Amini Innovation Corp. v. Mcferran Home Furnishings, Inc., CV 14-2464 RSWL (SSx)

Decision Date09 June 2014
Docket NumberCV 14-2464 RSWL (SSx)
CourtU.S. District Court — Central District of California
PartiesAMINI INNOVATION CORPORATION Plaintiff, v. MCFERRAN HOME FURNISHINGS, INC., a California corporation; SHARON LIN, an individual; and DOES 1-9, inclusive, Defendants.
ORDER RE: DEFENDANTS'
MOTION TO STRIKE [20]

Currently before the Court is Defendants McFerran Home Furnishings ("McFerran") and Sharon Lin's (collectively, "Defendants") Motion to Strike the Complaint of Plaintiff [20] filed May 30, 2014. Plaintiff Amini Innovation Corporation ("Plaintiff") filed an Opposition on June 17, 2014 [24] and Defendants filed a Reply on June 25, 2014 [25]. Havingreviewed all papers and arguments submitted pertaining to this Motion, the Court NOW FINDS AND RULES AS FOLLOWS:

The Court hereby DENIES in part and GRANTS in part Defendants' Motion to Strike.

I. BACKGROUND

Plaintiff is a California corporation with its principal place of business in Pico Rivera, California. Compl. ¶ 1. Defendant McFerran is a California corporation with its principal place of business in Chino, California. Id. at ¶ 2. Defendant Lin is a California resident and the owner and an officer or director of Defendant McFerran. Id. at ¶ 3.

Plaintiff is a well-known furniture designer and manufacturer located in Los Angeles County. Id. at ¶ 9. Plaintiff has advertised its furniture through various outlets, including the furniture industry's flagship publication, Furniture Today, an extensive website, a strong social media presence, brochure dissemination, and displays at trade shows. Id.

One of Plaintiff's products is its "Chateau Beauvais" bedroom collection, which includes furniture designs that consist of ornamental details and an overall shape and appearance originating with Plaintiff. Id. at ¶ 10. Plaintiff was awarded U.S. Copyright Registration Nos. VA 1-687-895, VA 1-707-601, and VA 1-687-890 for ornamental designs on various items in its Chateau Beauvais collection. Id. at ¶¶12-14. Plaintiff was also awarded U.S. Design Patent Nos. D605,873 (the "‘873 Patent") and D610,812 (the "‘812 Patent") for items in its Chateau Beauvais collection. Id. at ¶¶ 16-17.

Plaintiff alleges that in early 2014, it learned that Defendant McFerran was publicly displaying and offering for sale knockoffs of items in Plaintiff's Chateau Beauvais bedroom collection. Id. at ¶ 18. More specifically, Plaintiff alleges that Defendant McFerran's B1600 and B1601 dresser, mirror, and nightstand and its B3600 mirror infringe on Plaintiff's intellectual property. Id. at ¶ 19.

Plaintiff contends that Defendant McFerran's infringements are willful (id. at ¶ 20), primarily because Plaintiff has previously sued both Defendants and another company, Greengrass Home Furnishings ("Greengrass"), at which Defendant Lin was an officer at the time (id. at ¶¶ 21-25). Both matters were settled, with permanent injunctions entered into by Defendants and Greengrass for the respective cases. Id. at ¶¶ 22-25. Plaintiff also has another pending Action, Case No. CV 13-6496 RSWL (SSx), in this Court against Defendants. Id. at ¶ 26. Plaintiff also claims that Defendant McFerran was sued for copyright infringement in another case in December 2007, Case No. CV 07-7919. Id. at ¶ 28.

Accordingly, Plaintiff brings claims for copyright infringement and design patent infringement againstDefendants. Id. at ¶¶ 33-52.

Plaintiff filed its Complaint in this Court on April 1, 2014 [1]. Previously, Plaintiff had filed another case, Amini Innovation Corp. v. McFerran Home Furnishings, Inc., No. CV 13-6496 RSWL (SSx), against Defendants, resulting in a transfer to Judge Lew [11].

II. LEGAL STANDARD

A. Motion to Strike

Under Federal Rule of Civil Procedure 12(f), the Court may, by motion or on its own initiative, strike "an insufficient defense or any redundant, immaterial, impertinent or scandalous" matters from the pleadings. The purpose of Rule 12(f) is "to avoid the expenditure of time and money that must arise from litigating spurious issues by disposing of those issues prior to trial." Whittlestone, Inc. v. Handi-Craft Co., 618 F.3d 970, 973 (9th Cir. 2010) (quoting Fantasy, Inc. v. Fogerty, 984 F.2d 1524, 1527 (9th Cir. 1993)).

The grounds for a motion to strike must appear on the face of the pleading under attack. See SEC v. Sands, 902 F. Supp. 1149, 1165 (C.D. Cal. 1995). In addition, the Court must view the pleading under attack in the light more favorable to the pleader when ruling upon a motion to strike. In re 2TheMart.com, Inc. Sec. Litig, 114 F. Supp. 2d 955, 965 (C.D. Cal. 2000) (citing California v. United States , 512 F. Supp. 36, 39 (N.D. Cal. 1981)). As a rule, motions to strike are regarded with disfavor because striking is such adrastic remedy; as a result, such motions are infrequently granted. Freeman v. ABC Legal Servs., Inc., 877 F. Supp. 2d 919, 923 (N.D. Cal. 2012). If a claim is stricken, leave to amend should be freely given when doing so would not cause prejudice to the opposing party. Vogel v. Huntington Oaks Delaware Partners, LLC, 291 F.R.D. 438, 440 (C.D. Cal. 2013) (citing Wyshak v. City Nat'l Bank, 607 F.2d 824, 826 (9th Cir. 1979)).

III. DISCUSSION

Defendants seek to strike ten paragraphs, paragraphs 21-29 and 32, from Plaintiff's Complaint and to strike Plaintiff's incorporation of paragraphs and exhibits from its complaint in another case involving the same Parties, Case No. CV 13-6496 RSWL (SSx). Mot. 2:17-4:2. These paragraphs, generally, reference prior litigation involving Plaintiff enforcing its intellectual property rights against Defendants or companies affiliated with Defendant Lin. See Compl. ¶¶ 21-28. The referenced paragraphs and exhibits relate to Defendants' alleged infringement of Plaintiff's "Hollywood Swank" and "Villa Valencia" bedroom collections. See Amini Innovation Corp. v. McFerran Home Furnishings, Inc., Case No. CV 13-6496 RSWL (SSx) (C.D. Cal.) Dkt. # 1 ¶¶ 19-301; Smith Decl. Ex. C.

A. Are Plaintiff's Allegations Regarding Defendants' Past Litigation History Immaterial or Impertinent?

"'Immaterial' matter is that which has no essential or important relationship to the claim for relief or the defenses being pleaded.'" Fantasy, 984 F.2d at 1527 (quoting 5 Charles A. Wright & Arthur R. Miller, Federal Practice and Procedure § 1382, at 706-07 (1990)). "'Impertinent' matter consists of statements that do not pertain, and are not necessary, to the issues in question." Id.

Defendants argue that the challenged allegations are immaterial because whether they have been involved in other litigation regarding infringement of other intellectual property has no bearing on whether infringement occurred in the instant Action. Mot. 4:18-23. Plaintiff contends that past litigation is relevant to damages and willfulness. Opp'n 7:2-5.

Plaintiff is correct that whether a defendant's infringement was willful may be relevant to damages forboth copyright and patent infringement.

Under the Copyright Act, a "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 . . . in a sum of not less than $750 or more than $30,000 as the court considers just." 17 U.S.C. § 504(c)(1). However, "where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000." Id. § 504(c)(2).

"Upon a finding of infringement, section 284 of the Patent Act requires the court to award 'damages adequate to compensate for the infringement.'" Jurgens v. CBK, Ltd., 80 F.3d 1566, 1569-70 (Fed. Cir. 1996) (quoting 35 U.S.C. § 284 (1994)). Section 284 further "gives the court discretion to 'increase the damages up to three times the amount found or assessed.'" Id. In determining "whether to grant enhanced damages as allowed under 35 U.S.C. § 284," a court applies "a two-step process." Whitserve, LLC v. Computer Packages, Inc., 684 F.3d 10, 37 (Fed. Cir. 2012) (citing Jurgens, 80 F.3d at 1570). The two-step inquiry first requires the fact finder to determine "whether an infringer is guilty of conduct upon which increased damages may be based. If so, the court then determines, exercisingits sound discretion, whether, and to what extent, to increase the damages award given the totality of the circumstances." Id. The culpability requirement may be satisfied by "'[a]n act of willful infringement.'" Id.

Courts have found that a defendant's litigation history may be relevant to the issue of willfulness in the copyright infringement context. See Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., Inc., 74 F.3d 488, 497 (4th Cir. 1996) (finding that record supported jury's finding of willfulness where evidence included previous copyright infringement lawsuits involving the defendant); Twin Peaks Prods., Inc. v. Publ'ns Int'l, Ltd., 996 F.2d 1366, 1381-82 (2d Cir. 1993).

Likewise, courts have found that a defendant's litigation history may be relevant to the issue of willfulness in the patent infringement context. See Donnelly Corp. v. Gentex Corp., 918 F. Supp. 1126, 1134 (W.D. Mich. 1996); see also Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1573 (Fed. Cir. 1993) (holding that defendants' knowledge of prior litigation involving a plaintiff's asserted patent would be relevant to the issue of willful infringement); TruePosition Inc. v. Andrew Corp., 611 F. Supp. 2d 400, 410 (D. Del. 2009).

The history of litigation between the Parties may certainly be relevant to the issue of willfulness anddamages for both Plaintiff's copyright and patent infringement claims, even if it is not necessarily relevant as to whether Defendants actually infringed the asserted intellectual property at issue in this Action. Typically, "a court must deny the motion to strike if any doubt exists whether the allegations in the pleadings might be relevant to the action." Montecino v....

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