MAUI JIM, INC., Plaintiff and Counterclaim Defendant, v. SMARTBUY GURU ENTERPRISES, MOTION GLOBAL LTD., SMARTBUYGLASSES SOCIETÁ A RESPONSABILITÁ LIMITATA, SMARTBUYGLASSES OPTICAL LIMITED, Defendants and Counterclaimants.
No. 1:16 CV 9788
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION
January 23, 2018
Hon. Marvin E. Aspen
MARVIN E. ASPEN, District Judge:
Presently before us is Plaintiff and Counterclaim Defendant Maui Jim, Inc.’s (“Maui Jim”) motion to dismiss Defendants and Counterclaimants SmartBuy Guru Enterprises, Motion Global Ltd., SmartBuyGlasses Societá a Responsabilitá Limitata, and SmartBuyGlasses Optical Limited’s (collectively “SmartBuyGlasses”) counterclaims. (Dkt. No. 44.) For the reasons stated below, we grant Maui Jim’s motion in part and deny it in part.
BACKGROUND
At the motion to dismiss stage, we accept all well-pleaded factual allegations in the counterclaim as true and draw all inferences in the plaintiff’s favor. Cole v. Milwaukee Area Tech. Coll. Dist., 634 F.3d 901, 903 (7th Cir. 2011). Maui Jim is a designer, manufacturer, and provider of prescription and non-prescription sunglasses. (Compl. (Dkt. No. 1) ¶ 15.) SmartBuyGlasses is an online retailer of luxury designer eyewear. (Counterclaim
SmartBuyGlasses alleges it procures genuine Maui Jim sunglasses primarily through European affiliates and distributors that purchase directly from Maui Jim. (Id. ¶ 18.) It contends that its distribution channel “is not unknown to Maui Jim,” as the executive leadership at Maui Jim has been aware of SmartBuyGlasses’ supply chain since at least 2011. (Id.) SmartBuyGlasses further alleges it partners with at least one authorized distributor of Maui Jim sunglasses for its online sales. (Id.) Maui Jim never objected to its supply chain or otherwise questioned its authorization to procure Maui Jim sunglasses through its partners. (Id. ¶¶ 19–21.)
Maui Jim brought suit against SmartBuyGlasses on October 17, 2016, asserting claims of trademark counterfeiting and infringement, unfair competition, false advertising, and trademark dilution in violation of the Lanham Act,
SmartBuyGlasses answered the complaint on March 3, 2017 and set forth 13 affirmative defenses. (Defs.’ Answer, Affirmative Defenses, and Counterclaim (Dkt. No. 20).) SmartBuyGlasses also asserted counterclaims for unfair competition in violation of the UDTPA (Count I) and Illinois Consumer Fraud and Deceptive Practices Act (“CFA”),
SmartBuyGlasses does not contest that it sells Maui Jim prescription sunglasses without the genuine Maui Jim prescription lenses. (Id. ¶ 24.) Instead, SmartBuyGlasses asserts that “[e]ach customer purchasing Maui Jim prescription sunglasses from SmartBuyGlasses received 100% genuine Maui Jim frames and the genuine Maui Jim non-prescription lenses that came with the frame,” and the “customers also received prescription lenses fabricated through SmartBuyGlasses by a premium optical laboratory.” (Id.) SmartBuyGlasses alleges customers are expressly advised regarding the lenses before they make their purchase, and its customers “were never promised prescription lenses through Maui Jim.” (Id. ¶ 25.) Instead, SmartBuyGlasses informed customers about its “prescription lens program,” which states that the prescription lenses are made by “premium lens producer Essilor as well as our premium
SmartBuyGlasses alleges it brings its counterclaims “to expose and rectify Maui Jim’s ongoing illegal campaign to stifle competition.” (Counterclaim ¶ 1.) According to SmartBuyGlasses, Maui Jim “seeks to eradicate lawful competition and monopolize control over its worldwide supply chain, allowing it to illegally prop up prices of its eyewear,” calling the instant litigation “integral to such efforts.” (Id. ¶ 2.) SmartBuyGlasses further alleges Maui Jim’s efforts to stifle competition from discount retailers include “the fabrication of baseless intellectual property claims against SmartBuyGlasses coupled with a xenophobic propaganda campaign that disparages SmartBuyGlasses’ business by falsely asserting that they are counterfeiters.” (Id. ¶¶ 2, 28–29.) In furtherance of its efforts, SmartBuyGlasses alleges Maui Jim issued a press release dated January 23, 2017, “in which it publicized false allegations that comprise its complaint, adding false and disparaging commentary from its Vice President of Global Marketing.” (Id. ¶ 34.) Specifically, Maui Jim’s press release included the following statement from Jay Black, Maui Jim Vice President, Global Marketing:
Companies that utilize these types of disingenuous and misleading sales practices undermine the integrity of the Maui Jim brand and the quality and technology it has come to represent . . . . This lawsuit was filed to protect our brand and the inherent value of its earned reputation, as well as our customers and our authorized retailers. We simply cannot allow our brand to be harmed by the sale of counterfeit or non-genuine Maui Jim products that do not live up to our—and most importantly our customers’—expectations.
(Id. ¶ 34; see also Press Release, Mem. in Support of Mot. to Dismiss, Ex. A (Dkt. No. 44–1) at 2–3.) SmartBuyGlasses alleges that as a result of the press release and Maui Jim’s other actions, SmartBuyGlasses has been harmed in the marketplace. (Id. ¶ 35.)
LEGAL STANDARD
We accept “the allegations in the complaint as true unless they are ‘threadbare recitals of a cause of action’s elements, supported by mere conclusory statements.’” Katz-Crank, 843 F.3d 641, 646 (7th Cir. 2016) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)). The pleading must state a claim that is plausible on its face to survive a motion to dismiss. Iqbal, 556 U.S. at 678; Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007); St. John v. Cach, LLC, 822 F.3d 388, 389 (7th Cir. 2016); Sarkis’ Cafe, Inc. v. Sarks in the Park, LLC, 55 F. Supp. 3d 1034, 1038 (N.D. Ill. 2014). “A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at 678. The plausibility standard “is not akin to a ‘probability requirement,’ but it asks for more than a sheer possibility that a defendant has acted unlawfully.” Id. (quoting Twombly, 550 U.S. at 555). That is, while the plaintiff need not plead “detailed factual allegations,”
ANALYSIS
I. UDTPA, CFA, AND TRADE DISPARAGEMENT COUNTERCLAIMS
SmartBuyGlasses alleges that Maui Jim’s complaint and in its January 23, 2017 press release constitute trade disparagement (Count III) and violate the UDTPA (Count I) and the CFA (Count II). (Counterclaim ¶¶ 36–56.) Maui Jim argues the counterclaims must be dismissed because its conduct in filing a lawsuit is absolutely privileged under Illinois law. (Mem. in Support of Mot. to Dismiss (“Mem.”) (Dkt. No. 44) at 5–6, 11.) Maui Jim also asserts SmartBuyGlasses has failed to state a claim upon which relief can be granted. (Id. at 6–10, 11–13.)
The UDTPA states that “[a] person engages in a deceptive trade practice when, in the course of his or her business, vocation, or occupation, the person . . . (7) represents that goods or services are of a particular standard, quality, or grade or that goods are a particular style or model, if they are of another; (8) disparages the goods, services, or business of another by false or misleading representation of fact; . . . or (12) engages in any other conduct which similarly creates a likelihood of confusion or misunderstanding.”
SmartBuyGlasses also alleges Maui Jim violated the CFA. “The Consumer Fraud Act is a regulatory and remedial statute intended to protect consumers, borrowers, and business persons against fraud, unfair methods of competition, and other unfair and deceptive business practices.” Robinson v. Toyota Motor Credit Corp., 201 Ill. 2d 403, 416–17, 775 N.E.2d 951, 960 (Ill. 2002). “To state a claim under the Act, a plaintiff must allege: ‘(1) a deceptive act or practice by the defendant; (2) the defendant’s intent that the plaintiff rely on the deception; and (3) the occurrence of the deception during a course of conduct involving trade or commerce.’” ATC Healthcare Servs., Inc. v. RCM Techs., Inc., 192 F. Supp. 3d 943, 954 (N.D. Ill. 2016) (quoting Robinson, 201 Ill. 2d at 417); Oliveira v. Amoco Oil Co., 201 Ill. 2d 134, 149, 776 N.E.2d 151, 160 (Ill. 2002); Aliano v. Ferriss, 2013 IL App (1st) 120242, ¶ 24, 988 N.E.2d 168, 176. SmartBuyGlasses asserts Maui Jim violated the CFA because it “misled consumers into believing that products purchased directly through Maui Jim were superior to those purchased through SmartBuyGlasses.” (Counterclaim ¶ 44.) In addition, SmartBuyGlasses alleges Maui Jim “fraudulently misrepresented to the public, through its baseless litigation and false press release (among other things), that SmartBuyGlasses was a counterfeiter to induce customers to purchase from Maui Jim directly.” (Id.) It alleges Maui Jim’s “malicious and willful” actions constitute unfair competition and have caused damage. (Id. ¶¶ 45–46.)
A. Absolute Litigation Privilege
Maui Jim first argues SmartBuyGlasses’ trade disparagement, UDTPA, and CFA counterclaims are barred by Illinois’ absolute litigation privilege to the extent they are based on the allegations asserted in Maui Jim’s complaint.3 (Mem. at 5–6, 11; Reply at 2–4.) SmartBuyGlasses responds that the absolute litigation privilege is limited to claims for defamation, false light, and invasion of privacy—none of which are alleged here. (Resp. at 3.)
“In essence, the absolute litigation privilege affords immunity to attorneys (and other participants in the judicial process) from tort liability arising out of statements made in connection with litigation.” Steffes v. Stepan Co., 144 F.3d 1070, 1074 (7th Cir. 1998). Under Illinois law, the only cause of action recognized for the wrongful filing of a lawsuit is one for malicious prosecution or abuse of process. Havoco of Am., Ltd. v. Hollobow, 702 F.2d 643, 647 (7th Cir. 1983); Junction Sols., LLC v. MBS Dev, Inc., No. 06 C 1632, 2007 WL 4234091, at *5 (N.D. Ill. Nov. 20, 2007); PSN Ill., Inc. v. Ivoclar Vivadent, Inc., No. 04 C 7232, 2005 WL 2347209, at *5–6 (N.D. Ill. Sept. 21, 2005). Consequently, “misrepresentations made in the course of prosecuting a meritless lawsuit do not give rise to a cause of action at common law or under the [CFA] or UDTPA because of the litigation privilege, Illinois’s ‘absolute privilege protect[ing] anything said or written in a legal proceeding.’” Shuffle Tech Int’l, LLC v. Sci. Games Corp., No. 15 C 3702, 2015 WL 5934834, at *16 (N.D. Ill. Oct. 12, 2015)
SmartBuyGlasses argues in response that the privilege applies primarily to claims of defamation, false light, and invasion of privacy. See, e.g., Conditioned Ocular, 458 F. Supp. 2d at 708. However, Illinois courts have clarified that the absolute litigation privilege applies outside the context of such claims. Johnson v. Johnson & Bell, Ltd., 2014 IL App (1st) 122677, ¶ 16, 7 N.E.3d 52, 56 (explaining Illinois courts have not “specifically discussed” whether absolute immunity extends to claims other than defamation, but finding “the absolute privilege would be meaningless if a simple recasting of the cause of action could void its effect”). The majority of courts in this District agree. See Rosales v. Weltman, Weinberg & Reis Co., No. 15 C 06943, 2017 WL 1436957, at *5 (N.D. Ill. Apr. 24, 2017) (collecting cases and agreeing “with the majority rule that [an] ICFA claim is barred by the litigation privilege under Illinois law, because the only claims for a wrongful lawsuit are malicious prosecution and abuse of process”). This conclusion is further supported by the policy justifications for immunity. Absolute immunity “is based upon the public interest in according to all . . . the utmost freedom of access to the courts of justice for the settlement of their private disputes.” Restatement (Second) of Torts § 587, cmt. a (1977); see also Lyddon v. Shaw, 56 Ill. App. 3d 815, 821–22, 372 N.E.2d 685, 690 (2d Dist. 1978) (“Free access to the courts as a means of settling private claims or disputes is a fundamental component of our judicial system, and courts should be open to litigants for the settlement of their rights without fear of prosecution for calling upon the courts to determine such rights. . . . This same public interest demands that
B. Connection to Illinois
SmartBuyGlasses’ counterclaims must be dismissed in their entirety for an additional reason. To raise a claim under the UDTPA or CFA, “the circumstances that relate to the disputed transaction [must] occur primarily and substantially in Illinois.” Avery v. State Farm Mut. Auto. Ins. Co., 216 Ill. 2d 100, 187, 835 N.E.2d 801, 854 (Ill. 2005); see also IPOX Schuster, LLC v. Nikko Asset Mgmt. Co., 191 F. Supp. 3d 790, 807 (N.D. Ill. 2016) (“Although the [U]DTPA does not contain text expressly confining its application to events or circumstances arising in Illinois, there is a ‘long-standing rule of construction in Illinois which holds that a ‘statute is without extraterritorial effect unless a clear intent in this respect appears from the express provisions of the statute.’” (quoting Avery, 216 Ill. 2d at 184)); Underground Sols., Inc. v. Palermo, No. 13 C 8407, 2014 WL 4703925, at *10 (N.D. Ill. Sept. 22, 2014) (collecting cases applying the reasoning in Avery to UDTPA claims); LG Elecs. U.S.A., Inc. v. Whirlpool Corp., 809 F. Supp. 2d 857, 859 (N.D. Ill. 2011) (holding the rule stated in Avery applies to the UDTPA as well as to the CFA). There is “no single formula or bright-line test” for determining whether a transaction occurs within Illinois. Avery, 216 Ill. 2d at 187; accord Phillips v. Bally Total Fitness Holding Corp., 372 Ill. App. 3d 53, 58, 865 N.E.2d 310, 315 (1st Dist. 2007). Several factors, however,
At this stage, we look to whether the allegations of the counterclaim are factually sufficient such that one could plausibly conclude that the circumstances that relate to the allegedly fraudulent transaction occurred primarily and substantially in Illinois. Vulcan Golf, LLC v. Google Inc., 552 F. Supp. 2d 752, 775 (N.D. Ill. 2008). First, it is undisputed that none of the SmartBuy entities are residents of Illinois. (Counterclaim ¶¶ 9–12.) Rather, each entity is a foreign business organized and with principal places of business in the Cayman Islands, Hong Kong, or Italy. (Id.) Aside from Illinois being Maui Jim’s principle place of business and the location where this lawsuit was filed—both of which are insufficient alone to establish an Illinois connection—the counterclaim is devoid of allegations connecting Maui Jim’s alleged actions to Illinois. Avery, 216 Ill. 2d at 189 (holding claims of non-Illinois plaintiffs insufficient where the only connection to Illinois is the headquarters of the defendant and the fact that a scheme “was disseminated” from Illinois); Van Tassell v. United Mktg. Grp., LLC, 795 F. Supp. 2d 770, 782 (N.D. Ill. 2011) (dismissing claim where “Illinois is implicated only because [one defendant] is headquartered in Illinois,” despite the fact it was alleged to have carried out its part of the deceptive conduct there); Phillips, 372 Ill. App. 3d at 58 (“The fact that a scheme to defraud was disseminated from a company’s headquarters in Illinois is insufficient.”). Furthermore, a plaintiff’s claims are insufficient to
SmartBuyGlasses nevertheless argues “the misrepresentation was about an Illinois proceeding,” and “it is likely that the press release actually originated from Maui Jim’s corporate headquarters in Illinois.” (Resp. at 9.) However, the press release states it was issued from Maui Jim’s business location in Lahaina, Hawaii, and there are no allegations in the counterclaim establishing any connection between the press release or the complaint and any Illinois transaction. (Press Release at 2.) Where the complaint and press release were drafted may be a relevant factor in determining the location of the transaction, but in this case, on the face of the counterclaim, SmartBuyGlasses has not alleged any such connection to Illinois, and the press release indicates it originated in Hawaii. Avery, 216 Ill. 2d at 187. SmartBuyGlasses’ assertion that it is “likely” the press release originated from Illinois is pure speculation.
Nor does the counterclaim contain allegations permitting a plausible inference that SmartBuyGlasses has suffered any damage in Illinois. (See Counterclaim ¶¶ 35, 41, 46 (alleging broadly that SmartBuyGlasses has been damaged “in the marketplace”).) Likewise, the counterclaim is devoid of allegations indicating SmartBuyGlasses communicated with Maui Jim in Illinois. “Out-of-state plaintiffs ‘have no cognizable cause of action under the Consumer Fraud Act’ where ‘the overwhelming majority of the circumstances’ pertaining to their claims took place outside Illinois.” Phillips, 372 Ill. App. 3d at 58–59. Accordingly, SmartBuyGlasses has not alleged facts that, if true, establish a factual nexus with Illinois as required to entitle it to relief under the UDTPA or CFA. Id.; In re Sears Roebuck, 2005 WL 3077606, at *2. Therefore, Claims I, II, and III are dismissed, without prejudice.
II. TRADEMARK MISUSE COUNTERCLAIMS
In Count VII, SmartBuyGlasses alleges Maui Jim engaged in trademark misuse by asserting “unfounded” and “objectively baseless” claims of trademark infringement “brought in bad faith” against SmartBuyGlasses. (Counterclaim ¶¶ 72–73.) SmartBuyGlasses further alleges Maui Jim’s infringement allegations constitute anti-competitive behavior and attempt to impermissibly broaden its rights in its registered marks. (Id. ¶ 73.) As a result, SmartBuyGlasses argues it is entitled to recover attorney fees and costs pursuant to
In response, Maui Jim contends trademark misuse is not a cognizable affirmative claim. (Mem. at 13.) “Unclean hands, or trademark misuse, is purely an affirmative defense and does not form the basis for an affirmative claim for recovery.” 6 McCarthy on Trademarks and Unfair Competition § 31:44 (5th ed.); see also Arcadia Grp. Brands Ltd. v. Studio Moderna SA, No. 10 C 7790, 2011 WL 3584469, at *4 (N.D. Ill. Aug. 15, 2011) (dismissing a trademark misuse claim because its proponent failed to show it “is a recognized affirmative claim or that such a claim should be recognized in this case”); Nw. Corp. v. Gabriel Mfg. Co., No. 95 C 2004, 1998 WL 525431, at *8 (N.D. Ill. Aug. 19, 1998) (observing the “fragmented case history” concerning trademark misuse claims and concluding it is a “phantom defense” whose existence the court is “reticent to even acknowledge”); Juno Online Servs., L.P. v. Juno Lighting, Inc., 979 F. Supp. 684, 687–91 (N.D. Ill. 1997) (rejecting affirmative claim of trademark misuse as lacking precedent).
In response, SmartBuyGlasses acknowledges there is “conflicting case law” regarding whether trademark misuse may be asserted as an affirmative claim, but it argues we should delay
III. UNJUST ENRICHMENT COUNTERCLAIM
In Claim VIII SmartBuyGlasses alleges a claim of unjust enrichment in the alternative. (Counterclaim ¶¶ 78–81.) SmartBuyGlasses contends “Maui Jim knowingly and intentionally used the trademark and copyright laws for the improper purpose of stifling competition in a relevant market and enriched itself to the detriment of SmartBuyGlasses.” (Id. ¶ 79.) Maui Jim argues the claim should be dismissed because SmartBuyGlasses has failed to state a claim under Illinois law. (Mem. at 16.)
Unjust enrichment is an equitable remedy that is available when no adequate remedy at law exists. Reid v. Unilever U.S., Inc., 964 F. Supp. 2d 893, 922 (N.D. Ill. 2013). Under Illinois law, “[t]o state a cause of action based on a theory of unjust enrichment, a plaintiff must allege that the defendant has unjustly retained a benefit to the plaintiff’s detriment, and that defendant’s retention of the benefit violates the fundamental principles of justice, equity, and good conscience.” Cleary v. Philip Morris Inc., 656 F.3d 511, 516 (7th Cir. 2011) (quoting HPI Health Care Servs., Inc. v. Mt. Vernon Hosp., Inc., 131 Ill. 2d 145, 160,
Maui Jim first argues SmartBuyGlasses’ unjust enrichment claim must be dismissed because it is based in part on the same improper conduct as alleged in counterclaim Counts I, II, III, and IV, which for the reasons stated above, we have dismissed. See Cleary, 656 F.3d at 517 (“So, if an unjust enrichment claim rests on the same improper conduct alleged in another claim, then the unjust enrichment claim will be tied to this related claim—and, of course, unjust enrichment will stand or fall with the related claim.”). However, we agree with SmartBuyGlasses that because we have found the UDTPA, CFA, trademark disparagement, and trademark misuse claims fail for reasons unrelated to the alleged underlying improper conduct—namely, because SmartBuyGlasses failed to allege a sufficient Illinois connection to its claims—we may still assess SmartBuyGlasses’ independent unjust enrichment claim as a standalone claim. (Resp. at 16.)
Maui Jim next argues the counterclaim lacks plausible allegations identifying any benefit Maui Jim has retained to SmartBuyGlasses’ detriment. (Mem. at 16.) Maui Jim also contends that SmartBuyGlasses fails to adequately plead how the retention of any benefit was unjust. (Id.) In response, SmartBuyGlasses contends it has stated a proper claim for unjust enrichment. (Resp. at 16–17.) It contends Maui Jim retained a benefit that was unjust by “illegally prop[ping] up prices of its eyewear” by seeking “to eradicate lawful competition and monopolize control over its worldwide supply chain.” (Counterclaim ¶ 2.) SmartBuyGlasses further argues it identified how that benefit was used to SmartBuyGlasses’ detriment: Maui Jim engaged in a public relations effort that “exploited recent zenophobia by claiming that SmartBuyGlasses was a
While a plaintiff “need not show loss or damages, he must show a detriment—and, significantly, a connection between the detriment and the defendant’s retention of the benefit.” Cleary, 656 F.3d at 518–19. An unjust enrichment claim may lie where the plaintiff seeks an award in the amount of the defendant’s “unjust gain, rather than the plaintiffs’ loss.” Raintree Homes, Inc. v. Vill. of Long Grove, 209 Ill. 2d 248, 258, 807 N.E.2d 439, 445 (Ill. 2004). Taking SmartBuyGlasses’ allegations as true, it has set forth a plausible claim that Maui Jim publicized false allegations and commentary regarding SmartBuyGlasses’ products in a press release, thereby wrongfully disparaging SmartBuyGlasses’ business and falsely asserting it sells counterfeit products. (Counterclaim ¶¶ 2, 29, 34–35.) SmartBuyGlasses alleges it has suffered harm in the marketplace as a result. (Id. ¶ 35.) The counterclaim therefore connects Maui Jim’s unjust benefit (increased prices of its products due to its allegedly anti-competitive and fraudulent conduct) to a detriment to SmartBuyGlasses (disparagement of its products as counterfeit). Cleary, 656 F.3d at 518–20. As a result, SmartBuyGlasses’ allegations in Count VIII are sufficient to survive dismissal at this stage.
IV. DECLARATORY JUDGMENT COUNTERCLAIMS
Finally, SmartBuyGlasses asserts three declaratory judgment claims. (Counterclaim ¶¶ 57–70.) In Count IV, SmartBuyGlasses alleges it is entitled to a declaratory judgment that “any existing or future copyright registrations that issue as a result of any pending applications are invalid.” (Id. ¶ 60.) In Count V, it contends it is entitled to a declaratory judgment that “its use of the images at issue did not infringe any purported copyrights of Maui
“The purposes of declaratory judgments are to ‘clarify[ ] and settl[e] the legal relations at issue’ and to ‘terminate and afford relief from the uncertainty, insecurity, and controversy giving rise to the proceeding.’” Tempco Elec. Heater Corp. v. Omega Eng’g, Inc., 819 F.2d 746, 749 (7th Cir. 1987) (quoting Borchard, Declaratory Judgments 299 (2d ed. 1941)). “It is well settled that the federal courts have discretion to decline to hear a declaratory judgment action, even though it is within their jurisdiction.” Id. at 747. Likewise, courts may strike sua sponte “from a pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.”
The validity of Maui Jim’s copyrights and the issue as to whether SmartBuyGlasses infringed them are already before the court. SmartBuyGlasses’ Count IV, which seeks a declaration of copyright invalidity, seeks the opposite effect of Maui Jim’s complaint and merely restates SmartBuyGlasses’ affirmative defenses: SmartBuyGlasses has denied Maui Jim’s allegations that the subject photographs are original, and it asserts in its Thirteenth Affirmative Defense that “[t]he copyrights at issue are invalid because the images are not sufficiently creative.” (Answer ¶ 58; see also id. at 38.) Likewise, SmartBuyGlasses’ counterclaims seeking declarations of non-infringement based on an alleged license, the fair use and first sale doctrine, and Maui Jim’s acquiescence and authorization are all presently before the court. SmartBuyGlasses denied Maui Jim’s allegations that SmartBuyGlasses did not have a license to
CONCLUSION
For the foregoing reasons, we grant in part and deny in part Maui Jim’s motion to dismiss. We deny Maui Jim’s motion with respect to Count VIII. Maui Jim’s motion to dismiss is granted as to SmartBuyGlasses’ remaining counterclaims. Accordingly, Counts I, II, III are dismissed, without prejudice. In addition, Counts IV, V, and VI are stricken, without prejudice. Count VII is dismissed, with prejudice for failure to state a claim. It is so ordered.
Honorable Marvin E. Aspen
United States District Judge
Dated: January 23, 2018
Chicago, Illinois