cir. 2001).

Plaintiff has never misused its copyrights. Significantly, all Plaintiff has ever done with

respect to its copyrights is bring suits to enforce them; as a matter of law, doing so is not

copyright misuse. See, e.g., Nielsen Co. (US), LLC v. Truck Ads, LLC, 2011 WL 221838 (N.D.

Ill. 2011) (“The mere fact that a copyright holder files suit for infringement cannot, of course, be

the basis for a copyright misuse claim.”); Huthwaite, Inc. v. Ecolab, Inc., 2006 Copr. L. Dec. P

29137 (N.D. Ill. 2006) (“Claiming infringement by a writing cannot possibly be copyright

misuse unless the claim is patently frivolous.”); Arista Records, Inc. v. Flea World, Inc., 356 F.

Supp. 2d 411, 428 (D.N.J. 2005) (“Defendants allege only that Plaintiffs have filed lawsuits and

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otherwise sought to enforce their copyrights. This allegation, however, is insufficient as a matter

of law to state a copyright misuse claim, as the fact of enforcing a valid copyright, without more,

simply cannot constitute copyright misuse.”)

Defendant’s Fifth Affirmative Defense thus fails as a matter of law and should be

stricken.

C. Defendant’s Sixth Affirmative Defense (Abandonment) Should be Stricken

Defendant’s Sixth Affirmative Defense should be stricken since it “omits any short and

plain statement of facts and fails totally to allege the necessary elements of the alleged claims[.]”

Heller Fin., Inc. v. Midwhey Powder Co., Inc., 883 F.2d 1286, 1295 (7th Cir. 1989) (internal

citation omitted). To wit, Defendant’s Sixth Affirmative Defense merely states that “Plaintiff

Malibu’s claims are barred as a result of Plaintiff Malibu’s abandonment of its intellectual

property.” Answer, p. 12. “Abandonment of a copyright occurs if the owner intends to give up

his copyright protection. Some overt act is necessary to evidence such an intent ... mere inaction

is not enough. The presence of a notice is strong evidence of an intent not to abandon.” Jackson

v. MPI Home Video, 694 F. Supp. 483, 490 (N.D. Ill. 1988) (citation omitted). See also A&M

Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1026 (9th Cir. 2001) (“In copyright, waiver or

abandonment of copyright ‘occurs only if there is an intent by the copyright proprietor to

surrender rights in his work.’”) citing 4 Melville B. Nimmer & David Nimmer, Nimmer On

Copyright ¶ 13.06 (2000)).

No action taken in this case by Plaintiff has evinced an intent to surrender its rights in the

subject works. To the contrary, Plaintiff seeks to protect its copyrighted works from infringers

who use the BitTorrent protocol to unlawfully download and distribute its movies. Indeed,

Plaintiff has enacted a national campaign against such infringers and this lawsuit is a part of

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Plaintiff’s anti-infringement efforts. Further, Plaintiff’s website, x-art.com, clearly states that all

content on the website is copyrighted and that “unauthorized reproduction, distribution or use of

the Content is strictly prohibited.” See x-art.com/legal/. And, as stated above, “notice is strong

evidence of an intent not to abandon.” Jackson, 694 F. Supp. at 490. As Plaintiff’s copyright

protection efforts and this lawsuit make clear, Plaintiff has not evinced intent to surrender its

rights in the works and instead seeks to avidly protect them. Defendant’s bare bones conclusory

Sixth Affirmative Defense is therefore insufficient and should be stricken.

D. Defendant’s Eighth Affirmative Defense (First Sale Doctrine) Should be

Stricken

For his Eighth Affirmative Defense, Defendant asserts “[t]hat Plaintiff Malibu’s claims

are barred pursuant to 17 U.S.C. § 109, commonly known as the first sale doctrine, and also

regularly referred to as ‘exhaustion.’” Answer, p. 12. Defendant’s Eighth Affirmative Defense

fails as a matter of law because “the first sale defense is limited to material items, like records,

that the copyright owner put into the stream of commerce.” Capitol Records, LLC v. ReDigi Inc.,

2013 WL 1286134 at *10 (S.D.N.Y. 2013) (emphasis added.) The first sale doctrine does not

apply to digital files. Id.

17 U.S.C. §109 provides:

Notwithstanding the provisions of section 106(3), the owner of a particular copy

or phonorecord lawfully made under this title, or any person authorized by such

owner, is entitled, without the authority of the copyright owner, to sell or

otherwise dispose of the possession of that copy or phonorecord.

17 U.S.C. § 109(a) (emphasis added). The first sale doctrine does not apply to digital files

because a copy of a digital file is a new and different material object than the original. To hold

otherwise would mean that the first person who ever downloaded a blockbuster movie could

distribute copies of that download to the rest of the world. And, that only the original

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downloader would have to pay. Obviously, if that were the law no movie company would ever

authorize its product to be distributed digitally.

Further, the first sale doctrine only applies to lawfully made copies of the copyrighted

work. See 17 U.S.C. § 109(a); United States v. Sachs, 801 F.2d 839, 843 (6th Cir. 1986) (“the

first sale doctrine is not applicable to ‘bootleg’ copies since, by definition, a ‘bootleg’ copy is not

authorized and the copyright owner could not have parted with his title to that copy through a

first sale.”) No copy of Plaintiff’s work obtained through BitTorrent is a lawfully made copy.

Because Defendant did not acquire the same specific tangible, physical, material copy of

Plaintiff’s copyrighted works from a third party who paid for it, Defendant’s Eighth Affirmative

Defense fails as a matter of law and should be stricken.

E. Defendant’s Ninth Affirmative Defense (Online Copyright Infringement

Liability Limitations Act) Should be Stricken

Defendant’s Ninth Affirmative Defense claims, “[t]hat Defendant John Doe is not liable

to Plaintiff Malibu pursuant to 17 U.S.C. § 512, commonly known as the ‘Online Copyright

Infringement Liability Limitation Act.’” Answer, p. 12. Defendant’s Ninth Affirmative Defense

fails as a matter of law because Defendant does not qualify for the safe harbor provisions of the

Copyright Act as set forth in 17 U.S.C. § 512. Accordingly, Defendant’s Ninth Affirmative

Defense should be stricken.

Defendant does not qualify for the safe harbor provisions of the Digital Millennium

Copyright Act (“DMCA”) as per the Online Copyright Infringement Liability Limitations Act.

17 U.S.C. § 512, et seq., does not apply to Defendant. In short, it applies to Internet Service

Providers (“ISPs”). Here, Plaintiff sued Defendant for direct copyright infringement as an

individual who has engaged in unlawful file-sharing. “To qualify for the ‘safe harbor’ provisions

under the DMCA, a party must meet certain threshold requirements, including that the party (1)

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must be a ‘service provider’ as defined by the statute.” Wolk v. Kodak Imaging Network, Inc.,

840 F. Supp. 2d 724, 743 (S.D.N.Y. 2012). There are two definitions for the term “service

provider”:

(A) As used in subsection (a), the term ‘service provider’ means

an entity offering the transmission, routing, or providing of

connections for digital online communications, between or

among points specified by a user, of material of the user’s

choosing, without modification to the content of the material

as sent or received.

(B) As used in this section, other than subsection (a), the term

‘service provider’ means a provider of online services or

network access, or the operator of facilities therefor, and

includes an entity described in paragraph (A).

17 U.S.C. § 512(k)(1).

It is clear from the above definitions that Defendant—an individual and not a commercial

entity or provider of online services—does not qualify for the safe harbor provisions of § 512.

“In short, a natural person in the defendant’s position . . . simply does not qualify as a ‘service

provider.’ Therefore, the defendant’s argument that she is immune from suit under the terms of

§ 512(a) is without merit.” Patrick Collins, Inc. v. Barbara Suter, 1:12-cv-00971-BAH,

CM/ECF 18 at pp. 8-11 (D.D.C. Sept. 1, 2012), Exhibit A.

Additionally, the “Conditions for Eligibility” found in § 512(i) must be satisfied in order

to take advantage of the safe harbor provisions. For example, under 512(i) a service provider is

only immune if it “has adopted and reasonably implements, and informs subscribers and account

holders of the service provider’s system or network of, a policy that provides for the termination

. . . of subscribers and accounts holders . . . who are repeat infringers.” Id. at (1)(A). Defendant

has no subscribers nor accountholders and no policy that provides for termination for those who

are repeat infringers. Indeed, “Congress decided to pass a special set of rules for ISPs . . . It is

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not the role of this Court to extend Congress’s specific intent . . .[.]” Arista Records, Inc. v. Flea

World, Inc., 356 F. Supp. 2d 411, 418 (D.N.J. 2005). “Judging from the statutory text and the

case law, Malibu is correct . . . it is clear that ‘service provider’ is intended to refer to

commercial entities. . . The court is aware of no case where Section 512’s safe harbor provision

was extended to a private individual[.]” Malibu Media, LLC v. Does 1, 2013 WL 1702549, at *7

(E.D. Pa. 2013).

Accordingly, Defendant’s Ninth Affirmative Defense fails as a matter of law and should

be stricken.

F. Defendant’s Tenth Affirmative Defense (Unclean Hands) Should be Stricken

Defendant’s Tenth Defense merely states that “Plaintiff Malibu should not recover any

damages under the doctrine of unclean hands.” Answer, p. 13. As pled, Defendant’s Tenth

Affirmative Defense is a “bare bones conclusory allegation” that “fails totally to allege the

necessary elements of the alleged claims.” Parker v. Rockies Exp. Pipeline LLC, 2012 WL

4762138 (S.D. Ind. 2012); Heller Fin., Inc. v. Midwhey Powder Co., Inc., 883 F.2d 1286, 1295

(7th Cir. 1989). Defendant’s Tenth Affirmative Defense is unsupported by a single factual

allegation. Indeed, Defendant has failed to allege the requisite elements of a defense of unclean

hands. Accordingly, Defendant has failed to provide notice of his defense and the grounds upon

which it is asserted in violation of Rule 8 and the standard set forth in Heller above.

“[U]nclean hands [is an] equitable defense[] that must be pled with the specific elements

required to establish the defense.” Malibu Media, LLC v. Doe, 2013 WL 4048513, at *1 (N.D.

Ind. 2013). To successfully assert the defense of unclean hands, Defendant must “demonstrate

three things: (1) [Plaintiff’s] misconduct was intentional; (2) [Plaintiff’s] wrongdoing concerned

the [Defendant] and had an immediate and necessary relation to the matter in litigation; and (3)

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[Defendant was] injured by [Plaintiff’s] conduct.” Murray v. Conseco, Inc., 2009 WL 1357235

(S.D. Ind. 2009). Defendant alleges no intentional misconduct concerning Defendant that had an

immediate and necessary relation to this case nor any resultant harm. Accordingly, Defendant’s

Tenth Affirmative Defense should be stricken as conclusory and insufficiently pled.

IV. CONCLUSION

For the foregoing reasons, Plaintiff respectfully requests this Court grant the subject

Motion.

WHEREFORE, Plaintiff, Malibu Media, LLC, respectfully requests entry of an order:

(A) Granting Plaintiff’s Motion to Strike Defendant’s Fourth, Fifth, Sixth, Eighth,

Ninth, and Tenth Affirmative Defenses;

(B) Striking Defendant’s Fourth, Fifth, Sixth, Eighth, Ninth, and Tenth Affirmative

Defenses; and

(C) Granting Plaintiff such other and further relief as this Court deems just and

proper.

Dated: November 7, 2013

Respectfully submitted,

NICOLETTI & ASSOCIATES, PLLC

By: /s/ Paul J. Nicoletti

Paul J. Nicoletti, Esq. (P44419)

36880 Woodward Ave, Suite 100

Bloomfield Hills, MI 48304

Tel: (248) 203-7800

Fax: (248) 203-7801

E-Fax: (248) 928-7051

Email: paul@nicoletti-associates.com

Attorneys for Plaintiff

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CERTIFICATE OF SERVICE

I hereby certify that on November 7, 2013, I electronically filed the foregoing document

with the Clerk of the Court using CM/ECF and that service was perfected on all counsel of

record and interested parties through this system.

By: /s/ Paul J. Nicoletti

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