United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION & ORDER
M. ROWLAND UNITED STATES DISTRICT JUDGE
the Court is Plaintiff Soos & Associates, Inc.'s
(“Soos”) motion to dismiss Defendant Five Guys
Enterprises, LLC's (“Five Guys”) affirmative
defenses and counterclaims. (Dkt. 101) For the reasons stated
below, the motion is granted in part and denied in part.
motion to dismiss stage, the Court accepts all well-pleaded
factual allegations in the counterclaims as true and draws
all inferences in Five Guys' favor. Cole v. Milwaukee
Area Tech. Coll. Dist., 634 F.3d 901, 903 (7th Cir.
2011). Starting in 2008, Five Guys hired Soos “for
architectural consulting services for multiple burger and
fries restaurants in the Chicago/Milwaukee area.” (Dkt.
102 at 5) At some point in 2009, Five Guys and Soos agreed
that Soos would “develop, maintain, and help
distribute” Five Guys' “Corporate Design
Standards.” (Dkt. 103 at 2) The idea, according to Five
Guys, “was to have a centralized set of materials
reflecting the [Five Guys] brand's trade dress and
specifications that architects designing [Five Guys]
restaurants could access and implement into their plans. That
way, Five Guys could ensure that the stores designed by its
various architects looked consistent.” (Id.)
(internal citations omitted) To facilitate the distribution
of the Corporate Design Standards, Soos agreed to manage a
file-sharing platform that architects could use to access and
download the standards. (Id.)
Guys claims that “Soos did what it agreed to do.”
(Dkt. 103 at 2) Soos selected Buzzsaw as the file-sharing
platform and uploaded the Corporate Design Standards
materials to Buzzsaw. (Id.) Five Guys paid Soos for
this service. (Id.) For several years, Five
Guys' architects implemented the Corporate Design
Standards into their plans, “just as Five Guys and Soos
had intended.” (Id.) Five Guys alleges that
Soos knew the Corporate Design Standards materials were
distributed to other architects and that other architects
were implementing the Corporate Design Standards into their
plans (Id. at 3)
performing the Corporate Design Standards work, Soos also
worked as one of Five Guys' architects that created
architectural plans (“Construction Documents”)
for specific restaurant locations. (Dkt. 103 at 3) According
to Five Guys, the work for site-specific locations was
distinct from the Corporate Design Standards work.
(Id.). Soos completed Construction Documents for 95
projects, and each location was subject to a separate form
agreement (the “Construction Agreements”). (Dkt.
102 at 5) Five Guys further alleges that Soos had access to
the Corporate Design Standards materials on Buzzsaw, just
like any other Five Guys architect. (Dkt. 95, ¶ 21)
Guys claims that the plans created during Soos' and Five
Guys' relationship have similar elements because both
Soos' plans and the other architects' plans contain
material from the Corporate Design Standards. (Dkt. 103 at 3)
Eventually, Five Guys moved its Corporate Design Standards
work to a competitor of Soos, DXU. (Dkt. 95, Countercl.
¶ 29) DXU was created by a former Soos employee, Eric
Styer. (Id. at ¶ 28) Five guys claims that
“Soos decided to use the similarities between its plans
and other architects' plans to bring this lawsuit to
punish Five Guys for its decision to replace Soos.”
(Dkt. 103 at 3)
brought this action “for the literal or near literal
copying of three of Soos' architectural plans.”
(Dkt. 102 at 3) Soos alleges that Five Guys essentially
copied Soos' copyrighted pictures, diagrams, schedules,
charts, notes, texts, illustrations and “pasted”
them into architectural plans for other restaurant locations.
(Id.) Importantly, Soos alleges that Five Guys
directly copied Soos' work from its Construction
Documents and not from the Corporate Design Standards.
(Id.) Five Guys responded with several affirmative
defenses and counterclaims. (Dkt. 95) Soos now seeks to
dismiss those affirmative defenses and counterclaims. (Dkt.
motion to dismiss tests the sufficiency of a complaint, not
the merits of the case. Gibson v. City of Chicago,
910 F.2d 1510, 1520 (7th Cir. 1990). “To survive a
motion to dismiss under Rule 12(b)(6), the complaint must
provide enough factual information to state a claim to relief
that is plausible on its face and raise a right to relief
above the speculative level.” Haywood v. Massage
Envy Franchising, LLC, 887 F.3d 329, 333 (7th Cir. 2018)
(quotations and citation omitted); see also Fed. R.
Civ. P. 8(a)(2) (requiring a complaint to contain a
“short and plain statement of the claim showing that
the pleader is entitled to relief.”). A court deciding
a Rule 12(b)(6) motion accepts plaintiff's well-pleaded
factual allegations as true and draws all permissible
inferences in plaintiff's favor. Fortres Grand
Corp., 763 F.3d at 700.
plaintiff need not plead “detailed factual
allegations”, but “still must provide more than
mere labels and conclusions or a formulaic recitation of the
elements of a cause of action for her complaint to be
considered adequate under Federal Rule of Civil Procedure
8.” Bell v. City of Chi., 835 F.3d 736, 738
(7th Cir. 2016) (citation and internal quotation marks
omitted). Dismissal for failure to state a claim is proper
“when the allegations in a complaint, however true,
could not raise a claim of entitlement to relief.”
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 558, 127
S.Ct. 1955, 1966 (2007); see also Ashcroft v. Iqbal,
556 U.S. 662, 679, 129 S.Ct. 1937, 1950 (2009).
Rule 12(f), “[t]he 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 because they
“potentially serve only to delay, ” and so
affirmative defenses “will be stricken only when they
are insufficient on the face of the pleadings.”
Heller Fin., Inc. v. Midwhey Powder Co., Inc., 883
F.2d 1286, 1294 (7th Cir. 1989). To survive a motion to
strike, an affirmative defense must be adequately pleaded and
withstand a Rule 12(b)(6) challenge. See Maui Jim, Inc.
v. SmartBuy Guru Enters., 386 F.Supp.3d 926, 937 (N.D.
Ill. 2019) (citations omitted). The Twombly and
Iqbal pleading standard applies to affirmative
defenses.Id. “As a practical matter,
however, affirmative defenses rarely will be as detailed as a
complaint (or a counterclaim); nor do they need to be in most
cases to provide sufficient notice of the defense asserted.
But a problem arises when a party asserts boilerplate
defenses as mere placeholders without any apparent factual
basis.” Behn v. Kiewit Infrastructure Co.,
2018 WL 5776293, at *1 (N.D. Ill. Nov. 2, 2018) (citing
Dorsey v. Ghosh, 2015 WL 3524911, at *4 (N.D. Ill.
June 3, 2015)).
moves to strike all affirmative defenses under Federal Rule
of Civil Procedure Rule 12(f), and to dismiss all
counterclaims under Federal Rule of Civil Procedure 12(b)(6).
(Dkt. 101) The affirmative defenses include: 1) an implied,
non- exclusive license; 2) estoppel, waiver, acquiescence; 3)
statute of limitations; and 4) copyright misuse. (Dkt. 95)
The counterclaims include: 1) declaratory judgment of
non-infringement based on an implied, non-exclusive license;
2) declaratory judgment of non-infringement based on
copyright misuse; and 3) breach of contract. (Dkt. 95) The
Court will address each in turn.
Affirmative Defense (implied, ...