Hirsch v. Owen — Entry #9

Case 1:19-cv-01037-RP Document 9 Filed 11/25/19 Page 1 of 9


Mathew K. Higbee, Esq., SBN #24076924
mhigbee@higbeeassociates.com
HIGBEE & ASSOCIATES
1504 Brookhollow Dr., Ste 112
Santa Ana, CA 92705-5418
(714) 617-8350
(714) 597-6729 facsimile
Counsel for Plaintiff


                    UNITED STATES DISTRICT COURT
                     WESTERN DISTRICT OF TEXAS

 STEVEN HIRSCH,                             Case No. 1:19-cv-01037-RP

                        Plaintiff,
                                            MOTION TO STRIKE
                                            DEFENDANT’S ANSWER
 v.

 DOUGLAS WILLIAM OWEN; OWEN
 MEDIA GROUP LLC; and DOES 1
 through 10 inclusive,

                        Defendants.


             MOTION TO STRIKE DEFENDANT’S ANSWER

      Pursuant to Federal Rule of Civil Procedure 12(f) and 28 U.S.C. § 1654,

Plaintiff Steven Hirsch (“Plaintiff” or “Hirsch”) by and through his undersigned

counsel moves to strike Defendants Douglas William Owen (“Owen”) and Owen

Media Group LLC (“OMG LLC”) (collectively “Defendants”) Answer on the

grounds that the affirmative defenses raised therein are insufficiently pled and


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Defendant OMG LLC as a corporation must be represented by counsel. The parties

conferred between November 10, 2019 and November 20, 2019, but were unable to

reach a consensus about the matter.

I.     INTRODUCTION

       Plaintiff Steven Hirsch is a professional photographer by trade whose work

has appeared in a number of prominent publications. (Doc. No. 1 at ¶ 14.) Plaintiff

is the sole author and exclusive rights holder to a photograph of a man in court (the

“Image”). (Id. at ¶ 15.) The Image was registered with the United States Copyright

Office under registration number VA 2-109-219. (Id. at ¶ 16.) The Image was

originally published in an article by the New York Post on June 12, 2018, with credit

given to Hirsch. (Id. at ¶ 17.) On or about December 6, 2018, Plaintiff discovered

that   Defendant   had    used   the   Image    in   an   article   on   his   website,

www.blacklistednews.com, without a license and without any prior authorization.

(Id. at ¶ 19.) On or about October 23, 2019, Plaintiff commenced this action by

filing a complaint for copyright infringement under 17 U.S.C. § 101, et seq., and

removal of copyright management information pursuant to 17 U.S.C. § 1202. (Doc.

No. 1.) Defendants were served on or about October 31, 2019. (Doc. No. 7.)

Defendant filed his Answer on or about November 4, 2019. (Doc. No. 8.) The

parties have been in contact with one another in an effort to resolve this matter. The

Defendants are aware of Plaintiff’s contentions with respect to the affirmative


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defenses raised, but still believe they are entitled to safe harbor protection. The

parties have been unable to come to an agreement; therefore, Plaintiff moves to

strike Defendants’ Answer as it is both factually and legally insufficient. Plaintiff

also moves to strike on the grounds that Defendant Owen Media Group LLC must

be represented by counsel because it is a corporation.

II.    LEGAL STANDARD

       Under Federal Rule of Civil Procedure 12(f), a “court may strike from a

pleading an insufficient defense or any redundant, immaterial, impertinent, or

scandalous matter.” Federal Rule of Civil Procedure 8(c) requires a defendant to

“plead an affirmative defense with enough specificity or factual particularity to give

the plaintiff ‘fair notice’ of the defense that is being advanced.” Rogers v.

McDorman, 521 F.3d 381, 385 (5th Cir.2008); Woodfield v. Bowman, 193 F.3d 354,

362 (5th Cir.1999).      “Fair notice” is satisfied if the defense is “sufficiently

articulated ... so that the plaintiff is not a victim of unfair surprise.” See Woodfield at

362.

       Rule 12(f)’s purpose is to “avoid the expenditure of time and money that must

arise from litigating spurious issues by dispensing with those issues prior to trial.”

Fantasy, Inc. v. Fogerty, 984 F.2d 1524, 1527. Rule 12(f) is also designed to

“reinforce the requirement in Rule 8(e) that pleadings be simple, concise, and

direct.” 5C Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure


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§ 1380 (3d. ed. 2014). Although not generally favored, motions to strike should

nonetheless be granted if the asserted defenses are insufficient as a matter of law,

will confuse the issues in the case, or will otherwise prejudice the moving party. See,

e.g., Kaiser Aluminum & Chemical Sales, Inc. v. Avondale Shipyards, Inc., 677 F.2d

1045, 1057–61 (5th Cir. 1982); Waste Mgmt. Holdings, Inc. v. Gilmore, 252 F.3d

316, 347 (4th Cir. 2001); Rodriguez v. Physician Lab. Servs., LLC, No. 7:13-cv-622,

2014 WL 847126, at *2–3 (S.D. Tex. Mar. 4, 2014); Rice v. Reliastar Life Ins. Co.,

No. 11-cv-44-BAJ-M2, 2011 WL 1168520, at *2–4 (M.D. La. Mar. 29, 2011). See

generally 5C Wright & Miller, supra, § 1381.

      A defense is insufficient under Rule 12(f) when, assuming the truth of all facts

alleged, the defense remains facially invalid as a matter of law. Kaiser Aluminum,

677 F.2d at 1057; see also EEOC v. First Nat’l Bank of Jackson, 614 F.2d 1004,

1008 (5th Cir. 1980) (“An affirmative Case 2:13-cv-00193 Document 456 Filed in

TXSD on 08/07/14 Page 2 of 10 3 defense is not valid if it appears to a certainty that

the plaintiff would succeed despite any set of facts which could be proved in support

of the defense.”).

      “‘Immaterial’ matter is that which has no essential or important relationship to

the claim for relief or the defenses being pleaded.” 5C Wright & Miller, supra, §

1382; see also Marceaux v. Lafayette Consol. Gov’t, No. 6:12-cv-01532, 2012 WL

5197667, at *1 (W.D. La. Oct. 18, 2012); Adm’rs of the Tulane Educ. Fund v.


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Biomeasure, Inc., No. 08-cv-5096, 2011 WL 3268108, at *4 (E.D. La. July 28,

2011). Striking immaterial allegations ensures that later proceedings will focus only

on claims that are actually relevant to the litigation. See Corley v. Louisiana, No. 06-

882-SCR, 2010 WL 3259376, at *2 (M.D. La. Aug. 16, 2010).

       Similarly, “‘impertinent’ matter consists of statements that do not pertain, and

are not necessary, to the issues in question.” 5C Wright & Miller, supra, § 1382; see

also Marceaux, 2012 WL 5197667, at *1.

       Plaintiff also moves to strike pursuant to 28 U.S.C. § 1654, which states that

parties may plead and conduct their cases personally or by counsel.            When a

corporation declines to hire counsel to represent it, the court may dismiss its claims

if it is a plaintiff, or strike its defenses if it is a defendant. See Donovan v. Rd.

Rangers Country Junction, Inc., 736 F.2d 1004, 1005 (5th Cir. 1984).

III.   ARGUMENT

       A. Defendants’ DMCA Defense Is Factually and Legally Insufficient.

        Defendants raise one potential affirmative defense, namely that they have

acted in accordance with 17 U.S.C. § 512, or the Digital Millennium Copyright Act,

and are therefore entitled to safe harbor protection. However, in order to receive the

benefit of this defense, Defendants must comply with the statutory formalities of

Safe Harbor, which includes the designation of a registered agent for receiving

takedown notices. See 17 U.S.C. 512(c)(2).


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         In fact, Section 512(c)(2) “plainly specifies that a registered agent is a

predicate, express condition” that must be met and that “the safe harbor will apply

‘only if’ in the directory of agents.’” Perfect 10, Inc. v. Yandex, N.V., C 12-01521

WHA, 2013 WL 1899851, at *8 (N.D. Cal. May 7, 2013). Typically, designating a

DMCA-related agent after the fact does not retroactively protect a service provider

from infringing activity that occurred before the designation. Nat’l Photo Group,

LLC v. Allvoices, Inc., C-13-03627, JSC, 2014 WL 280391, at *4 (N.D. Cal. Jan. 24,

2014); see also Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., C 07-03952

JW, 2010 WL 5598337, at *7 (N.D. Cal. Mar. 19, 2010) (“At a minimum,

Defendants would not be able to claim the protection of the safe harbor provisions

prior to designating an agent.”); see also Oppenheimer v. Allvoices, Inc., C 14-00499

LB 2014 WL 2604033 at *5 (N.D. Cal. June 10, 2014).

         Here, Defendants have failed to allege any facts supporting that they have

complied with the statutory formalities of 17 U.S.C. § 512(c) by designating a

registered agent with the United States Copyright Office.           Nor is any such

information available for Defendants’ Website through the DMCA Designated

Agent Directory. Proof of compliance remains the Defendants’ burden to prove, and

as alleged this defense remains both factually and legally insufficient. Therefore, the

Court should strike this defense.

 /////


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      B. Defendant OMG LLC Must Be Represented By Counsel.

        Supreme Court precedent provides that “[i]t has been the law for the better

part of two centuries, for example, that a corporation may appear in the federal

courts only through local counsel.” Rowland v. California Men’s Colony, Unit II

Men’s Advisory Council, 506 U.S. 194, 201 (1993) (internal citations omitted).

        It is also well established in the Fifth Circuit that “a corporation can appear

in a court of record only by an attorney at law.” Sw. Exp. Co. v. I.C.C., 670 F.2d 53,

55–56 (5th Cir. 1982) (finding that “[c]orporations and partnerships, both of which

are fictional legal persons, obviously cannot appear for themselves personally[,] and

that this contention has been “consistently rejected when raised.”); Memon v. Allied

Domecq QSR, 385 F.3d 871, 873 (5th Cir. 2004) (“However, ‘a corporation can

appear in a court of record only by an attorney at law.’”); Donovan, 736 F.2d at

1005 (noting that “the ‘clear’ rule is ‘that a corporation as a fictional legal person

can only be represented by counsel.’”). This not only appears to be established

federal precedent, but also a state law. See In re Cash Media Sys., Inc., 326 B.R.

655, 673 (S.D. Tex. 2005) (noting that state law controls and that “Texas law does

not permit a corporation to represent itself in court.”). The rule applies “ ‘even when

the person seeking to represent the corporation is its president and major

stockholder.’” United States v. Estate of Goehring, No. 17-cv-1092-XR, 2018 WL

1530995, at *1 (W.D. Tex. Feb. 13, 2018) (quoting In re K.M.A., Inc., 652 F.2d 398,


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399 (5th Cir. 1981)). The Court may, in its discretion, determine the appropriate

measure to be taken when a corporation fails to hire counsel by striking its pleadings

or entering default. Hamilton v. EnerSafe, Inc., No. 1:15-cv-965-DAE, 2018 WL

7822066, at *1 (W.D. Tex. Mar. 6, 2018); Mont Vernon Fire Ins. Co. v.

Obodoechina, 1:08-cv-3258, 2009 WL 242326, at *1 (S.D. Tex. Feb. 19, 2009)

(“When a business is without counsel, it is appropriate to instruct the business that it

must retain counsel. If after sufficient time to obtain counsel, there is no appearance

by counsel, judgment may be entered against the business entity by default.”).

          Here, Defendant Owen appears to answer on behalf of himself and

Defendant OMG LLC. This is improper as Defendant OMG LLC is a corporate

entity, and must retain legal counsel for representation. Plaintiff therefore requests

that the Court strike Defendants’ Answer and instruct that it retain counsel in this

matter.

IV.   CONCLUSION

          For the reasons stated above, Plaintiff respectfully requests that the Court

strike Defendants’ Answer as its affirmative defenses are insufficiently pled and

Defendant OMG LLC cannot appear in pro per.


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        Case 1:19-cv-01037-RP Document 9 Filed 11/25/19 Page 9 of 9


Dated: November 25, 2019                      Respectfully submitted,

                                        /s/ Mathew K. Higbee, Esq.
                                        Mathew K. Higbee, Esq.
                                        Texas Bar No. 24076924
                                        HIGBEE & ASSOCIATES
                                        1504 Brookhollow Dr., Ste 112
                                        Santa Ana, CA 92705-5418
                                        (714) 617-8350
                                        (714) 597-6729 facsimile
                                        Counsel for Plaintiff


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