Gulfstream Aerospace Corporation v. Gulfstream Unsinkable Boats, LLC
ORDER granting in part and denying in part 26 Motion to Strike Defendant's Fifth Affirmative Defense. Signed by Magistrate Judge Amanda Arnold Sansone on 10/16/2020. (BEE)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
Case No. 8:20-cv-1147-T-23AAS
Gulfstream Aerospace Corporation (GSA) moves to strike Gulfstream
Unsinkable Boats, LLC’s (GUB) fifth affirmative defense (Doc. 26). GUB opposes the
motion. (Doc. 29).
GSA brought this Lanham Act trademark infringement and unfair
competition action against GUB for its alleged misuse of the “gulfstream” trademark.
(Doc. 1). GUB answered the complaint and asserted five affirmative defenses. (Doc.
22). GUB’s fifth affirmative defense states:
GUB’s use of the “Gulfstream” mark are [sic] within fair use and it is
using the mark, not in a trademark sense to in any way refer to GSA, a
company with a history of highly publicized airline crashed [sic] and
deaths associated with its products, but rather in a descriptive sense
that refers to the Gulfstream [sic] oceanic current that is intimately
related to boating, fishing and aquatic pursuits.
(Id. at pp. 8-9).
GSA argues GUB’s fifth affirmative defense does not constitute a fair use
defense and inappropriately refers without support to airline crashes and deaths
associated with GSA. (Doc. 26). GUB responds GSA’s motion is a premature attack
on GUB’s fair use defense and GUB’s allegation about past airline crashes supports
GUB’s defense. (Doc. 29).
Under Fed. R. Civ. P. 12(f), “[t]he court may strike from a pleading an
insufficient defense or any redundant, immaterial, impertinent, or scandalous
matter.” A motion to strike should be granted only if “the matter sought to be omitted
has no possible relationship to the controversy, may confuse the issues, or otherwise
prejudice a party.” Reyher v. Trans World Airlines, Inc., 881 F. Supp. 574, 576 (M.D.
Fla. 1995) (citations omitted).
Although “an affirmative defense may be stricken if it is legally insufficient, ...
striking a defense is a drastic remedy, which is disfavored by the courts.” Adams v.
JP Morgan Chase Bank, N.A., No. 3:11-cv-337-J-37MCR, 2011 WL 2938467, at *1
(M.D. Fla. July 21, 2011) (citations and internal quotation marks omitted); see also
Somerset Pharm., Inc. v. Kimball, 168 F.R.D. 69, 71 (M.D. Fla. 1996) (stating that
motions to strike are not favored and are often considered “time wasters”). “‘An
affirmative defense is insufficient as a matter of law only if: (1) on the face of the
pleadings, it is patently frivolous, or (2) it is clearly invalid as a matter of law.’”
Adams, 2011 WL 2938467, at *1 (citation omitted). “Moreover, ‘[a]n affirmative
defense will be held insufficient as a matter of law only if it appears that the
Defendant cannot succeed under any set of facts which it could prove.’” Id. (citation
The Lanham Act prohibits the use in commerce of a registered mark, without
the consent of the registrant, where “such use is likely to cause confusion, or to cause
mistake, or to deceive.” 15 U.S.C. § 1114(a). The Lanham Act also includes several
defenses, including the fair use defense. This defense requires the party alleged to
have infringed upon a registered mark to prove:
[t]hat the use of the name, term, or device charged to be an infringement
is a use, otherwise than as a mark, of the party’s individual name in his
own business, or of the individual name of anyone in privity with such
party, or of a term or device which is descriptive of and used fairly and
in good faith only to describe the goods or services of such party, or their
15 U.S.C. § 1115(b)(4).
The Eleventh Circuit held that a defendant satisfies Section 1115(b)(4) by
proving that its use is (1) other than as a mark, (2) in a descriptive sense, and (3) in
good faith. Int’l Stamp Art, Inc. v. United States Postal Ser., 456 F.3d 1270, 1274 (11th
Cir. 2006). “The ‘fair use’ defense, in essence, forbids a trademark registrant to
appropriate a descriptive term for [its] exclusive use and so prevent others from
accurately describing a characteristic of their goods.” Soweco, Inc. v. Shell Oil Co.,
617 F.2d 1178, 1185 (5th Cir. 1980).1
GUB’s fifth affirmative defense satisfies the pleading requirements of the fair
use defense under Section 1115(b)(4). At this stage, the facts are not sufficiently
developed for the court to resolve and rule on the factual issues surrounding GUB’s
fair use defense. See Land’s End at Sunset Beach Cmty. Assoc., Inc. v. Land’s End
Acquisition Corp., No: 8:16-cv-828-T-17JSS, 2016 WL 9526680, at *8 (M.D. Fla. Nov.
7, 2016). That said, GUB’s allegation that GSA has a “history of highly publicized
airline crashed [sic] and deaths” in support of this defense is frivolous. See Pycsa
Panama, S.A. v. Tensar Earth Techs., Inc., No. 1:06-cv-20624, 2006 WL 8432715, at
*8 (S.D. Fla. Dec. 20, 2006) (striking allegations in the complaint that have no bearing
on any of the claims and are prejudicial). This statement has no bearing on GUB’s
defense and is prejudicial.
Rule 12(f) of the Federal Rules of Civil Procedure provides that “the court may
order stricken from any pleading any insufficient defense or any redundant,
immaterial, impertinent or scandalous matter.” Stephens v. Ga. DOT, 134 F. App’x
320, 322 (11th Cir. 2005); see also Talbot v. Robert Matthews Distrib. Co., 961 F.2d
654, 664 (7th Cir. 1992) (“Allegations may be stricken as scandalous if the matter
bears no possible relation to the controversy or may cause the objecting party
prejudice.”). While the court will not strike the GSA’s fifth affirmative defense in its
Decisions by the former Fifth Circuit issued before October 1, 1981, are binding as
precedent in the Eleventh Circuit. See Bonner v. City of Prichard, Ala., 661 F.2d 1206,
1207 (11th Cir.1981) (en banc).
entirety, the immaterial and prejudicial portions of the defense are due to be stricken.
GSA’s motion to strike GUB’s fifth affirmative defense (Doc. 26) is GRANTED
IN PART AND DENIED IN PART. The motion is granted to the extent that the
portion of GUB’s fifth affirmative defense alleging “a history of highly publicized
airline crashed [sic] and deaths” is stricken. Otherwise, the motion is denied.
ORDERED in Tampa, Florida, on October 16, 2020.
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