ORDER AFFIRMING AND ADOPTING RECOMMENDATION OF THE UNITED STATES MAGISTRATE JUDGE
THIS MATTER is before the Court on Plaintiffs Motion to Dismiss Defendant Smoak’s Counterclaims and to Strike Defendant Smoak’s Affirmative Defenses (ECF No. 50). In his Recommendation, Magistrate Judge Hegarty recommends that the pending motion be granted. (Recommendation at 1). The Recommendation is incorporated herein by reference. See 28 U.S.C. § 636(b)(1)(B), Fed.R.CivJP. 72(b).
Magistrate Judge Hegarty advised the parties that written objections were due within fourteen (14) days after service of a copy of the Recommendation. (Recommendation at 1). Despite this advisement, no objections were filed to the Recommendation. No objections having been filed, I am vested with discretion to review the Recommendation “under any standard [I] deem[] appropriate.” Summers v. Utah,
Having reviewed the Recommendation, I am satisfied that there is no clear error on the face of the record. I find that Magistrate Judge Hegarty’s Recommendation is thorough, well reasoned and sound. I agree with Magistrate Judge Hegarty that the pending motion should be granted and that Defendant’s affirmative defenses at ¶¶ 19, 20, 22, 23, 25, 26, and 30 should be stricken for the reasons stated in both the Recommendation and this Order.
Based on the foregoing, it is
ORDERED that the Recommendation of United States Magistrate Judge Hegarty (ECF No. 55) is AFFIRMED and ADOPTED. In accordance therewith, it is
FURTHER ORDERED that Plaintiffs Motion to Dismiss Defendant Smoak’s Counterclaims and to Strike Defendant Smoak’s Affirmative Defenses (ECF No. 50) is GRANTED. Defendant’s affirmative defenses at ¶¶ 19, 20, 22, 23, 25, 26, and 30 are STRICKEN.
RECOMMENDATION OF UNITED STATES MAGISTRATE JUDGE
Before the Court is Plaintiffs Motion and Memorandum to Dismiss Defendant Smoak’s Counterclaims and to Strike Defendant Smoak’s Affirmative Defenses at
BACKGROUND
Plaintiff initiated this action on May 2, 2013, alleging that multiple Doe Defendants, identified only by their Internet Protocol (“IP”) addresses, infringed on Plaintiffs copyrighted work by using the internet and a “BitTorrent” protocol to reproduce, distribute, display, or perform Plaintiffs protected films. In an effort to identify the alleged infringers, Plaintiff requested permission from the Court to serve limited, immediate discovery on the Doe Defendants’ Internet Service Provider (“ISP”) prior to the Rule 26(f) conference. (Docket # 4.) The Court determined that Plaintiff had shown good cause for limited expedited discovery and granted Plaintiffs Motion in part. (Docket # 11.) In particular, the Court authorized Plaintiff to serve third party subpoenas pursuant to Fed.R.Civ.P. 45 on the identified ISP for the limited purpose of ascertaining the identity of the Doe Defendants as set forth in Plaintiffs Complaint. The Court directed that the subpoenas be limited to providing Plaintiff with the true name, address, telephone number, email address, and Media Access Control address of the Defendants to whom the ISP had assigned an IP address. With each subpoena, the Court directed Plaintiff serve a copy of its order. Finally, the Court emphasized that Plaintiff could only use the information disclosed in response to the subpoenas for the purpose of protecting and enforcing its rights as set forth in its Complaint [docket # 1], The Court cautioned Plaintiff that improper use of this information could result in sanctions.
In accordance with the Court’s order, Plaintiff served a Rule 45 subpoena on Defendant Benito Smoak’s ISP and obtained his identity. Thereafter, Plaintiff filed an Amended Complaint on August 20, 2013. (Docket #21.) Although default was entered against Defendant Smoak on October 17, 2013, he appeared at the October 21, 2013 scheduling conference. Defendant Smoak filed an answer on October 24, 2013 asserting (13) defenses and five (5) counterclaims. (Docket #42.) The default entry against him was withdrawn on November 12, 2013.
In a single motion, Plaintiff moved to dismiss Defendant Smoak’s counterclaims and to strike seven (7) of his affirmative
COUNTERCLAIMS
I. Legal Standard
“To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’ ” Ashcroft v. Iqbal,
Plausibility refers “to the scope of the allegations in a complaint: if they are so general that they encompass a wide swath of conduct, much of it innocent, then the plaintiffs ‘have not nudged their claims across the line from conceivable to plausible.’ ” Khalik v. United Air Lines,
However, “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.” Iqbal,
II. Analysis
Defendant Smoak brings counterclaims against Plaintiff for (1) abuse of process,
A. Abuse of Process
A claim for abuse of process requires proof of three elements: “(1) an ulterior purpose for the use of a judicial proceeding; (2) willful action in the use of that process which is not proper in the regular course of the proceedings, i.e., use of a legal proceeding in an improper manner; and (3) resulting damage.” Hertz v. Luzenac Group,
Defendant Smoak’s abuse of process claim is based upon allegations that Plaintiffs lawsuit “is not to protect copyrighted material, but to embarrass, shame, humiliate and extort individuals, such as Defendant Smoak, into paying money to avoid being publicly associated with the downloading of pornography[.]” (Docket # 42, ¶ 8.) In support of the foregoing conclusory allegation, Defendant Smoak alleges that “Plaintiff delivered a letter to Defendant Smoak that included the disgusting name of its ‘work’ and threatened legal action in an attempt to extort a ‘settlement’ in the amount of $4,000.00.” (Docket # 42, ¶ 11.) A copyright owner may recover an award of statutory damages for an infringement with respect to any one work “a sum of not less than $750 or more than $30,000 as the court considers just.” 17 U.S.C. § 504(c)(1). Thus, a $4,000 settlement offer is well within the statutory damages parameters.
Other courts addressing similar abuse of process claims have found that attempting settlement does not support a claim for abuse of process regardless of the parties’ motivations. See, e.g., Malibu Media, LLC v. Doe 1, No. PJM 12-1195,
Accordingly, the Court recommends dismissal of the abuse of process counterclaim.
Under Colorado law, the elements of a malicious prosecution claim are (1) the defendant contributed to bringing a prior action against the plaintiff; (2) the prior action ended in favor of the plaintiff; (3) no probable cause; (4) malice; and (5) damages. Hewitt v. Rice,
Accordingly, the Court recommends dismissing Defendant Smoak’s malicious prosecution counterclaim.
C. Invasion of Privacy
Defendant Smoak contends that Plaintiffs “sending and posting the letters” invaded his privacy. Defendant Smoak does not indicate the specific form of invasion of privacy claim that he raises. Colorado does not recognize a claim for “false light” invasion of privacy. Denver Publ’g Co. v. Bueno,
Defendant Smoak has failed to plead this claim with specificity, as it remains unclear what fact or facts Plaintiff has disclosed that are private in nature. To the extent he claims his internet subscriber information is private, this Court agrees with those courts finding that internet subscribers do not have an expectation of privacy in the identifying information they conveyed to their ISPs. See AF Holdings, LLC v. Does 1-162, No. 11-23036-Civ,
D.Outrageous Conduct
The elements of liability for the tort of outrageous conduct are that: (1) the defendant engaged in extreme and outrageous conduct; (2) the defendant engaged in the conduct recklessly or with the intent of causing the plaintiff severe emotional distress; and (3) the plaintiff incurred severe emotional distress which was caused by the defendant’s conduct. Culpepper v. Pearl Street Bldg., Inc., 877
Filing a copyright infringement claim and offering to settle for an amount within the statutory damages parameters does not constitute outrageous conduct. See Malibu Media,
Accordingly, the Court recommends dismissal of the outrageous conduct counterclaim.
E. Groundless and Frivolous Lawsuit
Defendant Smoak claims that Plaintiffs lawsuit is groundless, frivolous and substantially vexatious pursuant to Colo.Rev.Stat. § 13-17-101. However, section 13-17-101 governs claims for attorney’s fees, and cannot be brought as a substantive claim. See Philbosian v. First Financial Securities Corp., No.82-K-773,
Defendant Smoak also cites Rule 11 as grounds for relief, but does not specify which, subsection he relies upon. The proper means for seeking relief under Rule 11 is by motion; Rule 11 does not provide for an independent substantive claim.
Accordingly, the Court recommends dismissal of Defendant Smoak’s groundless and frivolous lawsuit counterclaim. If judgment is entered in his favor, he may move for attorney’s fees on this ground if proper.
AFFIRMATIVE DEFENSES
I. Legal Standard
Rule 12(f) permits the Court to “strike from a pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.” “The purpose of Rule 12(f) is to save the time and money that would be spent litigating issues that will not affect the outcome of the ease.” Kimpton Hotel & Restaurant Group, LLC v. Monaco Inn, Inc., No. 07-cv-01514-WDM,
“An affirmative defense is insufficient if, as a matter of law, the defense cannot succeed under any circumstance.” Unger v. U.S. West, Inc.,
II. Analysis
Plaintiff moves to strike seven of Defendant Smoak’s affirmative defenses: (1) unclean hands, (2) failure to mitigate damages, (3) lack of subject matter jurisdiction based on lack of valid copyright registration, (4) Plaintiffs work is not subject to copyright protection because it lacks originality, (5) Plaintiff has sustained no damages, (6) Plaintiff cannot prove that Defendant engaged in the alleged conduct, and (7) the statutory damages are grossly excessive. With the aforementioned legal principles in mind, the Court will consider each of the challenged defenses in turn.
A. First Defense: Unclean Hands
Defendant Smoak’s first defense asserts that Plaintiff “comes to this Court with unclean hands.” (Docket # 42, ¶ 19.)
In copyright actions, the doctrine of unclean hands is only applied “where the wrongful acts ‘in some measure affect the equitable relations between the parties in respect of something brought before the court for adjudication.’ ” Mitchell Bros. Film Grp. v. Cinema Adult Theater,
Defendant Smoak has alleged that Plaintiffs lawsuit “is not to protect copyrighted material, but to embarrass, shame, humiliate and extort individuals, such as Defendant Smoak, into paying money to avoid being publicly associated with the downloading of pornography!.]” (Docket #42, ¶8.) As discussed in the abuse of process section above, the foregoing are conclusory allegations and do not allege any inequitable conduct; an offer to settle for an amount within the statutory damage range and supported on factual grounds is not “conduct involving fraud, deceit, un-conscionability, or bad faith,” as is required for an unclean hands defense. See
Accordingly, the Court recommends striking Defendant Smoak’s first affirmative defense.
B. Second and Seventh Defenses: Failure to Mitigate and No Damages
Defendant Smoak contends that “Plaintiff has failed to mitigate damages, if any,” and that “Plaintiff has sustained no damages.” (Docket # 42, ¶¶ 20, 25.)
Under federal copyright law, “the copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages[.]” 17 U.S.C. § 504(c)(1). In the present motion, Plaintiff elected to pursue statutory damages exclusively. A copyright plaintiffs exclusive pursuit of statutory damages invalidates a failure-to-mitigate defense. See Moothart v. Bell,
C. Fourth, Fifth, and Eighth Defenses: Copyright Validity, Lack of Originality, and Lack of Proof
Defendant Smoak contends that: “Plaintiffs claims may be barred for lack of subject matter jurisdiction due to lack of valid copyright registration or failure to timely do so,” “Plaintiffs ‘work’ is not subject to copyright protection because it lacks originality,” and “Plaintiff cannot prove that Defendant engaged in the alleged conduct.” (Docket #42, ¶¶22, 23, 30.)
To establish a claim of copyright infringement, Plaintiff must prove “(1) ownership of a valid copyright; and (2) copying of constituent elements of the work that are original.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
By its nature, an affirmative defense “does not negate the elements of a plaintiffs claim, but instead precludes liability even if all of the elements of a plaintiffs claim are proven.” Lane v. Page,
Defendant Smoak asserts that “Plaintiffs claims are barred because under the circumstances the statutory damages are grossly excessive.” (Docket # 42, ¶ 30.) The Court finds that the defense is not properly asserted as an “affirmative defense,” which is defined as “[a] defendant’s assertion of facts and arguments that, if true, will defeat the plaintiffs or prosecution’s claim, even if all the allegations in the complaint are true.” Black’s Law Dictionary (9th ed.2009). While Defendant characterizes the defense as barring the Plaintiffs “claims” for statutory damages, Plaintiffs claim is actually for direct copyright infringement, the success of which may result in an “award” of damages. Proof of statutory damages is not an element of a copyright infringement claim. See Feist Publ’ns, Inc.,
Thus, because the defense, as stated, “cannot succeed” in defeating any portion of the Plaintiffs claim for direct infringement, the Court recommends that the District Court strike the twelfth defense.
CONCLUSION
The Court respectfully RECOMMENDS that Plaintiffs Renewed Motion and Memorandum to Dismiss Defendant Smoak’s Counterclaims and to Strike Defendant Smoak’s Affirmative Defenses at ¶¶ 19, 20, 22, 23, 25, 26, and 30 [filed November 1[, 2013; docket # 50] be GRANTED as set forth herein.
Entered and dated at Denver, Colorado, this 9th day of December, 2013.
Notes
. Note, this standard of review is something less than a "clearly erroneous or contrary to law” standard of review, Fed.R.Civ.P. 72(a), which in turn is less than a de novo review, Fed.R.Civ.P. 72(b).
. Be advised that all parties shall have fourteen (14) days after service hereof to serve and file any written objections in order to obtain reconsideration by the District Judge to whom this case is assigned. Fed.R.Civ.P. 72. The party filing objections must specifically identify those findings or recommendations to which the objections are being made. The District Court need not consider frivolous, conclusive or general objections. A party’s failure to file such written, objections to proposed findings and recommendations contained in this report may bar the party from a de novo determination by the District Judge of the proposed findings and recommendations. United States v. Raddatz,