1 2 3 4 5 IN THE UNITED STATES DISTRICT COURT 6 FOR THE NORTHERN DISTRICT OF CALIFORNIA 7 8 WILLIAM B. WESTWOOD, Case No. 22-cv-03374-CRB

9 Plaintiff,

ORDER GRANTING MOTION TO

10 v.

DISMISS COUNTERCLAIMS AND

GRANTING IN PART AND

11 ARMIN BROTT, DENYING IN PART MOTION TO

STRIKE

12 Defendant.

13 Medical illustrator William B. Westwood (“Westwood”) brings this action for 14 copyright infringement against Armin Brott (“Brott”), the editor-in-chief of the blog 15 “Talking About Men’s Health,” for publishing one of Westwood’s illustrations on the 16 blog. See Compl. (dkt. 1). In his answer, Brott brought four counterclaims and pleaded 17 nine affirmative defenses. Westwood brought a motion to dismiss three of Brott’s 18 counterclaims and a motion to strike all but one of Brott’s affirmative defenses. See Mot. 19 (14-1). 20 Finding these matters suitable for disposition without oral argument, see Civil Local 21 Rule 7–1(b), the Court grants Westwood’s motion to dismiss Brott’s counterclaims and 22 grants in part and denies in part his motion to strike Brott’s affirmative defenses. 23 I. BACKGROUND 24 Westwood alleges that he has been a “well-known and highly respected 25 professional medical illustrator” for over 38 years. Compl. ¶ 7. He registered one of his 26 illustrations (the “Subject Image”) with the United States Copyright Office in 2012. Id. ¶ 27 16. He alleges that the Subject Image appeared on the blog “Talking About Men’s 1 published the Subject Image without Westwood’s “license, authorization or consent,” and 2 “profited” from that publication. Compl. ¶¶ 26–35. In August 2021, Westwood’s counsel 3 sent a cease-and-desist letter to Brott, attaching the only known use of the Subject Image 4 on the blog, a post titled “Ask About the Curve – Living With a Curved Erection; 5 Peyronie’s Disease.” Compl. ¶ 36; id. Ex. 3. In June 2022, Westwood filed this action 6 against Brott and Does 1–25, who he claims are additionally responsible for the copyright 7 infringement alleged. Id. ¶ 3. 8 In September 2022, Brott answered the complaint. Brott admitted that he is the 9 Editor-in-Chief of the “Talking About Men’s Health” blog and has been since before 2013. 10 See Answer (dkt. 10) at 11 ¶ 6. He alleges that the “Ask About the Curve” article was 11 posted to the blog “[i]n or about October 2013,” and alleges that it was publicly available 12 on the blog until August 2021, when it was removed at Westwood’s counsel’s request. Id. 13 at 12 ¶ 10; 14 ¶ 22. In his answer, Brott brought four counterclaims and nine affirmative 14 defenses, denying any allegation that Brott “create[d], upload[ed] or post[ed]” the article in 15 question, obtained the Subject Image for the blog, or instructed another person to do so. 16 See, e.g., id. at 3 ¶ 12. Instead, Brott alleges that the blog post, including the illustration, 17 was “provided by one or more trusted third parties.” Id. at 12 ¶ 12. Brott also alleges that, 18 upon receiving the cease-and-desist letter described in the complaint, Brott “immediately 19 complied” with the request to remove the “Ask About the Curve” article, and the Subject 20 Image, from the blog. Id. at 7 ¶ 37; id. at 12 ¶ 15. In February 2022, Brott alleges that 21 Westwood’s counsel provided him a copy of the Certificate of Registration of copyright of 22 the Subject Image, which lists a medical journal, American Family Physician (“AAFP”), 23 as the publication of the Subject Image. Id. at 13 ¶ 16. Brott attaches to his answer an 24 article from AAFP in August 1999 containing the Subject Image. Id. Ex. A. A copyright 25 disclaimer at the bottom of the article states:

26 “This content is owned by the AAFP. A person viewing it online may make one printout of the material and may use that printout 27 for his or her personal, non-commercial reference. This material may not otherwise be downloaded, copied, printed, stored, or later invented, except as authorized in writing by the AAFP.” 1 2 Id. 3 Brott’s nine defenses include: (1) failure to state a claim; (2) non-infringement; (3) 4 statute of limitations; (4) express or implied license; (5) lack of standing; (6) failure to add 5 an indispensable party; (7) laches; (8) fair use; and (9) innocent infringement. Id. at 9–10. 6 His four counterclaims include: (1) non-infringement; (2) statute of limitations; (3) 7 innocent infringement; and (4) implied license. Id. at 14–18. 8 II. LEGAL STANDARD 9 A. Motion to Dismiss1 10 Pursuant to Federal Rule of Civil Procedure 12(b)(6), a claim for relief may be 11 dismissed for failure to state a claim upon which relief may be granted. Dismissal may be 12 based on either “the lack of a cognizable legal theory or the absence of sufficient facts 13 alleged under a cognizable legal theory.” Godecke v. Kinetic Concepts, Inc., 937 F.3d 14 1201, 1208 (9th Cir. 2019). A pleading must allege “enough facts to state a claim to relief 15 that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 697 (2009) (citing Bell 16 Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim is plausible “when [a 17 party] pleads factual content that allows the court to draw the reasonable inference that the 18 [adverse party] is liable for the misconduct alleged.” Id. When evaluating a motion to 19 dismiss, the Court “must presume all factual allegations of the [claim for relief] to be true 20 and draw all reasonable inferences in favor of the nonmoving party.” Usher v. City of Los 21 Angeles, 828 F.2d 556, 561 (9th Cir. 1987). 22 If a court grants a motion to dismiss for failure to state a claim, it should “freely 23 give leave [to amend] when justice so requires.” Fed. R. Civ. P. 15(a)(2). A court 24 25 1 As an initial matter, it is unclear whether Westwood seeks to strike Brott’s counterclaims under Rule 12(f) or dismiss them under Rule 12(b)(6). See Notice of Mot. (dkt. 14) at 2 (“Plaintiff 26 moves to strike [counterclaims] 2, 3, and 4 on the grounds that they fail to state a claim for which relief may be granted . . . .”). Because a motion to strike is an improper tool to seek dismissal of a 27 counterclaim, the Court construes Westwood’s motion as a motion to dismiss Brott’s counterclaims and a motion to strike Brott’s defenses. See Federal Practice & Procedure § 1380; 1 nevertheless has discretion to deny leave to amend due to “undue delay, bad faith or 2 dilatory motive on the part of the movant, repeated failure to cure deficiencies by 3 amendments previously allowed, undue prejudice to the opposing party by virtue of 4 allowance of the amendment, [and] futility of amendment.” Leadsinger, Inc. v. BMG 5 Music Pub., 512 F.3d 522, 532 (9th Cir. 2008) (citing Foman v. Davis, 371 U.S. 178, 182 6 (1962)). 7 B. Motion to Strike 8 Federal Rule of Civil Procedure 12(f) permits a court to “strike from a pleading an 9 insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.” A 10 defense may be insufficient as a matter of pleading or a matter of law. Security People, 11 Inc. v. Classic Woodworking, LLC, 04-cv-3133, 2005 WL 645592, at *2 (N.D. Cal. Mar. 12 4, 2005). The Ninth Circuit has long held that “[t]he key to determining the sufficiency of 13 pleading an affirmative defense is whether it gives plaintiff fair notice of the defense.” 14 Wyshak v. City Nat’l Bank, 607 F.2d 824, 827 (9th Cir. 1979). However, the Ninth 15 Circuit has not directly addressed whether the heightened pleading standard laid out in 16 Twombly and Iqbal applies to affirmative defenses. In Ramirez v. Ghilotti Bros. Inc., this 17 Court considered the question and held that “affirmative defenses must contain sufficient 18 factual matter to state a defense that is ‘plausible on its face.’” 941 F. Supp. 2d 1197, 1204 19 (N.D. Cal. 2013). For the reasons given in that opinion, the Court applies that heightened 20 pleading standard to Brott’s affirmative defenses in this case. Id. 21 A court may also strike matter in an answer that is immaterial or impertinent. Fed. 22 R. Civ. P. 12(f). Immaterial matter is “that which has no essential or important 23 relationship to the claim for relief or the defenses being pleaded.” Fantasy, Inc. v. Fogerty, 24 984 F.2d 1524, 1527 (9th Cir. 1993) (internal quotation marks and citation omitted), rev’d 25 on other grounds, 510 U.S. 517 (1994). Impertinent matter does not pertain, and is not 26 necessary, to the issues in question. Id. 27 Where a court strikes an affirmative defense, leave to amend should be freely given 1 Foman, 371 U.S. at 182). 2 III. DISCUSSION 3 The Court first addresses Westwood’s motion to dismiss three of Brott’s four 4 counterclaims: (1) statute of limitations; (2) innocent infringement; and (3) implied 5 license.2 The Court then addresses Westwood’s motion to strike eight of Brott’s asserted 6 defenses: (1) failure to state a claim; (2) non-infringement; (3) express or implied license; 7 (4) lack of standing; (5) failure to add an indispensable party;3 (6) laches; (7) fair use; and 8 (8) innocent infringement.4 9 A. Motion to Dismiss Counterclaims 10 Westwood argues that Brott’s counterclaims must be dismissed for three reasons: 11 (1) “they are redundant of the affirmative defenses pleaded;” (2) “they are not viable as 12 affirmative defenses as pleaded;” and (3) the counterclaim for implied license fails to 13 allege privity between the copyright owner and accused infringer. Mot. at 2.5 14 The Court agrees that these counterclaims are redundant of Brott’s affirmative 15 defenses as pleaded and grants Westwood’s motion to dismiss Brott’s counterclaims with 16 leave to amend. 17 1. Statute of Limitations 18 Westwood’s argument for dismissal of Brott’s counterclaim for statute of 19 limitations is thin. Unlike the other counterclaims, where Westwood also argues that their 20 affirmative defense counterparts should be dismissed because “they are not viable as 21 affirmative defenses as pleaded,” Westwood does not move to strike Brott’s statute of 22 23 2 Westwood does not move to dismiss Brott’s first counterclaim for non-infringement. Mot. at 1. 3 It is unclear whether Westwood intends to move to strike the defense of failure to join an 24 indispensable party. Compare Mot. at 6–7 with Mot. at 11. Because Westwood makes a substantive argument that that defense should be stricken, the Court addresses that argument in 25 this order. 4 Westwood does not move to strike Brott’s statute of limitations defense. 26 5 Brott argues that Westwood has failed to argue that Brott’s counterclaims should be dismissed because he “provides no support, factual or legal,” for that proposition. Opp’n (dkt. 18) at 3. 27 While confusingly drafted, Westwood argues that Brott’s counterclaims must be dismissed because they are and, in the alternative, they must be dismissed for the same reasons as the 1 limitations defense. Mot. at 2. He thus does not give any substantive reason for 2 dismissing the statute of limitations counterclaim, other than the fact that it is “redundant 3 of the affirmative defense[] pleaded.” Id. 4 A court has discretion to dismiss a counterclaim if it is duplicative of a denial of 5 liability or an affirmative defense. See Malibu Media, LLC v. Doe, 15-cv-4441, 2016 WL 6 3383758, at *2 (N.D. Cal. June 20, 2016). However, it need not do so just because they 7 “concern the same subject matter or arise from the same transaction as the complaint.” 8 Castaline v. Aaron Mueller Arts, 09-cv-02543, 2010 WL 583944, at *2 (N.D. Cal. Feb. 16, 9 2010) (quoting Stickrath v. Globalstar, Inc., 07-cv-1941, 2008 WL 2050990, at *2 (N.D. 10 Cal. May 13, 2008)). Courts instead assess whether “the counterclaims ‘serve any useful 11 purpose.’” Id. (quoting Stickrath, 2008 WL 2050990, at *2). 12 The Court does not find that Brott’s statute of limitations counterclaim serves a 13 useful purpose as pleaded. First, statute of limitations counterclaims in the copyright 14 infringement context seem to be rare; neither party has submitted a case where such a 15 counterclaim has been brought and tested on a motion to strike, and the Court finds only 16 one. See Pearson Education, Inc. v. Hotfile Corp., 14-cv-20200, 2015 WL 11216708 (S.D. 17 Fla. Jan. 27, 2015). This is for good reason: Were Westwood’s claims and Brott’s 18 affirmative defenses litigated, they would “decide the factual and substantive issues 19 presented by” this counterclaim. Pearson, 2015 WL 11216708, at *3. Should Westwood 20 decide to dismiss his claim, a counterclaim for statute of limitations would not present an 21 actual controversy, id., and in any case, Brott’s counterclaim for non-infringement would 22 remain to allow the parties to adjudicate any issues regarding attorneys’ fees. Malibu 23 Media, LLC, 2016 WL 3383758, at *2; see also 17 U.S.C. § 505. Even in such a scenario, 24 a statute of limitations counterclaim would serve no useful purpose. Brott’s second 25 counterclaim is dismissed. 26 2. Innocent Infringement 27 Westwood argues both that (1) Brott’s counterclaim for innocent infringement is 1 Mot. at 2, 5; Reply (dkt. 19) at 3. 2 Like the statute of limitations counterclaim, the innocent infringement 3 counterclaim, standing alone, also serves no useful purpose. Whether copyright 4 infringement was committed “willfully” is a question of damages, not liability. See 17 5 U.S.C. § 504(c)(2). Indeed, the applicability of this counterclaim relies on a prior finding 6 of copyright infringement. See Answer at 16 ¶ 46 (“Brott therefore requests a declaration 7 and finding that to the extent infringement is found, it was innocent.”). Thus, should 8 Westwood’s claim for copyright infringement be dismissed, a remaining counterclaim of 9 innocent infringement—essentially a defense to an increased statutory damages award for 10 a claim that was never proven—would be superfluous. Thus, Brott’s third counterclaim is 11 dismissed.6 12 3. Implied License 13 Finally, Westwood argues both that (1) Brott’s counterclaim for implied license is 14 (1) “redundant of the affirmative defense[] pleaded,” and (2) that it is not a “viable” claim, 15 including because it fails to allege privity between the copyright owner and the accused 16 infringer. Mot. at 2. 17 Like both counterclaims considered before it, the implied license counterclaim 18 alone serves no useful purpose. Like the statute of limitations counterclaim, it is a defense 19 to non-infringement, and is only viable in this case as a defense to Westwood’s copyright 20 infringement claim. See Answer at 16 ¶ 52. Should Westwood dismiss his claim, a 21 counterclaim for implied license would not present an actual controversy. Cf. Pearson, 22 2015 WL 11216708, at *3. Thus, Brott’s fourth counterclaim is dismissed.7 23 Westwood’s motion to dismiss Brott’s statute of limitations, innocent infringement, 24 and implied license counterclaims is granted. The Court grants Brott leave to amend his 25 26 6 Because the Court need not decide the viability of Brott’s affirmative defense of innocent infringement to resolve this issue, the Court decides that issue further in this order as it addresses 27 Westwood’s motion to strike. See infra Section B.2.e. 7 Because the Court need not assess the viability of Brott’s affirmative defense of “implied or 1 answer to plead or replead any counterclaims that serve a useful purpose to this litigation. 2 See J & J Sports Prods. v. Coyne, 10-cv-4206, 2011 WL 227670, at *1 (N.D. Cal. Jan. 24, 3 2011). 4 B. Motion to Strike Affirmative Defenses 5 Westwood argues that the following defenses should be stricken as “redundant, 6 immaterial, impertinent, or scandalous matter”: (1) failure to state a claim upon which 7 relief can be granted, Answer ¶ 50; (2) non-infringement, id. ¶ 51; (3) express or implied 8 license, id. ¶ 53; (4) lack of standing, id. ¶ 54; (5) failure to join an indispensable party, id. 9 ¶ 55; (6) laches, id. ¶ 56; (7) fair use, id. ¶ 57; and (8) innocent infringement, id. ¶ 58. 10 The Court first considers whether Brott’s three non-affirmative defenses (failure to 11 state a claim, non-infringement, and lack of standing) should be stricken. It then considers 12 whether Brott’s five affirmative defenses (express or implied license, failure to join an 13 indispensable party, laches, fair use, and innocent infringement) should also be stricken. 14 1. “General” Defenses 15 Westwood argues that a number of Brott’s defenses are not affirmative defenses and 16 should thus be stricken.8 Brott argues that these defenses are not labelled “affirmative” 17 defenses at all, and that four them are in fact “general” defenses, and thus Westwood’s 18 argument fails. Opp’n (dkt. 18) at 5. This includes (1) failure to state a claim; (2) non- 19 infringement, and (3) lack of standing.9 Id. But that is precisely why defenses like these 20 are properly stricken: They are immaterial when included in a pleading, because they are 21 22 8 Westwood seems to argue that four of Brott’s defenses are not affirmative defenses: (1) failure to state a claim; (2) non-infringement; (3) lack of standing; and (4) innocent infringement. The Court 23 agrees as to all but one: Courts regularly address innocent infringement as an affirmative defense to statutory damages under 17 U.S.C. 504(c)(2). See id. (“In a case where the infringer sustains 24 the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright . . .”); see also, e.g., Fathers & 25 Daughters Nevada, LLC v. Moaliitele, No. 3:16-CV-926-SI, 2016 WL 7638187, at *3–4 (D. Or. Dec. 19, 2016) (addressing innocent infringement as an affirmative defense to damages for 26 copyright infringement). Thus, the Court addresses Brott’s innocent infringement affirmative defense in the next section. See infra Section B.2.e. 27 9 Brott also argues that his “express or implied license” defense is not an affirmative defense. Opp’n at 5. The Court does not agree. See Fed. R. Civ. P. 8(c)(1) (listing “license” as an 1 Westwood’s burden to prove at trial, not Brott’s. See, e.g., Hernandez v. Dutch Goose, 2 Inc., No. C 13-03537 LB, 2013 WL 5781476, at *7 (N.D. Cal. Oct. 25, 2013) (striking 3 failure to state a claim and lack of standing because they are not affirmative defenses); 4 Roland Corp. v. Inmusicbrands, Inc., No. 216CV06256CBMAJWX, 2017 WL 513924, at 5 *2 (C.D. Cal. Jan. 26, 2017) (striking defense of non-infringement because it is not an 6 affirmative defense). Brott is free to assert these defenses in a future motion or at trial. 7 See, e.g., Dutch Goose, 2013 WL 5781476, at *7.10 8 These three defenses (failure to state a claim, non-infringement, and lack of 9 standing) are thus stricken. 10 2. Affirmative Defenses 11 Westwood challenges an additional five affirmative defenses: (1) express or implied 12 license; (2) failure to join an indispensable party; (3) laches; (4) fair use; and (5) innocent 13 infringement. 14 a. License 15 Westwood argues that Brott has failed to plead that his use was subject to an 16 express or implied license, because he has failed to allege privity between the copyright 17 owner and the infringer. Mot. at 2. Brott’s allegations of license rely on a copyright 18 disclaimer at the bottom of the AAFP article displaying the Subject Image, which states 19 that “[a] person viewing it online may make one printout of the material and may use that 20 printout only for his or her personal, non-commercial reference.” Answer Ex. 1. To the 21 extent that Brott pleads an express or implied license to use the Subject Image on his blog 22 based on the language in the AAFP disclaimer, that defense is implausible; on the face of 23 Brott’s pleading, the blog post cannot be said to be a “printout” for “personal, non- 24 commercial reference.” Id.; see also id. at 17 ¶ 52 (“[T]he asserted illustration was 25

26 10 Brott argues that he is “required to state” these non-affirmative defenses in his answer, citing 27 Federal Rule of Civil Procedure 12(b): “Every defense to a claim for relief in any pleading must be asserted in the responsive pleading if one is required.” Fed. R. Civ. P. 12(b). But these defenses 1 available online through one or more parties who had the apparent authority to permit use 2 of the illustration for an informational article regarding Peyronie’s disease.”). To the 3 extent that Brott pleads that such a license was provided by Westwood or AAFP to Brott or 4 his “trusted source” through means other than the disclaimer, Brott pleads no facts that 5 render such a license plausible. Thus, Westwood’s motion to strike Brott’s license defense 6 is granted. 7 b. Failure to Join an Indispensable Party 8 Westwood argues that Brott has “fail[ed] to allege the purportedly indispensable 9 party” subject to this defense, and so it must be stricken. But Brott has alleged at least one 10 party that may be determined to be indispensable: AAFP, where Brott alleges the work 11 was published, and is listed as the “larger work” in Westwood’s certificate of registration 12 of the copyright. Answer at 13 ¶¶ 16–19; Compl. Ex. 2. Brott alleges that the copyright 13 disclaimer at the bottom of the larger work, which indicates that the material may not be 14 reproduced “except as authorized in writing by the AAFP,” lends support to Brott’s 15 allegation that some sort of licensing agreement exists between Westwood and AAFP with 16 respect to the Subject Image. Answer Ex. 1. This factual allegation suffices to plausibly 17 plead that Westwood has failed to join an indispensable party at this stage in the litigation. 18 As a result, the Court denies Westwood’s motion to strike this affirmative defense. 19 c. Laches 20 Westwood argues that Brott has failed to plead laches because he has not alleged 21 any facts going to prejudice, a required element of a laches defense. Mot. at 7 n.3 (citing 22 Grand Canyon Trust v. Tucson Elec. Power Co., 391 F.3d 979, 988 (9th Cir. 2004)). Brott 23 argues that he has pleaded the defense because (1) he has pleaded Westwood’s failure to 24 bring this action in a timely manner, and (2) he “now faces discovery that presumptively 25 covers events over the past 9 years.” Opp’n at 8–10. But though Brott has explained the 26 prejudice to him in his opposition, he has failed to plead it in his answer. See id. at 10. 27 Brott’s laches defense must therefore be stricken. See, e.g., 578539 B.C., Ltd. v. Kortz, 14- 1 defense where a factual basis is offered in the opposition but not in the pleading itself). 2 d. Fair Use 3 Westwood argues that Brott has failed to plausibly plead a fair use defense because 4 the blog appears to Westwood to be a for-profit enterprise, incompatible with the first fair- 5 use factor, which asks whether the infringing use “is for nonprofit educational purposes.” 6 Mot. at 8–10 (quoting 17 U.S.C. § 107). Whether the “Talking About Men’s Health” blog 7 is a predominantly for-profit or non-profit enterprise, and whether the article in question is 8 “an informational article designed to educate others,” or a commercial endeavor, Answer 9 at 10 ¶ 57, are precisely the sorts of factual issues best left for summary judgment. 10 Westwood’s motion to strike Brott’s fair use defense is denied. 11 e. Innocent Infringement 12 Westwood argues that innocent infringement is not an affirmative defense, and thus 13 it must be stricken from Brott’s answer. Mot. at 5. The Court does not agree. See supra 14 note 8. In his reply, Westwood further argues that, even if innocent infringement is an 15 affirmative defense, the defendant must show that he was “not aware and had no reason to 16 believe that his . . . acts constituted an infringement of copyright,” and because he 17 “accessed works that had copyright notices,” he could not plead innocent infringement. 18 Reply at 3 (quoting 17 U.S.C. § 504(c)(2)). Ordinarily, arguments raised for the first time 19 in a reply brief are waived. See, e.g., Wildridge v. Marshall, 09-cv-2236, 2014 WL 20 1217974, at *3 n.4 (N.D. Cal. Mar. 21, 2014) (citing Cedano-Viera v. Ashcroft, 324 F.3d 21 1062, 1066 n.5 (9th Cir. 2003)). But even if the Court were to consider Westwood’s 22 argument, it fails at this juncture: Brott has pleaded that he did not himself write the article 23 nor supply the illustration, and in fact relied on a “trusted source,” to do so. Answer at 16 24 ¶ 43–45. Whether this establishes whether any infringement (Brott’s or otherwise) is 25 innocent is a factual question inappropriate to resolve on a motion to strike. The Court 26 thus denies Westwood’s motion to strike Brott’s innocent infringement defense. 27 In sum, the Court grants Westwood’s motion to strike Brott’s license and laches 1 || may amend his answer to plausibly plead the defenses stricken in this order. 2 || IV. CONCLUSION 3 For the foregoing reasons, the Court grants Westwood’s motion to dismiss Brott’s 4 || counterclaims and grants in part and denies in part his motion to strike Brott’s affirmative 5 || defenses. Brott may file an amended answer within 21 days of this order. 6 IT IS SO ORDERED. 7 Dated: December 5, 2022

CHARLES R. BREYER

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