Tecnoglass, LLC v. RC Home Showcase, Inc.

Filing 124

Omnibus Order on Motions to Dismiss granting in part 85 Motion to Dismiss for Failure to State a Claim; granting in part and denying in part 85 Motion to Strike ; granting 92 Motion to Dismiss for Failure to State a Claim. Signed by Judge Robert N. Scola, Jr on 10/5/2017. (lan)

United States District Court
for the
Southern District of Florida
Tecnoglass, LLC, Plaintiff,
v.
RC Home Showcase, Inc.,
Defendant.

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Civil Action No. 16-24328-Civ-Scola
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Omnibus Order on Motions to Dismiss
This matter is before the Court upon the Defendant RC Home Showcase,
Inc.’s (“RC Home”) motion to dismiss counts IV and V and to strike certain
allegations (ECF No. 85), and the Plaintiff Tecnoglass, LLC’s (“Tecnoglass”)
motion to dismiss the counterclaim (ECF No. 92). After careful consideration of
the motions, all opposing and supporting submissions, the applicable case law,
and the record in this case, RC Home’s motion (ECF No. 85) is granted in
part, and Tecnoglass’s motion (ECF No. 92) is granted.
1. Background
A more detailed factual background is contained in the Court’s order on
the previous motion to dismiss. See (ECF No. 76). For purposes of the instant
motions, the salient facts remain the same. Tecnoglass acquired certain
intellectual property rights from non-party RC Aluminum Industries, Inc. (“RC
Aluminum”), which included rights related to RC Aluminum’s Notices of
Acceptance (“NOAs”) for windows, sliding glass doors, and window wall
systems. Almost a year after Tecnoglass acquired the right to use these NOAs,
it initiated litigation in state court against RC Home alleging improper use of a
subset of the NOAs acquired from RC Aluminum. This previous state court
litigation resulted in a settlement agreement providing RC Home limited rights
to use the NOAs for six months.
Now at issue in this case are Tecnoglass’s copyright registrations for six
technical drawings of window wall systems and sliding glass doors. According
to Tecnoglass, RC Home accessed technical drawings from Tecnoglass’s NOAs
available on the Miami-Dade County website and copied the technical drawings
to use in RC Home’s own NOA applications, representing that the technical
drawings in its applications belonged to RC Home. Additionally, RC Home’s
product designations are similar to those used by Tecnoglass. RC Home has

sold its products, which are based on Tecnoglass’s designs, to existing, former,
and potential Tecnoglass customers.
Based on these facts, the Complaint (ECF No. 1) asserted seven claims
against RC Home: (1) Copyright Infringement; (2) Injunction and Temporary
Restraining Order; (3) Breach of Contract; (4) Unjust Enrichment; (5) Tortious
Interference with Business Relationship; (6) Florida Deceptive and Unfair Trade
Practices Act (“FDUTPA”); and (7) Federal Unfair Competition under the
Lanham Act. The Court dismissed counts (6) and (7) because these claims were
preempted by Tecnoglass’s copyright infringement claim. (ECF. No. 76, at 8.) In
the Amended Complaint, Tecnoglass asserts claims for copyright infringement
(Count I); injunction and temporary restraining order (Count II); breach of
contract (Count III); unjust enrichment (Count IV); and tortious interference
with business relationship (Count V). RC Home filed an answer, affirmative
defenses, and a counterclaim, in which it asserts claims against Tecnoglass for
declaratory relief (Count I) and common law unfair competition (Count II). In its
motion, RC Home moves to dismiss the claims for unjust enrichment and
tortious interference for failure to state a claim, and requests that the Court
strike allegations in the Amended Complaint regarding the Tecnoglass 600Y
window system. In its motion, Tecnoglass requests that the Court dismiss the
counterclaim for failure to state a claim. The Court will consider each motion in
turn.
2. Legal Standard
When considering a motion to dismiss under Federal Rule of Civil
Procedure 12(b)(6), the Court must accept all of the complaint allegations as
true, construing them in the light most favorable to the plaintiff. Pielage v.
McConnell, 516 F.3d 1282, 1284 (11th Cir. 2008). A pleading need only contain
“a short and plain statement of the claim showing that the pleader is entitled to
relief.” Fed. R. Civ. P. 8(a)(2). “[T]he pleading standard Rule 8 announces does
not require detailed factual allegations, but it demands more than an
unadorned, the-defendant-unlawfully-harmed-me accusation.” Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009) (quotation omitted). A plaintiff must articulate
“enough facts to state a claim to relief that is plausible on its face.” Twombly,
550 U.S. at 570. “A motion to dismiss a counterclaim pursuant to Federal Rule
of Civil Procedure 12(b)(6) is evaluated in the same manner as a motion to
dismiss a complaint.” Great Am. Assurance Co. v. Sanchuk, LLC, 2012 WL
195526, at *2 (M.D. Fla. Jan. 23, 2012).
“A claim has facial plausibility when the plaintiff pleads factual content
that allows the court to draw the reasonable inference that the defendant is
liable for the misconduct alleged.” Iqbal, 556 U.S. at 678. “The plausibility

standard is not akin to a ‘probability requirement,’ but it asks for more than a
sheer possibility that a defendant has acted unlawfully.” Id. “Threadbare
recitals of the elements of a cause of action, supported by mere conclusory
statements, do not suffice.” Id. Thus, a pleading that offers mere “labels and
conclusions” or “a formulaic recitation of the elements of a cause of action” will
not survive dismissal. See Twombly, 550 U.S. at 555. “Rule 8 marks a notable
and generous departure from the hyper-technical, code-pleading regime of a
prior era, but it does not unlock the doors of discovery for a plaintiff armed
with nothing more than conclusions.” Iqbal, 556 U.S. at 679.
Yet, where the allegations “possess enough heft” to suggest a plausible
entitlement to relief, the case may proceed. See Twombly, 550 U.S. at 557.
“[T]he standard ‘simply calls for enough fact to raise a reasonable expectation
that discovery will reveal evidence’ of the required element.” Rivell v. Private
Health Care Sys., Inc., 520 F.3d 1308, 1309 (11th Cir. 2008) (citation omitted).
“And, of course, a well-pleaded complaint may proceed even if it strikes a savvy
judge that actual proof of those facts is improbable, and “that a recovery is very
remote and unlikely.’” Twombly, 550 U.S. at 556 (citation omitted).
3. RC Home’s Motion to Dismiss and to Strike
At the outset, the Court notes that Tecnoglass concedes that the claim
for unjust enrichment should be dismissed. Accordingly, the Court grants RC
Home’s motion in this respect, and dismisses Count IV of the Amended
Complaint with prejudice.
With respect to the tortious interference claim, RC Home argues that
Tecnoglass fails to state a claim. However, RC Homes also acknowledges, albeit
in a footnote, that there is no difference between the present claim for tortious
interference, and the claim asserted in the original complaint. (Mot. at 1, n.1,
ECF No. 85.) Yet, RC Home did not assert that the previous tortious
interference claim failed to state a cause of action based upon its “belief that
the [previous] motion would be granted and the state claims dismissed to be
refiled in state court.” (Id. at 2, n.1.) Thus, RC Home’s motion with respect to
the tortious interference claim is improper under Rule 12(g) of the Federal
Rules of Civil Procedure. See Chen v. Cayman Arts, Inc., No. 10-80236-CIV,
2011 WL 1085646, at *2 (S.D. Fla. Mar. 21, 2011) (striking second motion to
dismiss as improper under Rule 12(g)); Barfoot v. Dolgencorp, LLC, Case No. 1524662-CIV-ALTONAGA/O’Sullivan, 2016 WL 6330588, at *1 (S.D. Fla. Feb. 5,
2016) (denying motion to strike, pursuant to Rule 12(g), based upon earlier
filing of motion to dismiss).
Rule 12(g) states that “[e]xcept as provided in Rule 12(h)(2) or (3), a party
that makes a motion under this rule must not make another motion under this

rule raising a defense or objection that was available to the party but omitted
from its earlier motion.” Fed. R. Civ. P. 12(g)(2). In pertinent part, Rule 12(h)
further provides that while a party generally waives certain defenses entirely by
omitting them from a motion to dismiss, the failure to state a claim may
nevertheless be raised: “(A) in any pleading allowed or ordered under Rule 7(a);
(B) by a motion under Rule 12(c); or (C) at trial.” However, Rule 12(h) does not
otherwise authorize a party to assert a defense it neglected to include in a
previous Rule 12(b) motion based upon the mistaken belief that the court
would take certain actions that ultimately it did not. As a result, RC Home’s
motion is denied with respect to the tortious interference claim asserted in
Count V.
Next, RC Home requests that the Court strike the allegations in the
Amended Complaint related to the Tecnoglass 600Y window system, because
Tecnoglass does not allege that it holds a copyright with respect to the 600Y
window system. Rule 12(f) of the Federal Rules of Civil Procedure permits a
court to “strike from a pleading an insufficient defense or any redundant,
immaterial, impertinent, or scandalous matter,” granting courts broad
discretion in making this determination. Fed. R. Civ. P. 12(f); see also Morrison
v. Executive Aircraft Refinishing, Inc., 434 F. Supp. 2d 1314, 1318-19 (S.D. Fla.
2005) (Ryskamp, J.); Williams v. Eckerd Family Youth Alternative, 908 F. Supp.
908, 910 (M.D. Fla. 1995). Yet, “courts consider striking a pleading to be a
‘drastic remedy to be resorted to only when required for the purposes of
justice.’” Exhibit Icons, LLC v. XP Cos., 609 F. Supp. 2d 1282, 1300 (S.D. Fla.
2009) (Marra, J.). Motions to strike are generally viewed with disfavor, see Pan
dora Jewelers 1995, Inc. v. Pan dora Jewelry, LLC, 2010 WL 5393265, at *1
(S.D. Fla. Dec. 21, 2010) (Cooke, J.), in part because they “waste time by
requiring judges to engage in busy work and judicial editing without
addressing the merits of a party's claim,” see U.S. Bank Nat'l Ass'n v. Alliant
Energy Res., Inc., 2009 WL 1850813, at *3 (W.D. Wis. June 26, 2009). Under
Rule 12(f), “[a] motion to strike will usually be denied unless the allegations
have no possible relation to the controversy and may cause prejudice to one of
the parties.” Harty v. SRA/Palm Trails Plaza, LLC, 755 F. Supp. 2d 1215, 1218
(S.D. Fla. 2010) (Turnoff, M.J.) (internal quotation and citation omitted); see
also BB In Tech. Co. v. JAF, LLC, 242 F.R.D. 632, 641 (S.D. Fla. 2007) (Ungaro,
J.) (same); Action Nissan, Inc. v. Hyundai Motor Am., 617 F. Supp. 2d 1177,
1187 (M.D. Fla. 2008) (same).
Upon review, the allegations relate to Tecnoglass’s claim for tortious
interference asserted in Count V. In the Amended Complaint, Tecnoglass
alleges that RC Home induced its potential customers, specifically Towers of
Key Biscayne Homeowner Association, to obtain glass windows from RC Home

that used Tecnoglass
copyright requirement
interference. Moreover,
the inclusion of such
motion to strike.

designs related to the 600Y product. There is no
in order to sufficiently state a claim for tortious
RC Home does not indicate that it will be prejudiced by
allegations. Therefore, the Court denies RC Home’s

4. Tecnoglass’s Motion to Dismiss the Counterclaim
In its motion, Tecnoglass seeks dismissal of the counterclaim on the
basis that the declaratory relief sought is redundant of the affirmative defenses
asserted by RC Home, and that RC Home fails to adequately state a claim for
unfair competition because it does not allege consumer confusion. RC Home
concedes that the unfair competition claim is insufficiently alleged, and
therefore, the Court grants Tecnoglass’s motion to dismiss the counterclaim
with respect to Count II.
Thus, the Court considers the argument with respect to the claim for
declaratory relief. As a threshold matter, the Court notes that redundancy
alone is not a basis for dismissal under Rule 12(b)(6). See Kenneth F. Hackett &
Assocs., Inc. v. GE Cap. Info. Tech. Solutions, Inc., 744 F. Supp. 2d 1305, 1310
(S.D. Fla. 2010) (Altonaga, J.). Nor does mere redundancy require the Court to
strike a claim. See Microsoft Corp. v. Jesse's Computers & Repair, Inc., 211
F.R.D. 681, 683 (M.D. Fla. 2002) (“District courts have broad discretion in
disposing of motions to strike under Fed.R.Civ.P. 12(f).”) (citation omitted). And
even though Tecnoglass’s motion is not asserted pursuant to Rule 12(f), as
Tecnoglass points out, some courts use their discretion through the power to
strike under Rule 12(f) to dismiss counterclaims where they are redundant of
affirmative defenses. See, e.g., Apple, Inc. v. Samsung Elecs. Co., Ltd., 2011 WL
4948567, at *9-*10 (N.D. Cal. Oct. 18, 2011); Stickrath v. Globalstar, Inc., 2008
WL 2050990, at *3 (N.D. Cal. May 13, 2008); Ortho–Tain, Inc. v. Rocky Mount.
Ortho., Inc., 2006 WL 3782916, at *3 (N.D. Ill. Dec. 20, 2006). Yet, as one of the
cited cases concedes, “[o]ther courts have chosen, in their discretion, not to
strike redundant counterclaims.” See Stickrath, 2008 WL 2050990, at *3 n.2.
In making a decision, Stickrath advises that “[t]he court should focus on
whether the counterclaims ‘serve any useful purpose,’ and should dismiss or
strike a redundant counterclaim only when ‘it is clear that there is a complete
identity of factual and legal issues between the complaint and the
counterclaim.’” See id. at *4 (citations omitted). “In determining the usefulness
of a claim, courts may consider whether resolution of plaintiff's claim, along
with the affirmative defenses asserted by defendants, would resolve all
questions raised by the counterclaim.” It’s a 10, Inc. v. Beauty Elite Grp., Inc.,

No. 13-60154-CIV, 2013 WL 4543796, at *2 (S.D. Fla. Aug. 27, 2013) (Cohn, J.)
(internal citation and quotations omitted).
Here, the counterclaim for declaratory relief implicates the same factual
and legal issues as RC Home’s affirmative defenses. Specifically, RC Home
asserts the following affirmative defenses: invalidity or unenforceability of the
copyrights due to (1) lack of ownership, (2) non-originality, and (3) in that they
relate to functionality or utility; that Tecnoglass consented or acquiesced to the
posting of the NOAs online, and that material errors exist in the copyright
application that would render the copyrights invalid. The bases alleged for RC
Home’s counterclaim for declaratory relief are identical. See (ECF No. 84, ¶ 24).
As such, the resolution of RC Home’s affirmative defenses would resolve the
issues involved in the counterclaim. Therefore, the Court grants Tecnoglass’s
motion with respect to Count I, and dismisses the claim for declaratory relief
contained in the counterclaim with prejudice.
5. Conclusion
For the reasons set forth, it is ordered and adjudged as follows:
1. RC Home’s motion (ECF No. 85) is granted in part, and Count IV
of the Amended Complaint is dismissed with prejudice. The Court
denies the motion with respect to Count V, and RC Home’s request
to strike.
2. RC Home shall file its answer to Count V within seven (7) days of
this order.
3. Tecnoglass’s motion (ECF No. 92) is granted. Count I of the
counterclaim is dismissed with prejudice. Count II of the
counterclaim is dismissed without prejudice. If RC Home intends
to file an amended counterclaim, it must do so within seven (7)
days of this order.
Done and ordered, at Miami, Florida, on October 5, 2017.

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Robert N. Scola, Jr.
United States District Judge