Meth Lab Cleanup, LLC v. Spaulding Decon, LLC et al

Filing 104

ORDER: Plaintiff Meth Lab Cleanup, LLC's Motion for Partial Summary Judgment 84 is GRANTED in part and DENIED in part. On Counts 2, 3, and 6 of Defendants' Counterclaim 32 , the motion is granted. On Count 1 and 4, the motion is den ied. Defendants' Motion for Partial Summary Judgment 89 is GRANTED in part and DENIED in part. On Breaches 3 and 5 alleged in the Complaint 1 , the motion is granted. On Breaches 1 and 2, the motion is denied. On Counts 2, 3, 4, and 6 of the Counterclaim, the motion is denied. Plaintiff may proceed on Breaches 1 and 2 alleged in its Complaint; HOWEVER, Plaintiff is hereby ordered to inform the Court via the Electronic Document Filing System (CM/ECF) whether it will proceed or abandon B reaches 1 and 2. This filing must be received on or before March 30, 2016. If not received, the Court will construe the non-filing as an abandonment of the claims, which may subject the claims to involuntary dismissal. Defendants may proceed on Counts 1 and 4 of the Counterclaim. Signed by Judge James S. Moody, Jr on 3/24/2016. (LN)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
METH LAB CLEANUP, LLC,
Plaintiff,
v.

Case No: 8:14-cv-3129-T-30TBM

SPAULDING DECON, LLC and
LAURA SPAULDING,
Defendants.

ORDER
Plaintiff Meth Lab Cleanup, LLC (“MLCC”) and Defendants Spaulding Decon,
LLC and Laura Spaulding (collectively “Spaulding”) are competitors in a niche service
industry, and they have been bellicose adversaries in litigation that is now entering its sixth
year. In this lawsuit, MLCC alleges that Spaulding breached a contract that settled a
previous lawsuit between them. Spaulding counterclaims that, in fact, MLCC breached the
contract and that, further, MLCC violated the Lanham Act, 15 U.S.C. §§ 1051-1141n, by
engaging in unfair competition and by falsely advertising. Spaulding’s counter-claim also
seeks declaratory relief. Before the Court are the parties’ cross motions for partial summary
judgment (Dkts. 84 and 89) and their respective responses in opposition (Dkts. 94 and 100).
The Court has carefully reviewed the pleadings, evidence, and applicable law. As specified
below, the Court concludes that Plaintiff’s and Defendants’ motions should be granted in
part and denied in part.

FACTUAL BACKGROUND
MLCC and Spaulding compete in the drug-lab and crime-scene decontamination
business, and MLCC first sued Spaulding in 2010 for copyright and trademark
infringement. The case, styled Meth Lab Cleanup, LLC v. Spaulding Decon, LLC and
Laura Spaulding, Case No. 8:10-cv-2550-T-30TGW (the “First Lawsuit”), centered on
MLCC’s assertion that Spaulding had infringed on its protected trademark: “METH LAB
CLEANUP LLC” (the “Trademark” or “Mark”).
MLCC and Spaulding entered into a Confidential Settlement Agreement (the
“Agreement”) to settle the First Lawsuit. As stated in the Agreement and asked for by the
parties in a joint motion, this Court entered a Consent Final Order finding the Trademark
to be “valid and enforceable under the Lanham Act and the common law of the State of
Florida.” Thereafter, the First Lawsuit was dismissed, and the relationship between MLCC
and Spaulding became chiefly a matter of contract law, governed by the terms of the
Agreement.
Relevant Provisions of the Agreement
The Agreement is divided into three major sections: the Recitals, the Definitions,
and the Terms of Agreement. Paragraph K of the Recitals states that “[b]y entering into
this Agreement, the Parties agree to the validity and enforceability of MLCC’s [Trademark]
. . . as [] defined below.” The first entry in the Definitions section defines the Trademark
as “METH LAB CLEANUP LLC,” thrice registered with and issued by the U.S. Patent
and Trademark Office (“USPTO”) (emphasis in original). That section also specifies that,

2

in the Agreement, the term “Spaulding Websites” refers to www.Meth-LabCleanup.com
and www.SpauldingDecon.com, two websites that were owned and operated by Spaulding.
The Terms of Agreement section contains seven provisions that are now relevant.
The first provision is Paragraph 2, which is Spaulding’s broad agreement not to challenge
or contest MLCC’s USPTO-protected Trademark or any future trademark applications
“that include the term METH LAB CLEANUP.” (Dkt. 52, p. 5) (emphasis in original).
Paragraph 2 similarly binds any of Spaulding’s “related consultants, contractors,
employees, agents, subsidiaries, related companies, successors and representatives.”
The second provision is Paragraph 7(b), which is an even broader restriction on
Spaulding’s future conduct: it restricts Spaulding, or any “others employed by or
representing [Spaulding],” from performing “any act or thing which is likely to injure
Plaintiff MLCC, [the Trademark], and/or Plaintiff MLCC’s business reputation or
goodwill.” (Id.).
The third and fourth provisions are Paragraphs 7(a) and 7(d), both of which aim to
protect MLCC’s Trademark. Paragraph 7(a) restricts Spaulding from “making any use of”
the Mark, “METH LAB CLEANUP LLC,” or “any intellectual property that is confusingly
or substantially similar to, or that constitutes a colorable imitation of [METH LAB
CLEANUP LLC].” Restricted uses include those in a “trade name, logo, Internet use,
website, domain name, metatags, advertising, [or] promotions.” (Dkt. 52, p. 7). Paragraph
7(d) prohibits Spaulding from using the Mark or “the common law mark METH LAB
CLEANUP” on any internet domain name or website.

3

The fifth provision is Paragraph 8, which excepts one use from the restrictions in
Paragraphs 7(a) and 7(d). This exception permits Spaulding to use the term “meth lab
cleanup,” in all lowercase letters, to generally describe its services and further states that
such use does not constitute intellectual property infringement. (Dkt. 52, p. 8).
The sixth provision is Paragraph 13, a reciprocal duty of confidentiality. “This
Agreement … shall be held in strict confidence,” it states. More specifically, “the parties
agree that they shall not make any public comment with regard to this Agreement ….” This
duty of confidentiality does not apply, however, to the Court’s Consent Final Order, which
did not specify the terms but did refer to the Agreement. Paragraph 13 also contains the
parties’ agreement “to not disparage, defame or slander each other with regard to their
services, advertising, training, credentials, training [sic], certification or related business
activities.” (Id.).
Lastly, the seventh provision is Paragraph 14, a restriction against Spaulding that
applies specifically to domain names. It states: “[Spaulding] (as well as their agents,
representatives, consultants and contractors) are prohibited from using any form of domain
name (URL) having the terms METH LAB CLEANUP, including any derivative of such
potential domain name (regardless of use of slashed or other additions).” (emphasis in
original).
MLCC and Spaulding also agreed that Florida law applied to the Agreement and
that the Middle District of Florida would retain jurisdiction over any enforcement actions.
The Court entered its Consent Final Order on April 11, 2012, and the Agreement, with

4

these governing terms, went into effect. The litigation ended, and the parties resumed their
previous relationship as merely business competitors.
But the peace would be short-lived, and the parties would soon be—once again—
on a course for the courthouse.
MLCC’s Allegations of Interference and Breaches of the Agreement’s Use
Restrictions
In September 2013, Spaulding took part in a meeting of the American Bio Recovery
Association (ABRA), which was attended by representatives of other companies in the
crime-scene cleanup and drug-lab decontamination industry. There, MLCC alleges, Laura
Spaulding advocated the filing of a lawsuit against MLCC for the purpose of cancelling
MLCC’s Trademarks. (Dkt. 100, p. 5). As support for the allegation, MLCC supplies the
declaration of attendee Peter Riley, president and owner of Crystal Clean Decontamination.
In the declaration, Riley claims that he overheard Laura Spaulding advocating for a
challenge to MLCC’s Trademarks. (Dkt. 102). Riley’s declaration also states that, at the
ABRA meeting, Laura Spaulding discussed MLCC’s lawsuit against her, characterized the
result as her having “lost the lawsuit,” and told attendees that, despite losing, she had not
changed anything on her website. (Dkt. 102, p. 2).
Spaulding disputes this claim and, as its own support, supplies the ABRA meeting
minutes, which do not specifically identify Spaulding as having participated in any such
discussion. Spaulding also supplies the declarations of Laura Spaulding and another
attendee, Theresa Borst, who owns Bio Clean, Inc. Borst and Bio Clean work in the same
industry and are defendants in a different lawsuit against MLCC in the United States

5

District Court for the Western District of Washington. The Borst and Spaulding
declarations state that a conversation about MLCC’s Trademarks did take place at the
ABRA meeting, but that Spaulding did not participate. (Dkts. 89-5, 89-7).
In May 2014, MLCC learned that the website www.methlabservices.com, operated
by Spaulding, contained in its metatags the phrase “Meth Lab Cleanup,” so capitalized.
MLCC, believing that this use of the phrase violated the Agreement’s Paragraph 7 use
restrictions, sent Spaulding a cease and desist letter.
Spaulding’s counsel responded and stated that Spaulding would “remove . . . any
and all headers, metatags, and related content from www.MethLabServices.com, as well
as any related internet information used for search engine optimization regarding the term
“Meth Lab Cleanup or colorable imitation thereof[.]” The response also stated that
“Spaulding intends to comply with the terms of the [] Agreement.”
But Spaulding had a change of heart and determined that its use of “Meth Lab
Cleanup” did not violate the agreement. This change of heart, MLCC alleges, was the
proverbial final straw that caused it to file this lawsuit.
Spaulding’s Allegations of Confidentiality Breaches, Disparagement, and False
Advertising
MLCC sent cease and desist letters to other industry competitors. Spaulding takes
issue with four of these communications; with each one, Spaulding alleges, MLCC violated
the Agreement.
The first communication occurred in July 2013, when MLCC’s counsel sent a letter
to Donetta Held, owner and president of Crisis Cleaning, about her use of “meth lab

6

cleanup” on her website. The letter stated: “the United States District Court for the Middle
District of Florida, in Case No. 8:10-CV-2550-T-30TGW, noted in a 2012 judgment that
MLCC’s mark METH LAB CLEANUP was distinctive.” (Dkt. 89-9, p. 2). To Spaulding,
this letter violated Paragraph 13’s confidentiality provision. To MLCC, which admits to
sending the letter, the letter mentions the case and the Court’s order, not the Agreement,
and thus does not violate the Agreement.
The second communication occurred sometime in 2014 or 2015, when MLCC
employee Joseph Mazzuca had a telephone conversation with a mutual client of MLCC
and Spaulding. (Mazzuca Dep. p. 149; Dkt. 89-1, p. 39). In that conversation, Mazzuca
first accused the client of stealing MLCC’s work product, specifically the style and format
of MLCC’s service proposals. Then the client informed Mazzuca that the service proposals
were not the client’s, but were in fact produced by a mutual provider, i.e. an MLCC
competitor, whose name the client did not feel comfortable disclosing. The tone of the
conversation then shifted, and Mazzuca and the client engaged in a short discussion in
which the client criticized the competitor and stated that he would terminate his business
relationship with them. According to Mazzuca’s deposition, the only evidence of this
conversation, the client—not he—discussed the competitor, whom he believed to be
Spaulding. But, he further testified, Spaulding’s name was never mentioned. (Mazzuca
Dep., p. 152, Dkt. 89-1, p. 39).
In its motion, Spaulding asserts that Spaulding, though unnamed throughout, was
the subject of this critical conversation, and that the conversation amounted to
disparagement, also in violation of Paragraph 13. MLCC disagrees.

7

The third communication occurred in November 2015, in the throes of MLCC’s
lawsuit with Borst and Bio Clean in Washington. In that case, MLCC filed the Agreement
with the Court. Spaulding alleges that this disclosure violates Paragraph 13’s
confidentiality provision of the Agreement.
MLCC responds in two ways. It argues, first, that context matters, and that
Paragraph 13’s confidentiality provision permits disclosures in response to a “legal or
administrative process,” which the Washington litigation is. And second, it notes that this
excepted disclosure of the Agreement came in response to mischaracterizations of the
Agreement Borst made in her own declaration—mischaracterizations that could have only
been known if Spaulding had first disclosed the terms of the Agreement to her.
The fourth communication involved not a cease-and-desist letter, but an email
exchange, with another industry competitor, Kirk Flippin of Texas Decon. MLCC
president Julie Mazzuca began the exchange on the morning of January 5, 2015, with the
following: “You are next Kirk.” Flippin replied, and several more emails were exchanged
throughout that day, to include Mazzuca’s allegation, “You are using my trademark to sell
your services. It is against the law.” But the critical email, according to Spaulding, is this
one—from Mazzuca to Flippin, sent Tuesday January 6, 2015 at 3:04 p.m.:
Call a lawyer Kirk. I will not educate your webmaster. Didn’t
you already experience a lawsuit with Spaulding in which she
lost???????????????????????????????????? [sic]
(Dkt. 89-9, p. 3). Spaulding submits a copy of this email, as well as the longer chain it is a
part of, as evidence supporting that MLCC, not Spaulding, disparaged the other and
disclosed settlement terms, both violations of Paragraph 13.

8

MLCC responds in a few ways. First, it says that the email is a fraud. As support,
MLCC provides a copy of what it alleges to be the accurate email chain. The contents of
that chain are identical in all but one respect. In the MLCC version, the email from Mazzuca
to Flippin, also sent Tuesday January 6, 2015 at 3:04 p.m. says:
I will be seeking damages; have successfully.
(Dkt. 86-3, p. 8). MLCC argues that it has supplied the accurate version and that
Spaulding’s is unreliable hearsay.
MLCC next argues that the dispute over which email is the real one is irrelevant—
because neither one violates the Agreement. Even Spaulding’s version, MLCC argues, falls
short of the kind of disparagement or disclosure prohibited by Paragraph 13.
Lastly, MLCC argues that the date on which the email exchange took place is
dispositive: in January 2015, Spaulding had already violated the Agreement, after which
MLCC was no longer legally bound by the Agreement’s terms. 1
Finally, in 2014 MLCC began promoting its business in Florida. It did this,
primarily, with the creation of the website www.floridamethlabcleanup.com. The website
contains assertions that Spaulding argues amount to false advertising in violation of the
Lanham Act. Among those assertions are the following: that Florida Meth Lab Cleanup is

1

See Dkt. 84, p. 23 (citing MDS (Canada) Inc. v. Rad Source Technologies, Inc., 720 F.3d
833, 852 (11th Cir. 2013) (“a material breach excuses a party from performance of the contract . .
. .”)). MLCC points to Dkt. 39, an earlier order that granted MLCC partial summary judgment and
found that Spaulding had been in violation of the Agreement as of May 2014. See Procedural
History section of this Order.

9

a Florida company; that it has been in business since 2003; and that it has four Florida
locations.
MLCC admits to these factual allegations, but argues that the facts, even when
combined with the other evidence gathered through discovery, fall short of establishing the
elements of a false advertising claim.
MLCC’s Complaint
MLCC filed this lawsuit in December 2014. Although styled as a one-count breachof-contract claim, MLCC’s complaint in fact alleged five discrete breaches of the
Agreement. Summarized, those alleged breaches are:
(1) Breach 1, urging cancellation of MLCC’s Trademarks at the ABRA meeting in
violation of Paragraphs 2 and 13 of the Agreement;
(2) Breach 2, disparaging MLCC and performing acts likely to injure MLCC and its
Trademarks in violation of Paragraphs 2, 7, and 13—specifically, by assisting
Theresa Borst and her company, Bio Clean, in their defense of a lawsuit MLCC
filed against them and in their petition with the USPTO to cancel MLCC’s
Trademarks;
(3) Breach 3, using the website domain name www.methlabservices.com in violation
of Paragraphs 7 and 14;
(4) Breach 4, use of the phrase “Meth Lab Cleanup” on the Spaulding Websites and in
their metatags in violation of Paragraph 7; and
(5) Breach 5, disclosing the terms of the Agreement in violation of Paragraph 13.
(Dkt. 1). Because any one material breach of a contractual obligation is sufficient to prevail
on a breach of contract claim, 2 the Court will treat each breach as a separate count in

2

Provided that the other elements of a breach of contract claim are established. See Vega
v. T-Mobile USA, Inc., 564 F.3d 1256, 1272 (11th Cir. 2009) (applying Florida law).

10

MLCC’s complaint. (But, in an effort to distinguish these from the six counts raised in
Spaulding’s counterclaim, the Court will continue to refer to each as a “Breach”).
Spaulding’s Counterclaim
Spaulding’s counterclaim contains the following six counts:
(1) Count 1, seeking a declaratory judgment that Spaulding’s use of the phrase “meth
lab services” does not infringe on MLCC’s Trademarks, statutory or common law,
and does not violate the terms of the Agreement;
(2) Count 2, alleging that MLCC unfairly competed in violation of the Lanham Act by
asserting that it has exclusive intellectual property rights in the phrase “meth lab
services” and by making false and derogatory statements about Spaulding;
(3) Count 3, alleging that MLCC falsely advertised in violation of the Lanham Act by
operating the website www.floridamethlabcleanup.com and in other ways
misleading the public into believing it was a Florida company;
(4) Count 4, alleging that MLCC violated the confidentiality provision of the
Agreement;
(5) Count 5, alleging that MLCC violated the Agreement when it threatened to sue—
and later did sue—Spaulding for its use of the phrase “meth lab cleanup,” which the
Agreement authorized (although this count did not specify whether Spaulding
capitalized any of the letters in the phrase in its post-Agreement uses, a fine but
critical distinction that would become relevant on a later summary judgment
motion); and
(6) Count 6, alleging that MLCC violated the Agreement when it later disparaged
Spaulding.
PROCEDURAL HISTORY
In May 2015, MLCC moved for partial summary judgment—specifically, on
Breach 4 in the complaint. The motion supplied evidence proving that Spaulding was using
the phrase “Meth Lab Cleanup,” so capitalized, in the metatags on the website
www.methlabservices.com. (Dkt. 30). The motion argued that this use was intellectual

11

property infringement and that it violated Paragraph 7 of the Agreement. 3 Spaulding
conceded that it used the phrase as alleged, but disputed that the use infringed or violated
the Agreement.
The Court agreed that the use of the phrase violated the Agreement (Dkt. 39). In the
summary judgment order, the Court referred briefly to trademark law to ascertain the
parties’ intent when they used, in Paragraph 7, the description “confusingly or substantially
similar to,” which is language adopted from the Lanham Act and its case law. The Court
also recognized that this task, ascertaining the intent of contracting parties, requires
examining “disputed terms in the context of the entire agreement, giving words their plain
and ordinary meaning as understood by a reasonable person.” (internal citation and
quotation marks omitted). With this guidance, the Court concluded that the capitalized
phrase “Meth Lab Cleanup,” be it on a website or in metatags, was, as the parties intended,
“confusingly or substantially similar to” MLCC’s Trademark, “METH LAB CLEANUP
LLC.” The Court later noted how the Agreement, read in its entirety, would lead a
reasonable person straight to this conclusion: “The [A]greement’s Safe Harbor provision
[in Paragraph 8] allows [Spaulding] to use ‘meth lab cleanup’ to describe their services.
Yet if this use, ‘meth lab cleanup,’ was not confusingly similar to ‘Meth Lab Cleanup
LLC,’ there would be little need for the extra provision.” (Dkt. 63, p. 11).

3

As will be discussed more thoroughly below, both MLCC and Spaulding often
mischaracterize MLCC’s complaint as one for trademark or intellectual property infringement.
The complaint is one for breach of contract exclusively. See Liberty Mut. Ins. Co. v. Wetzel, 424
U.S. 737, 743 n. 4, 96 S. Ct. 1202 (1976).

12

In granting MLCC’s motion, the Court enjoined Spaulding from use of the phrase
“Meth Lab Cleanup,” in any letter case configuration except all lowercase, on any websites
operated by Spaulding or in any of those websites’ metatags. (Dkt. 39, p. 15; Dkt. 63, pp.
11-12).
The Court, however, expressly confined this holding in a few important ways. First,
the Court held that Spaulding’s use of “meth lab cleanup,” in lowercase letters, on any
website or metadata, did not violate the Agreement. (Dkt. 39, p. 15; Dkt. 70, p. 2). This
limitation was motivated, in part, by three factors: (1) on the Agreement’s Paragraph 8,
which permitted Spaulding’s use of “meth lab cleanup” to describe its services; (2) on the
generic nature and common use of the phrase, particularly the term “meth lab;” 4 and (3)
on a provision in the Agreement stating that, before January 26, 2012, the Spaulding
website www.spauldingdecon.com was free of intellectual property infringement, coupled
with evidence suggesting that “meth lab cleanup,” so capitalized, was in the website’s
metatags before that critical date.
Second, the Court denied the portion of MLCC’s motion that sought to enjoin
Spaulding from using a domain name with any of terms “Meth,” “Lab,” or “Cleanup,” or

4

Indeed, by 2014 the acclaimed television show Breaking Bad had become the most bingewatched show in T.V. history, according to Time. See Abby Abrams, Breaking Bad Is the Most
Binge-Watched TV Show Ever, Study Finds, TIME, June 25, 2014, available at
http://time.com/2924105/breaking-bad-is-the-most-binge-watched-tv-show-ever-study-finds/. It
logically follows that the show’s major plotline—the ‘cat-and-mouse’ chase between the Drug
Enforcement Administration and participants in the illegal methamphetamine business that
necessitates, on the part of the illicit entrepreneurs, the use of evermore clandestine and elusive
manufacturing laboratories to evade DEA detection (like an RV, to use just one example from the
show)—has gained at least as much in familiarity as the show has in popularity, which is to say
that the term “meth lab,” in American folk parlance at least, is nearing ubiquity.

13

any confusingly similar terms. The Agreement, the Court held, did not contain such a broad
use restriction. (Dkt. 39, p. 15).
Spaulding later moved for partial summary judgment on Count 5 of its counterclaim
(Dkt. 57). The motion sought a judgment that, because Spaulding, per the Court’s previous
order, was permitted to use the phrase “meth lab cleanup,” MLCC violated the Agreement
by sending Spaulding cease and desist letters and ultimately filing this lawsuit. MLCC
opposed the motion and sought its own summary judgment on that Count.
The Court again agreed with MLCC (Dkt. 49), holding that the previous summary
judgment order made it “clear that [Spaulding was] at least partially in breach of [the
Agreement.]” Threatening to sue and suing Spaulding for that breach did not violate the
Agreement. Judgment on Count 5 of Spaulding’s counterclaim was entered in MLCC’s
favor.
With these summary judgment orders, the Court was left to resolve the following
claims:
• For MLCC: Breaches 1-3 and Breach 5
• For Spaulding: Counts 1-4 and Count 6
DISCUSSION
Now the parties again move for partial summary judgment. MLCC seeks judgment
on all of Spaulding’s remaining counterclaims—Counts 1 through 4 and Count 6.
Spaulding opposes that motion and seeks summary judgment on all of MLCC’s remaining
Breaches—Breaches 1 through 3 and Breach 5—and on all but Count 1 of its counterclaim.

14

After detailing the summary judgment standard, the Court will evaluate MLCC’s alleged
Breaches and then Spaulding’s Counts.
But first, it is clear that the long duration and quarrelsome tone of this litigation—
which, to date, has involved a motion for contempt, volleyed accusations of discovery
violations, and an allegation of evidence tampering—has distracted the parties. 5 The Court
will take a moment to properly frame this dispute.
Federal Rule of Civil Procedure 8(a)(2) requires “a short and plain statement of the
claim showing that the pleader is entitled to relief,” in order to “give the defendant fair
notice of what the . . . claim is and the grounds upon which it rests.” Bell Atlantic Corp. v.
Twombly, 550 U.S. 544, 555, 127 S. Ct. 1955, 167 L. Ed. 2d 929 (2007) (quoting Conley
v. Gibson, 355 U.S. 41, 47, 78 S. Ct. 99, 2 L. Ed. 2d 80 (1957)). MLCC’s complaint makes
no such statement referring to any right to relief except rights born out of contract law—
specifically, the Agreement. The complaint is styled as having only one count, a “Breach
of Confidential Settlement Agreement.” Later, in the prayer for relief, the complaint asks
the “Court to enter judgment against [Spaulding] that [Spaulding] breached paragraphs 2,
7(a), 7(d), 13, and 14 of the Confidential Settlement Agreement . . . .” The complaint does
not seek any relief under the Lanham Act or any other intellectual property law.
Yet MLCC, at various points in this litigation, has miscast its arguments by invoking
trademark law as entitling it to relief. And Spaulding, for its part, has taken the bait. The
Court has already stated that the language of trademark, when it comes to evaluating

5

Which, in turn, distracts and frustrates the Court.

15

MLCC’s complaint, is relevant only insofar as it helps the Court interpret the terms of the
Agreement and the parties’ intent when they entered into that Agreement. MLCC’s
complaint alleges breaches of contract and seeks relief under contract law exclusively; the
Court’s analysis will be similarly constrained. See Liberty Mut. Ins. Co. v. Wetzel, 424 U.S.
737, 743 n. 4, 96 S. Ct. 1202 (1976) (“[A] complaint asserting only one legal right, even if
seeking multiple remedies for the alleged violation of that right, states a single claim for
relief.”).
Spaulding, however, properly alleged violations of trademark law in Counts 1, 2
and 3 of its counterclaim, and the Court will resort to that law, as appropriate, when
evaluating those counts.
Summary Judgment Standard
A motion for summary judgment forces a court to “pierce the pleadings and [] assess
the proof in order to see whether there is a genuine need for trial.” Matsushita Elec. Indus.
Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S. Ct. 1348, 89 L. Ed. 2d 538 (1986).
Motions for summary judgment should be granted when the pleadings, depositions,
answers to interrogatories, and admissions on file, together with the affidavits, show that
there is no genuine issue over any material fact and that the moving party is therefore
entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477
U.S. 317, 322, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986). The existence of any factual
disputes between the litigants will not defeat an otherwise properly supported summary
judgment motion; rather, the record must reveal a “genuine issue of material fact.”
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 91 L. Ed. 2d 202

16

(1986) (emphasis in original). Facts are material if, under the applicable substantive law,
they might affect the outcome of the case. See id. And disputes over those facts are genuine
“if the evidence is such that a reasonable jury could return a verdict for the non-moving
party.” Id.
The party moving for summary judgment “always bears the initial responsibility of
informing the district court of the basis for its motion, and identifying” the relevant
documents that “it believes demonstrate the absence of a genuine issue of material
fact.” Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986).
To carry this burden, the moving party can present evidence to this effect or instead show
that the non-moving party has failed to present evidence in support of some element of its
case on which it ultimately bears the burden of proof. Id. at 322-23.
If the moving party meets its burden, the non-moving party must go beyond the
pleadings through the use of affidavits, depositions, answers to interrogatories and
admissions on file, and designate specific facts showing that there is a genuine issue of
material fact for trial. Celotex, 477 U.S. at 324. Conclusory allegations will not suffice.
Avirgan v. Hull, 932 F.2d 1572, 1577 (11th Cir. 1991). Neither will “a mere scintilla of
evidence supporting” the non-movant’s claims. Walker v. Darby, 911 F.2d 1573, 1577
(11th Cir. 1990) (internal quotations omitted). The non-movant must instead present facts
that are significantly probative to support those claims. Anderson, 477 U.S. at 248-49
(citing First National Bank of Arizona v. Cities Service Co., 391 U.S. 253, 288-89, 88 S.
Ct. 1575, 20 L. Ed. 2d 569 (1968) (requiring that “sufficient evidence supporting the

17

claimed factual dispute be shown to [defeat the motion and] require a jury or judge to
resolve the parties’ differing versions of the truth”)).
A court ruling on a motion for summary judgment must draw all
justifiable inferences from the evidence in the non-moving party's favor. Anderson, 477
U.S. at 255. After the non-moving party has responded to the motion, the court must grant
summary judgment if there exists no genuine issue of material fact and the moving party
deserves judgment as a matter of law. See Fed.R.Civ.P. 56(c).
MLCC’s Complaint
Breaches 1 and 2
Paragraph 2 of the Agreement prohibits Spaulding, or any “related companies” or
“representatives” (though these terms are not defined), from opposing or seeking to
challenge any filings or applications before the USPTO. Paragraph 7(b) is even broader; it
prohibits Spaulding or “any person or entity acting in concert with [Spaulding],” from
performing “any act or thing which is likely to injure [MLCC, its Trademark], and/or
Plaintiff MLCC’s business reputation or goodwill.” MLCC claims that Spaulding violated
these provisions when, at an ABRA meeting attended by other members of their industry,
Laura Spaulding openly encouraged the filing of a challenge to MLCC’s Trademark before
the USPTO.
In response, Spaulding cites Federal Rule of Evidence 802 and argues that both
claims must fail, as a matter of law, because no admissible evidence could support them.
This argument plainly fails.

18

Federal Rule of Civil Procedure 56(c)(2) does call for summary judgment when the
fact(s) cannot be presented in a form that would be admissible at trial. In other words, at
the summary judgment stage, the evidence “does not have to be admissible under the
Federal Rules of Evidence,” but it must be evidence that can be “reduced to an admissible
form at trial.” McMillian v. Johnson, 88 F.3d 1573, 1584 (11th Cir. 1996).
Hearsay, as Spaulding notes, is one form of evidence that might be inadmissible at
trial. See Fed. R. Civ. P. 802; but see Fed. R. Civ. P. 803 and 804 (exceptions). Spaulding
fails, however, to note that statements made by a party opponent are not hearsay. Fed. R.
Civ. P. 801(2).
The evidence that supports MLCC’s Breaches 1 and 2 are the statements Laura
Spaulding, a party opponent, made at the ABRA meeting. Peter Riley, a meeting attendee,
filed a declaration with the Court stating that he heard Ms. Spaulding advocate for the filing
of a trademark challenge against MLCC. This declaration can be reduced to admissible
trial evidence—that is, direct testimony. In that testimony, Riley could recount, from
personal knowledge, the statements he heard Ms. Spaulding utter. Moreover, in the face of
Spaulding and Borst’s evidence to the contrary, this evidence would raise a genuine
question over whether Spaulding violated the Agreement, particularly the broad restraint
contained in Paragraph 7(b). See Anderson, 477 U.S. at 248.
On Breaches 1 and 2, Spaulding’s motion for summary judgment will be denied.
Breach 3
MLCC

also

claims

that

Spaulding’s

use

of

the

domain

name

www.methlabservices.com violates the Agreement, either Paragraph 7 or Paragraph 14.

19

Paragraph 7(a) broadly prohibits Spaulding’s use of the Trademark—“Meth Lab Cleanup
LLC”—“or any intellectual property that is confusingly or substantially similar to [Meth
Lab Cleanup LLC], or that constitutes a colorable imitation of [Meth Lab Cleanup LLC].”
Paragraph 7(d) is narrower. It prohibits Spaulding from using any domain name that
includes the Trademark or the common mark “METH LAB CLEANUP.” Importantly, this
provision does not contain the inclusive disjunction, “or any intellectual property that is
confusingly or substantially similar,” found in 7(a). Paragraph 14 is a similar restriction on
domain names, although it is styled differently. It states: Spaulding is prohibited “from
using any form of the domain name (URL) having the terms METH LAB CLEANUP,
including any derivative of such potential domain name (regardless of use of slashed or
other additions).”
Spaulding acknowledges the validity of these restrictions, but argues that its use of
www.methlabservices.com does not run afoul of any of them. The Court agrees.
As for Paragraph 7(a), the Court has already held—in a previous order, for reasons
reiterated earlier in this order—that the restrictions therein do not prohibit the use of “meth
lab cleanup” in all lowercase letters. Logic cannot support MLCC’s contention that, despite
this holding, Paragraph 7(a) prohibits “meth lab services.” It does not.
As for Paragraph 7(d), it specifically prohibits only the use of the Trademark, which
is “Meth Lab Cleanup LLC,” and the common law trademark “METH LAB CLEANUP.”
It requires no explanation to see that “meth lab services” is different.
Paragraph 14 is trickier, by dint of sloppy drafting. Contract interpretation requires
courts to apply “the objective meaning of the words used.” Feaz v. Wells Fargo Bank, N.A.,

20

745 F.3d 1098, 1104 (11th Cir. 2014) (citing Moore v. Pa. Castle Energy Corp., 89 F.3d
791, 795-96 (11th Cir. 1996)). MLCC and Spaulding used the word “terms” for “Meth Lab
Cleanup.” The word is problematic.
Black’s Law Dictionary defines “term” as “[a] word or phrase.” Oxford English
Dictionary defines it is “[a]ny word or group of words expressing a notion or conception,
or denoting an object of thought.” In other words, a singular “term” can be either one word
or a collection of words. 6 By this definition, the parties’ use of “terms” suggests that the
words that follow—“METH,” “LAB,” and “CLEANUP”—were more likely intended as a
list. That is, each word constitutes a single term in a list of terms. And if this was the parties’
intent, then Spaulding’s use of any one of the terms—“Meth,” “Lab,” or “Cleanup”—
would violate the provision.
But there is good reason to doubt this interpretation. According to the Eleventh
Circuit, statutory interpretation should not “strain[] ordinary rules of grammar.” Medical
Transp. Mgmt. Corp. v. Comm’r of I.R.S., 506 F.3d 1364, 1369 (11th Cir. 2007). The Court
sees no reason why contractual interpretation should. Accord Pelican Ventures, LLC v.
Azimut S.p.A., No. 03-62119-CV-MARTINEZ, 03-62119-CIV-KLEIN, 2004 WL
3142550, *5 (S.D. Fla. July 28, 2004). According to one of these rules, items in a list must
be separated by commas. Bryan A. Garner, Garner’s Dictionary of Legal Usage, 731 (3rd
ed. 2011) (arguing for inclusion even of the serial or “Oxford” comma, placed after the

6

Phrase: “A small group of collocation of words expressing a single notion, or entering
with some degree of unity into the structure of a sentence.” Oxford English Dictionary (2d ed.
1989).

21

penultimate item in the list). As applied to the Agreement, this rule means that reading
Paragraph 14 as a list of three prohibited terms is objectively unreasonable, because those
terms are not separated by commas. 7
These competing interpretations of Paragraph 14 suggest that the provision is
ambiguous. But contract interpretation is “decided by reading the words of a contract in
the context of the entire contract and construing the contract to effectuate the parties’
intent.” Feaz, 745 F.3d at 1104. When the Agreement is read in its entirety, MLCC and
Spaulding’s shared intent is not ambiguous: in Paragraph 14, they meant “Meth Lab
Cleanup” as one term, not a list of three. A few considerations illustrate why.
First, apparent conflicts between clauses in a contract should be read so that, as far
as possible, they harmonize. Guaranty Financial Services, Inc. v. Ryan, 928 F.2d 994, 9991000 (11th Cir. 1991) (citing Heryford v. Davis, 102 U.S. 235, 245, 26 L. Ed. 160 (1880)).
In the Agreement’s twenty “Terms of Agreement,” eleven of them, including Paragraph
14, contain a list of items. In all of them, MLCC and Spaulding used commas to separate
the items within the list. 8 In fact, they did so in a list in the very same sentence at issue
here. Spaulding, the sentence in Paragraph 14 reads, is not the only party prohibited from
using the domain name “METH LAB CLEANUP;” so are Spaulding’s “agents,

7

This interpretation is buttressed, ironically, by a deeper reading of the dictionarydefinitions argument supporting the terms-as-list interpretation. In defining “term,” Black’s adds:
“esp[ecially], an expression that has a fixed meaning in some field.” And OED includes in its
definitions: “A word or phrase used in a definite or precise sense in some particular subject, as a
science or art.” By these definitions, “meth lab cleanup” certainly qualifies as a singular term.
8

Some of the lists include the serial comma, while some exclude it.

22

representatives, consultants and contractors.” In light of this agreed usage by MLCC and
Spaulding, to hear “METH LAB CLEANUP” in Paragraph 14 as a list would be dissonant
with the Agreement’s other lists—and not at all harmonious.
The “list” would sound no better with Paragraph 7. That paragraph starts, in 7(a),
with a broad restriction, by adding the disjunctive “or” and two modifying clauses: “or any
intellectual property that is confusingly or substantially similar to [Meth Lab Cleanup
LLC], or that constitutes a colorable imitation of [Meth Lab Cleanup LLC].” (emphasis
added). And the restriction applies to virtually any kind of use, to include “promotions,
solicitations, commercial exploitation, television, web-based or any other program, service,
or otherwise.” In 7(d), the parties narrow their focus to uses in domain or website names.
And there, for those uses, the parties do not include the expanding modifiers. Only the
Trademark and “METH LAB CLEANUP” are prohibited. In short, the parties sought to
significantly narrow the restricted uses if the use occurred in the context of a domain name.
Dissonance—not harmony—would again ring out if the Court concluded that the parties
made this narrowing choice only to reverse it in Paragraph 14 (with the Agreement’s lone
comma-less list).
Second, the parties’ behavior before and after the execution of the Agreement
supports the Court’s interpretation. The Agreement defines the “Spaulding Websites,” one
of which, before the Agreement, was www.Meth-LabCleanup.com. Now, typing that site
into a web browser redirects to www.methlabcleanup.com, the homepage for MLCC. This
is another powerful clue that MLCC and Spaulding sought to regulate by contract “Meth
Lab Cleanup” as one term, not three.

23

And finally, this behavior helps ascertain the intent behind the last phrase of
Paragraph 14’s domain-name restriction. On the restriction against using “METH LAB
CLEANUP” as a domain name, the provision adds, “including any derivative of such
potential domain name (regardless of use of slashed or other additions).”As a single term,
Spaulding’s www.Meth-LabCleanup.com, which was taken down and is now operated by
MLCC, would qualify as a derivative—albeit with a dash, not slashed addition. So would
www.wearemethlabcleanup.com. And so would www.methlabcleanup.com/forhire.
But www.methlabservices.com does not. If the Court were to conclude otherwise,
if the Court were to read the provision as MLCC argues it should, the Court would also
have to conclude that the parties intended to prohibit any domain name containing any one
of the three words—“Meth,” “Lab,” or “Cleanup.” Such a reading would prohibit domain
names completely unrelated to the business in which MLCC and Spaulding are
competitors.

Names

like

www.CarCleanupAndDetail.com

or

www.MothersAgainstMeth.com. And even www.Lab-Rescue.org, the domain name for an
organization dedicated to rescuing and finding homes for abused Labrador Retrievers.
The parties did not contract to such a broad restriction, and Spaulding did not violate
the Agreement by operating the website www.methlabservices.com. Accordingly,
Spaulding’s motion for summary judgment on Breach 3 will be granted.
Breach 5
In the complaint’s final alleged breach, MLCC claims that Spaulding violated
Paragraph 13’s confidentiality provision “by disclosing the terms of the [Agreement].” But
MLCC supplies little evidence to support this claim. In fact, the only evidence in the record

24

that could possibly support it is a declaration filed by MLCC’s counsel in the Washington
Borst litigation which explains why MLCC filed, in that case, a copy of the Agreement.
The declaration states that the filing was necessary to rebut Borst’s mischaracterization of
the Agreement. Here, in response to Spaulding’s motion, MLCC argues that Borst could
have only mischaracterized the Agreement if Spaulding had disclosed its terms to her.
This is an inferential leap too far. First, it assumes that a mischaracterization is
necessarily caused by a miscommunication when it might reflect the fact that there was no
communication at all, but rather mere guesswork. And second, it pays no mind to the
innumerable ways one might come to learn the terms of an agreement that was supposed
to remain confidential, only one of which is intentional disclosure. The most MLCC’s
evidence shows is that Borst might have known the terms of the Agreement, and if she did,
a Spaulding disclosure might have been the reason why. 9 No reasonable jury could find
Spaulding liable with this evidence. See Anderson, 477 U.S. at 248. Summary judgment in
favor of Spaulding will be granted on Breach 5.

9

The Court notes that the Agreement’s Paragraph 13 contains a broader confidentiality
restriction. It states: “the Parties agree that they shall not make any public comment with regard to
this Agreement, the various litigations and proceedings . . . .” (emphasis added). Other facts
presented in this case—namely, Laura Spaulding’s discussion of the First Lawsuit at the ABRA
meeting—may have fallen within the ambit of this broader restriction. But MLCC confined Breach
5 to a claim that Spaulding disclosed “the terms of the [Agreement]” and its response to
Spaulding’s motion does not address this broader provision in Paragraph 13. In fact, the response
does not at all address Spaulding’s challenge to Breach 5. MLCC made this choice “at its peril.”
Alilin v. State Farm Mut. Auto. Ins. Co., No. 6:14-cv-1183-Orl-41DAB, 2014 WL 7734262, *6
(M.D. Fla. Jan. 30, 2014) (“the Court will not on its own raise arguments to counter the defendant’s
case”) (internal quotation marks and citations omitted).

25

Order to Show Cause
As discussed above, MLCC may proceed on Breaches 1 and 2 of its complaint. It is
not clear, however, that MLCC wants to do so. In both its response to Spaulding’s summary
judgment motion and its own cross motion, MLCC attacks Spaulding’s counterclaim but
spends little time defending the breaches remaining in its complaint. MLCC neither asks
for judgment on those breaches in its motion nor argues that there are genuine issues of
fact as to them in its response to Spaulding’s motion. 10 And yet, in the introduction to its
motion (Dkt. 84, p. 2), MLCC argues that there are no “triable issues of material fact in
this action, other than as to the amount of Plaintiff’s damages and attorney’s fees and
costs.” (Id.) (emphasis added).
This argument, of course, assumes that MLCC will prevail as a matter of law on all
counts in Spaulding’s counterclaim (it will not). But it also suggests that MLCC has
abandoned its remaining breaches. MLCC will be ordered to clarify whether they intend to
proceed with, or abandon, Breaches 1 and 2.
Spaulding’s Counterclaim
Count 1
In Count 1 of its counterclaim, Spaulding seeks a declaratory judgment that its use
of the phrase “meth lab services” does not constitute trademark infringement, does not

10

Oddly, MLCC’s response to Spaulding’s motion does ask for judgment in MLCC’s
favor on Breaches 1 and 2—stating, “MLCC’s evidence shows the lack of a genuine issue of
material fact regarding [Spaulding’s] violations”—even though MLCC never moved for summary
judgment on those Breaches. In any event, as discussed above, that request is denied on the merits.

26

constitute unfair competition under the Lanham Act, and does not violate the Agreement.
(Dkt. 32, p. 11). MLCC seeks summary judgment on this count, but confines its argument
to what it calls “the sole issue”: whether Spaulding’s use of “meth lab services” violated
the Agreement. (Dkt. 84, p. 7).
MLCC’s characterization of the argument, however, is only conditionally correct.
If the Court had found that “meth lab services” did violate the Agreement, MLCC would
have been right, and MLCC would have been entitled to summary judgment on what it
correctly describes as a broad claim for declaratory relief. But the Court concluded, in the
discussion above, that “meth lab services” does not violate the Agreement, and thus the
issues broaden.
MLCC does not argue those issues, and the Court will not make the arguments for
the parties. Resolution Trust Corp. v. Dunmar Corp., 43 F.3d 587, 598 (11th Cir. 1995)
(“There is no burden upon the district court to distill every potential argument that could
be made based on the materials before it on summary judgment. Rather, the onus is upon
the parties . . . .”). MLCC’s motion for summary judgment on Count 1 will be denied. 11
Count 2
Spaulding next claims that MLCC has competed unfairly, in violation of the
Lanham Act, 15 U.S.C. § 1125(a), by asserting exclusive rights to the phrase “meth lab

11

Many of the issues that do remain in Count 1 are questions of fact. See N. Am. Med.
Corp. v. Axiom Worldwide Inc., 522 F.3d 1211, 1216 (11th Cir. 2008) (reviewing district court’s
findings of fact in trademark infringement and false advertising case). On the facts relevant to
Count 1, the Court will advise Spaulding: the record is light.

27

services” and by making derogatory statements about Spaulding. Both parties move for
summary judgment on this count.
And yet, amazingly, Spaulding’s motion does not cite a single legal authority as
supporting its theories of liability under the Act. (Dkt. 89, pp. 10-12). In fact, it cites no
legal authority at all. (Id.).
This absence of authority is not surprising, as Spaulding’s Count 2 has no merit. It
is a claim that MLCC violated section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). As
MLCC points out in its motion, in order to prevail on such a claim, a plaintiff must prove
two elements: (1) that he had enforceable trademark rights in the mark or name at issue;
and (2) that the defendant made unauthorized use of it such that consumers were likely to
confuse the two. Caldwell v. Compass Entertainment Group LLC, Case No. 6:14-cv-1701Orl-41TBS, 2015 WL 8772909, *10 (M.D. Fla. Dec. 15, 2015) (citing Custom Mfg. &
Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 647 (11th Cir. 2007)).
It is undisputed that Spaulding does not have a registered trademark for “meth lab
services.” It is equally clear that Spaulding never asserts common law trademark rights to
the phrase. And even if Spaulding had, there is no evidence in the record to support this
assertion. For this reason alone, Count 2 must fail.
The Court has already held that Spaulding’s use of “meth lab services” does not
violate the Agreement. It is also true, however, that MLCC’s assertion that it did does not
violate the Lanham Act. MLCC’s motion for summary judgment on Count 2 will be
granted.

28

Count 3
Spaulding

next

claims

that

MLCC’s

use

of

the

website

www.floridamethlabcleanup.com and assertions MLCC made on the website constituted
false advertising in violation of the Lanham Act. MLCC concedes the facts as alleged, but
argues that Spaulding’s evidence fails to establish a claim for false advertising and that,
accordingly, Count 3 should be dismissed as a matter of law. The Court agrees.
To prevail on a false advertising claim under the Lanham Act, a plaintiff must prove
five elements: (1) that the advertisements of the defendant were false or misleading; (2)
that the advertisements deceived, or had the capacity to deceive, consumers; (3) that the
deception had a material effect on purchasing decisions; (4) that the misrepresented product
or service affects interstate commerce; and (5) that the movant has been or is likely to be
injured as a result. Hickson Corp. v. N. Crossarm Co., Inc., 357 F.3d 1256, 1260 (11th Cir.
2004).
Spaulding has argued that MLCC’s Florida website was literally false. If the Court
accepts this argument, Spaulding would not have to present evidence of consumer
deception. See Osmose, Inc. v. Viance, LLC, 612 F.3d 1298, 1319 (11th Cir. 2010) (internal
citations omitted). Spaulding would, however, still have to establish the materiality of the
deception and the remaining elements. See Johnson & Johnson Vision Care, Inc. v. 1-800
Contacts, Inc., 299 F.3d 1242, 1250 (11th Cir. 2002).
The Court will assume without deciding the literal falsity of the website. Summary
judgment will be granted on the grounds that on this third element, materiality, the record
is devoid of evidence.

29

In fact, Spaulding at times treats the materiality element as a pleading requirement,
arguing in its response to MLCC’s motion that Spaulding “can prove the elements” and
“has correctly alleged that through the false advertising it has suffered commercial and
economic losses.” (Dkt. 94, p. 11). While this allegation may be sufficient to overcome a
motion to dismiss, see Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555, 127 S. Ct. 1955,
167 L. Ed. 2d 929 (2007), to survive summary judgment Spaulding needs probative
evidence. See Anderson, 477 U.S. at 248-49.
The only relevant evidence Spaulding supplies—and it is only marginally
relevant—is a Laura Spaulding declaration in which she states that Spaulding’s Florida
business decreased in 2014 after the creation of www.floridamethlabcleanup.com and her
“belie[f]” that this decrease was caused by MLCC’s new website. (Dkt. 94-1, p. 2). For
one, this speculative, conclusory opinion would likely be inadmissible at trial. See Fed. R.
Evid. 602. And even if it were admissible, it could not convince a reasonable juror that
MLCC’s Florida website had a material effect on consumers’ purchasing decisions. See
Anderson, 477 U.S. at 248-49.
Ironically, Ms. Spaulding’s declaration—the same one Spaulding relies on as
proof—illustrates this latter point. In it, she testifies to losses of business, in the same 2014
timeframe, in other parts of the country for reasons unrelated to MLCC’s Florida website.
She lost business in Texas, for example. And she lost two other major clients. These losses
in various parts of the country raise grave doubts about the purported cause of Spaulding’s
Florida losses, despite Ms. Spaulding’s belief.

30

While it is true that materiality can be established by proving that advertisements
“misrepresent[] an inherent quality or characteristic of the product,” 1-800 Contacts, 299
F.3d at 1250 (quoting Nat’l Basketball Ass’n v. Motorola, Inc., 105 F.3d 841, 855 (2d Cir.
1997)), Spaulding never makes this claim, let alone supplies evidence to support it. In fact,
Spaulding concedes that MLCC did perform its services in Florida, through contractors,
and that the services were generally the same as those advertised—drug lab
decontamination. (Dkt. 89, p. 15).
While Spaulding may have stated a claim for false advertising under the Lanham
Act, they have failed to provide enough evidence to prove the claim to a reasonable juror.
See Anderson, 477 U.S. at 248-49. On Count 3, MLCC’s motion for summary judgment
will be granted.
Counts 4 and 6
As MLCC did in its complaint, Spaulding claims that MLCC made unauthorized
disclosures and disparaged Spaulding in violation of Paragraph 13 of the Agreement. Both
parties have moved for summary judgment on these counts.
On Count 4’s unauthorized disclosure claim, there are in fact two relevant
provisions in Paragraph 13. The first states that the Agreement “shall be held in strict
confidence.” But there are two exceptions: (1) the Court’s Consent Final Order is excluded
from the requirement; and (2) the requirement “is inapplicable to any party responding to
a subpoena or other legal or administrative process.” The second states that Spaulding and
MLCC “agree that they shall not make any public comment with regard to this Agreement,
the various litigations and proceedings . . . .”

31

Spaulding alleges that MLCC violated at least one of these provisions on four
occasions:
1. In July 2013, when MLCC sent a cease-and-desist letter to Crisis Cleaning’s
Donetta Held and, in it, referred to the First Lawsuit and the Consent Final Order;
2. Sometime in 2014 or 2015, when MLCC employee Joseph Mazzuca had a
telephone conversation with a mutual client and, in that conversation,
complained about Spaulding without naming it;
3. In November 2015, when MLCC filed a copy of the Agreement in the
Washington Borst litigation; and
4. In January 2015, when MLCC owner Julie Mazzuca sent threatening emails to
an industry competitor and, according to Spaulding’s evidence, referred to the
First Lawsuit and characterized Spaulding as having “lost” it.
As an issue of fact, MLCC disputes only one of the emails in the November 2015 exchange
and argues that, in any event, these communications do not violate either provision of
Paragraph 13. The Court will address each allegation in order.
MLCC’s July 2013 cease-and-desist letter provides the case number to the First
Lawsuit and more specifically refers to the Consent Final Order. Nowhere does the
Agreement prohibit the parties from mentioning the mere existence of a lawsuit, a point
that even Spaulding recognized, when it wrote in its motion, “Spaulding [] and MLCC
strictly agreed to not communicate the terms of the[] [A]greement . . . .” (emphasis added).
The cease-and-desist letter does not mention those terms. It mentions the existence of a
lawsuit and judicial findings contained in the Consent Final Order, the disclosure of which
the Agreement permitted.
MLCC employee Joseph Mazzuca’s telephone conversation with a mutual client
did not refer to the First Lawsuit or the Agreement. In fact, according to Mr. Mazzuca’s

32

deposition, which Spaulding supplies in support of its claim, “Spaulding[]’s name was
never mentioned.” (Dkt. 89, p. 23). This conversation did not violate either non-disclosure
provision.
Neither did the court filing in the Bost litigation. Paragraph 13 permits disclosures
if a party is “responding to a subpoena or other legal or administrative process.” This is a
broad exception, one permitting disclosures so long as they are “responding” to a “legal or
administrative process.” The Washington Borst litigation in which MLCC filed the
Agreement certainly qualifies as a legal process. And according to the undisputed evidence,
MLCC’s counsel filed the Agreement in Response to Defendant Borst’s opposition to
MLCC’s motion for summary judgment. By the plain language of the Agreement,
disclosing it as MLCC’s counsel did in the Borst litigation is precisely the kind of
disclosure covered under Paragraph 13’s “legal process” exception. This disclosure was
not a violation.
As for Ms. Mazzuca’s January 2015 email exchange with a competitor, whether it
violated Paragraph 13 depends on a genuine issue of fact. Paragraph 13’s second nondisclosure provision applies broadly to “any public comment with regard to the Agreement,
the various litigations and proceedings.” According to Spaulding’s account of the email
exchange, MLCC owner Julie Mazzuca referred to the First Lawsuit against Spaulding and
stated that Spaulding “lost” it. MLCC argues that this email is a fraud. A fact-finder will
have to decide. See First National Bank of Arizona, 391 U.S. at 288-89.
The Court rejects MLCC’s argument that because the email was only sent to one
person, it fails to qualify as a “public comment.” In Paragraph 13, the intent behind “public

33

comment” is made clear by the contradistinction created in the next clause of the same
sentence. That clause states: “nor will any Party [] make any form of press release,
announcement, posting, or statement on any website or through social media.” MLCC’s
reading of “public” would render this second clause superfluous, as each example in the
second clause is a “public comment” as MLCC would have it defined. Under Florida law,
and according to a time-honored rule of textual interpretation, this is a reading the Court
must reject. See Siedle v. National Ass’n of Securities Dealers, Inc., 248 F. Supp. 2d 1140,
1144 (M.D. Fla. 2002) (“The law compels that a contract should not be interpreted in a
manner that would render a word, or term, extraneous.”) (citing Golden Door Jewelry
Creation, Inc. v. Lloyds Underwriter Non-Marine Ass’n, 117 F.3d 1328, 1338 (11th Cir.
1997)); see also Restatement (Second) of Contracts, § 203(a) (1981). When read
harmoniously with this second clause, see Guaranty Financial Services, Inc., 928 F.2d at
999-1000, “public” refers to third parties, people like industry competitor Flippin, the
recipient of Ms. Mazzuca’s email.
The Court also rejects MLCC’s argument that, because Spaulding violated the
Agreement by using “Meth Lab Cleanup” on websites, MLCC was freed of its nondisclosure obligation. MLCC, in short, reads Florida law too broadly. For one, the
proposition applies, most commonly, to mutual obligations—for example, payment for
services rendered. See, e.g., Toyota Tsusho America, Inc. v. Crittenden, 732 So. 2d 472,
477 (Fla. 5th DCA 1999). And two, it excuses the non-breaching party from its reciprocal
performance obligation. See, e.g., MDS (Canada) Inc. v. Rad Source Technologies, Inc.,
720 F.3d 833, 852 (11th Cir. 2013) (to sell and market patented medical device consistent

34

with terms of licensing agreement); Mattocks v. Black Entertainment Television LLC, 43
F. Supp. 3d 1311, 1320 (S.D. Fla. 2014) (to maintain a Facebook fan page).
The Eleventh Circuit case cited by MLCC illustrates. See MDS (Canada) Inc., 720
F.3d at 840. In that case, the defendant, a patent licensee, allegedly failed to market and
sell a medical device in the manner required by a licensing agreement. The breach at issue
was the plaintiff-licensor’s failure to pay USPTO maintenance fees to keep the patent
current. Id. That failure, the defendant argued, freed the defendant of its performance
obligation. Id. at 849. (The district court and the Eleventh Circuit disagreed, but on the
grounds that the breach was not material.)
Here, MLCC correctly argues that Spaulding materially breached the Agreement as
early as May 2014 when it used “Meth Lab Cleanup” on websites. But MLCC had no such
mutual obligation. MLCC was not required to perform in kind. If it had, that performance
might have been excused. Its obligation of non-disclosure, however, was not. Cf. MDS
(Canada) Inc., 720 F.3d at 840; Toyota Tsusho America, 732 So. 2d at 477.
A genuine issue of material fact precludes summary judgment on Count 4, but only
as to the allegation that MLCC violated the terms of the Agreement in a January 2015
email. On this Count, for this allegation only, MLCC’s motion for summary judgment will
be denied. So will Spaulding’s.
Finally, in Count 6, Spaulding argues that three of the four MLCC
communications—the cease-and-desist letter, the telephone conversation, and the email
exchange—amount to disparagement, also a violation of Paragraph 13. These arguments
fail.

35

In the relevant provision, MLCC and Spaulding “agree to not disparage, defame or
slander each other with regard to their services, advertising, training, credentials, training
[sic], certification or related business activities.” Only one of MLCC’s communications—
the telephone conversation—mentions “services” or “related business activities.” For one,
the only evidence of that conversation, Mr. Mazzuca’s deposition testimony, fails to
establish that Mazzuca said anything disparaging about anyone, as the evidence depicts a
conversation in which he mostly listened. (See Dkt. 89-1, p. 39, Mazzuca Dep., p. 152,
“Spaulding[]’s name was never mentioned . . . . They were talking about Spaulding [] and
I understood it to be Spaulding [].”). Moreover, once again, Spaulding was never
mentioned in the conversation. In the face of these two undisputed facts, no reasonable
juror could find that this phone conversation amounted to disparagement. See Celotex
Corp., 477 U.S. at 322-23.
The other two communications refer to the First Lawsuit and its result. Neither one
comments on the areas to which the disparagement provision applies—which are services,
advertising, training, credentials, certification, or any other related business activities. Even
if the Court accepts Spaulding’s version of the email exchange, mischaracterizing the First
Lawsuit as a Spaulding loss does not amount to disparaging Spaulding’s “services” or
“related business activities.” MLCC and Spaulding contracted to a narrow disparagement
provision. The Court is only empowered to enforce that intent. As a result, Spaulding’s
disparagement claims must fail as a matter of law.
MLCC’s motion for summary judgment on Count 6 will be granted.
It is ORDERED AND ADJUDGED that:

36

1.

Plaintiff Meth Lab Cleanup, LLC’s Motion for Partial Summary Judgment
(Dkt. 84) is GRANTED in part and DENIED in part. On Counts 2, 3, and 6
of Defendants’ Counterclaim (Dkt. 32), the motion is granted. On Count 1
and 4, the motion is denied.

2.

Defendants’ Motion for Partial Summary Judgment (Dkt. 89) is GRANTED
in part and DENIED in part. On Breaches 3 and 5 alleged in the Complaint
(Dkt. 1), the motion is granted. On Breaches 1 and 2, the motion is denied.
On Counts 2, 3, 4, and 6 of the Counterclaim, the motion is denied.

3.

Plaintiff may proceed on Breaches 1 and 2 alleged in its Complaint;
HOWEVER, Plaintiff is hereby ordered to inform the Court via the
Electronic Document Filing System (CM/ECF) whether it will proceed or
abandon Breaches 1 and 2. This filing must be received on or before March
30, 2016. If not received, the Court will construe the non-filing as an
abandonment of the claims, which may subject the claims to involuntary
dismissal.

4.

Defendants may proceed on Counts 1 and 4 of the Counterclaim.

DONE and ORDERED in Tampa, Florida, this 24th day of March, 2016.

Copies furnished to:
Counsel/Parties of Record

37