756 F. Supp. 2d 421
S.D.N.Y.2010Background
- Coach, Inc. and Coach Services, Inc. sue Kmart, Sears Holding Corp., and 24 Seven for trademark, trade dress, and copyright infringement, false advertising, unfair competition, and unjust enrichment.
- Plaintiffs allege Coach Op Art trademark and copyrighted Op Art design elements; registrations with PTO and Copyright Office in 2009.
- Defendants sell Concourse luggage and wheeled bags at Kmart stores distributed by 24 Seven, forming the accused products backdrop.
- defendants answered with multiple affirmative defenses (first sale, statute of limitations, estoppel, implied license, acquiescence, laches, waiver, copyright misuse, unclean hands, failure to mitigate/negotiate damages, and others).
- Plaintiffs moved to strike these affirmative defenses under Rule 12(f); the court granted in part and denied in part, with several defenses struck as legally insufficient.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Estoppel sufficiency as a defense | Estoppel should bar claims based on plaintiffs' conduct and reliance. | Estoppel is plausible given alleged conduct and reliance by defendants. | Estoppel defense insufficient as a matter of law. |
| Implied license sufficiency | Implied license could bar infringement claims based on conduct between parties. | Implied license exists under totality of conduct indicating permission. | Implied license defense insufficient as a matter of law. |
| Acquiescence sufficiency | Plaintiff’s conduct or inaction could constitute acquiescence to infringement. | Plaintiff acquiesced in some manner prejudicing defendants. | Acquiescence defense insufficient as a matter of law. |
| Laches sufficiency | Delay in filing claims and prejudice to defendants could support laches. | Delay and prejudice exist under laches analysis. | Laches defense insufficient as a matter of law. |
| Copyright misuse sufficiency | Copyright misuse could bar relief if plaintiffs overreached their copyright monopoly. | Copyright misuse applies broadly to antitrust or public policy violations. | Copyright misuse defense insufficient as a matter of law. |
Key Cases Cited
- Salcer v. Envicon Equities Corp., 744 F.2d 935 (2d Cir.1984) (motions to strike disfavored; strict standard to strike)
- Helvering v. Schine Chain Theaters, 121 F.2d 950 (2d Cir.1941) (detrimental reliance essential to estoppel)
- Specialty Minerals, Inc. v. Pluess-Staufer AG, 395 F. Supp. 2d 109 (S.D.N.Y.2005) (test for sufficiency of defenses; prejudice considerations)
- Estee Lauder, Inc. v. Origins Natural Res., Inc., 189 F.R.D. 269 (S.D.N.Y.1999) (prejudice and discovery concerns in striking defenses)
- Basic Books, Inc. v. Kinko's Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y.1991) (unclean hands and equity principles in trademark context)