United States District Court, D. Arizona
A. Teilborg, Senior United States District Judge.
before the Court is Plaintiff BBK Tobacco & Foods LLP
(“BBK”) Motion to Strike Defendant Vatra,
Inc.'s (“Vatra”) Affirmative Defenses. (Doc.
67). Vatra has responded, (Doc. 76), and BBK has replied,
(Doc. 87). The Court now rules on the motion.
uses the Skunk and Skunk Brand names to identify various
smoking-related accessories. (Doc. 46 at 2). BBK filed a
complaint in this Court against Defendants Skunk, Inc. and
Vatra alleging in pertinent part: (1) federal trademark
infringement; (2) federal false designation of origin and
representation; (3) trademark infringement under Arizona
common law; and (4) unfair competition under Arizona common
law. (Doc. 49 at 10-26). Vatra's answer pleaded five
affirmative defenses in response. (Doc. 55 at 35-42). BBK now
moves to strike all five affirmative defenses. (Doc. 67).
to strike are governed by Federal Rule of Civil Procedure
(“Rule”) 12(f). Under Rule 12(f), the Court has
discretion to “strike from a pleading an insufficient
defense, ” Fed.R.Civ.P. 12(f), such as those that are
not, in fact, affirmative defenses, see Craten v. Foster
Poultry Farms Inc., No. CV-15-02587-PHX-DLR, 2016 WL
3457899, at *3 (D. Ariz. June 24, 2016), or those that are
insufficiently pleaded, Verco Decking, Inc. v. Consol.
Sys., Inc., No. CV-11-2516-PHX-GMS, 2013 WL 6844106, at
*4 (D. Ariz. Dec. 23, 2013). Because “the only pleading
requirement for an affirmative defense . . . is that ‘a
party must affirmatively state' it, ” id.
at *5 (quoting Fed.R.Civ.P. 8(c)(1)), “[t]he key to
determining the sufficiency of pleading an affirmative
defense is whether it gives plaintiff fair notice of the
defense, ” Wyshak v. City Nat'l Bank, 607
F.2d 824, 827 (9th Cir. 1979). Thus, contrary to BBK's
position, courts in this district have consistently declined
to apply the heightened “plausibility” standard
coined in Twombly and Iqbal to affirmative
defenses. See Craten, 2016 WL 3457899, at *3
addition, given the generally “limited importance of
pleading in federal practice, ” motions to strike are
disfavored because they seek a drastic remedy and are often
used as a delaying tactic. XY Skin Care & Cosmetics,
LLC v. Hugo Boss USA, Inc., No. CV-08-1467-PHX-ROS, 2009
WL 2382998, at *1 (D. Ariz. Aug. 4, 2009) (quoting Mag
Instrument, Inc. v. JS Prods., Inc., 595 F.Supp.2d 1102,
1106 (C.D. Cal. 2008)). As such, even when a motion to strike
an insufficient defense is “technically appropriate and
well-founded, Rule12(f) motions often are not granted in the
absence of a showing of prejudice to the moving party.”
5C Charles A. Wright & Arthur R. Miller, Federal
Practice and Procedure § 1381 n.34 (3d ed. 2019)
(collecting cases); see also J & J Sports Prods.,
Inc. v. Vargas, No. CV 11-2229-PHX-JAT, 2012 WL 2919681,
at *1 (D. Ariz. July 17, 2012); XY Skin Care &
Cosmetics, 2009 WL 2382998, at *1. Prejudice can be
found “where superfluous pleadings may confuse the
jury, or where a party may be required to engage in
burdensome discovery around frivolous matters.”
Harris v. Chipotle Mexican Grill, Inc., 303 F.R.D.
625, 628 (E.D. Cal. 2014) (quoting J & J Sports
Prods., Inc. v. Luhn, Civ No. 2:10-3229 JAM CKD, 2011 WL
5040709, at *1 (E.D. Cal. Oct. 24, 2011)).
First Affirmative Defense
First Affirmative Defense contends that BBK's action is
barred by the doctrine of unclean hands because U.S.
Registration No. 2, 434, 666 (“Reg. No.
‘666”) was fraudulently procured, and BBK
deceptively included the federal registration symbol on goods
that it possessed no registration for. (Doc. 55 at 35). BBK
contends this is not a proper affirmative defense because
Vatra can still be liable for infringement even if BBK's
registrations are invalid. (Doc. 67 at 5). Vatra responds
that: (1) its answer fully provides BBK with fair notice; (2)
BBK fails to identify how the presence of this defense in the
answer causes it prejudice; and (3) BBK's contention
misstates the law. (Doc. 76 at 6).
it is generally true that affirmative defenses preclude
liability despite the truth of a plaintiff's allegations,
see G & G Closed Circuit Events, LLC v. Nguyen,
No. 10-CV-00168-LHK, 2010 WL 3749284, at *5 (N.D. Cal. Sept.
23, 2010), even if BBK is correct that the First Affirmative
Defense would not achieve this end,  it fails to show how the
presence of the defense in Vatra's answer causes it
prejudice. In its reply brief, BBK raises a global objection
that “if the [C]ourt were to permit legally
unsustainable defenses to survive, [BBK] would be required to
conduct expensive and potentially unnecessary
discovery.” (Doc. 87 at 3). Yet BBK does not even
attempt to explain why Vatra's allegations that BBK
deceptively misused the federal registration symbol or
fraudulently procured Reg. No. ‘666, “could have
‘no possible bearing on the subject matter of the
litigation.'” J & J Sports Prods.,
2012 WL 2919681, at *1 (quoting Rosales v. Citibank, Fed.
Sav. Bank, 133 F.Supp.2d 1177, 1180 (N.D. Cal. 2001)).
Indeed, far from raising frivolous matters, the allegations
of Vatra's First Affirmative Defense may “provide
additional context . . . [or] useful background information
relevant” to the various claims involved in this case,
particularly Skunk's counterclaims based on fraud.
See Martinez v. County of Sonoma, No.
15-cv-01953-JST, 2016 WL 39753, at *6 (N.D. Cal. Jan. 4,
2016). The Court also finds unpersuasive BBK's general
contention that discovery would be unduly burdensome. As the
Court recently reminded the parties, a party propounding an
overly burdensome discovery request may be required to bear
the costs of its request.
the Court will deny BBK's motion as to Vatra's First
Second Affirmative Defense
Second Affirmative Defense alleges that BBK's action is
barred by the doctrines of “laches, estoppel, waiver,
and/or acquiescence.” (Doc. 55 at 37). BBK argues that
the Court must strike this affirmative defense because Vatra
failed to allege facts sufficient to state a plausible
defense. (Doc. 67 at 6). In its response, Vatra quarrels with
BBK's use of ...