The opinion of the court was delivered by: Sue E. Myerscough, U.S. District Judge:
Monday, 05 December, 2011 04:43:17 PM
Clerk, U.S. District Court, ILCD
This matter is before the Court on Plaintiff Isringhausen Import, Inc.'s (Isringhausen) Motion to Dismiss and Strike Pursuant to Federal Rules of Civil Procedure 12(b)(6) and 12(f). See d/e 39 (the "Combined Motion"). Isringhausen has filed a Memorandum in Support of its Combined Motion (see d/e 40 ("Memorandum in Support")). Defendant Nissan North America, Inc. ("NNA") has filed its Response to Plaintiff's Motion to Dismiss and Strike and Alternative Motion for Leave to Amend Answer, Affirmative Defenses, and Counterclaim (see d/e 48 (Response)). For the reasons that follow, Isringhausen's Combined Motion is granted in part and denied in part.
On October 29, 2010, Isringhausen filed its nine-count Corrected Complaint (d/e 13) against NNA and the following related defendants: Nissan Motor Corp., Ltd., Nissan Design American, Inc., and Nissan Jidosha Kaisha, Trading as Nissan Motor Co., Ltd. (the related defendants are hereinafter collectively referred to as "the Affiliated Companies"). On April 6, 2011, this Court dismissed Count V of the Corrected Complaint. See d/e 28. Also, on Isringhausen's motion, Nissan Design America, Inc., has been dismissed from this case without prejudice. See Text Order of May 18, 2011.
On May 4, 2011, NNA filed its Answer and Affirmative Defenses to Plaintiff's Corrected Complaint. See d/e 33 ("Answer"). The Answer raised 23 affirmative defenses and brought a counterclaim against Isringhausen seeking a declaratory judgment on Isringhausen's trademark (Count I of Corrected Complaint) and copyright (Count II of Corrected Complaint) claims. Moreover, NNA asked that the Court "[a]ward Infiniti its costs and attorneys' fees incurred in defending against Isringhausen's Complaint and asserting its Counterclaim, including without limitation those fees for which an award is proper pursuant to 15 U.S.C. § 117(a)[.]" Isringhausen has filed its Combined Motion, and NNA has responded. The Court now issues this opinion.
As stated, NNA has asserted 23 affirmative defenses. In its Combined Motion, Isringhausen claims that affirmative defenses numbered 1, 3-6, 8-16, and 19-23 are insufficient and must be stricken. Isringhausen also maintains that NNA's claim for attorneys' fees and costs as set forth in NNA's Counterclaim must be dismissed under Rule 12(b)(6).
A. Motion to Strike NNA's Affirmative Defenses Rule 12(f) provides that "the court may strike from a pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter." Fed.R.Civ.P. 12(f). As a general rule, motions to strike are disfavored because such motions often serve only to delay proceedings. See Heller Financial, Inc. v. Midwhey Powder Co., Inc., 883 F.2d 1286, 1294 (7th Cir. 1989) (citing United States v. 416.81 Acres of Land, 514 F.2d 627, 631 (7th Cir. 1975)). The Court is "reluctant to strike affirmative defenses because the plaintiff is not required to file a responsive pleading and is deemed to have denied all allegations in the affirmative defenses." Central Laborers' Pension, Welfare & Annuity Funds v. Parkland Environmental Group, Inc., 2011 WL 4381429, at *1 (C.D. Ill. 2011) (citing Fed.R.Civ.P. 7(a) and 8(b)(6)). However, if a motion to strike removes unnecessary clutter from the case, the motion can serve to expedite, not delay. See Heller Financial, Inc., 883 F.2d at 1294.
"Ordinarily, defenses will not be struck if they are sufficient as a matter of law or if they present questions of law or fact." Heller Financial, Inc., 883 F.2d at 1294. To be legally sufficient, affirmative defenses must be set forth in a "short and plain statement" of the defense. Id. (citing Fed.R.Civ.P. 8(a); Bobbitt v. Victorian House, Inc., 532 F. Supp. 734, 737 (N.D. Ill. 1982)). Defenses that are essentially reiterations of the defendant's answers are redundant and may be stricken. See Convergence Aviation, Ltd. v. United Technologies Corp., 2011 WL 1337099, at *2 (N.D. Ill. 2009). If an affirmative defense is defective, leave to amend should be freely granted as justice requires under Federal Rule of Civil Procedure 15(a). See Heller, 883 F.2d at 1294.
1. First Affirmative Defense
NNA's first affirmative defense is that "Isringhausen fails to state a claim upon which relief may be granted against Infiniti." Courts have not always agreed whether a party may properly assert "failure to state a claim" as an affirmative defense or whether that defense must be raised in a separate Rule 12(b)(6) motion. See Jackson v. Methodist Medical Center of Illinois, 2007 WL 128001, at *2 (C.D. Ill. 2007) (collecting cases). As noted in Jackson, more than "bare bones" pleading of the legal standard is necessary, even by those courts that have allowed the affirmative defense of failure to state a claim. Jackson, 2007 WL 128001, at *2. Here, NNA has done no more than recite the legal standard, which is insufficient. Therefore, NNA's first affirmative defense is stricken. Moreover, no purpose would be served by allowing NNA to replead this defense as this Court has already allowed NNA's motion to dismiss brought pursuant to Rule 12(b)(6) with respect to Count V of the Corrected Complaint and denied it with respect to all other counts.
2. Third Through Sixth Affirmative Defenses
NNA's third through sixth affirmative defenses, i.e. , acquiescence, estoppel, consent, and waiver respectively, are equitable defenses that must be pled with the specific elements required to establish the defense. See Yash Raj Films (USA) Inc. v. Atlantic Video, 2004 WL 1200184, at *3 (N.D. Ill. 2004). NNA's affirmative defenses based on these doctrines are all based on the allegation that Isringhausen knew of Infiniti's use of transitory gestures for an extensive time period prior to filing the lawsuit and that Isringhausen never indicated to Infiniti that it had a claim against Infiniti's use of the gestures. Isringhausen alleges that these affirmative defenses are defective because they do not allege that "Isringhausen engaged in active conduct in addition to the mere passage of time and claimed prejudice to NNA."
i. Third Affirmative Defense: Acquiescense
Acquiescence is a "defense to trademark infringement in 'cases where the trademark owner, by affirmative word or deed, conveys its implied consent to another.'" Trans Union LLC v. Credit Research, Inc., 142 F.Supp.2d 1029, 1041 (N.D. Ill. 2001) (quoting TMT North America, Inc. v. Magic Touch GmbH, 124 F.3d 876, 885 (7th Cir. 1997)). "Acquiescence merges with laches when it is based on silence." Trans Union LLC, 142 F.Supp.2d at 1041. "Unlike laches, acquiescence implies active consent to an infringing use of the mark and requires a defendant to establish that (1) the senior user actively represented it would not assert a right or a claim; (2) the delay between the active representation and assertion of the right or claim was not excusable; and (3) the delay caused the defendant undue prejudice." Bobak Sausage Co. v. A & J Seven Bridges, Inc., 2011 WL 1131385, at *6 (N.D. Ill. 2011); see also ProFitness Physical Therapy Ctr. v. Pro--Fit Orthopedic and Sports Physical Therapy P.C., 314 F.3d 62, 67 (2d Cir. 2002) (noting that while both laches and acquiescence connote consent by the owner to an infringing use of his mark, acquiescence implies active consent, while laches only requires passive consent)*fn1 ; Emmpresa Cubana Del Tabaco v. Culbro Corp., 213 F.Supp.2d 247, 276 (S.D.N.Y. 2002) (affirmative defense of acquiescence is used only in those cases where trademark owner conveys its consent to another by affirmative word or deed). NNA's third affirmative defense of acquiescence does not sufficiently allege active consent or an affirmative word or deed conveying consent by Isringhausen and, therefore, must be stricken with leave to replead.
ii. Fourth Affirmative Defense: Estoppel
"For estoppel to apply, the alleged infringer must show that the copyright owner was aware of the infringing conduct and yet acted in a way that induced the infringer to reasonably rely upon such action to his detriment." Ty, Inc. v. West Highland Publishing, Inc., 1998 WL 698922, at * 11 (N.D. Ill. 1998). Misleading conduct may include specific statements, action, inaction, or silence where there is a clear duty to speak. R2 Medical Systems, Inc. v. Katecho, Inc., 931 F.Supp.1397, 1416 (N.D. Ill. 1996); Emmpresa Cubana Del Tabaco, 213 F.Supp.2d at 276 (affirmative defense of equitable estoppel requires a misleading communication with plaintiff's knowledge of the true facts). While silence or inaction may constitute misleading conduct, it must be combined with other facts involving the relationship or communication between the parties to give rise to the necessary inference that the plaintiff would not enforce its rights. R2 Medical Systems, Inc., 931 F.Supp. at 1416. While awareness of the defendant's challenged activities may be a necessary factor, it is not sufficient to render the inaction misleading. Id. "[C]courts have required communication between the parties either somehow encouraging the challenged activity or indicating an intent to enforce the rights  followed by inaction." Id. Here, NNA only alleges Isringhausen knew of NNA's use of the transitory gestures for an extended period of time prior to filing ...