The opinion
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
721 BOURBON, INC. CIVIL ACTION
VERSUS NO. 19-9069-WBV-MBN
WILLIE’S CHICKEN SHACK, LLC, ET AL. SECTION D(5)
ORDER
Before the Court is Plaintiff’s Motion to Strike Defendants’ Affirmative
Defenses (R. Doc. 15),1 Plaintiff’s Motion to Dismiss for Failure to State a Claim (R.
Doc. 16),2 and Defendants’ Motion for Leave to File Supplemental Memorandum in
Support of Opposition to Plaintiff’s Rule 12(b)(6) Motion to Dismiss Antitrust
Counterclaims (R. Doc. 45).3
I. Factual Background
This is a trademark infringement case. The plaintiff (“721 Bourbon, Inc. d/b/a
Tropical Isle”) claims that it was forced to file this lawsuit in April 2019 as a last
1 This motion is opposed. See R. Doc. 21. The plaintiff filed a reply brief. See R. Doc. 33.
2 This motion is opposed. See R. Doc. 22. The plaintiff filed a reply brief. See R. Doc. 35.
3 This motion is opposed. See R. Doc. 48.
resort because the defendants refused to stop selling cocktails in a souvenir yard cup
that the plaintiff claims mimics the federally registered trade dress design of Tropical
Isle’s distinctive, green, souvenir yard cup.4 The defendants answered the plaintiff’s
complaint with numerous affirmative defenses and antitrust and anticompetition
counterclaims.5 The plaintiff’s complaint brings four claims against the defendants:
federal trademark infringement; federal unfair competition; state trademark
dilution; and state unfair trade practices.
II. Legal Standard and Analysis
The plaintiff seeks to strike the defendants’ affirmative defenses and dismiss
Counts IV, V, and VI of the defendants’ counterclaims.6
A. Striking Affirmative Defenses
A court may strike any defense that is insufficient, redundant, immaterial,
impertinent, or scandalous either on its own motion, or on motion by a party.7 “A
motion to strike is appropriate when the allegations are prejudicial to the opposing
party or immaterial to the lawsuit. An allegation is immaterial to the lawsuit when
the challenged allegations do not bear on the subject matter of the litigation.”8 The
Fifth Circuit provides that “[a]n affirmative defense is not valid if it appears to a
certainty that the plaintiff would succeed despite any set of facts which could be
4 See R. Doc. 16-1, p. 2.
5 See R. Doc. 12.
6 See R. Docs. 15, 16.
7 See Fed. R. Civ. P. 12(f); see also Schlesinger v. Hasco Thibodaux, LLC, 2014 WL 527657, at *1 (E.D.
La. Feb. 7, 2014).
8 Schlesinger, 2014 WL 527657, at *1 (internal citations omitted).
proved in support of the defense.”9 Whether an affirmative defense is insufficient
depends on “the nature of the claim for relief and the defense in question.”10 A motion
to strike an affirmative defense is generally disfavored.11 In deciding a motion to
strike, the Court considers whether the affirmative defenses asserted by the
defendant are sufficient as a matter of law.12 The Court considers whether the
defenses are applicable and whether they are sufficiently pled as to give the plaintiff
fair notice: “a defendant . . . must plead an affirmative defense with enough specificity
or factual particularity to give the plaintiff ‘fair notice’ of the defense that is being
advanced.”13 The requirement is met if the defendant “sufficiently articulated the
defense so that the plaintiff was not a victim of unfair surprise.”14
Plaintiff argues that the second, third, fourth, sixth, ninth, twelfth, and
seventeenth affirmative defenses are actually negative arguments against elements
of trademark infringement, which the plaintiff bears the burden of proving at trial.15
After careful consideration of the parties’ memoranda, the Court strikes as redundant
the second, third, fourth, sixth, thirteenth, and fourteenth affirmative defenses.
Because the Court grants the plaintiff’s motion to dismiss Counts IV, V, and VI of the
9 EEOC v. First Nat’l Bank of Jackson, 614 F.2d 1004, 1008 (5th Cir. 1980).
10 Id.
11 See Acadian Diagnostic Laboratories, LLC v. Quality Toxicology, LLC, 2017 WL 9439103, at *4 (M.D.
La. Nov. 17, 2017).
12 See id.
13 Woodfield v. Bowman, 193 F.3d 354, 362 (5th Cir. 1999); see Acadian Diagnostic Laboratories, LLC,
2017 WL 9439103, at *4.
14 Id. (internal citation and quotation marks omitted).
15 Elements of a trademark infringement claim is (1) the mark the plaintiff seeks to protect is eligible
for protections; (2) the plaintiff is the senior user; and (3) there is a likelihood of confusion between the
plaintiff’s mark and the defendant’s mark. See Union Nat’l Bank of Tex., Laredo, Tex. v. Union Nat’l
Bank of Tex., Austin, Tex., 909 F.2d 839, 844 (5th Cir. 1990).
defendants’ counterclaims, discussed below, the tenth and eleventh affirmative
defenses fail and are hereby stricken. The affirmative defenses that are not stricken
as detailed in this Order remain.
B. Dismissing Counterclaims
The plaintiff seeks to dismiss Counts IV, V, and VI of the defendants’
counterclaims. Count IV alleges an antitrust violation under the Sherman Act,
attempted monopolization; Count V alleges unfair competition under Louisiana law;
and Count VI alleges negligent interference under Louisiana law.
Under Federal Rule of Civil Procedure 12(b)(6), a defendant can seek dismissal of
a complaint, or any part of it, for failure to state a claim upon which relief may be
granted.16 To survive a Rule 12(b)(6) motion to dismiss, “a complaint must contain
sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible
on its face.’”17 “A claim has facial plausibility when the plaintiff pleads factual
content that allows the court to draw the reasonable inference that the defendant is
liable for the misconduct alleged.”18 “The plausibility standard is not akin to a
probability requirement, but it asks for more than a sheer possibility that a defendant
has acted unlawfully.”19
16 Fed. R. Civ. P. 12(b)(6).
17 Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570
(2007)).
18 Gentilello v. Rege, 627 F.3d 540, 544 (5th Cir. 2010) (quoting Iqbal, 556 U.S. at 678 (quotation marks
omitted)).
19 Iqbal, 556 U.S. at 679 (quotation marks omitted).
A court must accept all well-pleaded facts as true, viewing them in the light
most favorable to the plaintiff.20 A court, however, is not bound to accept as true
conclusory allegations, unwarranted factual inferences, or legal conclusions.21
“Dismissal is appropriate when the complaint on its face shows a bar to relief.”22 In
deciding a Rule 12(b)(6) motion to dismiss, a court is generally prohibited from
considering information outside the pleadings but may consider documents outside
of the complaint when they are: (1) attached to the motion; (2) referenced in the
complaint; and (3) central to the plaintiff’s claims.23
Under Section 1 of the Sherman Act, “[e]very contract, combination in the form
of trust or otherwise, or conspiracy, in restraint of trade or commerce among the
several States, or with foreign nations, is declared to be illegal.”24 For the defendants
to prevail on their Section 1 violation counterclaim, they must show that the plaintiff
(1) engaged in a conspiracy (2) that produced some anticompetitive effect (3) in the
relevant market.25 The defendants must also show an actual injury and an antitrust
injury, meaning the plaintiff’s activities caused an injury to competition.26
The plaintiff seeks protection under the Noerr-Pennington doctrine for Counts
IV, V, and VI of the defendants’ counterclaims. This doctrine was established by two
20 Gines v. D.R. Horton, Inc., 699 F.3d 812, 816 (5th Cir. 2012) (quoting In re Katrina Canal Breaches
Litig., 495 F.3d 191, 205 (5th Cir. 2007)).
21 Plotkin v. IP Axess Inc., 407 F.3d 690, 696 (5th Cir. 2005).
22 Cutrer v. McMillan, 308 Fed. App’x. 819, 820 (5th Cir. 2009) (internal citation and quotation marks
omitted).
23 Maloney Gaming Mgmt., LLC v. St. Tammany Parish, 456 Fed. App’x. 336, 340-41 (5th Cir. 2011).
24 15 U.S.C. § 1.
25 See Veritext Corp. v. Bonin, 2019 WL 4738207, at *3 (E.D. La. Sept. 27, 2019) (internal citation
omitted).
26 See id.
Supreme Court cases: Eastern R.R. Presidents Conference v. Noerr Motor Freight Inc.,
365 U.S. 127 (1961), and United Mine Workers v. Pennington, 381 U.S. 657 (1965).
“The essence of the doctrine is that parties who petition the government for
governmental action favorable to them cannot be prosecuted under the antitrust laws
even though their petitions are motivated by anticompetitive intent.”27 Pre-suit
threats to litigate, i.e., cease-and-desist letters, made in good faith are also exempt.28
The plaintiff argues that the Noerr-Pennington doctrine can apply to Counts V and
VI, which are brought under the Louisiana Unfair Trade Practices Act (“LUPTA”).29
The Fifth Circuit provides that
Although the Noerr–Pennington doctrine initially arose in the antitrust
field, other circuits have expanded it to protect first amendment
petitioning of the government from claims brought under federal and
state laws, including section 1983 and common-law tortious interference
with contractual relations. We find it easy to agree that the same
rationale under antitrust law that supports [the defendant’s] petitions
to the City [of Dallas, another defendant] also serves to protect [the
defendant] from the tort claim. There is simply no reason that a
common-law tort doctrine can any more permissibly abridge or chill the
constitutional right of petition than can a statutory claim such as
antitrust.
Video Intern. Prod., Inc. v. Warner-Amex Cable Commc’ns., Inc., 858 F.2d 1075, 1084
(5th Cir. 1988) (internal citations omitted). The Court finds that the same reasoning
applies to the defendants’ counterclaims under Louisiana law.
27 Video Intern. Prod., Inc. v. Warner-Amex Cable Commc’ns., Inc., 858 F.2d 1075, 1082 (5th Cir. 1988).
28 See Coastal States Mktg., Inc. v. Hunt, 694 F.2d 1358, 1367 (5th Cir. 1983).
29 See R. Doc. 16-1, citing Capitol House Preservation Co., L.L.C. v. Perryman Consultants, Inc., 47 So.
3d 408 (La. 1 Cir. 2009).
The defendants argue that the plaintiff is not entitled to this immunity. The
United States Supreme Court has carved out an antitrust exemption for efforts to
influence governmental action through the Noerr-Pennington antitrust immunity
doctrine.30 The petitioning of governmental bodies, including judicial bodies,31 does
not qualify for Noerr-Pennington immunity “if it is a mere sham to cover an attempt
to interfere directly with the business relationships of a competitor.”32 The sham
exception applies in this suit if the plaintiff is using litigation as an anticompetitive
weapon, rather than genuinely seeking to achieve an intended result.33
The Supreme Court has articulated a two-part test for determining whether
litigation is a “sham:”
First, the lawsuit must be objectively baseless in the sense that no
reasonable litigant could realistically expect success on the merits. Only
if challenged litigation is objectively meritless may a court examine the
litigant's subjective motivation. Under this second part of the definition
a court should focus on whether the baseless suit conceals “an attempt
to interfere directly” with a competitor's business relationships, Noerr,
supra, 365 U.S., at 144, 81 S.Ct., at 533, through the “use [of] the
governmental process—as opposed to the outcome of that process—as
an anticompetitive weapon[.]” This two-tiered process requires a
plaintiff to disprove the challenged lawsuit's legal viability before the
court will entertain evidence of the suit's economic viability.
Prof’l Real Estate Investors, Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49, 50
(1993) (internal citations omitted). “The existence of probable cause to institute legal
proceedings precludes a finding that an antitrust defendant has engaged in sham
30 Ann K. Wooster, J.D., "Sham" Exception to Application of Noerr–Pennington Doctrine, Exempting
from Federal Antitrust Laws Joint Efforts to Influence Governmental Action Based on Petitioning
Administrative or Judicial Body, 193 A.L.R. FED. 139 (2004).
31 See Gardner v. Clark, 101 F. Supp. 2d 468, 472 (N.D. Miss. 2000).
32 Id.
33 Veritext Corp. v. Bonin, 2019 WL 4738207, at *5 (E.D. La. Sept. 27, 2019) (internal citations and
quotation marks omitted).
litigation.”34 Probable cause in this sense requires no more than a reasonable belief
that there is a chance that a claim may be held valid upon adjudication.35
The defendants argue that the plaintiff is not entitled to Noerr-Pennington
immunity because the plaintiff’s actions allegedly fall under the “sham” exception:
“[The plaintiff’s] actions were objectively baseless and subjectively baseless as [the
plaintiff] possessed the requisite intent.”36 Having carefully reviewed the relevant
law and applicable memoranda, the Court finds that the defendants fail to prove that
this litigation is a “sham.” The defendants’ continued iteration that the plaintiff’s
actions are objectively baseless does not make them so. Support for this finding
includes the fact that the plaintiff owns a registered trademark and has taken steps
to protect that trademark—before and by filing this lawsuit. The Court declines to
discuss in detail the technical merits of the plaintiff’s claims nor is the Court
making a determination on whether the plaintiff will succeed at trial. This Order is
limited to the Court’s finding that this litigation is not a sham and, therefore, the
Court dismisses Counts IV, V, and VI of the defendants’ counterclaims.
Accordingly,
IT IS HEREBY ORDERED that Plaintiff’s Motion to Strike Defendants’
Affirmative Defenses (R. Doc. 15) is GRANTED;
34 Prof’l Real Estate Investors, Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49, 62 (1993) (internal
citations omitted).
35 See id.at 62-63.
36 R. Doc. 22, p. 7.
IT IS FURTHER ORDERED that Plaintiff's Motion to Dismiss for Failure to State
a Claim (R. Doc. 16) is GRANTED;
IT IS FURTHER ORDERED that Defendants’ Motion for Leave to File
Supplemental Memorandum in Support of Opposition to Plaintiff's Rule 12(b)(6)
Motion to Dismiss Antitrust Counterclaims (R. Doc. 45) is DENIED.
New Orleans, Louisiana, this the 6th day of February, 2020.
WENDY B. ‘i TER
UNITED STATES DISTRICT JUDGE