BBK Tobacco & Foods LLP v. Skunk Inc., CV-18-02332-PHX-JAT

CourtUnited States District Courts. 9th Circuit. United States District Courts. 9th Circuit. District of Arizona
Writing for the CourtJames A. Teilborg Senior United States District Judge
Decision Date15 November 2019
Docket NumberNo. CV-18-02332-PHX-JAT,CV-18-02332-PHX-JAT
PartiesBBK Tobacco & Foods LLP, Plaintiff, v. Skunk Incorporated, et al., Defendants.

BBK Tobacco & Foods LLP, Plaintiff,
Skunk Incorporated, et al., Defendants.

No. CV-18-02332-PHX-JAT


November 15, 2019


Pending 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.


BBK 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).


a. Legal Standard

Motions to strike are governed by Federal Rule of Civil Procedure ("Rule") 12(f).

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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 (collecting cases).

In 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)).

b. First Affirmative Defense

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Vatra's 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).

Although 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,1 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).2 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.

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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.

Accordingly, the Court will deny BBK's motion as to Vatra's First Affirmative Defense.

c. Second Affirmative Defense

Vatra's 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 the "Twomby/Iqbal framework" and maintains that it has pleaded sufficient facts. (Doc. 76 at 9).

BBK's assertion that Vatra's answer failed to allege facts to support every element of acquiescence, waiver, and estoppel is inapposite. "The Federal Rules . . . do not require a defendant to set out the specific elements of each defense pleaded," so long as the pleading still provides the plaintiff with fair notice of the defense. Roxbury Entm't v. Penthouse Media Grp., Inc., No. 2:08-cv-03872-FMC-JWJx, 2009 WL 2950324, at *6 (C.D. Cal. April 3, 2009). A court may even deny a motion to strike when the defendant has provided no more than an unadorned list of affirmative defenses, because such a list still "affirmatively state[s]" the defenses. FTC v. Elec. Payment Sols. of Am., Inc., No. CV-17-02535-PHX-DJH, 2017 WL 10505266, at *1 (D. Ariz. Dec. 13, 2017); Mag Instrument, 595...

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