The opinion of the court was delivered by: Leonard D. Wexler, United States District Judge
This is an action in which Plaintiff Microsoft Corporation ("Plaintiff" or "Microsoft") asserts claims arising out of Defendants' alleged activities with respect to several Microsoft products. Specifically, Plaintiff alleges that defendants have been involved in the marketing, distributing, advertising and/or offering of counterfeit and/or infringing copies of Plaintiffs software. Defendants' activities are alleged to constitute willful copyright infringement and trademark infringement. It is also alleged that Defendants marketing activities violate Section 43(a) of the Lanham Act, 15 U.S.C. § 1125. Finally, Microsoft alleges state law claims for unfair competitions imposition of a constructive trust and an accounting.
In addition to commencing third party actions seeking indemnification, Defendants' answers assert several affirmative defenses. Among those affirmative defenses is the claim of copyright misuse. Presently before the court is Plaintiffs' motion, pursuant to Rule 12(f) of the Federal Rules of Civil Procedure, to strike that defense as legally insufficient.
A Rule 12 motion to strike an affirmative defense for legal insufficiency is properly granted only "if it appears to a certainty that plaintiffs would succeed despite any state of the facts which could be proved in support of the defense." In re Complaint of Rationis Enters., Inc. of Panama, 210 F. Supp.2d 421, 424, quoting, William Z. Salcern, Panfeld, Edelman v. Envicon Equities Corp., 744 F.2d 935, 938 (2d Cir. 938 (2d Cir. 1984), vacated on other grounds, 478 U.S. 1015 (1986). Motions to strike affirmative defenses are not favored and will be granted only if: (1) there is no question of fact that might allow the defense to succeed; (2) there is no substantial question of law, the resolution of which would allow the defense to succeed and (3) plaintiff shows prejudice if the defense is allowed to stand. County Vanlines. Inc. v. Experian Information Solutions, Inc., 205 F.R.D. 148, 152-53 (S.D.N.Y. 2002); Sony Music Entertainment. Inc. v. Robison, 2002 WL 272406 *7 (S.D.N.Y) February 26, 2002).
The court has reviewed the papers submitted in support of and in opposition to the motion to strike. When considering those submissions in light of the standards referred to above, the court holds that the motion to strike the affirmative defense of copyright misuse must be denied. The motion may be renewed at trial if the facts presented warrant such renewal.
The Clerk of the Court is directed to terminate the motion.
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