The Alexis Brothers, acrobatic circus performers who regularly perform as a featured act of Cirque de Soleil, own a copyright registration titled "Peace and Discord" for an original choreographic work consisting of a sequences of poses and transitions for theatrical performances. A sample of their performance is here.
The Alexis Brothers sued Cirque Italia, LLC and two acrobatic performers (the "A&A Duo") for copyright infringement. A sample of their performance is here.
The A&A Duo asserted counterclaims seeking (among others):
1) Declaratory judgment that they did not infringe;
2) Declaratory judgment that the Alexis Brothers were engaged in copyright misuse
3) Declaratory judgment that the copyright registration was not enforceable
4) relief for unfair competition;
5) relief for defamation.
Concerning the declaratory judgment counts, such counts were merely redundant of plaintiff's claim and thus unnecessary:
The exercise of jurisdiction over a claim for declaratory relief is broadly discretionary. Knights Armament Co. v. Optical Sys. Tech.,568 F.Supp.2d 1369, 1374 (M.D.Fla.2008) (Conway, J.). This discretion permits declination of claims in which “a direct action involving the same parties and the same issues has already been filed.” Knights, 568 F.Supp.2d at 1374–75. The defendants fail to demonstrate how the issues raised by their declaratory claims differ from the issues raised by the plaintiffs' claim and the defendants' affirmative defenses.
Count II requests a declaration that the plaintiffs misused their copyright. The plaintiffs move to dismiss Count II and argue that copyright misuse is not an independent claim for relief. Telecom TechnicalServs. Inc. v. Rolm Co., 388 F.3d 820, 830 (11th Cir.2004) confirms that the Eleventh Circuit “has not recognized, but has not rejected, misuse as a defense to infringement suits.” Microsoft Corp. v. Jesse's Computers & Repair, Inc., 211 F.R.D. 681, 684 (M.D.Fla.2002) (Jones, Mag. J.) observes that “while district courts in this Circuit have discussed the applicability of copyright misuse, none of these courts have expressly applied it as a valid defense.” Unrecognized by the Eleventh Circuit as a defense, copyright misuse offers no basis for a claim for relief. Cf. Shirokov v. Dunlap, Grubb & Weaver, PLLC, 2012 WL 1065578 at*32 (D.Mass. March 27, 2012) (O'Toole, J.) (finding that copyright misuse is not an independent claim for relief, “especially in light of the fact that the First Circuit has not yet recognized the doctrine even as a defense to copyright infringement claims”).The Court also dismissed A&A Duo's claims for unfair competition and defamation for failure to plead sufficient facts to establish each of the claims' elements.
Motion to dismiss Second Amended Counterclaim Granted-in-part.
Lorador v. Vasquez, Case No. 8:14-CV-433 (M.D. Fla. Jan. 22, 2015) (J. Merryday)