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Gibson Brands, Inc. v. John Hornby Skewes & Co. Ltd.

United States District Court, C.D. California

August 22, 2014

GIBSON BRANDS, INC., a Delaware corporation, Plaintiff,


DEAN D. PREGERSON, District Judge.

Presently before the court is Plaintiff Gibson Brands, Inc. ("Plaintiff")'s Motion to Strike/Dismiss Defendant's Affirmative Defenses and Counterclaims. (Dkt. No. 25.) The matter is fully briefed and suitable for decision without oral argument. Having considered the parties' submissions, the court adopts the following order.

I. Background

On January 27, 2014, Plaintiff filed its Complaint against Defendant John Hornby Skewes & Co. Ltd. ("Defendant"), alleging trademark infringement, trade dress infringement, trademark counterfeiting, unfair competition, trademark dilution, and other related causes of action under federal, state, and common law. (Complaint ¶ 2.)

In its Complaint, Plaintiff asserts that it is the sole owner of six distinctive guitar body design trademarks: (1) "SG Body Shape Design, " (2) "Explorer Body Shape Design, " (3) "ES Body Shape Design, " (4) "Flying V Body Shape Design, " (5) "Flying V Peghead Design, " and (6) "Kramer Peghead Design." (Id. ¶¶ 10-15.) It alleges that the first, second, fourth, and sixth trademarks are incontestable pursuant to Section 15 of the Lanham Act (15 U.S.C. § 1065). (Id. ¶ 19.) Plaintiff additionally alleges that it has, for over fifty years, spent millions of dollars marketing and promoting its products which exclusively bear these trademarks. (Id.) As a result of the quality of Plaintiff's products and "the extensive sales, licensing and marketing, advertising and promotion of these products under the Gibson Trademarks, " the products have become famous trademarks that "are widely and favorably known by consumers in the United States and elsewhere...." (Id. ¶ 17.)

Plaintiff alleges that Defendant, a United Kingdom corporation, offers for sale, sells, and distributes in the United States "unauthorized products" using Plaintiff's six trademarks. (Id. ¶ 20.) Defendant allegedly sells the unauthorized products through its exclusive U.S. distributor LPD Music International Corporation and its related distributors and resellers. (Id.) Plaintiff further alleges that Defendant has made repeated use of the Gibson Trademarks by utilizing them in advertising and promotional materials for the unauthorized products "with the intent to mislead and confuse" consumers into believing that Defendant's products are made directly by Plaintiff and "with the intent of misappropriating, for [Defendant's] own benefit, the tremendous goodwill built up by [Plaintiff]" in the six disputed trademarks. (Id. ¶ 21.) According to Plaintiff, Defendant's actions violate the Lanham Act, the California Business and Professions Code, and the common law. (Id. ¶¶ 34-66.)

On May 30, 2014, Defendant filed an Answer to Plaintiff's Complaint, asserting twenty-four affirmative defenses and six counterclaims. (Dkt. No. 19.) Plaintiff now moves to strike twenty-one of the affirmative defenses and dismiss all six of the counterclaims.

The court addresses whether the denoted affirmative defenses and counterclaims should be stricken in turn.

II. Affirmative Defenses

A. Legal Standard

Federal Rule of Civil Procedure 12(f) provides that a court "may order stricken from any pleading any insufficient defense or any redundant, immaterial, impertinent, or scandalous matter." Fed.R.Civ.P. 12(f). "To show that a defense is insufficient, ' the moving party must demonstrate that there are no questions of fact, that any questions of law are clear and not in dispute, and that under no set of circumstances could the defense succeed." Cal. Dep't of Toxic Substances Control v. Alco Pac., Inc. , 217 F.Supp.2d 1028, 1032 (C.D. Cal. 2002). To be immaterial or impertinent, the challenged material must have "no possible bearing on the controversy." Employers Ins. v. Musick, Peeler & Garrett , 871 F.Supp. 381, 391 (S.D. Cal. 1994).

In considering a motion to strike, the court views the pleadings in the light most favorable to the non-moving party. See In re Secs. Litig. , 114 F.Supp.2d 955, 965 (C.D. Cal. 2000)). Thus, in determining whether to grant a motion to strike a defense, "a district court... resolves any doubt as to the... sufficiency of a defense in defendant's favor." Mag Instrument, Inc. v. JS Products, Inc. , 595 F.Supp.2d 1102, 1106 (C.D. Cal. 2008) (citing State of Cal. Dep't of Toxic Substances Control v. Alco Pac., Inc. , 217 F.Supp.2d 1028, 1033 (C.D. Cal. 2002). Grounds for a motion to strike must be readily apparent from the face of the pleadings or from materials that may be judicially noticed. Fantasy, Inc. v. Fogerty , 984 F.2d 1524, 1528 (9th Cir. 1993) rev'd on other grounds, 510 U.S. 517 (1994).

While motions to strike are generally regarded with disfavor, "where [a] motion [to strike] may have the effect of making the trial of the action less complicated, or have the effect of otherwise streamlining the ultimate resolution of the action, the motion to strike will be well taken." California v. United States , 512 F.Supp. 36, 38 (N.D. Cal. 1981). This is because the purpose of Rule 12(f) is "to avoid the expenditure of time and money that must arise from litigating spurious issues by disposing of those issues prior to trial...." Whittlestone, Inc. v. Handi-Craft Co. , 618 F.3d 970, 973 (9th Cir. 2010) (quoting Sidney-Vinstein v. A.H. Robins Co. , 697 F.2d 880, 885 (9th Cir. 1983)). Thus, courts have found motions to strike to be proper even when their only purpose is to make the issues less complicated. See Ganley v. Cnty. of San Mateo , 2007 WL 902551, at * 1 (N.D. Cal. Mar. 22, 2007).

B. Discussion

Plaintiff moves to strike as insufficient and/or immaterial Defendant's affirmative defenses 1-15, 17, and 19-23. In its Motion, Plaintiff separates these defenses into three general categories: (1) defenses that are not affirmative defenses; (2) defenses that are factually insufficient; and (3) defenses that are immaterial and/or redundant. The court addresses the defenses accordingly.

1. Defenses that Are Not Affirmative Defenses

Plaintiff moves to strike Defendant's affirmative defenses 1, 5, 10, 11, 12, 14, 15, 17, 21, and 22 on the ground that they are not actually affirmative defenses under Federal Rule of Civil Procedure 8(c). "Affirmative defenses plead matters extraneous to the plaintiff's prima facie case, which deny plaintiff's right to recover, even if the allegations of the complaint are true." Fed. Deposit Ins. Corp. v. Main Hurdman , 655 F.Supp. 259, 262 (E.D. Cal. 1987). This court has held that "a defense is an affirmative defense if it will defeat the plaintiff's claim even where the plaintiff has stated a prima facie case for recovery under the applicable law." Quintana v. Baca , 233 F.R.D. 562, 564 (C.D. Cal. 2005). "A defense which demonstrates that plaintiff has not met its burden of proof is not an affirmative defense." Zivkovic v. S. Cal. Edison Co. , 302 F.3d 1080, 1088 (9th Cir. 2002).

Affirmative Defense 1

Plaintiff asks the court to strike Defendant's first affirmative, which alleges that Plaintiff's Complaint "fails to state a claim upon which relief can be granted." (Answer ¶ 67.) Plaintiff asserts that "[f]ailure to state a claim is not an affirmative defense but rather a Federal Rule of Civil Procedure 12(b)(6) attack claiming the Complaint fails to plead sufficient factual matter to state a claim to relief that is plausible." (Motion at 7:5-9.)

The court agrees with Plaintiff that this defense is not an affirmative defense. A claim that "directly attacks the merits of the plaintiff's claim" is not an affirmative defense subject to the requirements of Rule 8(c). Quintana , 233 F.R.D. at 564 (striking defendant's affirmative defense that alleged plaintiff's complaint failed to state a cause of action). Accordingly, the court strikes Defendant's first affirmative defense. ...

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