Westwood v. Brott

Background

William B. Westwood alleged that Armin Brott published one of Westwood’s registered illustrations on the “Talking About Men’s Health” blog without a license, authorization, or consent. Brott admitted that he was the blog’s editor-in-chief but alleged that the article and illustration were provided by trusted third parties. He also alleged that the illustration had appeared in an American Family Physician article and that he removed the blog post and illustration after receiving Westwood’s cease-and-desist letter.

Brott’s answer asserted four counterclaims—non-infringement, statute of limitations, innocent infringement, and implied license—and nine defenses. Westwood moved to dismiss three counterclaims and to strike all but one of the defenses challenged in the motion. The court treated the request concerning the counterclaims as a motion to dismiss under Rule 12(b)(6), which addresses whether a pleading states a legally sufficient claim, and treated the request concerning the defenses as a motion to strike under Rule 12(f).

Counterclaims

The court granted Westwood’s motion to dismiss Brott’s counterclaims for statute of limitations, innocent infringement, and implied license. It found that these counterclaims, as pleaded, duplicated defenses or served no useful purpose. The statute-of-limitations counterclaim would be addressed through Westwood’s claims and Brott’s defenses; the innocent-infringement counterclaim depended on a finding of infringement and concerned damages rather than liability; and the implied-license counterclaim functioned as a defense to Westwood’s infringement claim.

The court granted Brott leave to amend his answer to plead or replead counterclaims that would serve a useful purpose. Westwood had not moved to dismiss Brott’s counterclaim for non-infringement, so that counterclaim was not among the three dismissed by the motion.

Affirmative defenses

The court struck Brott’s defenses of failure to state a claim, non-infringement, and lack of standing because those matters concerned Westwood’s burden to prove his claim or could be raised through another motion or at trial rather than being affirmative defenses in the answer.

The court also struck Brott’s express-or-implied-license defense. It found that the disclaimer in the American Family Physician article allowed only one printout for personal, noncommercial reference, which did not plausibly authorize the blog posting. The court further found that Brott had pleaded no facts making a different license plausible. It struck the laches defense because Brott had not pleaded facts showing prejudice in his answer, even though he discussed prejudice in his opposition brief.

The court denied the motion to strike the defense based on failure to join an indispensable party because Brott had plausibly identified American Family Physician as a party that might be indispensable. It also denied the motion to strike the fair-use defense because whether the blog and article were commercial or educational involved factual issues better addressed at summary judgment. Finally, it denied the motion to strike the innocent-infringement defense because Brott alleged that he relied on a trusted source and whether any infringement was innocent presented a factual question.

Disposition

Judge Charles R. Breyer granted Westwood’s motion to dismiss Brott’s counterclaims and granted in part and denied in part Westwood’s motion to strike Brott’s affirmative defenses. Brott could file an amended answer within 21 days. The order addressed the pleadings and did not decide whether copyright infringement occurred.