Primo Broodstock, Inc. v. American Mariculture, Inc. et al

Filing 306

OPINION and ORDER granting in part and denying in part defendants' 252 Motion for Final Summary Judgment. See Opinion and Order for details. Signed by Judge John E. Steele on 4/10/2020. (CMG)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
PB LEGACY, INC, a Texas
Corporation and TB FOOD USA,
LLC,
Plaintiffs,
v.

Case No:

2:17-cv-9-FtM-29NPM

AMERICAN MARICULTURE, INC.,
a
Florida
corporation,
AMERICAN PENAEID, INC., a
Florida
corporation,
and
ROBIN PEARL,
Defendants.
AMERICAN MARICULTURE, INC.,
a Florida corporation,
Counter-Plaintiff,
v.
PB LEGACY, INC, a Texas
Corporation,
KENNETH
GERVAIS, and RANDALL AUNGST,
Counter/Third-Party
Defendants.

OPINION AND ORDER
This matter comes before the Court on defendants’ Motion for
Final Summary Judgment (Doc. #252) filed on November 19, 2019.
Plaintiffs filed a Response in Opposition (Doc. #273) on December
30, 2019, defendants filed a Reply (Doc. #282) on January 14, 2020,

and plaintiffs filed a Sur-Reply (Doc. #286) on January 28, 2020.
For the reasons set forth below, the motion is granted to the
extent that PB Legacy, Inc. is dismissed as a plaintiff.

The

motion is otherwise denied.
I.
Summary

judgment

is

appropriate

only

when

the

Court

is

satisfied that “there is no genuine dispute as to any material
fact and that the movant is entitled to judgment as a matter of
law.”

Fed. R. Civ. P. 56(a).

“An issue of fact is ‘genuine’ if

the record taken as a whole could lead a rational trier of fact to
find for the nonmoving party.”

Baby Buddies, Inc. v. Toys “R” Us,

Inc., 611 F.3d 1308, 1314 (11th Cir. 2010).

A fact is “material”

if it may affect the outcome of the suit under governing law.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).

“A

court must decide ‘whether the evidence presents a sufficient
disagreement to require submission to a jury or whether it is so
one-sided that one party must prevail as a matter of law.’”
Hickson Corp. v. N. Crossarm Co., Inc., 357 F.3d 1256, 1260 (11th
Cir. 2004)(quoting Anderson, 477 U.S. at 251).
In ruling on a motion for summary judgment, the Court views
all evidence and draws all reasonable inferences in favor of the
non-moving party.

Scott v. Harris, 550 U.S. 372, 380 (2007); Tana

v. Dantanna’s, 611 F.3d 767, 772 (11th Cir. 2010).

However, “if

reasonable minds might differ on the inferences arising from

2

undisputed facts, then the court should deny summary judgment.”
St. Charles Foods, Inc. v. America’s Favorite Chicken Co., 198
F.3d 815, 819 (11th Cir. 1999)(quoting Warrior Tombigbee Transp.
Co.

v.

M/V

Nan

Fung,

695

F.2d

1294,

1296-97

(11th

Cir.

1983)(finding summary judgment “may be inappropriate even where
the parties agree on the basic facts, but disagree about the
factual inferences that should be drawn from these facts”)).

“If

a reasonable fact finder evaluating the evidence could draw more
than one inference from the facts, and if that inference introduces
a genuine issue of material fact, then the court should not grant
summary judgment.”

Allen v. Bd. of Pub. Educ., 495 F.3d 1306,

1315 (11th Cir. 2007).
II.
The relevant undisputed material facts are as follows:
At all relevant times, Primo Broodstock, Inc. (Primo), the
original plaintiff in this case, operated a commercial shrimp
breeding business and American Mariculture, Inc. (AMI) operated a
large indoor grow-out facility for shrimp in St. James City,
Florida.

Because Primo had great success in breeding shrimp with

dramatically improved survival rates, Primo decided to market its
disease-resistant shrimp on a global scale.

This required more

grow-out space than Primo’s Texas facility provided and brought
Primo into discussions with AMI.

3

To facilitate these discussions, on December 11, 2014, Primo
and AMI, through their corporate officers, executed a Mutual
Nondisclosure

Agreement

(the

NDA).

(Doc.

#20-1.)

The

NDA

described the purpose of the agreement as follows: “AMI and [Primo]
wish to explore a business possibility in connection with which
each may disclose its Confidential Information to the other (the
Relationship.)”

(Id. ¶ 1) (emphasis in original.)

In relevant

part, the NDA provided that AMI and Primo would not disclose
“Confidential Information” to third parties and would not use such
information “for any purpose other than to carry out discussions
concerning, and the undertaking of, the Relationship.”

(Id. ¶ 3.)

The commitments of the parties “shall survive any termination of
the Relationship between the parties, and shall continue” for
defined lengths of time thereafter. (Id. ¶ 8.) The NDA is governed
by Florida law.

(Id. ¶ 9.)

The discussions proved fruitful, and on January 1, 2015, Primo
entered into a three-year shrimp farming Agreement (the Grow-Out
Agreement) with AMI.

(Doc. #20-2.)

Among other things, the Grow-

Out Agreement provided that AMI would grow post-larvae “Primo
shrimp” for Primo at AMI’s facility, which Primo would then liveharvest and sell to third parties.
2.)

(Doc. #20-2, Agreements ¶¶ 1-

Shrimp which could not be harvested in that manner were to be

killed and sold as dead fresh or frozen shrimp product by AMI.

4

(Id. Agreements ¶ 3.)
Florida law.

The Grow-Out Agreement is governed by

(Id. ¶ 28.)

In January of 2016, Primo and AMI became involved in disputes
regarding Primo’s performance under the Grow-Out Agreement and
AMI’s billing.

At some point between January 1 and January 20,

2016, Kenneth Gervais (Mr. Gervais), the President of Primo, and
Randall Aungst (Mr. Aungst), the Vice President of Primo, informed
Robin Pearl (Mr. Pearl), the AMI Chief Executive Officer, that
Primo had contracted to sell 100,000 Primo shrimp to a Chinese
company, which would result in $750,000 in revenue for AMI pursuant
to the Grow-Out Agreement.

(Doc. #80, pp. 3-4; Doc. #235, p. 3.)

The transaction never materialized, Primo did not harvest or sell
the shrimp, and AMI never received payment.

AMI therefore

notified Primo that it intended to harvest the Primo shrimp at its
facility.

(Doc. #80, p. 4; Doc. #235, pp. 2-3.)

Primo filed suit

against AMI in state court seeking to enjoin AMI from harvesting
the shrimp.

(Id.)

On January 28, 2016, Mr. Pearl met Mr. Aungst (with Mr.
Gervais participating by telephone) to attempt a resolution of the
state-court
Agreement.

litigation

and

the

disputes

under

(Doc. #80, pp. 4-5; Doc. #235, p. 3.)

the

Grow-Out

As a result of

this meeting, Mr. Pearl and Mr. Aungst signed a one-page, untitled
handwritten document (the Term Sheet) (Doc. #20-3.) The Term Sheet
contains

nine

numbered

bullet

points;

5

three

other

unnumbered

bullet points were also written on the page.

In part, the Term

Sheet stated that “AMI will give Primo [until] April 30th 2016 to
remove all animals.”

(Doc. #20-3, p. 2.)

The Term Sheet contained

no reference to which law governed.
Primo did not remove the shrimp from AMI’s facility by April
30, 2016.

AMI retained the Primo shrimp and began breeding and

selling the shrimp on the open market.

(Doc. #80, p. 5; Doc. #235,

p. 3.)
Effective

November

23,

2016,

Primo

and

its

Shareholders

entered into a $2.7 million-plus Asset Purchase Agreement (the
Asset Purchase Agreement) with Ningbo-Tech Bank Co., Ltd. (Ningbo)
in which Ningbo agreed to purchase substantially all of Primo’s
broodstock business assets.

(Doc. #253-1.)

Specifically, the

Asset Purchase Agreement agreed to sell and assign:
all of [Primo’s] right, title and interest in, to and
under all of the assets, properties and rights of every
kind and nature, whether real, personal or mixed,
tangible or intangible (including goodwill), wherever
located and whether now existing or hereafter acquired
(other than the Excluded Assets), which relate to, or
are used or held for use in connection with, the Business
(collectively, the "Purchased Assets"), . . . .
(Doc. #253-1, p. 8, § 2.01.)

This provision then identified

fourteen specific categories of assets being sold.

(Id. pp. 8-9,

§ 2.01(a)-(n).)
Under the Asset Purchase Agreement, contracts which were not
Assigned Contracts were Excluded Contracts, and were not included

6

as Purchased Assets being sold to Ningbo.

(Id. p. 9, § 2.02(b).)

The Schedule of Assigned Contracts did not include either the NDA
or the Grow-Out Agreement.

(Id. p. 68.)

Accordingly, Primo’s

interests in the NDA and the Grow-Out Agreement were not being
sold or assigned to Ningbo, but remained with Primo.
While the Asset Purchase Agreement “is made effective as of
November 23, 2016” (Id. p. 7), the consummation of its transactions
did not actually take place until the Closing.
p. 13, § 3.01.)

(Id. p. 8, § 2.01;

After the execution of the Asset Purchase

Agreement and prior to the Closing, the Primo business was to be
operated by a Service Provider pursuant to a Management Agreement.
(Id. pp. 32-33, § 6.01.)
by Delaware law.

The Asset Purchase Agreement is governed

(Id. p. 57, § 10.10.)

On January 9, 2017, TB Food USA, LLC (TB Food) was authorized
by internal resolution to accept an assignment of Ningbo’s interest
in the Asset Purchase Agreement.

(Doc. #253-3, pp. 71-74.)

The

parties agree that on or about this date Ningbo assigned its
interest in the Primo broodstock business to TB Food.

Because the

Closing had not yet taken place, Ningbo’s assignment to TB Food
did not require Primo’s consent.

(Doc. #253-1, § 10.07.)

Since Primo’s interests in the NDA and the Grow-Out Agreement
were not being sold or assigned to Ningbo in the Asset Purchase
Agreement, they were not included in Ningbo’s assignment to TB

7

Food. Additionally, the Closing had not yet occurred, so the asset
sale had not been consummated.
Also on January 9, 2017, Primo filed this federal action
against defendants AMI, American Penaeid, Inc. (API), and Mr. Pearl
(collectively, Defendants). (Doc. #1.) On January 26, 2017, Primo
filed a nine-count Amended Complaint (Doc. #20) against the three
Defendants.
Effective February 17, 2017, Primo and TB Food executed a
First Amendment to Asset Purchase Agreement (Doc. #253-1, pp. 12126.)

One of the Shareholders (GF Trust) listed in the Asset

Purchase

Agreement

shareholder,

was

had

been

removed

as

determined
a

party

to

not
the

to

have

Asset

been

a

Purchase

Agreement, and agreed to provide a Restrictive Covenant Agreement
(Doc. #253-2, pp. 3-11) at the Closing.

The Schedule 2.01(c)

(Assigned Contracts) section was amended to delete a Lease, but
was not amended to include the NDA or the Grow-Out Agreement.
Additional changes not relevant to the issues in this case were
also agreed upon, and the Asset Purchase Agreement as amended was
ratified by the parties.

Thus, after the First Amendment to the

Asset Purchase agreement, Primo still retained its interests in
the NDA and Grow-Out Agreement.
by Delaware law.

The First Amendment is governed

(Id. at ¶9.)

Also effective February 17, 2017, Primo and TB Food executed
an Assignment and Assumption Agreement (Doc. #253-2, pp. 17-20)

8

(the Assignment.)

Pursuant to the Assignment, Primo sold and

assigned, and TB Food purchased and accepted, “all of [Primo’s]
right, title and interest in and to the contracts listed in Section
2.02(c) of the Disclosure Schedules to the Original Agreement as
amended by the First Amendment (the ‘Assigned Contracts.’).”
p. 17) (emphasis in original.)
Delaware law.

(Id. ¶ 6.)

(Id.

The Assignment is governed by

As noted, neither the NDA nor the Grow-

Out Agreement were identified as an Assigned Contract in the Asset
Purchase Agreement or its First Amendment or in the Assignment.
On February 20, 2017, the Closing of the Asset Purchase
Agreement took place.

(Doc. #253-3, p. 88.)

Primo Broodstock, Inc. thereafter changed its name to PB
Legacy, Inc. (Doc. #86, ¶¶ 4-5.)

On May 15, 2017, with the consent

of all parties, the name Primo Broodstock, Inc. was changed on the
Amended Complaint to PB Legacy, Inc., and TB Food, USA LLC was
added as a plaintiff.

(Doc. #87.)1

On December 4, 2018, the Court filed an Opinion and Order
(Doc.

#135)

granting

defendants’

request

for

partial

summary

judgment as to the conversion claim in Count II and the unjust
enrichment claim in Count IX.

The Court found that Counts II and

While the Order (Doc. #87) refers to TB Foods USA, LLC, the
correct name is apparently TB Food USA, LLC. The Court refers to
PB Legacy and TB Food collectively as “Plaintiffs.”
1

9

IX were preempted by the Florida Uniform Trade Secrets Act (FUTSA)
claim in Count V.
On October 24, 2019, PB Legacy and TB Food entered into an
Assignment of Claims Agreement (the Assignment of Claims). (Doc.
#271-1.)

“To the extent the Asset Purchase Agreements do not

already provide, for clarity” PB Legacy assigned TB Food its
right, title and interest in and to the claim or claims
of [PB Legacy] arising out of or related to the business
relationship between American Mariculture, Inc. (“AMI”),
American Penaeid, Inc.(“API”), and Robin Pearl (“Pearl”)
on one hand, and [PB Legacy] on the other hand (the
“Claim”), including but not limited to those that [PB
Legacy] has filed and is litigating in the Litigation as
defined above including all rights, title and interest
[PB Legacy] has in the [Grow-Out Agreement] with AMI,
API and/or Pearl.
(Doc. #271-1, p. 2.)

The Assignment of Claims identifies “the

Litigation” as the present federal case, Case No. 2-17-cv-9, and
states that “[t]he Plaintiffs’ claims and the Counterclaim arise
out of or are related to the business relationship among the
Defendants and the Counter-Defendants from 2014 through 2016.”
(Id.)

The Assignment of Claims also provided:
All liabilities of Assignor not set forth in
the Asset Purchase Agreements remain with
Assignor including those under the “Growout
Agreement.” This Assignment does not affect
Assignor’s rights, title or interest in the
Intellectual Property Litigation.

(Id.)

The Assignment of Claims further provided that it “is

effective as of January 9, 2017 but is formalized as of the date

10

of the signatures of the Parties, below.”

(Id. p. 1.)

Assignment of Claims is governed by Texas law.

The

(Id. at ¶ 4.)

III.
As a result of the unopposed motion to amend the pleadings
(Doc. #86) and the Order (Doc. #87) granting that motion, each
count

of

the

plaintiffs:

Amended

Complaint

is

being

prosecuted

PB Legacy, Inc. and TB Food USA, LLC.

by

two

Defendants

assert that TB Food USA, LLC is an improper plaintiff as to Count
I, and that PB Legacy, Inc. is an improper plaintiff as to the
remaining counts.

(Doc. #252, pp. 1-2.)

The Court concludes that

TB Food USA, LLC is the only proper plaintiff as to all counts.
Defendants’ initial Motion focuses on whether TB Food and PB
Legacy are a real party in interest as to various counts of the
Amended Complaint.

In their Reply, Defendants shift their focus,

asserting

Food

that

TB

and/or

PB

Legacy

lack

constitutional

standing to assert various claims.

Although Defendants appear to

use

“real

the

terms

“standing”

and

party

in

interest”

interchangeably, each is a distinct legal concept.2
Standing to sue is a doctrine rooted in the
traditional understanding of a case or
controversy. The law of Article III standing,
The Court addresses constitutional standing, despite being
first raised in a reply brief, because “every court has an
independent duty to review standing as a basis for jurisdiction at
any time, for every case it adjudicates.”
Fla. Ass'n of Med.
Equip. Dealers, Med-Health Care v. Apfel, 194 F.3d 1227, 1230 (11th
Cir. 1999)(citations omitted).
2

11

which
is
built
on
separation-of-powers
principles, serves to prevent the judicial
process from being used to usurp the powers of
the political branches. Our standing doctrine
accomplishes this by requiring plaintiffs to
alleg[e] such a personal stake in the outcome
of the controversy as to ... justify [the]
exercise of the court's remedial powers on
[their] behalf. To establish Article III
standing, the plaintiff seeking compensatory
relief must have (1) suffered an injury in
fact, (2) that is fairly traceable to the
challenged conduct of the defendant, and (3)
that is likely to be redressed by a favorable
judicial decision. Absent such a showing,
exercise of its power by a federal court would
be gratuitous and thus inconsistent with the
Art. III limitation.
Our standing decisions make clear that
standing is not dispensed in gross. To the
contrary,
a
plaintiff
must
demonstrate
standing for each claim he seeks to press and
for each form of relief that is sought. The
same principle applies when there are multiple
plaintiffs. At least one plaintiff must have
standing to seek each form of relief requested
in the complaint.
Town of Chester, N.Y. v. Laroe Estates, Inc., 137 S. Ct. 1645,
1650–51 (2017)(citations and internal punctuation omitted).
Rule 17(a) of the Federal Rules of Civil Procedure provides
that “[a]n action must be prosecuted in the name of the real party
in interest.”

Under this Rule, the real party in interest is “‘the

party who, by the substantive law, has the right sought to be
enforced.’”

Symonette v. V.A. Leasing Corp., 648 F. App'x 787,

789 (11th Cir. 2016)(quoting Lubbock Feed Lots, Inc. v. Iowa Beef
Processors, Inc., 630 F.2d 250, 257 (5th Cir. 1980)).

12

Unlike

standing,

the

real

party

in

interest

requirement

is

not

a

constitutional prerequisite that implicates a court’s subject
matter jurisdiction.

See Dunn v. Advanced Med. Specialties, Inc.,

556 F. App'x 785, 789 (11th Cir. 2014).

Rather, the purpose of

the real party in interest rule is “to protect the defendant
against a subsequent action by the party actually entitled to
recover, and to insure generally that the judgment will have its
proper effect as res judicata.”
Committee Notes.

Fed. R. Civ. P. 17 Advisory

A party may have constitutional standing and

still not be a real party in interest.

See e.g., Barger v. City

of Cartersville, Ga., 348 F.3d 1289, 1290 (11th Cir. 2003),
overruled on other grounds by Slater v. United States Steel Corp.,
871 F.3d 1174 (11th Cir. 2017).
A.

Standing/Real Party in Interest as to Count I
In Count I, PB Legacy and TB Food allege that AMI breached

the NDA and the Grow-Out Agreement.

Defendant AMI argues that TB

Food is not a real party in interest, and has no constitutional
standing, to assert this breach of contract claim.

This is so,

AMI asserts, because TB Food was not a party to the contracts and
no interest in these contracts was ever transferred to TB Food by
Primo.
It is undisputed that TB Food was not a party to either the
NDA or the Grow-Out Agreement.

13

Primo has, however, executed

contracts and assignments which impact who is a proper plaintiff
as to Count I.
As discussed above, the November 23, 2016 Asset Purchase
Agreement agreed to sell and assign substantially all of Primo’s
assets to Ningbo except “Excluded Asssets.”

Excluded Assets

included contracts which had not been assigned to Ningbo, and
neither the NDA nor the Grow-Out Agreement was on the Schedule of
Assigned Contracts.

(Doc. #253-1, p. 8.)

Thus, Ningbo was not to

receive an interest in either the NDA or the Grow-Out Agreement
pursuant to the Asset Purchase Agreement.

When Ningbo assigned

its acquired rights to TB Food on or about January 9, 2017, that
assignment did not include Primo’s interests in the NDA or GrowOut Agreement (since those interests were not Ningbo’s to assign).
Additionally, regardless of what interest was to be conveyed at
Closing, Closing had not yet occurred, and so no sale or assignment
had been consummated.

Accordingly, when Primo filed the original

Complaint on January 9, 2017, and the Amended Complaint on January
27, 2017, it was the real party in interest and had constitutional
standing to assert its claim for breach of the NDA and the GrowOut Agreement. Defendant’s arguments to the contrary are rejected.
The February 17, 2017 First Amendment to the Asset Purchase
Agreement added nothing which affected the transfer of Primo’s
interest in the NDA or the Grow-Out Agreement.

14

Thus, at the

February 20, 2017 Closing, TB Food did not acquire any interest in
the NDA or the Grow-Out Agreement.
Recently, in the Assignment of Claims on October 24, 2019, PB
Legacy (formerly Primo) assigned its claims under the NDA and the
Grow-Out Agreement to TB Food.

Specifically, PB Legacy assigned

TB Food its
right, title and interest in and to the claim or claims
of [PB Legacy] arising out of or related to the business
relationship between American Mariculture, Inc. (“AMI”),
American Penaeid, Inc.(“API”), and Robin Pearl (“Pearl”)
on one hand, and [PB Legacy] on the other hand (the
“Claim”), including but not limited to those that [PB
Legacy] has filed and is litigating in the Litigation as
defined above including all rights, title and interest
[PB Legacy] has in the [Grow-Out Agreement] with AMI,
API and/or Pearl.
(Doc. #271-1, p. 2.)

Thus, PB Legacy assigned all its rights and

interests “arising out of or related to the business relationship
between American Mariculture, Inc. (“AMI”), American Penaeid,
Inc.(“API”), and Robin Pearl (“Pearl”) on one hand, and [PB Legacy]
on the other hand (the “Claim”), . . . .”

(Id.)

The Assignment

further defined what was being assigned as “including but not
limited to those that [PB Legacy] has filed and is litigating in
the Litigation as defined above including all rights, title and
interest [PB Legacy] has in the [Grow-Out Agreement] with AMI, API
and/or Pearl.”

(Id.)

Texas law, which governs the Assignment of Claim, has long
allowed the assignment of causes of action. HSBC Bank USA, N.A. v.

15

Watson, 377 S.W.3d 766, 774 (Tex. App.—Dallas 2012, pet. dism'd).
While Texas law allows an assignee to file in its own name or in
the name of the assignor, it is the assignee who is the real party
in interest.

“An assignee may file suit and recover either in his

own name or in the name of the assignor.

Nevertheless, whatever

name he chooses to sue under, when a cause of action is assigned
or transferred, the assignee becomes the real party in interest
with the authority to prosecute the suit to judgment.”

S. County

Mut. Ins. Co. v. Ochoa, 19 S.W.3d 452, 465 (Tex. App. 2000), on
reh'g (May 11, 2000)(citations omitted).

Given TB Food’s ability

to prosecute the case in its own name, there is no need for PB
Legacy to remain a named plaintiff.

Thus, there can be no question

that, based upon the Assignment, as of October 24, 2019, TB Food
became the real party in interest and the only plaintiff with
constitutional standing.3
Judgment will be entered dismissing PB Legacy from Count I
without prejudice.

The Assignment was purported to be made retroactively
effective to January 9, 2017, (Doc. #271-1, p. 1), the date the
original Complaint was filed.
Whatever effect the purported
retroactive effective date may have on the rights and obligations
between PB Legacy and TB Food, it does not re-write history for
constitutional standing purposes.
The historical fact remains
that on the dates the Complaint and Amended Complaint were filed,
Primo had retained its interests in both the NDA and the Grow-Out
Agreement.
3

16

B.

Standing/Real Party in Interest for Counts II through IX
Defendants argue they are entitled summary judgment against

PB Legacy on Counts II4 through IX because Primo (now PB Legacy)
assigned away its interests in such claims prior to filing the
Amended Complaint.

Defendants assert that Primo had assigned all

claims except those under the NDA and Grow-Out Agreement to Ningbo
as of January 9, 2017.

Because the assignee is the real party in

interest, Defendants argue that Primo was not the real party in
interest and lacked standing to assert Counts II through IX when
it filed the Amended Complaint.

Defendants also assert that the

statute of limitations has now run on Counts III, IV, and V, so
dismissal as to these counts must be with prejudice.
For the reasons discussed regarding Count I, Primo/PB Legacy
had

retained

all

of

its

rights

under

the

NDA

and

Grow-Out

Agreement, but has recently assigned away its right to sue for
the claim or claims of [PB Legacy] arising out of or
related to the business relationship between American
Mariculture,
Inc.
(“AMI”),
American
Penaeid,
Inc.(“API”), and Robin Pearl (“Pearl”) on one hand, and
[PB Legacy] on the other hand (the “Claim”), including
but not limited to those that [PB Legacy] has filed and
is litigating in the Litigation as defined above
including all rights, title and interest [PB Legacy] has
in the [Grow-Out Agreement] with AMI, API and/or Pearl.
(Doc. #271-1, p. 2.) The “Litigation” as defined in the Assignment
of Claims includes all claims in this case.

4

(Id. at p. 1, ¶ A.)

The Court previously dismissed Count II.

17

See (Doc. #185.)

Since Counts II through IX all constitute claims which have now
been assigned to TB Food, and since an assignee may prosecute the
cause of action in its own name, PB Legacy no longer has any
interests in such claims.

PB Legacy has neither constitutional

standing to assert the claims nor real party in interest status,
while TB Foods has both.

The Court grants Defendants’ motion in

part and dismisses without prejudice PB Legacy as a plaintiff in
Counts II through IX.
IV.
Defendants also argue they are entitled to summary judgment
on each of the counts for substantive reasons. The Court addresses
each count.
A.

The Breach of Contract Claim (Count I)
Count I asserts a breach of contract claim against AMI,

alleging that AMI breached the NDA and the Grow-Out Agreement.
AMI argues it is entitled to summary judgment because the NDA was
superseded by the Grow-Out Agreement, and AMI thus had no further
obligations under the NDA.

As to the alleged breach of the Grow-

Out Agreement, AMI argues that the Term Sheet terminated the GrowOut Agreement, thus extinguishing AMI’s obligations under the
Grow-Out Agreement.

Thus, according to AMI, its only surviving

obligations were set forth in the Term Sheet, which Count I does
not allege AMI violated.

(Doc. #252, pp. 9-11.)

18

(1)

AMI’s Alleged Breach of the NDA

Count I of the Amended Complaint asserts that AMI breached
the NDA by “failing to preserve the ‘Confidential Information’ (as
defined in the NDA) that had been imparted to it by Primo.”

(Doc.

#20, ¶ 84.)
On December 10, 2014, Primo and AMI entered into the NDA, in
which they agreed
(i) to hold in trust and confidence, and not disclose to
any third parties (except as provided herein), any
Confidential Information and (ii) not to use any
Confidential Information for any purpose other than to
carry out discussions concerning, and the undertaking
of, the Relationship. Each party agrees that it will
disclose Confidential Information only to its directors,
officers,
employees,
representatives,
advisors.
Contractors or agents (collectively, “Representatives”)
who have a clear need to know such information in order
to carry out the discussions regarding the Relationship.
(Doc. #20-1, p. 1.)

The NDA defined “Confidential Information”

as:
any information, technical data, or know-how, including,
but not limited to, that which relates to business plans,
private placements, research, product plans, products,
services, customers, markets, software, developments,
inventions, processes, designs, drawings, engineering,
hardware configuration information, marketing, sales or
finances of the disclosing party or any of its
affiliates, which is designated in writing to be
confidential or proprietary, or if given orally, is
confirmed promptly in writing as having been disclosed
as confidential or proprietary.
(Id. p. 2.)

The NDA further provided that it remained in effect

“for a period terminating on the later to occur of (i) five (5)
years following the date of [the NDA] or (ii) three (3) years from

19

the date on which Confidential Information is disclosed under [the
NDA].”

(Id. p. 3.)

The NDA provided that it “shall be governed

by and construed and enforced in accordance with the internal laws
of the State of Florida.”

(Id.)

AMI asserts that its obligations under the NDA came to an end
because the NDA was superseded by the January 1, 2015 Grow-Out
Agreement between Primo and AMI.

The “specific primary goal” of

the Grow-Out Agreement was to “use a defined portion of AMI growout capacity to produce broodstock for Primo for sale to third
parties.”

(Doc. #20-2, p. 2.)

Primo agreed to “supply AMI at no

cost with 100 breeder pairs (200 animals) every three months” and
AMI agreed to grow “Post-larva [] Primo” shrimp.

(Doc. #20-2, p.

4.)
The Grow-Out Agreement also contained the following “merger”
or “integration” clause:
This agreement, together with the exhibits described
below which are attached hereto and incorporated herein
for all purposes, set forth all agreements between AMI
and Primo relative to the Premises.
All prior
negotiations and agreements are merged herein, and no
subsequent agreement relative to the subject matter
hereof or modification of this agreement shall be
binding unless reduced to a writing signed by both
parties hereto.
The following exhibits have been
attached to and incorporated into this agreement: [blank
space].
(Id. p. 5.) The Grow-Out Agreement further provided that it “shall
be governed by the law of the State or Florida.”

20

(Id.)

“The well established rule of law is that a contract may be
discharged or extinguished by merger into a later contract entered
into between the parties in respect to the same subject which
replaces the original contract.” Aly Handbags, Inc. v. Rosenfeld,
334 So.2d 124, 126 (Fla. 3d DCA 1976) (citing 7 Fla. Jur. Contracts
§ 166 (1956)).

AMI’s assertion that “the Grow-Out Agreement

supersedes the NDA” (Doc. #252, p. 9) is, however, incorrect.
In arguing that the Grow-Out Agreement extinguished AMI’s
obligations – and Primo’s right to sue – under the NDA, AMI relies
on the Grow-Out Agreement’s provision stating that it “set[s] forth
all agreements between AMI and Primo.”

(Doc. #20-2, p. 5.)

But

the integration clause does not state that it supersedes every
agreement Primo and AMI ever entered, as AMI suggests.

AMI fails

to quote the full, relevant portion of the Grow-Out Agreement,
which states:
This agreement, . . . set[s] forth all
agreements between AMI and Primo relative to
the Premises.
All prior negotiations and
agreements
are
merged
herein,
and
no
subsequent agreement relative to the subject
matter
hereof
or
modification
of
this
agreement shall be binding unless reduced to
a writing signed by both parties hereto.
(Doc. #20-2, p. 5)(emphasis added.)

The Grow-Out Agreement thus

limits its integration clause’s applicability to “all agreements
between AMI and Primo relative to the Premises.”
added.)

21

(Id.) (emphasis

The subject matters of the two agreements are quite different
from one another.

The NDA is limited to prohibiting AMI from

disclosing Primo’s confidential information to third parties,
while the Grow-Out Agreement provides the terms and manner in which
AMI would grow post-larvae shrimp for Primo, and how Primo would
compensate AMI for doing so.

Nothing in the Grow-Out Agreement,

which relates to the Premises for raising the shrimp, discusses or
allows AMI to disclose confidential information it had previously
received.
Since the NDA and the Grow-Out Agreement concern different
subject matters, the Court finds that the Grow-Out Agreement does
not supersede the NDA.

Therefore, the Court denies AMI’s motion

for summary judgment as to alleged breach of the NDA in Count I.
(2)

AMI’s Alleged Breach of the Grow-Out Agreement

Count

I

also

alleges

that

AMI

breached

its

contractual

obligations under the Grow-Out Agreement by “transferr[ing] all
right, title, and interest in the Primo shrimp to API, its whollyowned subsidiary . . . .”

(Doc. #20, ¶ 88.)

AMI argues that the

Term Sheet, “[w]hile pithy,” “explicitly terminated” the Grow-Out
Agreement, and thus extinguished AMI’s responsibilities under the
Grow-Out Agreement.

(Doc. #252, p. 10.)

In response, TB Food

asserts that the Term Sheet is not a binding contract because it
did not include “the essential specific terms pertaining to the”
parties’ purported agreement, and therefore did not terminate the

22

parties’ responsibilities under the Grow-Out Agreement.

(Doc.

#273, p. 23.)
Florida law is clear that a subsequent agreement can terminate
or modify a contract.

St. Joe Corp. v. McIver, 875 So. 2d 375,

381 (Fla. 2004)(“It is well established that the parties to a
contract can discharge or modify the contract, however made or
evidenced, through a subsequent agreement.”).

Florida law is also

clear that “[c]ontracting parties are at liberty to address any
issue they see fit, including the question of whether their
agreement may be modified at all, and, if so, how.” Okeechobee
Resorts, L.L.C. v. E Z Cash Pawn, Inc., 145 So.3d 989, 993 (Fla.
4th DCA 2014) (citation omitted).
Here,

the

Grow-Out

Agreement

imposed

restrictions

on

subsequent agreements or modifications:
This agreement, together with the exhibits described
below which are attached hereto and incorporated herein
for all purposes, set forth all agreements between AMI
and Primo relative to the Premises.
All prior
negotiations and agreements are merged herein, and no
subsequent agreement relative to the subject matter
hereof or modification of this agreement shall be
binding unless reduced to a writing signed by both
parties hereto.
The following exhibits have been
attached to and incorporated into this agreement: [blank
space].
(Id. p. 5.)(emphasis added.)

The Term Sheet was “reduced to a

writing signed by both parties” and relates “to the subject matter”
of

the

Grow-Out

Agreement.

Thus,

23

if

the

Term

Sheet

is

a

“subsequent

agreement”

or

a

“modification”

of

the

Grow-Out

Agreement, it will be “binding.”
Essentially, AMI asserts that the Term Sheet is a new contract
which terminated the Grow-Out Agreement, while TB Food asserts
that the Term Sheet is not a contract at all.

The Court agrees

that the “subsequent agreement” language requires the existence of
a valid contact, but concludes that the Term Sheet does not
qualify.
The relevant contract principles are well established under
Florida law.

To succeed on a breach of contract claim, one of the

elements a plaintiff must establish is the existence of a valid
contract.

Friedman v. New York Life Ins. Co., 985 So. 2d 56, 58

(Fla. 4th DCA 2008)(citations omitted).

“To prove the existence

of a contract, a plaintiff must [establish]: (1) offer; (2)
acceptance; (3) consideration; and (4) sufficient specification of
the essential terms.”

Vega v. T-Mobile USA, Inc., 564 F.3d 1256,

1272 (11th Cir. 2009) (applying Florida law)(citations omitted).
For a contract to be binding, the parties must mutually assent to
the essential terms of an agreement.
922, 924 (Fla. 1990).

David v. Richman, 568 So. 2d

“So long as any essential matters remain

open for further consideration, there is no completed contract.”
Jacksonville Port Auth., City of Jacksonville v. W.R. Johnson
Enterprises, Inc., 624 So. 2d 313, 315 (Fla. 1st DCA 1993)(citation
and quotation omitted).

24

Florida

law

provides

no

precise

constitutes an “essential term.”

definition

as

to

what

Nichols v. Hartford Ins. Co. of

the Midwest, 834 So. 2d 217, 219 (Fla. 1st DCA 2002)(citations
omitted).

Rather, “essential terms will vary widely according to

the nature and complexity of each transaction and will be evaluated
on a case by case basis.”

Socarras v. Claughton Hotels, Inc., 374

So. 2d 1057, 1060 (Fla. 3d DCA 1979)(citation omitted).

A court

may consider any number of factors, including “the type of contract
at issue, the number of terms agreed upon relative to all of the
terms to be included, the number of details yet to be ironed out,
the relationship of the parties, and the degree of formality
attending similar contracts . . . .”

Midtown Realty, Inc. v.

Hussain, 712 So. 2d 1249, 1252 (Fla. 3d DCA 1998)(citation and
quotation omitted).
Here, AMI contends the Term Sheet was a contract intended to
formalize the termination of Primo and AMI’s business relationship
and to settle the state court litigation between the parties.
Indeed, Primo’s attorney referred to the Term Sheet as “an untitled
contract.”

(Doc. #1-5, p. 3.)

The form and substance of this

document, however, are inconsistent with “the degree of formality
attending similar contracts” intended to settle complex business
disputes

and

litigation,

and

to

terminate

a

contractual

relationship involving hundreds of thousands of dollars.
712 So. 2d at 1252.

25

Hussain,

As noted above, this one-page, handwritten document contains
nine numbered bullet points, with three other unnumbered bullet
points also written on the page.

Portions of the Term Sheet are

illegible, some bullet points have checkmarks next to them, while
others do not, and most of the bullet point “provisions” are
comprised of incomplete sentences.

It is clear that the contents

of this document fail to encompass all essential terms between
Primo and AMI.

See Hussain, 712 So. 2d at 1252 (“[I]t is more

than reasonable to conclude that the parties did not intend to be
bound by a skeletal Letter of Intent . . . .”); see also Morningstar
Healthcare, L.L.C. v. Greystone & Co., No. 8:05-CV-949-T-MAP, 2007
WL 9736041, at *6 (M.D. Fla. Aug. 27, 2007)(rejecting argument
that “sophisticated parties . . . sufficiently spelled out all the
essential terms for financing a complex, multi-million dollar,
highly regulated asset in a brief, written paragraph.”).
not

reasonable

to

believe

that

the

one-sheet

It is

handwritten,

sometimes cryptic note sets forth all terms to terminate a contract
with a business which just ten months later sold for over $2.7
million.
In

addition,

“the

relationship

of

the

parties”

further

demonstrates that the Term Sheet is lacking essential terms of a
termination agreement.

Midtown Realty, Inc, 712 So. 2d at 1252.

Since the inception of the parties’ business relationship, Primo
and AMI had executed two written agreements (the NDA and the Grow-

26

Out Agreement) stating that Primo shrimp broodstock was Primo’s
intellectual property. The Term Sheet states “AMI will not destroy
animals” and “AMI will give Primo April 30th 2016 to remove all
animals.”

(Doc. #20-3, p. 2.)

Yet it fails to state the legal

consequences if Primo failed to remove its purported intellectual
property from AMI’s facility.
AMI argues that this omission definitively establishes that
Primo transferred its ownership interests in the Primo broodstock
to AMI when Primo failed to remove its shrimp from AMI’s facility
by April 30, 2016.

Neither the omission nor the sparse language

in the Term Sheet supports such a significant consequence.

The

omission relating to the impact on Primo’s ownership interests in
its intellectual property – which Primo had vigorously safeguarded
since the inception of the parties’ relationship - is not a
“nonessential or small item[].”

Williams v. Ingram, 605 So. 2d

890, 893 (Fla. 1st DCA 1992).

Indeed, the parties’ competing

arguments as to the effect of this absent provision demonstrates
it is one of the most essential terms to the parties’ alleged
agreement.5

AMI nonetheless argues the Term Sheet is a binding contract
because Primo undertook some actions consistent with the Term
Sheet’s requirements (Primo voluntarily dismissed AMI from the
state court litigation). The Court is unpersuaded, as “neither
[a] contract nor any of its provisions come into existence” when
essential terms are lacking. Gibson v. Courtois, 539 So. 2d 459,
460 (Fla. 1989).
5

27

The Court finds the Term Sheet is not an enforceable contract
because it is lacking essential terms to the parties’ alleged
agreement.

Johnson Enterprises, 624 So. 2d at 315 (“[I]f there

has been no agreement as to essential terms, an enforceable
contract does not exist.”).
Term

Sheet

did

not

Therefore, the Court finds that the

supersede

the

Grow-Out

Agreement

as

a

“subsequent agreement” and therefore denies this portion of AMI’s
motion as to Count I.
The Grow-Out Agreement also provided that it could be modified
by a signed written document:
All prior negotiations and agreements are merged herein,
and no subsequent agreement relative to the subject
matter hereof or modification of this agreement shall be
binding unless reduced to a writing signed by both
parties hereto.
The following exhibits have been
attached to and incorporated into this agreement: [blank
space].
(Id. p. 5)(emphasis added.) In contrast to terminating a contract,
a modification merely replaces some terms of a valid and existing
agreement while keeping those not abrogated by the modification in
effect. Bornstein v. Marcus, 275 So. 3d 636, 639 (Fla. 4th DCA
2019) (citation omitted).

“Whether the parties have validly

modified a contract is usually a question of fact.” McIver, 875
So. 2d at 382.

The Court finds that the issue of whether the Term

Sheet is a valid modification of the Grow-Out Agreement is a matter
on

which

there

are

disputed

issues

28

of

material

fact,

thus

precluding summary judgment.

AMI’s motion for summary judgment on

Count I is denied.
B.

The Defamation Claim (Count III)
In Count III, TB Food asserts a defamation claim against

Defendants.

TB Food contends that in late 2016, Defendants:

falsely conveyed to the public that (i) the breeder
shrimp that Primo was offering for sale, including
through its exclusive distributor in China (i.e.,
Haimao), are “fake” and not the “real Primo” shrimp,
(ii) Primo had abandoned all intellectual property
rights in the shrimp it left behind with AMI on April
30, 2016, and (iii) Primo had given the full bank of all
its genetic lines to AMI under the Grow-Out Agreement,
while retaining none of the lines for itself at its
headquarters in Brookshire, Texas.
(Doc. #20, ¶¶ 114-16.)

TB Food further alleges that Defendants

made such defamatory statements in the Chinese media and in sales
publications in 2016.

(Id.)

Defamation6 is defined as “the unprivileged publication of
false statements which naturally and proximately result in injury
to another.” Wolfson v. Kirk, 273 So. 2d 774, 776 (Fla. 4th DCA
1973).
A claim of defamation requires “the following
five elements: (1) publication; (2) falsity;
Defendants assert that this count is more properly
characterized as slander.
(Doc. #252, p. 11.)
“Slander is a
spoken or oral defamation of another which is published to others
and which tends to damage that person's reputation, ability to
conduct that person's business or profession, and which holds that
person up to disgrace and humiliation.” Scott v. Busch, 907 So.
2d 662, 666 (Fla. 5th DCA 2005). The Court accepts plaintiffs’
characterization of Count III.
6

29

(3) actor must act with knowledge or reckless
disregard as to the falsity on a matter
concerning a public official, or at least
negligently on a matter concerning a private
person; (4) actual damages; and (5) statement
must be defamatory.” Jews For Jesus, Inc. v.
Rapp, 997 So.2d 1098, 1106 (Fla. 2008).
Clearly, a false statement about another is a
required element of defamation. Cape Publ'n,
Inc. v. Reakes, 840 So.2d 277, 279-80 (Fla.
5th DCA 2003). However, “falsity only exists
if the publication is substantially and
materially
false,
not
just
if
it
is
technically false.” Smith v. Cuban Am. Nat'l
Found., 731 So.2d 702, 707 (Fla. 3d DCA 1999).
“Under the substantial truth doctrine, a
statement does not have to be perfectly
accurate if the ‘gist’ or the ‘sting’ of the
statement is true.” Id. at 706. “The question
of
falsity,
the
[Supreme]
Court
held,
‘overlooks
minor
inaccuracies
and
concentrates upon substantial truth.’ ” Id. at
707 (quoting Masson v. New Yorker Magazine,
Inc., 501 U.S. 496, 516, 111 S.Ct. 2419, 115
L.Ed.2d
447
(1991)
).
Furthermore,
in
determining
whether
a
statement
is
“substantially
true,”
the
statement
in
question must be read in full context of its
publication. Id. at 705-06.
“Where a communication is ambiguous and
reasonably
susceptible
of
a
defamatory
meaning, it is for the trier of fact to decide
whether the communication was understood in
the defamatory sense.” Perry v. Cosgrove, 464
So.2d 664, 666 (Fla. 2d DCA 1985); see also
Pep Boys, 711 So.2d at 1328 (“The questions of
whether
the
broadcast
contained
false
statements and/or statements that could be
interpreted as false are questions of fact
which should be left for a jury to determine
where the communication is ambiguous and is
reasonably
susceptible
of
a
defamatory
meaning.”).

30

Kieffer v. Atheists of Florida, Inc., 269 So. 3d 656, 659-60 (Fla.
2d DCA 2019).
Defendants contend that TB Food’s defamation claim fails as
a matter of law because the statements published by defendants
were not false.

Defendants assert that their alleged statements

that Primo’s distributor in China was selling “fake” Primo shrimp
and

that

only

substantially

API
and

was

selling

demonstrably

the

“real

true.”

Primo”

(Doc.

shrimp

#252,

p.

“is
12.)

Defendants argue that such statements were true then, and are true
now, because Wudi Tenfly owns the rights to the tradename “pu rui
mo” (the phonetic spelling of the Chinese word for “Primo”) in
China under Chinese law.
Haimao

(Primo’s

And since Wudi Tenfly had not granted

distributor

in

China)

a

license

to

use

the

trademarked term “pu rui mo” in China, Defendants assert that API
was in fact the only party selling “real” pu rui mo shrimp in
China.
As TB Food notes in its Response, Wudi Tenfly did not grant
API the right to use the name “pu rui mo” until 2019.

(Doc. #171-

2.) This does not retroactively establish the truth of Defendants’
alleged statement in 2016 that only API had the “real” Primo or
“pu rui mo” shrimp.

The Court finds that Defendants have not shown

that the undisputed material facts establish that their alleged
statements

regarding

“real”

and

“fake”

Primo

“substantially and demonstrably true” in 2016.

31

shrimp

were

Defendants also contend that their alleged statements that
Primo abandoned its intellectual property were not false because
the Term Sheet “terminated any ‘intellectual property’ rights
created by the” Grow-Out Agreement.

(Doc. #252, p. 13.)

The Court

has rejected that there was a contractual termination for the
reasons noted

supra, and concluded that

whether there was a

modification is an issue for the trier of fact.

The Court cannot

otherwise determine on summary judgment that such statements do
not give rise to a claim for defamation.

Kieffer v. Atheists of

Fla., Inc., 269 So. 3d 656, 659 (Fla. 2d DCA 2019)(“Where a
communication

is

ambiguous

and

reasonably

susceptible

of

a

defamatory meaning, it is for the trier of fact to decide whether
the

communication

was

understood

in

the

defamatory

sense.”

(citation and quotation omitted)).
Defendants also argue they are entitled to summary judgment
because their allegedly defamatory publications are qualifiedly
privileged under Florida law.

Under Florida law, even where a

party makes a defamatory publication, “no liability will attach to
it if it was published upon an occasion that makes it qualifiedly
privileged and the privilege was not abused.”

Thomas v. Tampa Bay

Downs, Inc., 761 So. 2d 401, 404 (Fla. 2d DCA 2000)(citation
omitted).

The “essential elements of the qualified privilege are:

(1) good faith; (2) an interest in the subject by the speaker or
a subject in which the speaker has a duty to speak; (3) a

32

corresponding interest or duty in the listener or reader; (4) a
proper occasion; and (5) publication in a proper manner.”
(citations omitted).

Id.

Defendants bear the burden of proving their

entitlement to the qualified privilege.

Kieffer v. Atheists of

Fla., Inc., 269 So. 3d 656, 660 (Fla. 2d DCA 2019)(citation
omitted).

“The

question

of

whether

allegedly

defamatory

statements are [] privileged is one of law to be decided by the
court and consequently is ripe for determination on motion for
summary judgment.” Stephens v. Geoghegan, 702 So. 2d 517, 522 (Fla.
2d DCA 1997) (internal citation omitted).
Defendants contend their allegedly defamatory publications
are privileged because they had “a duty to inform actual and
potential Chinese customers of the provenance of [their] product,
as well as the circumstances by which [they] came into possession
of that product.”

(Doc. #252, p. 13.)

Florida courts have

provided little guidance as to how a party satisfies the duty
element.

In general, “[t]he nature of the duty or interest may be

public, personal or private, either legal, judicial, political,
moral, or social.”

Lewis v. Evans, 406 So. 2d 489, 492 (Fla. 2d

DCA 1981).
The Court finds no basis for concluding Defendants had a duty
to inform potential Chinese customers in 2016 that only API was
selling “real” Primo shrimp and that Primo was selling “fake” Primo
shrimp.

As noted supra, API was not granted a license to use the

33

Chinese trademark “pu rui mo” until 2019 – approximately three
years after Defendants’ allegedly defamatory communications.

The

Court likewise finds no basis for finding that Defendants had a
duty to inform potential Chinese customers that Primo had abandoned
its rights to its intellectual property.

Because Defendants have

not established this duty element, the Court finds that Defendants
have failed to carry their burden in establishing their entitlement
to summary judgment based on qualified privilege.

Defendants’

motion as to Count III is therefore denied.
C.

Trade Secret and Unfair Competition Claims (Counts IV through
VIII)
TB Food asserts claims against Defendants for trade secret

misappropriation under the Defend Trade Secrets Act (Count IV) and
the Florida Trade Secrets Act (Count V); unfair competition under
the Lanham Act (Count VI) and Florida common law (Count VII); and
violation of the Florida Deceptive and Unfair Trade Practices Act
(Count VIII).

Defendants argue that “neither state nor federal

law recognize[] intellectual property rights in bred shrimp or any
other bred animal,” and thus contend that Primo shrimp cannot
qualify as trade secrets.

(Doc. #252, pp. 13-14.)

Defendants

assert they are entitled to summary judgment on Counts IV through
VIII, which (according to Defendants) are all premised on the
existence of a trade secret in shrimp under state and federal law.

34

The Defend Trade Secrets Act broadly defines a trade secret
as:
all forms and types of financial, business, scientific,
technical,
economic,
or
engineering
information,
including
patterns,
plans,
compilations,
program
devices,
formulas,
designs,
prototypes,
methods,
techniques, processes, procedures, programs, or codes,
whether tangible or intangible, and whether or how
stored,
compiled,
or
memorialized
physically,
electronically, graphically, photographically, or in
writing if-(A) the owner thereof has taken reasonable measures to
keep such information secret; and
(B) the information derives independent economic value,
actual or potential, from not being generally known to,
and not being readily ascertainable through proper means
by, another person who can obtain economic value from
the disclosure or use of the information.
18 U.S.C. § 1839(3).

Florida law similarly defines a trade secret

as follows:
information, including a formula, pattern, compilation,
program, device, method, technique, or process that:
(a) Derives independent economic value, actual or
potential, from not being generally known to, and not
being readily ascertainable by proper means by, other
persons who can obtain economic value from its
disclosure or use; and
(b) Is the subject of efforts that are reasonable under
the circumstances to maintain its secrecy.
Fla. Stat. § 688.002(4).
While Defendants concede that the definition of a trade secret
is “undeniably broad in reach,” (Doc. #252, p. 15), they contend
that TB Food has failed to establish that Primo possessed a trade

35

secret as contemplated by the foregoing statutes.

Defendants

reason that “[b]oth statutes are focused on ‘information’ as the
fundamental nature of an alleged trade secret” and Primo’s shrimp
broodstock cannot satisfy such definition.

(Doc. #252, p. 15.)

Throughout this case, Plaintiffs have submitted evidence
detailing the manner in which Primo selectively bred its genetic
line of shrimp to be resistant to White Spot and Early Mortality
Syndrome (EMS) – diseases which are prevalent in shrimp grown in
Asian non-biosecure ponds and can kill shrimp before reaching
“table” size.

(Doc. #271-7, p. 4.)

Primo sold its White Spot and

EMS resistant post-larvae shrimp to farmers in China, who could
grow such shrimp in non-biosecure ponds and profitably sell the
grown shrimp as “table” shrimp.

(Id.)

To prevent such farmers

from being able to perpetually breed the post-larvae Primo shrimp
on their own – and negate the need to purchase Primo broodstock Primo would sell those customers “locked” pairs of breeder shrimp.
(Id. pp. 6-9.)
a

limited

These “locked” pairs were genetically derived from

number

of

family

lines,

so

the

second

and

third

generations of these “locked” pairs would suffer from inbreeding
and would not be as disease resistant as the first generation.
(Id.); (Doc. #271-5, p. 95.)

The only way to prevent such

inbreeding effects would be to breed the “locked” pairs’ offspring
with Primo shrimp from an unrelated family line (which would be

36

impossible without access to Primo’s entire genetic bank).

(Doc.

#271-7, pp. 6-9); (Doc. #271-5, p. 127.)
In

short,

Primo’s

broodstock

business

was

premised

on

knowledge of the underlying Primo shrimp genetics, the manner in
which its shrimp can be successfully bred for generations as
broodstock, and the manner in which “locked” pairs can be used to
prevent customers from breeding such pairs as broodstock lines.
The Court finds such information may qualify as being among the
“all forms and types” of “business, scientific, technical, [and]
economic [] information” under the Defend Trade Secrets Act.
U.S.C. § 1839(3).

18

The Court similarly finds such information to

be a “method, technique, or process” that “[d]erives independent
economic

value

.

.

.

from

not

being

generally

contemplated by the Florida Trade Secrets Act.

known,”

as

Fla. Stat. §

688.002(4).
While Defendants are correct that neither statute “include[]
the terms ‘goods,’ or ‘animals’” as definitions of trade secrets,
(Doc. #252, p. 15), that is not dispositive.

Indeed, courts have

found “goods” and underlying genetics to constitute trade secrets
in analogous situations. See Pioneer Hi-Bred Int'l, Inc. v. Holden
Found. Seeds, Inc., No. CIV. 81-60-E, 1987 WL 341211, at *31 (S.D.
Iowa Oct. 30, 1987)(“[T]he genetic messages of H3H and H43SZ7
[lines of corn] are ‘trade secrets’” because “[t]he genetic message
of these lines of corn which Pioneer spent a great amount of money

37

and effort developing is akin to a secret formula.”); Midwest
Oilseeds, Inc. v. Limagrain Genetics Corp., 231 F. Supp. 2d 942,
953 (S.D. Iowa 2002)(“Genetic information can be property.”).7
The Court is also unpersuaded by Defendants’ assertion that
Neil Gervais, Primo’s chief scientist, disclaimed any trade secret
interests in Primo’s broodstock.

Defendants rely on Mr. Gervais’

deposition testimony where he testified that:
I never used a term ‘Primo method.’ I never marketed a
term Primo method. I would -- I was never asked to define
what that ever meant, that Primo didn't sell a method.
Primo sold animals. The person that sold Primo coined
that term.
(Doc. #275-1, p. 92.)

The Court does not find such testimony

dispositive of the legal issue of whether the Primo broodstock
genetics,
secrets.

and

the

accompanying

information,

constitute

trade

Indeed, Mr. Gervais also testified at deposition that he

has limited knowledge of the legal principles relevant to this
analysis:
Now techniques, if y'all say that this is intellectual
property that can be defended in court, [] that's the
lawyer's definitions. It's not, it's not my world. It's
not my, my area of expertise.
(Doc. #271-5, p. 95.)

Defendants rely on N. Carolina Farm P'ship v. Pig
Improvement Co., 163 N.C. App. 318 (2004) in arguing that animal
genetics cannot constitute a trade secret.
The Court is
unpersuaded because this case involved neither the federal nor
Florida state statute involved in the present case.
7

38

For the foregoing reasons, the Court declines to hold

that

Primo’s broodstock cannot as a matter of law “fall within the
statutory definitions of ‘trade secret’ under state or federal
law.”

(Doc. #252, p. 14.)

The Court thus denies Defendants’

motion as to Counts IV through VIII.
D.

The Lanham Act Claim (Count VI)
Defendants also move for summary judgment on the merits of TB

Food’s Lanham Act claim in Count VI.

Defendants assert they are

entitled to summary judgment because “Plaintiffs do not possess
the trademark rights to the mark, pu-rui-mo, in China,” and Count
VI is predicated upon Defendants’ alleged misappropriation of the
“Primo” tradename.

(Doc. #252, p. 17.)

Contrary to Defendants’ argument, Count VI is not entirely
premised on Defendants’ alleged improper use of the “Primo” or “pu
rui mo” tradename.
that

Defendants

Indeed, in relevant part, Count VI alleges

engaged

in

unfair

competition

practices

in

violation of the Lanham Act by (1) “wrongfully misappropriat[ing]
the Primo Method and other trade secrets of Primo”; and (2) making
“false

and

misleading

[Defendants’]

purported

statements
rights

of

over

fact

.

.

significant

.

concerning

portions

of

Primo’s broodstock and associated intellectual property rights.”
(Doc. #20, ¶¶ 154-55.)

While Count VI alleges that Defendants’

actions caused “confusion regarding the affiliation, connection,
or

association

of

Defendants

to

39

Primo’s

proprietary

shrimp

broodstock and Primo’s tradename,” (Doc. #20 ¶ 156), it does not
allege that Defendants’ use of the name “pu rui mo” in China is
the sole – or even primary – basis for such a Lanham Act claim.
Defendants also argue they are entitled to summary judgment
on this claim because “Wudi Tenfly owns the Chinese mark [pu rui
mo] that underlies Plaintiffs’ Lanham Act claim.”
19.)

(Doc. #252, p.

On January 9, 2020, the Court modified its Preliminary

Injunction in this case to “exclude the term pu rui mo from its
scope” since a Chinese court has determined that Wudi Tenfly owns
the rights to the tradename “pu rui mo” in China.
17.)

(Doc. #281, p.

The Court found that such modification was warranted because

the Preliminary Injunction’s previous prohibition of Defendants’
use of “pu rui mo” in China would be inconsistent with the Chinese
court’s legal determination under Chinese law.
While it is clear that the tradename “pu rui mo” belongs to
Wudi

Tenfly

in

China

under

Chinese

law,

that

issue

is

not

dispositive as to whether Defendants violated the Lanham act as
alleged in Count VI.

Indeed, as noted supra, the crux of the claim

in Count VI is that Defendants allegedly “misappropriated the Primo
Method and other trade secrets of Primo” and “made false and
misleading statements of fact . . . concerning their purported
rights

over

significant

portions

associated intellectual property.”

of

Primo’s

broodstock

and

(Doc. #20, ¶¶ 154-55.)

The

Court is aware of no legal basis – and Defendants cite to none –

40

supporting Defendants’ assertion that they are immune from Lanham
Act liability for

the alleged trade secret misappropriation and

false statements regarding Primo’s intellectual property rights
because Wudi Tenfly owns the “pu rui mo” tradename.

Defendants’

motion as to Count VI is therefore denied.
Accordingly, it is now
ORDERED:
1.

Defendants’

Motion for Final Summary Judgment (Doc.

#252) is GRANTED IN PART AND DENIED IN PART.
2.

The Motion is GRANTED to the extent that PB Legacy, Inc.

is dismissed without prejudice as a plaintiff as to Counts I
through IX.
3.

The Motion is otherwise DENIED.

DONE AND ORDERED at Fort Myers, Florida, this
April, 2020.

Copies: Counsel of record

41

10th

day of