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MONY LIFE INSURANCE CO. v. MONIE FASHIONS

United States District Court, S.D. New York


April 21, 2004.

MONY LIFE INSURANCE CO., Plaintiff; -against- MONIE FASHIONS, INC., Defendant

The opinion of the court was delivered by: RICHARD HOLWELL, District Judge

Memorandum Opinion and Order

Plaintiff Mony Life Insurance Co. ("Mony") brings this action, pursuant to the Lanham Act and various New York Business Laws, to enforce registered service marks for the name "MONY". Presently pending before the Court is plaintiff's motion to strike two affirmative defenses asserted in defendant's Answer. For the following reasons, plaintiff's motion is granted in part and denied in part.

Rule 12(f) allows a court to strike "from any pleading any insufficient defense". Fed.R.Civ.P. 12(f). As a general matter, courts are reluctant to strike an affirmative defense unless the defense is clearly insufficient as a matter of law. See Avent v. Solfaro, 210 F.R.D. 91, 94 (S.D.N.Y. 2002). This standard is the "minor image" of the standard for a motion to dismiss for failure to state a claim. See Sony Fin. Servs., LLC v. Multi Video Group. Ltd., No. 03 Civ. 1730, 2003 WL 22928602, at *8 (S.D.N.Y. Dec. 12, 2003). In addition to showing that the defense is clearly insufficient as a matter of law, the moving party must also show that it would be prejudiced if the defense were to remain in the pleading. See Avent, 210 F.R.D. at 94. Increased time and expense of trial may constitute prejudice to warrant granting a Rule 12(f) motion and a defense should be stricken to eliminate the delay and unnecessary expense from litigating an invalid claim when it is insufficient as a matter of law. See Estee Louder, Inc. v. The Fragrance Counter. Inc., 189 F.R.D. 269, 272 (S.D.N.Y. 1999).

  Plaintiff challenges two affirmative defenses put forth by defendant: (a) that Mony lacks standing to pursue its claims, and (b) that Mony's federal law claims under the Lanham Act preempt its claims under New York law. The Court addresses these challenges in turn.

  Plaintiff argues that, as the owner and registrant of the U.S. and New York service marks, Mony has standing to bring this action under the express statutory provisions of the federal and state trademark statutes. (See Mem. of Law in Supp. of Pl.'s Mot. to Strike at 2-4 (hereinafter "Br.").) Plaintiff further argues that it will be prejudiced by the additional time and expense needed to litigate this defense, which is alleged to be without merit, if the defense is not stricken. (See id. at 5.)

  Defendant does not dispute, in its opposition brief, that plaintiff owns the service marks. However, Defendant argues that the service marks are shared by a group of companies with the "MONY" name, in addition to plaintiff, and that the Complaint does not address the other companies' use of and contribution to the service marks.*fn1 (See Def.'s Mem. of Law in Opp'n (hereinafter "Opp'n").)*fn2 The fact that a service mark has more than one owner does not negate the standing of one of the owners to bring suit Cf. E — Z Bowl, LLC v. Prof I Prod. Research Co., No. 00 Civ. 8670, 2003 WL 22064257, at *3 (S.D.N.Y. Sept. 5, 2003) (noting that "[t]raditionally, co. — owners of a patent were considered indispensable parties in a patent infringement action . . . because all co. — owners have standing to sue for infringement"). Thus, defendant's stated argument for this affirmative defense is insufficient as a matter of law.

  Yet, the Court is reticent to strike this affirmative defense at such an early stage of the litigation and completely preclude defendant from any discovery concerning plaintiff's standing, which may be a valid affirmative defense, though not for the reasons advanced by defendant. The Court will allow standing to remain on the pleadings as an affirmative defense and will allow defendant discovery as to whether plaintiff, in fact, owns the service marks. To prevent undue expense and delay, the Court will not allow defendant discovery as to whether the other companies are also owners of the marks.

  With respect to the affirmative defense of preemption, plaintiff argues that "it is black letter law that federal Lanham Act claims do not preempt state and common law claims," Br. at 4, and that courts within the Second Circuit "routinely render decisions in cases consisting of federal, state and common law claims for trademark infringement, dilution, unfair competition and/or related causes of action." (Reply Mem. of Law in Further Supp. of Pl's Mot. to Strike at 3.)

  Defendant counters, citing Landscape Forms, Inc. v. Columbia Cascade Co., 117 F. Supp.2d 360, 369 n.8 (S.D.N. Y. 2000) (hereinafter "Landscape //"), that "[p]reemption in our Circuit is not as clear as the plaintiff[]" argues. (Opp'n.) Unlike the instant case, which alleges infringement of a registered service mark, Landscape was an action for trade dress infringement, as well as unfair competition and dilution of trade dress. See Landscape II, 117 F. Supp.2d at 362. Initially, the district court entered an order enjoining defendant from selling a line of furniture the court found similar to a line sold by plaintiff. See Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 375-76 (2d Cir. 1997) (hereinafter "Landscape /"). The Second Circuit reversed the injunction, noting in dicta that, although the district court did not rely on state law to issue the injunction, reliance on state law to protect the product designs at issue "would raise a serious question of preemption by federal design patent law under the Sears — Compco doctrine, even as it has been narrowed in Bonito Boats". Id. at 383.

  The Sears — Compco doctrine addresses instances where state law extends protection against copying to unpatented or unregistered articles found to be in the public domain. See Bonito Boats. Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 152-54 (1989). In such cases, when a state law "so impedes public use of the otherwise unprotected design and utilitarian ideas", the state law protecting the ideas may be preempted by federal law denying the protection. Bonito Boats, 489 U.S. at 156-57.

  The application of the Sears — Compco doctrine often arises in trade dress matters, since trade dress generally cannot be patented or registered.*fn3 See, e.g., Landscape II, 117 F. Supp.2d at 369 & n.8; PAF Sr./. v. Lisa Lighting Co., 712 F. Supp. 394, 412 n. 19 ("[I]n cases where the trade dress in question is the product design, state law may in some cases be preempted by the federal patent laws"). Thus, a trade dress plaintiff must prove ownership of a distinctive marie, see Landscape II, 117 F. Supp.2d at 369, and that such ownership would not run afoul of federal patent policy, which has "the ultimate goal of public disclosure and use". Bonito Boats, 489 U.S. at 157.

  However, when an article is patented or registered with the United States Patent and Trademark Office-as is the instant action concerning the "MONY" mark, there is no question that the article is owned, rather than in the public domain, and that such ownership does not frustrate federal policy. See, e.g., Nikon Inc. v. Ikon Corp., 987 F.2d 91, 96 (2d Cir. 1993) (trademark action holding that New York's anti — dilution statute "is not preempted by the Lanham Act"). As explained in Mead Data Central, which the Nikon Court cited for its holding:

"The basic purpose of the Lanham Act is to protect trademark holders and the public. . . . To the extent that the New York statute protects rights not provided by the federal statute, it does not conflict with the Lanham Act but rather, it complements it. . . . [S]tate law is only preempted to the extent it permits behavior outlawed by the federal law." Mead Data Central, Inc. v. Toyota Motor Sales, USA, Inc., 702 F. Supp. 1031, (S.D.N.Y. 1998) (examining whether "LEXIS" marie was infringed by "LEXUS" mark), rev'd on other grounds, 875 F.2d 1026 (2d Cir. 1989).
  In the present action, because plaintiffs state claims complement its federal claims, reliance on New York law to protect the "MONY" mark does not raise a question of preemption by federal law. Thus, the affirmative defense of preemption is clearly insufficient as a matter of law. The Court also finds that plaintiff would be prejudiced in litigating this issue if the defense remains in the pleadings. For these reasons, the Court grants plaintiff's motion to strike the Fifth Affirmative Defense asserted by defendant.

  CONCLUSION

  For the foregoing reasons, Plaintiff's Motion to Strike Defendant's Second and Fifth Affirmative Defenses [7-1,8-1] is GRANTED in part and DENIED in part. SO ORDERED


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