Boat Owners Association of the United States v. Flagship Towing LLC et al

Filing 47

OPINION AND ORDER granting in part and denying in part 42 Plaintiff's Motion to Dismiss Defendants' Counterclaim Count II and to Strike Defendants' First, Second, Sixth, and Seventh Affirmative Defenses. Count II of Defendants' Counterclaim is dismissed without prejudice to filing an Amended Counterclaim within 14 days of this Opinion and Order. The motion is otherwise denied. See Opinion and Order for details. Signed by Judge John E. Steele on 7/28/2015. (MAW)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
BOAT OWNERS ASSOCIATION OF
THE UNITED STATES,
Plaintiff,
v.

Case No: 2:15-cv-197-FtM-29CM

FLAGSHIP
TOWING
LLC
CHRISTOPHER B. RILEY,

and

Defendants.

OPINION AND ORDER
This matter comes before the Court on review of Plaintiff's
Motion to Dismiss Defendants' Counterclaim Count II and to Strike
Defendants' First, Second, Sixth, and Seventh Affirmative Defenses
(Doc. #42) filed on July 10, 2015.
(Doc. #44) on July 22, 2015.

Plaintiff filed a Response

For the reasons set forth below, the

motion is granted in part and denied in part.
I.
Plaintiff
(BoatUS)

has

Boat
filed

Owners
a

Association

five-count

of

Complaint

the

United

(Doc.

#1)

States
against

Defendants Flagship Towing LLC (Flagship) and Christopher B. Riley
(Riley) alleging trademark infringement and deceptive and unfair
trade practices.

The underlying facts, as set forth in the

Complaint, are as follows:

BoatUS is a corporation organized under the laws of the
District of Columbia with its principle place of business in
Alexandria, Virginia.
maintenance,
services.

on-water

(Id. at ¶ 3.)
towing,

(Id. at ¶ 11.)

and

other

BoatUS provides fuel,
boating

products

and

BoatUS paints its fleet of towing and

service boats in a color scheme consisting of a red background
with white diagonal stripes near the bow and white lettering aft
of the stripes (the BoatUS Mark).

(Id. at ¶ 13.)

In 2000, the

U.S. Patent & Trademark Office issued to BoatUS the federal
trademark registration number 2,356,475 for use of the BoatUS Mark
in connection with “boat towing services; providing on the water
assistance to boaters by the delivering of gasoline and other
supplies by boat; [and] salvaging and towing disabled vehicles.”
(Id. at ¶ 14.)
Flagship is a corporation organized under the laws of the
State of Texas with its principal place of business in Leander,
Texas.

(Id. at ¶ 4.)

In 2012, BoatUS became aware that Flagship

was offering boat towing services using boats painted in a manner
confusingly similar to the BoatUS Mark.

(Id. at ¶ 17.)

BoatUS

demanded that Flagship change its paint scheme, but Flagship
refused.
Flagship,

(Id. at ¶ 18.)
and

directed

infringing conduct.

Riley is the sole director and member of
and

controlled

(Id. at ¶¶ 5, 9.)

2

Flagship’s

allegedly-

Based on these allegations, BoatUS brings causes of action
against Flagship and Riley for trademark infringement in violation
of the Lanham Act, false designation of origin in violation of the
Lanham Act, common law trademark infringement, violations of the
Florida Deceptive and Unfair Trade Practices Act, and unfair
competition.

Flagship

and

Riley

filed

separate

Answers,

Affirmative Defenses, and Counterclaims (Docs. ##34, 36) on June
19 and June 26, 2015.

BoatUS now moves to strike Defendants’

First, Second, Sixth, and Seventh Affirmative Defenses1 and to
dismiss Count II of Defendants’ Counterclaim.
II.
A.

Motion to Dismiss Counterclaim Count II
Defendants Counterclaim contains three counts.

Count I seeks

a declaratory judgment that Defendants have not infringed upon the
BoatUS mark, Count II alleges that BoatUS has violated the Florida
Deceptive and Unfair Trade Practices Act (FDUTPA), and Count III
alleges that Defendants are entitled to recover their attorneys’
fees and costs incurred in defending this lawsuit.

BoatUS moves

to dismiss Count II, arguing that it fails to state a claim upon

1

Although Defendants each assert the same seven affirmative
defenses, they are not numbered identically. To avoid confusion,
the Court will refer to the relevant affirmative defenses as they
are numbered in Flagship’s Answer (Doc. #34). Flagship’s First,
Second, Sixth, and Seventh Affirmative Defenses correspond to
Riley’s First, Second, Fifth, and Sixth Affirmative Defenses.

3

which relief can be granted.

Defendants respond that Count II is

adequately pled.
Counterclaims, like claims for relief in a complaint, must
contain a short and plain statement showing an entitlement to
relief, and the statement must give the opposing party fair notice
of what the claim is and the grounds upon which it rests. Fed. R.
Civ. P. 8(a)(2); Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555
(2007).

A motion to dismiss a counterclaim under Fed. R. Civ. P.

12(b)(6) is evaluated in the same manner as a motion to dismiss a
complaint.

Whitney Info. Network, Inc. v. Gagnon, 353 F.Supp.2d

1208, 1210 (M.D. Fla. 2005); Fabricant v. Sears Roebuck, 202 F.R.D.
306, 308 (S.D. Fla. 2001).
In deciding a Rule 12(b)(6) motion to dismiss, the Court must
accept all factual allegations in a complaint as true and take
them in the light most favorable to plaintiff, Erickson v. Pardus,
551 U.S. 89, 94 (2007), but “[l]egal conclusions without adequate
factual support are entitled to no assumption of truth,” Mamani v.
Berzaín, 654 F.3d 1148, 1153 (11th Cir. 2011) (citations omitted).
“Threadbare

recitals

of

the

elements

of

a

cause

of

action,

supported by mere conclusory statements, do not suffice.” Ashcroft
v. Iqbal, 556 U.S. 662, 678 (2009).

“Factual allegations that are

merely consistent with a defendant’s liability fall short of being
facially plausible.”

Chaparro v. Carnival Corp., 693 F.3d 1333,

1337 (11th Cir. 2012) (internal quotation marks and citations

4

omitted).

Thus, the Court engages in a two-step approach: “When

there are well-pleaded factual allegations, a court should assume
their veracity and then determine whether they plausibly give rise
to an entitlement to relief.”

Iqbal, 556 U.S. at 679.

FDUTPA declares unlawful “[u]unfair methods of competition,
unconscionable acts or practices, and unfair or deceptive acts or
practices in the conduct of any trade or commerce.”
501.204(1).

Fla. Stat. §

(“An unfair practice is one that offends established

public policy and one that is immoral, unethical, oppressive,
unscrupulous or substantially injurious to consumers.”

Herrera v.

JFK Med. Ctr. Ltd. P'ship, No. 14-CV-2327, 2015 WL 730039, at *5
(M.D. Fla. Feb. 20, 2015) (quoting Rollins, Inc. v. Butland, 951
So. 2d 860, 869 (Fla. 2d DCA 2006)).)

FDUTPA defines “trade or

commerce” as “the advertising, soliciting, providing, offering, or
distributing, whether by sale, rental, or otherwise, of any good
or service, or any property, whether tangible or intangible, or
any

other

situated.”

article,

commodity,

or

Fla. Stat. § 501.203(8).

thing

of

value,

wherever

Conduct occurring during the

exercise of a legal remedy—including filing a lawsuit or issuing
pre-suit demand letters—cannot give rise to a FDUTPA claim because
the pursuit of a legal remedy does not fall within FDUTPA’s

5

definition of “trade or commerce.”

Baker v. Baptist Hosp., Inc.,

115 So. 3d 1123, 1124 (Fla. 1st DCA 2013) (collecting cases).
In support of their FDUTPA counterclaim, Defendants allege
three separate instances of unfair business practices committed by
BoatUS:

(1) that during the pendency of this case, BoatUS has

sought and utilized Flagship’s services on multiple occasions; (2)
that BoatUS filed this action in an attempt to disrupt Flagship’s
business; and (3) that BoatUS has waived its trademark claims.
(Doc. #34, pp. 11-12.)

BoatUS argues that these allegations, even

if proven, could not support a finding that BoatUS violated FDUTPA.
The Court agrees.
As explained above, seeking legal remedies does not fall
within FDUTPA’s definition of “trade or commerce.”
3d

at

1124.

Accordingly,

Flagship’s

Baker, 115 So.

allegations

concerning

BoatUS’s motive for filing this lawsuit cannot support a FDUTPA
claim.

Likewise, Defendants’ allegations that BoatUS waived its

trademark claims cannot support a FDUTPA claim because Defendants
do

not

allege

that

BoatUS’s

waiver

was

an

unfair

competition or an unconscionable business practice.
are

Flagship’s

allegations

that

BoatUS

sought

method

of

What remains
and

utilized

Flagship’s services on multiple occasions while this lawsuit was
pending.

While these allegations, and the supporting invoices

attached as exhibits (Doc. #36-1, Ex. D), are sufficient to
establish that BoatUS contracted with Flagship, the Counterclaim

6

contains

no

allegations

suggesting

that

BoatUS

acted

in

an

“immoral, unethical, oppressive, unscrupulous or substantially
injurious” manner while doing so.

To the contrary, the exhibits

attached to the Counterclaim suggest a run-of-the-mill contractual
relationship in which BoatUS paid Flagship for services rendered.
(Id.)

Accordingly, the Court concludes that Defendants’ FDUTPA

counterclaim must be dismissed for failure to state a claim upon
which relief can be granted.

Defendants will be granted leave to

amend.
B.

Motion to Strike Affirmative Defenses
Under Fed. R. Civ. P. 12(f), “the Court may order stricken

from

any

pleading

any

insufficient

defense

immaterial, impertinent, or scandalous matter.”

or

redundant,

Courts disfavor

motions to strike and deny them unless the allegations have “no
possible relationship to the controversy, may confuse the issues,
or otherwise prejudice a party.”

Reyher v. Trans World Airlines,

881 F. Supp. 574, 576 (M.D. Fla. 1995).

“An affirmative defense

is generally a defense that, if established, requires judgment for
the defendant even if the plaintiff can prove his case by a
preponderance of the evidence.”

Wright v. Southland Corp., 187

F.3d 1287, 1303 (11th Cir. 1999). Affirmative defenses must follow
the general pleading requirements contained in Rule 8 of the
Federal Rules of Civil Procedure.

7

A party must “state in short

and plain terms its defenses to each claim asserted against it.”
Fed. R. Civ. P. 8(b)(1)(A).
As with any pleading, an affirmative defense must provide
“fair notice” of the nature of the defense and the grounds upon
which it rests, Twombly, 550 U.S. at 555, and state a plausible
defense, Iqbal, 556 U.S. at 679.

Thus, “[w]hile an answer need

not include a detailed statement of the applicable defenses, a
defendant must do more than make conclusory allegations.

If the

affirmative defense comprises no more than bare bones conclusory
allegations, it must be stricken.”

Microsoft Corp. v. Jesse's

Computers & Repair, Inc., 211 F.R.D. 681, 684 (M.D. Fla. 2002)
(internal quotations omitted).

The purpose of this pleading

requirement “is simply to guarantee that the opposing party has
notice of any additional issue that may be raised at trial so that
he or she is prepared to properly litigate it.”

Hassan v. U.S.

Postal Serv., 842 F.2d 260, 263 (11th Cir. 1988).
1. Defendants’ First Affirmative Defense
Defendants’ First Affirmative Defense alleges that BoatUS’s
“objection to the use of the color red by Defendants” is contrary
to public policy because “the color red may indicate safety and
assistance”

and

because

Defendants’

business

providing safety assistance and service.”

“is

based

(Doc. #34, p. 4.)

upon
In

their Response to Plaintiff’s motion, Defendants explain that the
First Affirmative Defense argues that BoatUS cannot trademark its

8

use of the color red because red is commonly used to indicate
safety vehicles and, as a result, BoatUS cannot demonstrate the
“acquired distinctiveness” necessary to register a color mark.
(Doc. #44, p. 4.)

Thus, the First Affirmative Defense is actually

a denial of Plaintiff’s allegation that the BoatUS Mark is properly
registered

and

encompasses

BoatUS’s

use

of

the

color

red.

Therefore, the Court will construe the First Affirmative Defense
as a specific denial and it will not be stricken.

Jirau v. Camden

Dev., Inc., No. 8:11-CV-73, 2011 WL 2981818, at *2 (M.D. Fla. July
22, 2011) (“[W]hen a defendant labels a specific denial as a
defense . . . the proper remedy is not to strike the claim, but
instead to treat the claim as a specific denial.”) (quoting FDIC
v. Bristol Home Mortgage Lending, LLC, 2009 WL 2488302 at *3 (S.D.
Fla. Aug. 13, 2009)).
2. Defendants’ Second and Seventh Affirmative Defenses
Defendants’ Second Affirmative Defense alleges that “[t]his
lawsuit

is

enterprises

Plaintiff’s
of

attempt

Defendants,

by

to

restrict

controlling

the

its

ability to identify it to potential customers.”

commercial

appearance

and

(Doc. #34, p. 4.)

Similarly, Defendants Seventh Affirmative Defense alleges that
“Plaintiff is attempting to cause injury and damages to Defendant
by making baseless allegations, by unreasonably attempting to
restrain is commercial enterprises, by demanding that he expend
large sums of money to comply with unreasonable demands, and by

9

using the courts to enforce those demands.”

(Doc. #34, p. 6.)

In

essence, these affirmative defenses allege that BoatUS is not
bringing this case to enforce a valid trademark, but instead to
restrict

Flagship’s

specific

denials

of

business.

Therefore,

BoatUS’s

they

allegation

that

infringing upon the properly-registered BoatUS Mark.

are

actually

Flagship

is

Accordingly,

the Court will construe the Second and Seventh Affirmative Defenses
as a specific denials and they will not be stricken.
3. Defendants’ Sixth Affirmative Defense
Defendants’ Sixth Affirmative Defense alleges that BoatUS has
“waived its right to sue” by “operating watercraft of different
designs and colors than the BoatUS Mark . . . by contracting with
Defendants to perform activities on its behalf . . . [and] by
entering into discussions and agreeing to compromise colors and
designs.”

(Doc. #34, pp. 5-6.)

Affirmative

Defense

must

be

Flagship argues that the Sixth
stricken

because

Defendants’

allegations are insufficient to establish waiver.
As explained by the Eleventh Circuit:
Waiver is either an intentional or voluntary
relinquishment of a known right, or conduct
giving
rise
to
an
inference
of
the
relinquishment of a known right.
Waiver
requires the existence at the time of the
alleged waiver of a right which may be waived,
actual or constructive knowledge of that
right, and the intention to relinquish that
right. Waiver may be express or may be implied
from conduct. For waiver to be implied for
conduct, the acts, conduct or circumstances

10

relied upon to show waiver must make out a
clear case.
Air Products & Chemicals, Inc. v. Louisiana Land & Exploration
Co., 867 F.2d 1376, 1379 (11th Cir. 1989) (citations omitted).
Defendants

concede

trademark

that

rights.

BoatUS

Instead,

did

not

explicitly

Defendants

argue

waive

that

its

BoatUS

implicitly waived those rights by (1) operating boats using design
schemes different from the BoatUS Mark, (2) contracting with
Flagship while the alleged infringement was ongoing, and (3)
“agreeing to compromise colors and designs” for Flagship’s boats.
Taking these allegations together and accepting them as true, the
Court concludes that they are sufficient to plausibly establish
that BoatUS intended to relinquish its right to sue for trademark
infringement.

Accordingly, BoatUS’s motion to strike the Sixth

Affirmative is denied.
Accordingly, it is now
ORDERED:
1.

Plaintiff's Motion to Dismiss Defendants' Counterclaim

Count II and to Strike Defendants' First, Second, Sixth, and
Seventh Affirmative Defenses (Doc. #42) is GRANTED IN PART and
DENIED IN PART.
2.
without

Count

II

prejudice

of
to

Defendants’
filing

an

Counterclaim

Amended

dismissed

Counterclaim

FOURTEEN (14) DAYS of this Opinion and Order.

11

is

within

3.

The motion is otherwise DENIED.

DONE AND ORDERED at Fort Myers, Florida, this
July, 2015.

Copies: Counsel of record

12

28th

day of