The opinion
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
JAMES DEWULF,
Civ. No. 22-04851 (KM) (AME)
Plaintiff,
OPINION
v.
BLATT BILLIARD CORP. and JANE
DOES 1-10 and XYZ CORPORATIONS
1-10,
Defendants.
KEVIN MCNULTY, U.S.D.J.:
This matter comes before the Court on the plaintiff’s motion to strike
portions of defendant Blatt Billiard Corp.’s answer, pursuant to Fed. R. Civ. P.
12(f), as well as a motion by defendant Blatt Billiard Corp. for judgment on the
pleadings, see Fed. R. Civ. P. 12(c). For the reasons set forth below, the motion
to strike (DE 10) is GRANTED in part and DENIED in part, and the motion for
judgment on the pleadings (DE 13) is DENIED.1
I. Background
The facts alleged in the complaint are as follows. Plaintiff James DeWulf
1 Certain citations to the record will be abbreviated as follows:
Compl. = DeWulf’s complaint (DE 1)
Ans. = Blatt’s answer (DE 9)
MTS = DeWulf’s memorandum of law in support of his motion to strike portions
of Blatt’s answer (DE 10-2)
Opp. to MTS = Blatt’s memorandum of law in opposition to the motion to strike
(DE 11)
MJOP = Blatt’s memorandum of law in support of its motion for judgment on
the pleadings (DE 13-1)
Opp. to MJOP = DeWulf’s memorandum of law in opposition to the motion for
judgment on the pleadings (DE 18)
is a well-known artist and designer. (Compl. ¶9.) He rose to particular critical
acclaim in 2011 after creating and launching a line of gaming tables, including
billiards tables, table tennis tables, and shuffleboard tables. (Id. ¶11.)
DeWulf’s gaming tables are made of concrete and feature a base
consisting of two open, rectangular-box shaped legs that are placed such that
the tops and bottoms of the legs are parallel lengthwise to the width of the
tabletop. The top ends of the legs are intersected perpendicularly by two
parallel-ski shaped support beams running the length of the table, and the
tabletop is placed on top of the skis lengthwise. This design is unique to
gaming tables, which typically feature either four corner legs or a central large
and weighty base. (Compl. ¶¶14, 19.)
DeWulf markets and promotes his gaming tables online through his
website and social media accounts, as well as at industry design and trade
shows. (Compl. ¶22.) Since 2011, his gaming tables have been featured in
dozens of home décor and lifestyle publications. (Id. ¶24.)
Defendant Blatt Billiard Corp. (“Blatt”) manufactures and sells gaming
tables. (Compl. ¶27.) In 2016, Blatt approached DeWulf at the International
Contemporary Furniture Fair (“ICCF”) about entering into a business
arrangement. The parties agreed that Blatt would promote and sell DeWulf’s
gaming tables through Blatt’s website. (Id. ¶28.)
Immediately after starting to sell DeWulf’s gaming tables, and while
continuing to do so, Blatt began selling its own line of gaming tables featuring
a similar design to the DeWulf tables, but at a much lower cost. (Compl. ¶29.)
Like the DeWulf tables, the Blatt tables feature a design consisting of two open
rectangular-box shaped legs and lengthwise parallel skis upon which the
tabletop rests. (Id. ¶30.) After Blatt launched this line of tables, sales of
DeWulf’s gaming tables decreased significantly. (Id. ¶32.)
On May 22, 2022, DeWulf filed an application with the U.S. Patent and
Trademark Office to register his distinctive trade dress. (Compl. ¶16.) On
August 1, 2022, DeWulf commenced this action against Blatt for
misappropriation of the DeWulf trade dress. (DE 1.) DeWulf asserts claims
under the Lanham Act, see 15 U.S.C. § 1125(a), the New Jersey unfair
competition statute, see N.J. Stat. Ann. § 56:4-1, and New Jersey common law.
On September 13, 2022, Blatt filed its answer to the complaint. (DE 9.)
DeWulf responded by filing a motion to strike portions of Blatt’s answer on
October 10, 2022. (DE 10.) On November 15, 2022, Blatt filed a motion for
judgment on the pleadings. (DE 13.) Both motions are fully briefed and ripe for
review.
II. Discussion
A. Motion to strike
Federal Rule of Civil Procedure Rule 12(f) provides, in relevant part, that
“[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).
“The purpose of a motion to strike is to clean up the pleadings, streamline
litigation, and avoid unnecessary forays into immaterial matters.” Conserve v.
City of Orange Twp., No. CV 21-872 (SDW)(ESK), 2021 WL 3486906, at *3
(D.N.J. Aug. 9, 2021), reconsideration denied, No. CV 21-872 (SDW)(ESK), 2022
WL 1617660 (D.N.J. May 23, 2022) (citation omitted).
Rulings on motions to strike are discretionary. See Smith v. Hillside Vill.,
No. CV 17-0883 (KM), 2018 WL 588923, at *9 (D.N.J. Jan. 26, 2018). However,
because motions to strike often require the court to evaluate legal issues before
the factual background of a case has been developed, such motions are
generally disfavored. See United States v. Sensient Colors, Inc., 580 F.Supp.2d
369, 374 (D.N.J.2008). “Thus, a motion to strike will not be granted where the
sufficiency of a defense depends on disputed issues of fact.” Huertas v. U.S.
Dep't of Educ., No. CIV.08-3959 RBK/JS, 2009 WL 2132429, at *1 (D.N.J. July
13, 2009). “A court should grant a motion to strike a defense only where the
‘insufficiency of the defense is clearly apparent.’” Id., quoting Sensient, supra at
374.
Blatt has pled some 100 affirmative defenses, a total far surpassing that
of any other answer the Court can recall. DeWulf argues that close to half of
these are insufficient, redundant, impertinent and immaterial. (MTS 1-2.) While
I tend to agree, it is not expeditious for the Court to evaluate, one by one, the
nearly 50 challenged affirmative defenses, nor is it necessary.
I will, however, address DeWulf’s arguments in support of his motion to
strike paragraphs 10 and 33 of Blatt’s answer, along with affirmative defense
99, which relates to paragraph 33, which at least seem to pose issues that
might streamline litigation.
DeWulf argues that the allegations set forth in paragraph 10 of Blatt’s
answer, which concern the entity DeWulf Concrete, Inc., are immaterial, as
DeWulf Concrete, Inc. is not a party to the action. (MTS 25.) But in paragraph
10 of the complaint, DeWulf asserts that he “established Dewulf Concrete, a
boutique design firm,” in or about January 2005. (Compl. ¶10.) Blatt’s
allegations are therefore not entirely irrelevant, and I will not strike them from
the answer.
In paragraph 33, Blatt “denies doing anything to cause consumer
confusion, mistake or deception as to the source” of its tables and “denies the
public is likely to believe” that its goods are legitimately connected to DeWulf.
(Ans. ¶33.) Also included in paragraph 33 is what Blatt deems to be a “party
admission”—an alleged email sent by DeWulf to Blatt on May 5, 2022. In the
email, DeWulf states that he “understand[s] [Blatt’s] perspective on these
simple looking designs not being unique. But they were.” (Id.) He then explains
the work that went into designing his tables and asserts that “[p]rior to 2013
there was not a similar table on the market.” (Id.) Further along in the email,
DeWulf proposes that he and Blatt “reaffirm [their] working relationship and
work together on this.” (Id.) DeWulf offers to let Blatt make and sell its tables
so long as DeWulf is given design credit, and to put Blatt on DeWulf’s website
and send clients to Blatt’s showrooms. (Id.)
In Blatt’s 99th affirmative defense, Blatt quotes portions of the DeWulf
email set forth in paragraph 33. Blatt asserts that DeWulf cannot claim
secondary meaning or inherent distinctness because DeWulf has admitted that
he can “understand” Blatt’s perspective that the design of the DeWulf gaming
tables is not unique. (Ans. Affirmative Defense 99.) This account omits the
sentence immediately following, in which DeWulf states that, despite
appearances, the design is unique.2 This reference is not the knockout punch
that Blatt represents it to be; at least it is not so dispositive as to merit being
struck from the pleadings. Accordingly, I will deny the motion to strike
paragraph 33 and affirmative defense 99 from Blatt’s answer. I will otherwise
deny the motion to strike.
These two examples are emblematic of the fruitless task and waste of
judicial resources that would be entailed in ruling on each of the 100
affirmative defenses, or even half of them. Such preliminary skirmishes over
pleading matters are contrary to the spirit of the federal rules. To be sure, the
defendant’s approach to pleading appears excessive. Nevertheless, “defenses
2 A further question arises as to whether such statements would ultimately be
admissible in evidence. Federal Rule of Evidence 408 prohibits the use of evidence of
conduct or statements made during settlement negotiations when offered to prove,
among other things, the invalidity of a claim. Fed. R. Evid. 408(a). That DeWulf sent
the email prior to the formal commencement of a lawsuit does not render the email
outside the scope of Rule 408. “There need not be ongoing or even threatened litigation
for discussions to qualify as settlement negotiations,” and Rule 408 can apply where
the dispute is merely “a difference of opinion.” Ciolli v. Iravani, 625 F. Supp. 2d 276,
286 (E.D. Pa. 2009) (citing Affiliated Mfrs., Inc. v. Aluminum Co. of Am., 56 F.3d 521,
527 (3d Cir. 1995)).
DeWulf argues that Blatt cannot introduce settlement-related statements
contained in the May 5, 2022, email to prove the invalidity of DeWulf’s claims, and
that the email is therefore irrelevant to the current proceedings and should be struck.
(MTS 8-9.) Blatt argues, in response, that the email is admissible to show the course
of dealings between Blatt and DeWulf and to show DeWulf’s bad faith.
Blatt is correct that statements made during settlement negotiations may be
admissible to show bad faith or a course of dealing. See Fed. R. Evid. 408(b)
(permitting the use of evidence of conduct or statements made during settlement
negotiations for purposes other than proving or disproving the validity or amount of a
disputed claim or impeaching by a prior inconsistent statement or a contradiction).
But paragraph 33 and affirmative defense 99 make no reference to bad faith or the
parties’ course of dealings; to the contrary, they quote the May 5, 2022, email as
evidence that DeWulf’s claims have no merit.
I will not, however, rule on the admissibility of individual pieces of evidence at
this preliminary stage.
(which need not meet Twombly/Iqbal pleading standards) are commonly pled
with an eye to avoiding a claim of waiver later on.” Smith, 2018 WL 588923, at
*9. “The issues will be refined and framed as the matter proceeds through
discovery, to a potential motion for summary judgment, and certainly in the
process of developing a pretrial order.” Id. “It is therefore not the practice of
this Court to tarry unnecessarily over matters of pleading.” Id.
I will deny DeWulf’s request for costs and attorney’s fees. Although a
defendant may be subject to sanctions under Fed. R. Civ. P. 11 for asserting
frivolous pleadings or defenses, such sanctions should only be issued in
exceptional circumstances. See Innovative Sports, Mgmt., Inc. v. Neto, No.
CIV.A. 13-1497 SRC, 2013 WL 5935982, at *2–3 (D.N.J. Nov. 1, 2013). The
mere presence of defenses in a pleading do not warrant the issuance of
sanctions. See id. (granting motion to strike but denying request for costs and
fees because defendants’ conduct did “not reach the level of unreasonableness
necessary for sanctions”). Should the defendant, in the course of litigation,
persist in pursuing irrelevant or meritless issues, a different result might be
called for.
B. Motion for judgment on the pleadings
Federal Rule of Civil Procedure 12(c) provides for judgment on the
pleadings after the pleadings have been closed. A motion for judgment on the
pleadings will be granted “if, on the basis of the pleadings, the movant is
entitled to judgment as a matter of law. The court will accept the complaint's
well-pleaded allegations as true, and construe the complaint in the light most
favorable to the nonmoving party, but will not accept unsupported conclusory
statements.” DiCarlo v. St. Mary Hosp., 530 F.3d 255, 262-263 (3d Cir. 2008)
(internal citations omitted). For present purposes, the standards governing a
Rule 12(c) motion and a Rule 12(b)(6) motion are similar. See Spruill v. Gillis,
372 F.3d 218, 223 n.2 (3d Cir. 2004).
Blatt argues that it is entitled to judgment on the pleadings on all of
DeWulf’s claims because they are facially time-barred. (MJOP 1-2.) In support
of this argument, Blatt points to a demand letter sent to Blatt by DeWulf’s
counsel, Peter Nussbaum, on June 8, 2022. (Opp. to MTS, Ex. 1, “Demand
Ltr.”) In the letter, Nussbaum accuses Blatt of falsely suggesting in its social
media posts and advertisements that it is the originator of the design of its
gaming tables. (Demand Ltr. 3.) Attached as an exhibit to the letter is what
Nussbaum refers to as “exemplative [s]creenshots of [Blatt’s] social media posts
and advertisement materials making such false claims.” (Id.)
One exemplative screenshot included in the demand letter is of an
Instagram post by Blatt Billiards from March 20, 2016. (Demand Ltr. Ex. C.)
The post consists of an image of a gaming table that resembles the DeWulf
gaming tables in design, and the caption states, “Our newest design, ‘The Fifth
Avenue’ #pooltable by #BlattBilliards.’” (Id.) According to Blatt, the screenshot
demonstrates that DeWulf is aware that Blatt’s alleged infringement dates back
to March 2016, which is before DeWulf and Blatt met at the ICCF. (MJOP 5-6.)
Blatt argues that a six-year statute of limitations applies to all three of
DeWulf’s claims, and that because DeWulf filed his complaint more than six
years after March 2016, the claims are time-barred. (Id. 14-15.)
I begin with Count 1 of the complaint, which asserts a claim under the
Lanham Act. (Compl. ¶¶36-42.) “The Lanham Act does not contain a statute of
limitations and instead subjects all claims to ‘the principles of equity,’ such as
laches.” Kars 4 Kids Inc. v. Am. Can!, 8 F.4th 209, 220 (3d Cir. 2021) (citing
Santana Prods., Inc. v. Bobrick Washroom Equip., Inc., 401 F.3d 123, 135 (3d
Cir. 2005)). To determine whether laches bars a claim, the Court considers
“two elements: (1) the plaintiff's ‘inexcusable delay in bringing suit,’ and (2)
‘prejudice to the defendant as a result of the delay.’” Kars 4 Kids, supra
(quoting Santana, supra, at 138).
“‘Inexcusable delay’ for purposes of laches is measured by looking to ‘the
most analogous’ state statute of limitations, which, in the case of trademark
infringement, is New Jersey's six-year fraud statute.” New Reflections Plastic
Surgery, LLC v. Reflections Ctr. for Skin & Body, PC, No. CV168523FLWTJB,
2018 WL 6716105, at *6 (D.N.J. Dec. 20, 2018) (quoting D'Agostino v.
Appliances Buy Phone, Inc., 633 Fed. Appx. 88, 91 n.3 (3d Cir. 2015)). See also
Kars 4 Kids, 8 F.4th 209, at 221 (claims under the Lanham Act are properly
analogized to New Jersey's six-year fraud statute). If the relevant limitations
period—here, six years—has expired, “then the defendant ‘enjoys the benefit of
a presumption of inexcusable delay and prejudice,’ and the plaintiff ‘carrie[s]
the burden of proving that its delay was excusable and that [the delay] did not
prejudice [the defendant].’” Kars 4 Kids, supra (quoting Santana, 401 F.3d at
138-39).
Importantly, the plaintiff’s delay in filing suit is measured from the time
that the plaintiff knows or should know that the defendant’s conduct
constitutes trademark infringement. Kars 4 Kids, 8 F.4th at 221. In other
words, “[t]he laches clock begins to run when the trademark owner knew or
should have known, not simply that the infringer was using the potentially
offending mark, but that it had a provable infringement claim against the
infringer.’” Id. (quoting Excelled Sheepskin & Leather Coat Corp. v. Or. Brewing
Co., 897 F.3d 413, 419 (2d Cir. 2018)). “The ‘should have known’ date,
sometimes referred to as the ‘constructive notice’ date, occurs when the
plaintiff receives some information that would cause a reasonable person to
inquire into the situation further.” New Reflections, 2018 WL 6716105, at *6
(Citing Symbol Techs., Inc. v. Proxim Inc., No. 01-801, 2004 WL 1770290, at *3
(D. Del. July 28, 2004)).
In evaluating whether laches bars a claim, the court must undertake “‘a
close scrutiny of the particular facts and balancing of the respective interests
and equities of the parties, as well as of the general public.’” Country Floors,
Inc. v. P'ship Composed of Gepner & Ford, 930 F.2d 1056, 1066 (3d Cir. 1991)
(quoting 2 J. McCarthy Trademarks and Unfair Competition 573 (2d ed. 1984)).
This type of inquiry “usually requires the kind of record only created by [a] full
trial on the merits.” Country Floors, supra. Thus, “when the defense of laches
depends on disputed facts, it is inappropriate to make a determination on a
motion to dismiss.” Kaufhold v. Caiafa, 872 F. Supp. 2d 374, 380 (D.N.J. 2012)
(citing Compagnie Des Bauxites de Guinee v. L'Union Atlantique S.A.
d'Assurances, 723 F.2d 357, 363 (3d Cir. 1983)). Judges will grant motions to
dismiss for laches only where the defense is clear on the face of the complaint,
and “it is clear that the plaintiff can prove no set of facts to avoid the
insuperable bar.” Kaufhold, supra (quotation omitted).
The relevant question, then, is whether the complaint, construed in the
light most favorable to DeWulf, establishes that DeWulf knew or should have
known of Blatt’s infringing activity prior to August 1, 2016—six years before
DeWulf filed his complaint. I conclude that it does not. The complaint states
that Blatt began selling its allegedly infringing tables “immediately” after Blatt
began selling DeWulf’s gaming tables, which was sometime after the two met in
2016 at the ICCF. (Compl. ¶¶28-29.) Not only does the complaint lack
specificity as to when Blatt’s alleged infringement began, it does not answer the
more critical question of when DeWulf became aware of Blatt’s alleged
infringement, or, alternatively, when he should have known about the
infringement. Additional facts might demonstrate that DeWulf should have
known about the infringement right when it began, by virtue of the fact that
the parties had previously entered into a business arrangement, but the mere
fact of the business arrangement, without more, does not establish whether
and when DeWulf had constructive notice.
The screenshot of Blatt’s March 2016 Instagram post is outside the scope
of the pleadings, but even assuming that I can consider it for purposes of the
present motion, all that it shows is that Blatt was already engaging in allegedly
infringing activity in March 2016. It does not show that DeWulf was aware of
this activity in March 2016, as there is no evidence that DeWulf viewed the
Instagram post prior to June 6, 2022, when the screenshot was evidently
taken. (Demand Ltr. Ex. C.) True, the complaint states that DeWulf currently
uses social media to promote his designs. But the complaint does not establish
when DeWulf first began using social media, whether he has an Instagram
account, and other factual issues that would demonstrate whether he should
have seen the March 2016 post prior to August 1, 2016. In arguing for
judgment on the pleadings based on this evidence, Blatt asks the Court to
construe the disputed facts in its favor, which I may not do.
At bottom, the factual record is far too undeveloped to conclusively
determine whether there was an inexcusable delay in the filing of the
complaint. While it is possible that Blatt will prevail on its defense of laches, a
ruling at this juncture would be premature. I will therefore deny the motion for
judgment on the pleadings as to the Lanham Act claim. See New Reflections,
2018 WL 6716105, at *6 (denying laches defense on summary judgment
motion because genuine factual disputes exist regarding constructive notice).
I now turn to the state law claims for unfair competition and trade dress
infringement, which are brought under N.J. Stat. Ann. § 56:4-1 and New
Jersey common law. (Compl. ¶¶43-55.) DeWulf does not appear to dispute that
both claims are subject to New Jersey’s six-year statute of limitations. See Kelly
v. Est. of Arnone ex rel. Ahern, No. CIV A 08-6046(SDW), 2009 WL 2392108, at
*7 (D.N.J. Aug. 3, 2009) (“The New Jersey six-year statute of limitations
similarly applies to common law claims for trademark infringement and both
common and state law unfair competition claims.”) Unlike the laches clock,
which begins to run when a plaintiff knows or should know about the existence
of a provable claim, the statute of limitations begins to run upon accrual of the
cause of action. See N.J. Stat. § 2A:14-1. A cause of action “accrues” when “all
of its elements have come into existence such that an omniscient plaintiff could
prove them in court.” See William A. Graham Co. v. Haughey, 646 F.3d 138,
146 (3d Cir. 2011).
As discussed above, the complaint does not specify when Blatt began its
allegedly infringing activity, and thus it is not clear on the face of the complaint
when the cause of action accrued. Again, however, even assuming without
deciding that I can consider the March 2016 Instagram post as evidence that
Blatt was engaging in allegedly infringing conduct at that time, it is still not
clear that the statute of limitations would bar DeWulf’s claims.
In New Jersey, statutes of limitation are “subject to equitable
constraints,” one of which is the discovery rule. Fox v. Millman, 210 N.J. 401,
415 (2012). “The ‘equitable principle of the discovery rule . . . delays accrual of
a cause of action’ until the injured plaintiff discovers, or should have
reasonably discovered, ‘a basis for an actionable claim.’” Id. (Quoting Guichardo
v. Rubinfeld, 177 N.J. 45, 51 (2003)). Both the Third Circuit and the New
Jersey Supreme Court have recognized that the discovery rule applies to
causes of action that sound in fraud. Cetel v. Kirwan Fin. Grp., Inc., 460 F.3d
494, 513 n.15 (3d Cir. 2006); Lopez v. Swyer, 62 N.J. 267, 274 (1973).
Whether the discovery rule applies to DeWulf’s claims, and whether his
claims are nevertheless barred, are questions I cannot answer at this stage.3
The New Jersey Supreme Court has instructed that a judge must consider “all
relevant facts and circumstances” in determining whether the discovery rule
applies, including but not limited to “the nature of the alleged injury, the
availability of witnesses and written evidence, the length of time that has
elapsed since the alleged wrongdoing, whether the delay has been to any extent
deliberate or intentional, [and] whether the delay may be said to have
peculiarly or unusually prejudiced the defendant.” Lopez, 62 N.J. at 275–76.
The record is not sufficiently developed to justify such a determination at this
time. I will therefore deny the motion for judgment on the pleadings as to
Counts 2 and 3 as well.
In short, untimeliness is an affirmative defense, which a defendant must
plead and prove. On a motion like this one, it must appear clearly from the face
of the pleadings that the claim is untimely. Where actual and potential factual
issues will affect the resolution of the timeliness question, a motion to dismiss
or for judgment on the pleadings cannot be granted. I therefore deny the
motions insofar as they are based on laches or the statute of limitations.
3 Although Blatt states that the discovery rule does not apply to DeWulf’s state
law claims, it does not cite any authority in support of this assertion. (MJOP 15.)
III. Conclusion
For the reasons set forth above, DeWulf’s motion to strike (DE 10) is
DENIED. The request for fees and costs is DENIED. Blatt’s motion for
judgment on the pleadings (DE 13) is also DENIED without prejudice to the
renewal of Blatt’s arguments that the claims against it are time-barred,
following discovery and the sufficient development of a factual record. An
appropriate order will issue.
Dated: May 2, 2023
/s/ Kevin McNulty
____________________________________
Kevin McNulty
United States District Judge