United States District Court, N.D. California
ORDER GRANTING IN PART AND DENYING IN PART
PLAINTIFF'S MOTION TO STRIKE DEFENDANT'S ANSWER
DOCKET NO. 27
M. CHEN United States District Judge.
March 13, 2017, Plaintiff brought this lawsuit against
Defendants Stephane Laffont-Réveilhac
(“Laffont-Réveilhac”), Veronique Martinez
(“Martinez”), Arthur Andersen & Co., SAS
(“AA&C”), and MoHala Enterprises, LLC
(“MoHala”), alleging trademark counterfeiting
under 15 U.S.C. § 1114, trademark under 15 U.S.C. §
1114, unfair competition arising under the California
Business & Professions Code § 17200, et
seq., and other related claims. See Docket No.
1. On April 13, 2017, Plaintiff and Defendant MoHala entered
into a Confidential Settlement Agreement through which MoHala
agreed to the entry of a Consent Judgment and Permanent
Injunction against it. Docket No. 22. The Court entered the
Consent Judgment against MoHala on April 17, 2017. Docket No.
23. On April 18, 2017, Defendants filed an Answer. Docket No.
before the Court is Plaintiff's motion to strike
Defendants' Answer. Docket No. 27. The Court grants
Plaintiff's motion with respect to Defendants Martinez
and AA&C but denies it with respect to Defendant
Laffont-Réveilhac. Laffont-Réveilhac cannot
sign on behalf of AA&C because only counsel can sign a
pleading for corporate entities like AA&C. See
28 U.S.C. § 1654; Civil Local Rule 3-9(b); Rowland
v. California Men's Colony, Unit II Men's
Advisory Council, 506 U.S. 194, 202 (1993).
Neither can Laffont-Réveilhac sign on behalf of
Martinez because the privilege to appear in propria person is
personal to himself. See 28 U.S.C. § 1654;
Civil Local Rule 3-9(a); McShane v. United States,
366 F.2d 286, 288 (9th Cir. 1966). As stated at the hearing,
AA&C can only appear through an attorney. Ms. Martinez
may appear but absent representation by counsel, she must
sign any pleading herself.
also requests that the Court strike assertions in the Answer
regarding purported foreign trademark rights and proceedings
and references to the Paris Convention under Rule 12(f).
Docket No. 27 at 5-8. The Court agrees with Plaintiff that
the Answer fails to demonstrate that Defendants' foreign
trademark registrations should break “[t]he concept of
territoriality . . . basic to trademark law.”
Person's Co., Ltd. v. Christman, 900
F.2d 1565, 1568-69 (Fed. Cir. 1990); see La Societe
Anonyme des Parfums Le Galion v. Jean Patou, 495 F.2d
1265, 1271 n.4 (2d Cir. 1974) (citation omitted) (“It
is well settled that foreign use is ineffectual to create
trademark rights in the United States.”); Vanity
Fair Mills v. T. Eaton Co., 234 F.2d 633, 639 (2d Cir.
1956) (“[F]oreign law confers no privilege in this
country that our courts are bound to recognize.”).
Having a foreign trademark registration is not a direct legal
defense to an infringement claim in the United States.
at this stage of the litigation, the Court cannot discern
whether these assertions will turn out to be entirely
irrelevant. Thus, the Court, at this time, does not take the
extraordinary measure of striking these assertions.
also argues that to the extent that paragraph 11 of the
Answer suggests an affirmative defense such as unclean hands
or other equitable defense, they are inadequately plead and
should be stricken under Rule 12(f). Docket No. 27 at 8-11.
An affirmative defense is insufficiently pled if it does not
provide a fair notice of the nature of the defense.
Wyshak v. City Nat'l Bank, 607 F.2d 824, 827
(9th Cir. 1979). The Supreme Court's decision in
Twombly requires that a party allege “enough
facts to state a claim to relief that is plausible on its
face.” Bell Atl. Corp. v. Twombly, 550 U.S.
544, 570 (2007). In 2009, the Supreme Court, in Ashcroft
v. Iqbal, 556 U.S. 662, 677 (2009), clarified that
Twombly was based on the interpretation and
application of Federal Rule of Civil Procedure 8, thereby
extending Twombly's pleading standard to all
civil cases. The Ninth Circuit has yet to rule on whether
Twombly and Iqbal should apply to the
pleading of affirmative defenses. However, “the vast
majority of courts presented with the issue have extended
Twombly's heightened pleading standard to
affirmative defenses.” Barnes v. AT & T Pension
Ben. Plan-Nonbargained Program, 718 F.Supp.2d 1167, 1171
(N.D. Cal. 2010); see also CTF Dev., Inc. v. Penta
Hospitality, LLC, 2009 WL 3517617, at *7-8 (N.D. Cal.
Oct. 26, 2009) (“Under the Iqbal standard, the
burden is on the defendant to proffer sufficient facts and
law to support an affirmative defense”).
under the heightened standard, however, the Court finds that
the Answer gave Plaintiff sufficient notice of the basis of
Defendants' defense: that Plaintiff created brands to
impersonate brands owned by Defendants and caused deception
in the marketplace. Thus, to the extent that the Answer
asserts an affirmative defense such as unclean hands or other
equitable defense, the Court does not strike it.
the Court finds that Laffont-Réveilhac waived any
objections to personal jurisdiction under Federal Rule of
Civil Procedure 12(h) by filing and signing an answer that
does not contest personal jurisdiction. See Benny v.
Pipes, 799 F.2d 489, 492 (9th Cir. 1986) (“A
general appearance or responsive pleading by a defendant that
fails to dispute personal jurisdiction will waive any defect
in service or personal jurisdiction.”). The Court does
not find that Martinez or AA&C waived objections to
personal jurisdiction because they failed to make a voluntary
general appearance through a valid Answer.
are given until July 31, 2017 to find counsel and/or to file
an amended Answer. Although the Court has not stricken
Defendant Laffont-Réveilhac's Answer, he is
advised to file an amended Answer that complies more fully
with Rule 8. If any party is not represented by counsel, he
or she should consult with the Court's handbook,
“Representing Yourself in Federal Court: A Handbook for
Pro Se Litigants, ” which is available to download
electronically at the Court's website,
order disposes of Docket No. 27.