The MacKnight Food Group, Inc. v. The Santa Barbara Smokehouse, Inc.

Filing 37

OMNIBUS ORDER denying 25 Motion to Dismiss; denying 26 Motion to Strike. Signed by Judge Marcia G. Cooke on 10/22/2015. (tm)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case No. 15-21179-Civ-COOKE/TORRES
THE MACKNIGHT FOOD GROUP, INC.,
a Nevada corporation,
Plaintiff/Counter-Defendant,
vs.
THE SANTA BARBARA SMOKEHOUSE,
INC., a company incorporated in California,
Defendant.
__________________________________________/
OMNIBUS ORDER
Plaintiff The Macknight Food Group, Inc. (“Plaintiff” or “MFG”) brings this action
against Defendant The Santa Barbara Smokehouse, Inc. (“Defendant” or “SBSH”) asserting
claims relating to MFG’s alleged rights to certain trademarks, designs, and brands. See
generally Compl., ECF No. 1. More specifically, Plaintiff asserts claims of: Preliminary
Injunction (Count I); Federal Trademark Infringement under the Lanham Act, 15 U.S.C. §
1114 (Count II); Federal Unfair Competition, False Description, and False Designation of
Origin under 15 U.S.C. § 1125(a) (Count III); Deceptive and Unfair Trade Practices under
Florida Statute § 501.204 (Count IV); Misappropriation of Trade Secrets under Florida
Statute § 688 (Count V); Unjust Enrichment (Count VI); Common Law Trademark
Infringement (Count VII); and Common Law Unfair Competition (Count VIII). Id.
In response, Defendant filed its Answer, Affirmative Defenses, and Counterclaims,
asserting three defenses, three affirmative defenses, and six counterclaims, including:
Declaratory Judgment as to SBSH’s Right to the Cambridge and Coastal Marks (Count I);
Declaratory Judgment as to SBSH’s Exclusive Right to the SBSH Marks (Count II);
Declaratory Judgment as to SBSH’s Exclusive Right to the Balmoral Mark (Count III);
Declaratory Judgment as to SBSH’s Exclusive Right to the Traditional Open Smoke Marks
(Count IV); Federal Trademark Infringement pursuant to 15 U.S.C. § 1114 (Count V); and
Federal Trademark Counterfeiting pursuant to 15 U.S.C. § 1114 (Count VI). See generally
Def.’s Answer, ECF No. 18.

Plaintiff now moves to dismiss and/or strike Defendant’s counterclaims and to strike
Defendant’s defenses and affirmative defenses. I have reviewed the arguments, the record,
and the relevant legal authorities. For the reasons provided herein, both Plaintiff’s Motion
to Dismiss and/or Strike Counterclaim and Supporting Memorandum of Law (ECF No.
25) and Plaintiff’s Motion to Strike Defendant’s Defenses and Affirmative Defenses (ECF
No. 26) are denied.
I. LEGAL STANDARD
Rule 12(f) permits a court to “strike from a pleading an insufficient defense or any
redundant, immaterial, impertinent, or scandalous matter.” Fed. R. Civ. P. 12(f). A court
has “broad discretion” when it considers a motion to strike under Rule 12(f) of the Federal
Rules of Civil Procedure. Morrison v. Exec. Aircraft Refinishing, Inc., 434 F. Supp. 2d 1314,
1317-18 (S.D. Fla. 2005). Rule 12(f) motions to strike are not favored, however, and are
“regularly ‘denied unless the challenged allegations have no possible relation or logical
connection to the subject matter of the controversy and may cause some form of significant
prejudice to one or more of the parties to the action.’” Kenneth F. Hackett & Assocs., Inc. v.
GE Capital Info. Tech., 744 F. Supp. 2d 1305, 1309 (S.D. Fla. 2010) (quoting 5C Charles A.
Wright & Arthur R. Miller, Federal Practice and Procedure § 1382 (3d ed. 2004)).
“An affirmative defense is generally a defense that, if established, requires judgment
for the defendant even if the plaintiff can prove his case by a preponderance of the
evidence.” Wright v. Southland Corp., 187 F.3d 1287, 1303 (11th Cir. 1999). Affirmative
defenses “are subject to the general pleading requirements of Rule 8(a)” of the Federal Rules
of Civil Procedure. Home Mgmt. Solutions, Inc. v. Prescient, Inc., No. 07-20608, 2007 WL
2412834, at *2 (S.D. Fla. Aug. 21, 2007). Thus, when considering a motion to strike
affirmative defenses, the court must look at whether the defense is legally sufficient to
provide fair notice of the nature of the defense; an affirmative defense will be stricken if it
fails to recite little more than a bare legal conclusion. See id.; Merrill Lynch Bus. Fin. Servs.,
Inc. v. Performance Mach. Sys. U.S.A., Inc., No. 04-60861, 2005 WL 975773, at *11 (S.D. Fla.
Mar. 4, 2005).
II. ANALYSIS
A. Motion to Strike Counterclaims
Plaintiff argues that this Court should strike all six of Defendant’s counterclaims as
duplicative and redundant of the relief sought by Plaintiff in its Complaint. In response,
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Defendant argues that its counterclaims, which include claims for multiple declaratory
judgments as well as claims for relief for federal trademark infringement and counterfeiting,
raise issues and agreements not addressed by Plaintiff in its Complaint and are therefore not
mere mirror images of Plaintiff’s claims.
When deciding whether to dismiss a counterclaim on the basis that it is redundant,
“courts consider whether the declaratory judgment serves a useful purpose.” Gratke v.
Andersen Windows, Inc., 2010 WL 5439763, *3 (D. Minn. Dec. 8, 2010). To determine
whether the declaratory judgment serves a useful purpose, courts should consider “whether
resolution of plaintiff's claim, along with the affirmative defenses asserted by defendants,
would resolve all questions raised by the counterclaim.” Id. In this case, the counterclaim
does serve a useful purpose in that it seeks different relief from Defendant’s defenses and
Plaintiff’s Complaint. More specifically, resolving Plaintiff’s claims would not affirmatively
address Defendant’s concerns, namely, Defendant’s desire for an order definitively declaring
that it maintains an exclusive right as a licensee to use and promote specific marks.
Additionally, even if the counterclaim were wholly redundant, a court may exercise its
discretion by not dismissing the counterclaim. Id. Therefore, Plaintiff’s motion to dismiss
and/or strike Defendant’s counterclaims is denied.
B. Motion to Strike Defenses and Affirmative Defenses
1. Defenses
Defendant asserts three defenses: (1) Plaintiff’s claims are invalid because the
conditions subsequent to the completion of the termination letter, as outlined in the Global
Settlement Agreement, have not yet occurred; (2) Plaintiff’s Count I fails to state a claim
upon which relief can be granted because a preliminary injunction is a form of relief, not a
separate claim; and (3) Plaintiff’s Count V fails to state a claim upon which relief can be
granted because it fails to identify the purported trade secret with sufficient particularity. In
response, Plaintiff contends that Defendant’s defenses must be stricken, but fails to provide
any caselaw to specifically support its contention that striking Defendant’s defenses is the
appropriate remedy at this stage in the litigation, especially when facts remain disputed. See
Bennett v. Spoor Behrins Campbell & Young, Inc., 124 F.R.D. 562, 563 (S.D.N.Y. 1989) (finding
that “[w]hen facts are in dispute … a motion to strike will not be granted unless it appears to
a certainty that plaintiff’s would succeed despite any state of facts which could be proved in
support of the defense.” (internal quotation marks omitted)).
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Therefore, after reviewing the caselaw concerning the striking of pleadings, I do not
find that any of Defendant’s defenses confuse the issues, unnecessarily prejudice a party, or
lack a relationship to the controversy. Accordingly, Plaintiff’s motion to strike Defendant’s
defenses is denied.
2. Affirmative Defenses
Defendant asserts three affirmative defenses: (1) unclean hands; (2) laches; and (3)
acquiescence. As to Defendant’s first affirmative defense of unclean hands, Plaintiff argues
that the Lanham Act identifies only three equitable defenses, and unclean hands is not one
of them. In support of its argument, Plaintiff cites to 15 U.S.C. § 1115(b)(9), which states
that “equitable principles, including laches, estoppel, and acquiescence, are applicable.”
However, by its own terms, this list is not exhaustive and does not prohibit Defendant from
asserting the affirmative defense of unclean hands, which has been recognized as a viable
defense in trademark infringement cases. See GoTo.com, Inc. v/ Walt Disney Co., 202 F.3d
1199, 1209 (9th Cir. 2000) (applying the unclean hands doctrine in a Lanham Acy
trademark infringement action). Therefore, Plaintiff’s motion to strike Defendant’s first
affirmative defense is denied.
Plaintiff next argues that Defendant’s affirmative defense of laches must be stricken
because Defendant has failed to plead that Plaintiff delayed in enforcing its alleged
trademark rights.

However, as Defendant’s defense of laches “may be relevant in

determining the extent to which [Plaintiff] is entitled to equitable remedies,” Plaintiff’s
motion to strike Defendant’s second affirmative defense is denied. Mullis v. Universal Select,
Inc., No. 97-1220-Civ-J-21A, 1997 WL 827408, at *2 (M.D. Fla. Dec. 15, 1997).
Finally, Plaintiff argues that Defendant’s third affirmative defense of acquiescence
must also be stricken because Plaintiff never represented to Defendant that it would not
assert its rights or claims over the marks to which Defendant claims it holds an exclusive
license. To state a claim for acquiescence, a party must show that: “(1) [Plaintiff] actively
represented that [it] would not assert a right or a claim; (2) the delay between the active
representation and assertion of the right or claim was not excusable; and (3) the delay
caused the defendant undue prejudice.” SunAmerica Corp. v. Sun Life Assur. Co. of Canada, 77
F.3d 1325, 1334 (11th Cir. 1996). Defendant asserts that Plaintiff, as a party to the Global
Settlement Agreement, “acknowledged Santa Barbara’s rights to the marks” and that it
nonetheless “waited eleven (11) months after it purportedly acquired rights to the marks at
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issue to assert claims.” At this stage of the proceedings, I find that Defendant’s affirmative
defense of acquiescence meets federal pleading standards and gives Plaintiff fair notice.
Therefore, Plaintiff’s motion to strike Defendant’s third affirmative defense is denied.
III. CONCLUSION
For the reasons provided herein, both Plaintiff’s Motion to Dismiss and/or Strike
Counterclaim and Supporting Memorandum of Law (ECF No. 25) and Plaintiff’s Motion
to Strike Defendant’s Defenses and Affirmative Defenses (ECF No. 26) are DENIED.
DONE and ORDERED in chambers, at Miami, Florida, this 22nd day of October
2015.

Copies furnished to:
Edwin G. Torres, U.S. Magistrate Judge
Counsel of Record

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