American Mariculture, Inc. v. Syaqua Americas, Inc.

Filing 60

OPINION AND ORDER granting in part and denying in part 24 Motion to Dismiss for Failure to State a Claim. The motion is granted as to Counts I and II without prejudice to filing an Amended Complaint within 14 days of this Opinion and Order. The motion is otherwise denied. Signed by Judge John E. Steele on 6/7/2021. (RKR)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
AMERICAN MARICULTURE, INC.,
a Florida corporation,
Plaintiff,
v.

Case No:

2:20-cv-711-JES-MRM

SYAQUA AMERICAS, INC., a
Florida corporation,
Defendant.

OPINION AND ORDER
This matter comes before the Court on review of defendant’s
Motion to Dismiss for Failure to State a Claim (Doc. #24) filed on
October

20,

2020.

Plaintiff

filed

a

Corrected

Response

in

Opposition to Motion (Doc. #31) on November 4, 2020, and defendant
filed a (Corrected) Reply (Doc. #39) on November 19, 2020.
I.
Under Federal Rule of Civil Procedure 8(a)(2), a Complaint
must contain a “short and plain statement of the claim showing
that the pleader is entitled to relief.”

Fed. R. Civ. P. 8(a)(2).

This obligation “requires more than labels and conclusions, and a
formulaic recitation of the elements of a cause of action will not
do.”

Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)

(citation omitted).

To survive dismissal, the factual allegations

must be “plausible” and “must be enough to raise a right to relief

above the speculative level.”

Id. at 555.

See also Edwards v.

Prime Inc., 602 F.3d 1276, 1291 (11th Cir. 2010).
“more

than

accusation.”

an

unadorned,

Ashcroft

v.

This requires

the-defendant-unlawfully-harmed-me
Iqbal,

556

U.S.

662,

678

(2009)

(citations omitted).
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 (2007), but “[l]egal conclusions without adequate
factual support are entitled to no assumption of truth,” Mamani v.
Berzain, 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.” Iqbal,
556 U.S. at 678.
with

a

“Factual allegations that are merely consistent

defendant’s

plausible.”

liability

fall

short

of

being

facially

Chaparro v. Carnival Corp., 693 F.3d 1333, 1337 (11th

Cir. 2012) (citations 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.
II.
Taking

all

the

allegations

as

true,

plaintiff

American

Mariculture, Inc. (plaintiff or AMI) brought suit against Syaqua

2

Americas, Inc. (defendant or Syaqua) for unfair competition and
false designation of origin under the Lanham Act (15 U.S.C. §
1125(a)), for theft of trade secrets under the Defend Trade Secrets
Act (18 U.S.C. § 1832), and for breach of contract and a duty of
good faith and fair dealing, as well as for violations of the
Florida Uniform Trade secrets Act (Fla. Stat. §§ 688.001, et seq.).
(Doc.

#1,

¶

1.)

Plaintiff

offers

and

sells

shrimp

both

domestically and internationally under its trade name, AMI, and a
particular line of shrimp under the trade name, “Kentucky line”.
Plaintiff also produces shrimp broodstock, including a line of
specific pathogen free shrimp broodstock, in competition with
defendant on the world market.
On

or

Memorandum

about
of

October

(Id., ¶¶ 7-8.)

15,

Understanding

2016,

for

the

parties

plaintiff

to

executed

produce

a

shrimp

broodstock for defendant at plaintiff’s facilities in St. James
City, Florida.

After expiration of the initial two-year term of

the Memorandum, plaintiff terminated and gave defendant 12 months
advance notice of the obligation to remove any remaining shrimp
and materials from plaintiff’s facility.

Defendant proposed a

revised agreement granting more favorable treatment to plaintiff.
(Id., ¶ 9.)
On or about October 1, 2018, the parties into a second
agreement, the Production Agreement, providing for plaintiff to
continue using its shrimp breeding facility to grow shrimp provided

3

by defendant for subsequent sale outside the United States.

(Id.,

¶ 10.)

Section 1 of the Production Agreement provides an initial

5

term

year

ending

September

30,

2023,

with

termination

not

permitted before this date without cause, including acts of fraud,
theft, and other material violations of law constituting a breach.
(Id., ¶¶ 12-13.)
Beginning in late 2018, defendant repeatedly breached the
Production

Agreement

by

failing

to

provide

shrimp

broodstock

sufficient to permit plaintiff to produce maximally healthy postlarvae shrimp, and therefore healthy shrimp broodstock.
23.)

(Id., ¶

Through 2019 and 2020, defendant breached the Production

Agreement by disseminating a marketing brochure in India that
falsely claimed that defendant was in possession of the Kentucky
line from AMI and that plaintiff’s production facilities belonged
to defendant, and by falsely claiming association with plaintiff’s
various lines of shrimp in both China and Indonesia.
26.)

(Id., ¶¶ 25-

Throughout 2020, defendant failed to pay invoiced packaging

and shipping fees in the amount of $50,000.

(Id., ¶ 24.)

More specifically, on or about January 16, 2020, defendant
breached section 1.e.(i) of the Production Agreement by engaging
in

theft

of

confidential

and

trade

secret

information

by

“surreptitiously” copying breeding records of AMI shrimp that
directly compete against Syaqua shrimp.

(Id., ¶ 20.)

On or about

March 13, 2020, defendant again breached the same section of the

4

Production Agreement by engaging in theft of the AMI shrimp tissue
samples taken without plaintiff’s authorization.

(Id., ¶ 21.)

On

or about September 1, 2020, defendant failed to make the monthly
base facility overhead service fee of $30,000 per month and failed
to provide plaintiff with 1,000 pairs of commercial production
shrimp broodstock.

(Id., ¶¶ 22, 27.)
III.

Defendant seeks to dismiss Count I for the unfair competition
allegations

under

the

Lanham

Act,

Count

II

for

the

unfair

competition under the state counterpart, the Florida Deceptive and
Unfair

Trade

Practices

Act

(FDUTPA),

Count

III

for

alleged

violations of the Defend Trade Secrets Act (DTSA), Count IV for
alleged violations of the Florida Uniform Trade Secret Act (FUTSA).
1. Lanham Act & FDUTPA
“The legal standards we apply to [the FDUPTA] claim are the
same as those we have applied under section 43(a) of the Lanham
Act.

[

]

Plaintiff's

failure

to

establish

a

likelihood

of

confusion as to its Lanham Act claim also extinguishes its claim
under Florida law.” Suntree Techs., Inc. v. Ecosense Int'l, Inc.,
693 F.3d 1338, 1345 (11th Cir. 2012) (citations and internal
quotation marks omitted).
“Section 43(a) of the Lanham Act creates a federal cause of
action
“forbids

for

unfair

unfair

competition”

trade

in

practices

5

interstate
involving

commerce,

infringement

and
of

trademarks,

even

registration.”

in

the

absence

of

federal

trademark

Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc.,

508 F.3d 641, 647 (11th Cir. 2007) (quoting Univ. of Florida v.
KPB, Inc., 89 F.3d 773, 775–76 (11th Cir. 1996) (per curiam)).
“Section 43(a) is remedial in nature and should be interpreted and
applied

broadly

so

as

to

effectuate

its

remedial

purpose.”

Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193
(11th Cir. 2001).

Under the Lanham Act,

(1) Any person who, on or in connection with
any goods or services, or any container for
goods, uses in commerce 1 any word, term, name,
symbol, or device, or any combination thereof,
or any false designation of origin, false or
misleading description of fact, or false or
misleading representation of fact, which-(A) is likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation,
connection, or association of such person with
another
person,
or
as
to
the
origin,
sponsorship, or approval of his or her goods,
services, or commercial activities by another
person, or
(B) in commercial advertising or promotion,
misrepresents the nature, characteristics,
qualities, or geographic origin of his or her
or another person's goods, services, or
commercial activities,
shall be liable in a civil action by any person
who believes that he or she is or is likely to
be damaged by such act.

The term “commerce” is all commerce as “may lawfully be
regulated by Congress.” 15 U.S.C. § 1127.
1

6

15 U.S.C. § 1125(a).

FDUTPA regulates unfair or deceptive acts or

practices in commerce as unlawful, and due consideration is given
to the interpretations of the Federal Trade Commission and the
federal courts.

Fla. Stat. § 501.204.

Plaintiff asserts a common law right to the trade name of
“AMI” and “Kentucky line”.

(Doc. #1, ¶ 7.)

Under common law,

“trademark rights are appropriated only through actual prior use
in commerce. . . . Thus, actual and continuous use is required to
acquire and retain a protectible interest in a mark.”

Tally-Ho,

Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018, 1022–23 (11th Cir.
1989) (citation and footnote omitted).
A. Count I
In

Count

I,

the

Complaint

provides

that

defendant’s

unauthorized use in commerce of the marks, AMI and Kentucky line
“is likely to cause consumers to believe, contrary to fact, that
Defendant’s shrimp are sold, authorized, endorsed, or sponsored by
Plaintiff, or that Defendant is in some way affiliated with or
sponsored by Plaintiff.”

(Doc. #1, ¶ 31.)

Defendant’s use in

commerce of the two marks is alleged to be a false designation of
origin and misleading.

(Id., ¶ 32.)

Defendant’s conduct is

described as willful, and “intended to and is likely to cause
confusion,

mistake,

or

deception

as

to

the

affiliation,

connection, or association of Defendant with Plaintiff.”
33.)

(Id., ¶

Plaintiff alleges that defendant’s conduct caused immediate

7

and irreparable harm and injury to plaintiff, and its goodwill and
reputation.

(Id., ¶ 35.)

Defendant argues that Count I should be dismissed for not
asserting any actual facts demonstrating that the marks are valid
and legally protectable, or that AMI had prior rights to the mark
at issue.
actual

Defendant also argue that AMI has not asserted any

facts

of

unfair

competition

by

defendant,

or

actual

confusion by customers but only “stated a formulaic recitation of
the elements”.
demonstrating

Defendant asserts that there are no actual facts
actual

or

threatened

harm,

or

that

defendant’s

alleged violation caused any actual or threatened harm.

(doc.

#24, p. 3.)
“[T]o prevail under 15 U.S.C. § 1125(a), a party must show
(1) that it had prior rights to its mark or name and (2) that the
other party had adopted a mark or name that was the same, or
confusingly similar to its mark, such that consumers were likely
to confuse the two.”

Lone Star Steakhouse & Saloon, Inc. v.

Longhorn Steaks, Inc., 106 F.3d 355, 360 (11th Cir.), opinion
modified on reh'g, 122 F.3d 1379 (11th Cir. 1997).
Although plaintiff has alleged a common law prior interest in
marks, plaintiff does not allege a continuous and ongoing use of
a protectible interest that has not been abandoned.

Further,

plaintiff has generically asserted that the “unauthorized use in
commerce of the marks” will confuse consumers and the conduct will

8

continue to damage plaintiff, but there are no facts as to what
actions defendant has taken to use the marks in such a way as to
cause

confusion

for

consumers

other

than

“disseminating

a

marketing brochure in India” claiming “possession of the Kentucky
line from AMI”, that plaintiff’s production facilities “belonged
to Defendant”, and “falsely claiming association with Plaintiff’s
various lines of shrimp” in China and Indonesia 2.
26, 31.)

(Doc. #1, ¶¶

None of the facts allege that the actions by defendant

by possessing or being affiliated with plaintiff made the use of
the mark adopted or used by defendant in a confusing manner.

The

motion will be granted as to Count I with leave to amend.
B. Count II
In

Count

II,

the

Complaint

alleges

that

defendant’s

unauthorized use in commerce of the marks “is likely to deceive
consumers as to the origin, source, sponsorship, or affiliation of
Defendant’s shrimp, and is likely to cause consumers to believe,
contrary to fact, that Defendant’s shrimp are sold, authorized,
endorsed, or sponsored by Plaintiff, or that Defendant is in some
way affiliated with or sponsored by Plaintiff.”

(Id., ¶ 38.)

Plaintiff alleges that defendant’s conduct is unfair competition,

The Production Agreement allows for both companies to “offer
their breeders on a best effort’s basis to existing or potential
customers worldwide.” (Doc. #1-1, ¶ 4a.)
2

9

and the conduct is causing immediate and continuing damage.

(Id.,

¶¶ 39-40.)
“FDUTPA has three elements: (1) a deceptive act or unfair
practice; (2) causation; and (3) actual damages.”

Rollins, Inc.

v. Butland, 951 So. 2d 860, 869 (Fla. 2d DCA 2006).

Under FDUTPA,

an act is deceptive if there is a “‘representation, omission, or
practice that is likely to mislead the consumer acting reasonably
in the circumstances, to the consumer's detriment.’” Peterbrooke
Franchising of Am., LLC v. Miami Chocolates, LLC, 312 F. Supp. 3d
1325, 1343 (S.D. Fla. 2018) (citation omitted).
Defendant argues that Count II should be dismissed because
plaintiff has not asserted any facts that its customers were
confused

by

defendant’s

action,

or

of

unfair

competition.

Defendant further argues that plaintiff has only stated a formulaic
recitation of the elements, and no actual facts demonstrating harm.
(Doc. #24, p. 4.)
met.

Plaintiff asserts that the three elements are

(Doc. #31, p. 11.)
As with the Lanham Act, the Court finds that insufficient

facts are provided for purposes of stating a plausible claim. More
specifically,

it

is

unclear

committed to mislead consumers.

what

act

or

omission

defendant

An “association” with plaintiff’s

marks is vague, and damages beyond “goodwill and reputation, doc.
#1, ¶ 40, do not reflect what actual damages plaintiff’s may be

10

suffering.

The motion will be granted as to Count II, also with

leave to amend.
2. DTSA & FUTSA
Counts III and IV allege a theft of trade secrets under both
the federal Defend Trade Secrets Acts (DTSA) and Florida's Uniform
Trade Secrets Act (FUTSA).

Under the DTSA,

the term “trade secret” 3 means all forms and
types of financial, business, scientific,
technical,
economic,
or
engineering
information . . . if—
(A) the owner thereof
reasonable measures to
information secret; and

has taken
keep such

(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.
Under FUTSA, trade secret “means information, including a
formula, pattern, compilation, program, device, method, technique,
or process that:
3

(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).

11

18 U.S.C. § 1839(3).[] “Information that is
generally known or readily accessible to third
parties cannot qualify for trade secret
protection.” Am. Red Cross v. Palm Beach Blood
Bank, Inc., 143 F.3d 1407, 1410 (11th Cir.
1998) (citing Bestechnologies, Inc. v. Trident
Envtl. Sys., Inc., 681 So. 2d 1175, 1176 (Fla.
2d
DCA
1996)).
Ultimately,
“[w]hether
information constitutes a ‘trade secret’ is a
question of fact.” Penalty Kick Mgmt. Ltd. v.
Coca Cola Co., 318 F.3d 1284, 1291 (11th Cir.
2003) (citations omitted).
As relevant here, to “misappropriate” a trade
secret means to
disclos[e] or use . . . a trade
secret of another without express or
implied consent by a person who . .
. [a]t the time of disclosure or
use, knew or had reason to know that
her or his knowledge of the trade
secret was . . . [a]cquired under
circumstances giving rise to a duty
to maintain its secrecy or limit its
use.
18 U.S.C. 1839(5)(B)(ii)(II); see also Fla.
Stat 688.002(2).
Primo Broodstock, Inc. v. Am. Mariculture, Inc., No. 2:17-CV-9FTM-29CM, 2017 WL 1502714, at *10–11 (M.D. Fla. Apr. 27, 2017),
order clarified sub nom. PB Legacy, Inc v. Am. Mariculture, Inc.,
No. 2:17-CV-9-FTM-29NPM, 2020 WL 104154 (M.D. Fla. Jan. 9, 2020).
In Count III, plaintiff alleges that AMI’s “propriety and
confidential shrimp breeding records constitute trade secrets”,
and plaintiff restricts access to its shrimp breeding records,
even internally, and against disclosure to third parties.
#1, ¶ 43.)

(Doc.

Plaintiff alleges that defendant violated the DTSA by

12

“knowingly obtaining Plaintiff’s shrimp breeding records by fraud,
artifice, and deception and, thereafter, stealing, appropriating,
taking, carrying away, and concealing the theft of Plaintiff’s
shrimp breeding records”, and “knowingly and without Plaintiff’s
authorization

copying,

duplicating,

photocopying,

replicating,

photographing,

transmitting,

uploading,

delivering,

sending,

communicating, and conveying such information” with intent to
convert Plaintiff’s shrimp breeding records, and “knowingly and
without Plaintiff’s authorization receiving and possessing such
information, knowing the same to have been stolen or appropriated,
obtained, or converted without authorization.
alleges attempt of each of the above.

Plaintiff also

(Id., ¶¶ 45-48.)

In Count IV, plaintiff incorporates these paragraphs from
Count

III,

and

confidential

further

shrimp

alleges

breeding

that

records

AMI’s

“proprietary

constitute

trade

and

secrets

within the meaning of Chapter 688.002(4), Florida Statutes, where
they

constitute

information,

including

programs,

methods,

techniques, and processes that are both protected from disclosure
by AMI and derive independent economic value from not generally
being known to or ascertainable by others, including Defendant,
who can obtain economic value from disclosure or use of such
information.”

(Id., ¶ 51.)

Plaintiff goes on to cite the language

from Chapter 688.002(2), Florida Statutes, for the meaning of
“misappropriation”

where

Plaintiff’s

13

records

were

acquired

by

Defendant

without

Plaintiff’s

authorization

and

through

Defendant’s intentional misrepresentations to Plaintiff and acts
of espionage conducted by electronic or other means.”

(Id., ¶

52.)
To state a claim under the DTSA, plaintiff must establish
that defendant possessed “information” of “independent economic
value” that was lawfully owned by AMI and for which AMI took
reasonable measures to keep secret, and defendant “used and/or
disclosed” that “information,” despite having a duty to maintain
its secrecy.

Primo Broodstock, 2017 WL at *11.

For FUTSA,

plaintiff must show that it possessed a “trade secret”, and the
secret was “misappropriated. Sentry Data Sys., Inc. v. CVS Health,
361 F. Supp. 3d 1279, 1293 (S.D. Fla. 2018).
Defendant argues that Count III should be dismissed because
AMI has not identified an alleged trade secret with reasonable
particularity, only a formulaic recitation is provided of the
elements, and there is no factual predicate as to how Syaqua
misappropriated AMI’s trade secret.

Defendant argues that AMI has

not pled facts establishing that the disclosure or threatened
disclosure was to AMI’s detriment, and the Production Agreement
precludes the claim because Syaqua was given the right to access
the breeding records.

(Doc. #24, p. 2-3.)

As to Count IV,

defendant presents essentially the same arguments.

14

(Id., p. 3.)

Each paragraph in Count III above is essentially a verbatim
recitation of the statutory language found in 18 U.S.C. § 1832(a),
and the paragraphs in Count IV citing Fla. Stat. § 688.002, et
seq., also simply mirror the statutory language.

“A pleading that

offers ‘labels and conclusions’ or ‘a formulaic recitation of the
elements of a cause of action will not do.’ [ ] Nor does a complaint
suffice if it tenders ‘naked assertion[s]’ devoid of ‘further
factual enhancement.’” Ashcroft v. Iqbal, 556 U.S. at 678.

In

this case, plaintiff does specifically identify the trade secret
as

“propriety

and

confidential

shrimp

breeding

records”,

the

measures taken to protect the information, that defendant used or
disclosed

the

information

with

intent

to

convert

plaintiff’s

shrimp breeding records despite demands for the return of the
information and the requirement of secrecy. The additional general
facts alleged are as follows:
20. On or about January 16, 2020, Defendant
breached section 1.e.(i) of the Production
Agreement by engaging in the theft of
confidential and trade secret information
belonging to Plaintiff without Plaintiff’s
authorization.
Specifically,
contrary
to
Plaintiff’s express instructions, Defendant
surreptitiously copied confidential and trade
secret information consisting of breeding
records pertaining to AMI shrimp that directly
compete against SyAqua shrimp in various
international
markets.
Despite
repeated
demands, Defendant has failed to return the
confidential and trade secret information
stolen.

15

21. On or about March 13, 2020, Defendant
again
breached
section
1.e.(i)
of
the
Production Agreement by engaging in the theft
of AMI shrimp tissue samples taken Plaintiff’s
authorization.
(Doc. #1, ¶¶ 20-21.)

Although some of the language is formulaic,

the Court finds that plaintiff has plausibly stated a claim under
both the DTSA and FUTSA.
Accordingly, it is now
ORDERED:
Defendant’s Motion to Dismiss for Failure to State a Claim
(Doc. #24) is GRANTED IN PART AND DENIED IN PART.

The motion is

granted as to Counts I and II and the Complaint (Doc. #1) without
prejudice to filing an Amended Complaint within FOURTEEN (14) DAYS
of this Opinion and Order.

The motion is otherwise denied.

DONE AND ORDERED at Fort Myers, Florida, this
of June, 2021.

Copies:
Parties of record

16

7th

day