United States District Court, N.D. Indiana, South Bend Division
OPINION AND ORDER
E. MARTIN MAGISTRATE JUDGE
matter is before the Court on Defendants' Motion to
Strike Pursuant to Federal Rule of Civil Procedure 12(f) [DE
24], filed by Defendants on October 5, 2017. Plaintiff filed
a response on October 19, 2017, and Defendants filed a reply
on October 26, 2017.
is in the business of designing and airbrushing custom
artwork, including custom artwork for motor coaches, boats,
airplanes, and other vehicles. In its Amended Complaint,
Plaintiff alleges that Defendants, who sell custom pontoon
boats, wrongfully used two of Plaintiff's designs on
boats sold by Defendants. Plaintiff's claims include
copyright infringement, for which it demands actual damages
plus profits realized by Defendants as a result of copyright
infringement; or, in the alternative, statutory damages under
17 U.S.C. § 504. Plaintiff also seeks attorney's
fees under 17 U.S.C. § 505, plus additional statutory
damages and attorney's fees under 17 U.S.C. §§
1202 and 1203(b)(5). In the instant Motion, Defendants
request that the Court strike from Plaintiff's amended
complaint its requests for attorney's fees and statutory
damages. Plaintiff in its response agrees to withdraw its
requests for relief under 17 U.S.C. §§ 1202 and
1203(b)(5); therefore, the only remaining question is whether
the Court should strike Plaintiff's demands for statutory
damages and attorney's fees under 17 U.S.C. §§
504 and 505.
Standard of Review
Rule of Civil Procedure 12(f) provides that a “court
may strike from a pleading an insufficient defense or any
redundant, immaterial, impertinent, or scandalous
matter.” Fed.R.Civ.P. 12(f). Motions to strike are
generally disfavored, but when striking portions of a
pleading “remove[s] unnecessary clutter from the case,
” the motion may “serve to expedite, not
delay.” Heller Financial, Inc. v. Midwhey Powder
Co., Inc., 883 F.2d 1286, 1294 (7th Cir. 1989).
“[A] court ordinarily will not strike a matter unless
the court can confidently conclude that the portion of the
pleading to which the motion is addressed is redundant or is
both irrelevant to the subject matter of the litigation and
prejudicial to the objecting party.” Fed. Nat'l
Mortgage Ass'n v. Cobb, 738 F.Supp. 1220, 1224 (N.D.
argue that Plaintiff's requests for statutory damages and
attorney's fees should be stricken from its Amended
Complaint. They contend that 17 U.S.C. § 412 precludes
an award of statutory damages and attorney's fees under
§§ 504 and 505 when the alleged infringement
commences more than three months prior to the effective date
of the subject copyright registration. Plaintiff responds
that, because a copyright claim accrues each time an
infringing act occurs and Defendants' infringement
continued past the date the copyright was registered,
Plaintiff is entitled to statutory damages and fees for
Defendants' ongoing infringing acts. The parties agree
that the acts of alleged infringement both preceded and
post-dated Plaintiff's registration of its copyright.
However, Defendants in their reply cite both legislative
history and case law to argue that an infringement
“commences, ” for the purposes of § 412,
with the first instance of infringement, and that when a
claim for infringement accrues is a wholly separate issue
irrelevant to the application of § 412.
Copyright Act makes registration a prerequisite to certain
remedies for infringement. 17 U.S.C. § 412. It states
that “no award of statutory damages or of
attorney's fees, as provided by §§ 504 and 505,
shall be made for . . . any infringement of copyright
commenced after first publication of the work and before the
effective date of its registration, unless such registration
is made within three months after the first publication of
the work.” 17 U.S.C. § 412; see also, e.g.,
Budget Cinema, Inc. v. Watertower Associates, 81 F.3d
729, 733 (7th Cir. 1996) (“[The plaintiff] was not
entitled to statutory damages or attorney's fees because
the alleged infringement commenced before the effective date
of [its] copyright registration.”).
crucial question, then, is whether the alleged infringement
in this matter “commenced” with Defendants'
first use of the disputed designs, as Defendants argue, or
whether the infringement “commenced” each time
the Defendants used one of Plaintiff's designs.
“Every court to consider the issue has held that
infringement ‘commences' for the purposes of §
412 when the first act in a series of acts constituting
continuing infringement occurs.” Derek Andrew, Inc.
v. Poof Apparel Corp., 528 F.3d 696, 700- 01 (9th Cir.
2008) (quoting Johnson v. Jones, 149 F.3d 494, 506
(6th Cir. 1998)); accord Bouchat v. Bon-Ton Dep't
Stores, 506 F.3d 315, 330 (4th Cir. 2007) (“In
using the word ‘commenced, ' § 412(1)
instructs us to trace [the defendant's] infringing
conduct after registration back to [its] original
infringement”); see also Bell v. Turner, No.
1:15-CV-00931-TWP-DKL, 2016 WL 1270221, at *2-3 (S.D. Ind.
Mar. 31, 2016) (holding that the plaintiff was not entitled
to statutory damages and attorney's fees where the
defendant admitted to posting an infringing photo “well
before” its copyright registration, despite continued
postings after the registration date).
in contrast, argues that an infringement
“commences” when a claim “accrues.”
Under the separate accrual rule, “each alleged act of
infringement gives rise to a discrete claim that accrues at
the time the wrong occurs.” Pl. Br. at 2, quoting
Consumer Health Info. Corp. re Amlyn Pharm., Inc.
819 F.3d 992, 996 (7th Cir. 2016). However, the separate
accrual rule governs only when a claim for copyright
infringement may be filed. See Petrella v.
Metro-Goldwyn-Mayer, Inc., 134 S.Ct. 1962, 1969 (2014)
(“It is widely recognize that the separate-accrual rule
attends the copyright statute of limitations.”) The
“accrual” of an action does not address the
question of damages barred by § 412. Therefore, the
separate accrual rule is inapplicable to Plaintiff's
requests for statutory damages and attorney's fees.
limitation on statutory damages imposed by § 412 is not
discretionary. Instead, the statute “leaves no room for
discretion, mandating that no attorney's fees or
statutory damages be awarded so long as the infringement
commenced before registration of the copyright.”
Johnson v. Jones, 149 F.3d at 505. Because the
parties agree that the first instances of alleged
infringement occurred well before Plaintiff's
registration of its copyrights, under § 412, Plaintiff
is not entitled to statutory damages or attorney's fees.
the Court hereby GRANTS Defendants'
Motion to Strike Pursuant to Federal Rule of Civil Procedure
12(f) [DE 24] and ORDERS that
Plaintiff's demands for statutory damages and
attorney's fees under 17 U.S.C. §§ 504(a)(2)
and 504(c) and Plaintiff's demands for statutory damages