Sream, Inc. v. MLF Tobacco Shop, LLC
1:17-cv-22518
S.D. Fla.Oct 24, 2017Background
- Sream, Inc. sued MLF Tobacco Shop, LLC for trademark counterfeiting, infringement, and false designation of origin; plaintiff has filed about 95 similar suits in the district.
- MLF answered and asserted nine affirmative defenses; plaintiff moved to strike defenses 6, 7, and 9 under Fed. R. Civ. P. 12(f).
- Defense 6: plaintiff lacks standing unless it acquired written rights to the mark before alleged infringement. Defense 7: plaintiff lacks standing because it lacks an exclusive license.
- Defense 9: claims innocent-infringer status (no knowledge/willfulness), which would limit statutory damages under 15 U.S.C. § 1117(b).
- The court analyzed whether standing and the statutory limitation/innocent-infringer assertion are proper affirmative defenses and whether they are legally insufficient or frivolous.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether standing-based defenses (Defs. 6 & 7) are improperly pled as affirmative defenses | Standing defenses are merely denials of the prima facie elements and not affirmative defenses | Many courts allow standing to be pleaded as an affirmative defense; defenses give notice of issues defendant will assert | Court: Under Eleventh Circuit law, standing is plaintiff's burden and not an affirmative defense, but the defenses give adequate notice and are not frivolous — motion to strike denied |
| Whether an "innocent infringer" / statutory limitation on damages is an affirmative defense (Def. 9) | Defense 9 is just a denial of paragraph 32 and should be stricken | The limitation on statutory damages under §1117(b) operates to limit remedies and courts are divided whether it is an affirmative defense | Court: Innocent infringement limits damages but is not a defense to liability; given circuit/court split, the statutory-limitation pleading is not invalid as a matter of law — motion to strike denied |
Key Cases Cited
- Bischoff v. Osceola Cty., 222 F.3d 874 (11th Cir. 2000) (party invoking federal jurisdiction bears burden of proving standing)
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992) (standing requirements for federal jurisdiction)
- In re Rawson Food Serv., Inc., 846 F.2d 1343 (11th Cir. 1988) (party asserting an affirmative defense generally bears burden of proof)
- Wright v. Farouk Sys., Inc., 701 F.3d 907 (11th Cir. 2012) (pleadings are allegations and not evidence)
- Augustus v. Bd. of Pub. Instruction of Escambia Cty., Fla., 306 F.2d 862 (5th Cir. 1962) (striking pleadings is a drastic remedy appropriate only when allegations have no possible relation to the controversy)