11 F. Supp. 3d 1020
D. Colo.2014Background
- Plaintiff sued multiple anonymous "Doe" defendants for copyright infringement via BitTorrent and obtained expedited Rule 45 subpoenas to ISPs to identify alleged infringers; Plaintiff then amended and named Benito Smoak.
- Default was initially entered against Smoak but later withdrawn; Smoak filed an answer with five counterclaims and multiple affirmative defenses.
- Plaintiff moved to dismiss Smoak’s counterclaims and to strike seven affirmative defenses; the motion was referred to Magistrate Judge Hegarty, who recommended granting it; no objections were filed to the recommendation.
- Smoak’s counterclaims alleged abuse of process, malicious prosecution, invasion of privacy, outrageous conduct, and that the suit was groundless/frivolous; several affirmative defenses challenged copyright validity, damages, mitigation, and invoked unclean hands, among others.
- The Magistrate recommended dismissal of all counterclaims as legally insufficient or premature and recommended striking seven affirmative defenses as insufficient or improperly pleaded; the district judge affirmed and adopted the recommendation.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Abuse of process | Settlement demands and suit were proper efforts to enforce copyright | Suit and settlement demands were extortionate and intended to embarrass and coerce — abuse of process | Dismissed: settlement within statutory range and bringing suit for infringement not improper use of process |
| Malicious prosecution | N/A (Plaintiff brought infringement action) | Plaintiff initiated wrongful prosecution causing damage | Dismissed as premature: underlying infringement action not resolved in defendant’s favor |
| Invasion of privacy | Identifying information disclosed pursuant to court-ordered subpoenas was lawful; film title not private | Disclosure of subscriber info and film title invaded privacy | Dismissed: alleged facts not private (subscriber info, torrent file names not private) and claim not pleaded with specificity |
| Outrageous conduct / IIED | Filing suit and settlement offers are legitimate | Filing suit and leveraging salacious subject matter constituted extreme, outrageous conduct | Dismissed: conduct (suit and settlement) not extreme or beyond bounds of decency |
| Groundless / frivolous suit (Colo. Rev. Stat. §13-17-101 / Rule 11) | Claim is a merits-based copyright action, not frivolous | Suit is groundless, merits relief under §13-17-101 and Rule11 | Dismissed as improper substantive claim; fee remedies procedural and must await disposition or separate motion |
| Unclean hands (affirmative defense) | N/A | Plaintiff acted in bad faith to extort settlements | Struck: conclusory allegations; settlement offers within statutory damages do not establish inequitable misconduct |
| Challenges to copyright validity / proof and damages-related defenses | Copyright valid; statutory damages elected | Work not original; lack of registration; no damages; statutory damages excessive; failure to mitigate | Struck: attacks on elements of plaintiff’s prima facie case are improperly styled as affirmative defenses; mitigation and lack-of-damages defenses invalid where statutory damages elected; damages-excessive argument not an affirmative defense |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (pleading standard requires plausible factual allegations beyond legal conclusions)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (plausibility and two-step pleading analysis)
- Summers v. Utah, 927 F.2d 1165 (10th Cir. 1991) (district court discretion in reviewing unobjected-to magistrate recommendations)
- Thomas v. Arn, 474 U.S. 140 (1985) (district courts not required to review magistrate factual or legal conclusions absent objections)
- Hertz v. Luzenac Group, 576 F.3d 1103 (10th Cir. 2009) (elements of abuse of process under Colorado law)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (elements of copyright infringement: valid copyright and copying of original elements)
- Moothart v. Bell, 21 F.3d 1499 (10th Cir. 1994) (mitigation doctrine inapplicable to statutory damages)
- Culpepper v. Pearl Street Bldg., Inc., 877 P.2d 877 (Colo. 1994) (elements for outrageous conduct/intentional infliction of emotional distress)