Tuuci Worldwide, LLC v. Outer, Inc.

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case No. 24-cv-24382-BLOOM/Sanchez
TUUCI WORLDWIDE, LLC,
Plaintiff,
v.
OUTER, INC.,
Defendant.
___________________________________/
ORDER ON MOTION TO DISMISS COUNTERCLAIMS
THIS CAUSE is before the Court upon Plaintiff Tuuci Worldwide, LLC’s Motion to
Dismiss Defendant’s Counterclaims, ECF No. [27] (“Motion”). Defendant Outer, Inc. filed a
Response, ECF No. [30], to which Plaintiff filed a Reply, ECF No. [32]. The Court has carefully
considered the Motion, the Response, the Reply, the applicable law, and the record. For the reasons
discussed below, the Motion is granted in part and denied in part.
I. 	BACKGROUND
Plaintiff is a manufacturer and distributor of large, outdoor, high-end patio umbrellas. See
ECF No. [1] (“Compl.”) ¶ 1. Plaintiff alleges Defendant, a competing umbrella manufacturer and
distributor, has “committed acts of infringement and unfair competition as part of a calculated
effort to copy [Plaintiff’s] valuable intellectual property.” Id. ¶ 3; see also id. ¶ 43. Specifically,
Plaintiff alleges Defendant’s Marine-Grade Aluminum Outdoor Umbrella and corresponding
Marine-Grade Aluminum Outdoor Umbrella Hub Design are copies of Plaintiff’s unique umbrella
trade dress and signature hub cover trade dress, and according to Plaintiff, the copies are intended
to “divert customers who would have otherwise purchased Plaintiff’s products.” Id. ¶¶ 45-46.
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Plaintiff asserts four counts against Defendant: Federal Trade Dress Infringement (Count I);
Federal Unfair Competition, False Description, and False Designation of Origin Under the Lanham
Act (Count II); Florida Common Law Trade Dress Infringement (Count III); and Florida Common
Law Unfair Competition (Count IV). See generally Compl.
In Defendant’s Answer, ECF No. [20] (“Ans.”), it asserts twenty-three affirmative defenses
and eight counterclaims. See generally Ans. The first and second counterclaims seek a declaratory
judgment that Defendant has not committed trade dress infringement, and that Plaintiff has no
rights in the asserted trade dresses. See id. at 32-33. Through the third counterclaim, Defendant
seeks a declaratory judgment that Plaintiff’s claims are barred by the doctrines of waiver, estoppel,
laches, and acquiescence. See id. at 34. Defendant’s fourth counterclaim alleges Plaintiff has
engaged in unfair competition under the Lanham Act. See id. at 34-35. Defendant’s fifth
counterclaim seeks a declaratory judgment that Plaintiff’s conduct constitutes patent misuse, see
id. at 35-36, and its sixth counterclaim seeks damages and injunctive relief for Plaintiff’s alleged
anticompetition under the Sherman Act, 15 U.S.C. § 2, see id. at 36-38. Defendant’s seventh and
eighth counterclaims assert claims for relief arising under Florida law—one under Florida’s
Deceptive and Unfair Trade Practices Act (FDUTPA), Fla. Stat. § 501.201, et seq., and one for
Florida common law unfair competition. See id. at 39-40.
In the Motion, Plaintiff seeks dismissal of all eight counterclaims with prejudice, arguing
(1) the first and second counterclaims are duplicative of Defendant’s affirmative defenses and
denials; (2) the third counterclaim asserts affirmative defenses—not causes of action—that are
insufficiently pled; (3) the fifth counterclaim asserts an affirmative defense to patent infringement,
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not a counterclaim; (4) the Noerr-Pennington doctrine of immunity bars the fourth and sixth
counterclaims; and (5) Defendant fails to state a false advertising claim. See generally Mot.1
II. 	LEGAL STANDARD
“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.” Geter v. Galardi S. Enters.,
Inc., 43 F. Supp. 3d 1322, 1325 (S.D. Fla. 2014) (quoting Great Am. Assur. Co. v. Sanchuk, LLC,
No. 8:10–cv–2568–T–33AEP, 2012 WL 195526, at *2 (M.D. Fla. Jan. 23, 2012)). “To survive a
motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to ‘state a
claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). Indeed, a pleading in any civil action must
contain “a short and plain statement of the claim showing that the pleader is entitled to relief.” Fed.
R. Civ. P. 8(a)(2). Although these standards do not require detailed factual allegations, a “formulaic
recitation of the elements of a cause of action will not do.” Twombly, 550 U.S. at 555. Nor can a
complaint rest on “‘naked assertion[s]’ devoid of ‘further factual enhancement.’” Iqbal, 556 U.S.
at 678 (quoting Twombly, 550 U.S. at 557).
“[O]nly a [counterclaim] that states a plausible claim for relief survives a motion to
dismiss.” Iqbal, 556 U.S. at 679 (citing Twombly, 550 U.S. at 556). To satisfy this “plausibility
standard,” a counter plaintiff must “plead[] factual content that allows the court to draw the
1 	Plaintiff separately filed the instant Motion and its Motion to Strike, ECF No. [28], on the same
day. Defendant urges that Plaintiff’s “duplicative Rule 12 motions should be rejected out of hand as
procedurally improper under the Federal Rules.” Resp. 3.
Federal Rule of Civil Procedure 12(g)(2) states: “Except 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.” A motion to dismiss and a
motion to strike are certainly types of Rule 12 motions, see id. at 12(b), (f), and Plaintiff does not contend
that a Rule 12(h)(2) or (3) exception applies. Thus, Plaintiff was required to combine both motions into one
filing. However, Plaintiff’s failure to do so does not warrant denial of the instant Motion because Plaintiff
promptly filed a Notice of Withdrawal of its Motion to Strike, ECF No. [33].
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reasonable inference that the [counter] defendant is liable for the misconduct alleged.” Id. at 678
(citing Twombly, 550 U.S. at 556). On a motion to dismiss, the court construes the complaint in
the light most favorable to the counter plaintiff and takes the factual allegations as true. See Brooks
v. Blue Cross & Blue Shield of Fla., Inc., 116 F.3d 1364, 1369 (11th Cir. 1997). “The motion may
be granted only if, viewing the pleaded facts in the light most favorable to the counter-claimant,
no set of facts in support of the claim would entitle [the] counter-claimant[] to relief.” Fabricant
v. Sears Roebuck, 202 F.R.D. 306, 308 (S.D. Fla. 2001). On a Rule 12(b)(6) motion, the movant
bears the burden of showing entitlement to dismissal. See Gunn v. Cont’l Cas. Co., 968 F.3d 802,
806 (7th Cir. 2020) (“It is the defendant’s burden to establish the complaint’s insufficiency.”).
III. 	DISCUSSION
a. 	First and Second Counterclaims for Declaratory Judgment
Defendant’s first and second counterclaims seek declaratory judgments regarding (1)
Defendant’s non-infringement of Plaintiff’s trade dress rights and (2) the nonexistence and
invalidity of Plaintiff’s asserted trade dress rights. See Ans. 32-33. Plaintiff moves to dismiss both
counterclaims, arguing the Court should decline to exercise declaratory judgment jurisdiction
because the counterclaims are duplicative of Defendant’s affirmative defenses and denials. See
Mot. 2-4.2 Defendant responds that a counterclaim raising similar issues as an affirmative defense
is not automatically “superfluous.” Resp. 4–5. And regardless, Defendant argues, “redundancy
2 	Plaintiff points to specific affirmative defenses raised in the Answer:
For example, in its first affirmative defense, Defendant asserts that the asserted trade dress
is functional and unprotectable, i.e., that [Plaintiff] has no rights. In its twentieth affirmative
defense, Defendant asserts that [Plaintiff]’s trade dress is generic or descriptive without
secondary meaning, i.e., that [Plaintiff] has no rights. Defendant has also denied all of
[Plaintiff]’s counts for infringement. The counterclaims are superfluous . . . .
Mot. 2; see also Ans. 8–11, 18.
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alone does not warrant dismissal.” Id. at 5. The Court agrees with Plaintiff, though not solely on
the ground of redundancy.
“Declaratory relief is a procedural device [that] depends on an underlying substantive cause
of action and cannot stand on its own.” Arencibia v. AGA Serv. Co., 533 F. Supp. 3d 1180, 1195
(S.D. Fla. 2021), aff’d, No. 21-11567, 2022 WL 1499693 (11th Cir. May 12, 2022); see also
Rosenbaum v. Becker & Poliakoff, P.A., No. 08-81004-CIV, 2010 WL 376309, at *8 (S.D. Fla. Jan.
26, 2010) (quoting Luckenbach S.S. Co. v. United States, 312 F.2d 545, 548 (2d Cir. 1963)
(“[D]eclaratory relief is a mere procedural device by which various types of substantive claims
may be vindicated.”)); Jolibois v. Fla. Int’l Univ. Bd. of Trustees, 654 F. App’x 461, 466 (11th Cir.
2016) (“The Declaratory Judgment Act is procedural in operation and does not confer independent
jurisdiction upon this Court.”); Zolin v. Caruth, No. 3:09-cv-38-WS, 2009 WL 2982907, at *7
(N.D. Fla. Sept. 14, 2009) (“[T]he Declaratory Judgment Act does not establish an independent
cause of action, it is procedural only and merely establishes a legal remedy available in cases
brought pursuant to some other law.”). Accordingly, the relevant inquiry is not whether the
counterclaims are redundant but whether they rest on an underlying substantive cause of action
that would independently support relief. Here, they do not.
Both counterclaims appear to be standalone claims for declaratory relief unsupported by
any independent substantive cause of action. See Ans. 32-33. Thus, because the Declaratory
Judgment Act is merely procedural and establishes no independent cause of action on its own, the
Court declines to exercise jurisdiction over either counterclaim. See Arencibia, 533 F. Supp. 3d at
1195 (dismissing claim for declaratory relief because declaratory relief claim could not stand on
its own). The first and second counterclaims are dismissed.
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b. 	Third Counterclaim: Waiver, Estoppel, Laches, and Acquiescence
In its third counterclaim, Defendant seeks a declaratory judgment that Plaintiff’s claims are
barred by the equitable doctrines of waiver, estoppel, laches, and acquiescence. See Ans. 34.
Plaintiff moves for dismissal, arguing (1) these doctrines are affirmative defenses improperly cast
as a counterclaim for relief, (2) the counterclaim is redundant in light of Defendant’s affirmative
defenses,3 and (3) in any event, the counterclaim is insufficiently pled because Defendant fails to
allege facts establishing the elements of each equitable defense. See Mot. 4–5. Defendant responds
that its third counterclaim asserts “a right to relief under the Declaratory Judgment Act—
specifically, a judicial declaration that [Plaintiff] is barred by equitable doctrines from asserting
trade dress rights against [Defendant]. The equitable doctrines themselves . . . supply the basis for
relief, not standalone claims in their own right.” Resp. 8.4
An affirmative defense “attacks [a] plaintiff’s legal right to bring an action,” whereas a
counterclaim asserts a right to relief. Am. First Fed., Inc. v. Lake Forest Park, Inc., 198 F.3d 1259,
1264 (11th Cir. 1999). Courts have discretion to dismiss redundant counterclaims. See Pearson
Educ., Inc v. Hotfile Corp., No. 14-CIV-20200, 2015 WL 11216708, at *3 (S.D. Fla. Jan. 27, 2015)
(“Defendants correctly acknowledge that the Court’s ability to dismiss these redundant claims is
3 	Relevant here, Defendant’s sixth affirmative defense asserts:
Plaintiff’s claims are barred by the doctrines of waiver, laches, ratification, acquiescence,
estoppel, and consent as Defendant has openly and obviously offered the Marine-Grade
Aluminum Outdoor Umbrella in commerce for several years and Plaintiff has knowingly
stood by and failed to enforce any of its supposed trade dress or other rights against
Defendant.
Ans. 15 (emphasis added).
4 	The Court notes that Defendant did not specifically respond to Plaintiff’s argument that the third
counterclaim is redundant in light of Defendant’s affirmative defenses. Generally, “[w]hen a party fails to
respond to an argument or otherwise address a claim, the Court deems such an argument or claim
abandoned.” Jones v. Bank of Am., N.A., 564 F. App’x 432, 434 (11th Cir. 2014).
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within its discretion.”); Medmarc Cas. Ins. Co. v. Pineiro & Byrd PLLC, 783 F. Supp. 2d 1214,
1217 (S.D. Fla. 2011) (“Even if the counterclaim were wholly redundant, this Court may exercise
its discretion by not dismissing the counterclaim.”). In deciding whether to do so, courts consider
whether the counterclaim serves a useful purpose. U.S. ex rel. BAC Funding Consortium, Inc. v.
Westchester Fire Ins. Co., No. 13–22536–CIV, 2014 WL 186125, at *5 (S.D. Fla. Jan. 16, 2014)
(citing Medmarc, 783 F. Supp. 2d at 1217).
In Pearson, the defendant asserted counterclaims seeking a declaratory judgment based on
equitable doctrines that mirrored its affirmative defenses. 2015 WL 11216708, at *1. This Court
dismissed those counterclaims, finding they raised factual and substantive issues that would
necessarily be decided in resolving the claims and affirmative defenses already raised by the
parties. Id. at *3. For that reason, there remained no favorable reason or useful purpose to retain
the redundant counterclaims. Id. The Court emphasized that the claims were not standalone claims
and would not present an actual controversy if the plaintiffs later dismissed their claims. See id.;
see also BAC Funding, 2014 WL 186125, at *5 (“Because the resolution of BAC’s claims and
ACE’s defenses thereto would resolve the questions raised in ACE’s counterclaim, the Court finds
that the counterclaim for declaratory judgment serves no useful purpose. . . . Accordingly, the
Court will exercise its discretion to dismiss ACE’s counterclaim.” (citations omitted)); It’s a 10,
Inc. v. Beauty Elite Grp., Inc., No. 13–60154–CIV, 2013 WL 4543796, at *5 (S.D. Fla. Aug. 27,
2013) (exercising discretion in dismissing redundant counterclaim).
The same is true here. Defendant’s third counterclaim seeks a declaratory judgment that
Plaintiff’s claims are barred by waiver, estoppel, laches, and acquiescence—the same issues
Defendant raises in its sixth affirmative defense. See Ans. 15, 34. Resolving Plaintiff’s claims and
Defendant’s defenses will necessarily require a determination as to whether any of these equitable
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doctrines apply. Therefore, the counterclaim would not present an actual controversy should
Plaintiff dismiss its claims against Defendant, nor would its resolution clarify the parties’ legal
relations beyond what already will be determined in this litigation. See Pearson, 2015 WL
11216708, at *3. Finding no favorable reason or useful purpose to retain Defendant’s third
counterclaim, the Court exercises its discretion to dismiss it as redundant. See id.; BAC Funding,
2014 WL 186125, at *5; It’s a 10, 2013 WL 4543796, at *5.5
c. 	Fifth Counterclaim for Declaratory Relief (Patent Misuse)6
Defendant’s fifth counterclaim is likewise defective. Defendant seeks a declaratory
judgment that Plaintiff’s conduct “constitutes patent misuse, rendering its trade dress and any
related [intellectual property] rights unenforceable unless and until the misuse is purged.” Ans. 36.
Plaintiff 	seeks 	dismissal, 	arguing 	“[p]atent 	[m]isuse 	is 	an 	affirmative 	defense 	to 	patent
infringement, not a counterclaim to an allegation of trade dress infringement.” Mot. 6 (citing
Ameritox, Ltd. v. Aegis Servis. Corp., No. 07-80498-CIV-MARRA, 2008 WL 2705435, at *6 (S.D.
Fla. July 9, 2008), modified on reconsideration, No. 07-80498-CIV, 2009 WL 10668614 (S.D. Fla.
May 13, 2009)). Plaintiff further points out it has not alleged patent infringement, rendering a
patent misuse defense inappropriate regardless of its procedural posture. See Mot. 6.
Plaintiff’s reliance on Ameritox is persuasive. There, plaintiffs moved for dismissal of a
defendant’s counterclaim for patent misuse, and the court made clear that “patent misuse is an
affirmative defense to the accusation of patent infringement.” Ameritox, 2008 WL 2705435, at *6
5 	Although redundancy is a sufficient basis for dismissal of the third counterclaim, the Court further
notes that, regardless of the procedural mechanism through which these equitable doctrines were raised, the
third counterclaim is insufficiently pled. “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 662. The allegations in support of Defendant’s third counterclaim comprise
only three numbered paragraphs containing insufficient facts to establish the elements of each equitable
doctrine. See Ans. 34. Thus, the allegations are insufficient to meet the Iqbal/Twombly pleading standard.
6 	The Court’s discussion of Defendant’s fourth counterclaim appears below, in subsection 3(e).
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(citing Virginia Panel Corp. v. MAC Panel Co., 133 F.3d 860 (Fed. Cir. 1997)). Accordingly, the
court dismissed the counterclaim, reasoning that “the proper mechanism to assert patent misuse is
to plead it as an affirmative defense.” Id.; see also Virginia, 133 F.3d at 868 (“Patent misuse is an
affirmative defense to an accusation of patent infringement . . . .”).
That reasoning applies with equal force here. The proper mechanism for Defendant to
assert patent misuse is to plead it as an affirmative defense to a claim of patent infringement. See
Ameritox, 2008 WL 2705435, at *6; Virginia, 133 F.3d at 868. However, Plaintiff has not alleged
a patent infringement claim in this action, and absent such a claim, there exists no substantive basis
for Defendant to assert patent misuse—whether as an affirmative defense or as a counterclaim. See
generally Compl. Therefore, Defendant’s fifth counterclaim shall be dismissed.
d. 	Sixth Counterclaim: Anticompetition Under Section 2 of the Sherman Act
Defendant alleges an anticompetition claim against Plaintiff under the Sherman Act, 15
U.S.C. § 2. See Ans. 36-38. Defendant seeks damages and injunctive relief based on Plaintiff’s
alleged “unlawful monopolization and attempted monopolization of the market for high-end
outdoor umbrellas and related outdoor shade products.” Id. at 36.
Defendant alleges that Plaintiff previously held utility patents covering structural and
functional features of Plaintiff’s outdoor umbrellas; many of these patents have now expired,
“placing their disclosed functional features in the public domain.” Id. at 37. According to
Defendant, despite the expiration of Plaintiff’s patents, Plaintiff “is now asserting trade dress rights
over 	the 	same 	functional 	product 	features . . . without 	alleging 	any 	significant 	aesthetic
distinctions from those described in its expired patents.” Id. Thus, Defendant alleges, Plaintiff “is
seeking ongoing market exclusivity through trade dress law.” Id. at 38. “[Plaintiff’s] enforcement
tactics—including litigation threats, lawsuits, and public claims of exclusive design rights—have
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had the effect of chilling competitive entry, increasing competitor costs, and deterring innovation
and alternative designs.” Id.
Seeking dismissal, Plaintiff contends that Defendant fails to state a cause of action because
Defendant alleges no marketplace activities by Plaintiff that are outside the realm of pre-litigative
and litigative actions. See Mot. 7. Beyond this pleading insufficiency, Plaintiff asserts that “Noerr-
Pennington immunity precludes antitrust liability for resorting to litigation to obtain from a court
an anticompetitive outcome.” Id. Defendant responds that the counterclaim alleges “a broader
course of anticompetitive actions that go beyond litigation conduct” and that the Noerr-Pennington
doctrine is inapplicable because it does not immunize “sham enforcement efforts that are a pretext
for improper attempts to hinder lawful competition.” Resp. 13-14.
The First Amendment guarantees the right to “petition the [g]overnment for a redress of
grievances.” U.S. Const. amend. I. Rooted in the Petition Clause, the Noerr-Pennington doctrine
provides that “those who petition any department of the government for redress are generally
immune from statutory liability for their petitioning conduct.” Sosa v. DIRECTV, Inc., 437 F.3d
923, 929 (9th Cir. 2006). The doctrine initially emerged and most often is invoked in antitrust
cases. See E. R.R. Presidents Conference v. Noerr Motor Freight, Inc., 365 U.S. 127 (1961); United
Mine Workers v. Pennington, 381 U.S. 657 (1965); see also Sosa, 437 F.3d at 929 (“The Noerr–
Pennington doctrine arose in the antitrust context and initially reflected the Supreme Court’s effort
to reconcile the Sherman Act with the First Amendment Petition Clause.”). The Supreme Court,
recognizing that the “right to petition extends to all departments of the [g]overnment,” and that the
right of access to the courts is an aspect of the right to petition, extended Noerr-Pennington
immunity to immunize the use of “the channels and procedures of state and federal . . . courts” to
advocate causes. Cal. Motor Transp. Co. v. Trucking Unlimited, 404 U.S. 508, 510-11 (1972).
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“Noerr-Pennington immunity thus shields a defendant from antitrust liability for resorting to
litigation to obtain from a court an anticompetitive outcome.” Andrx Pharm., Inc. v. Elan Corp.,
PLC, 421 F.3d 1227, 1233 (11th Cir. 2005). This shield covers “pre-litigative and litigative
activities,” making it so that a complaint alleging only such activities “cannot state a cause of
action.” Atico Int’l USA, Inc. v. LUV N’ Care, Ltd., No. 09-60397-CIV-COHN, 2009 WL 2589148,
at *2 (S.D. Fla. Aug. 19, 2009); cf. B&G Foods N. Am., Inc. v. Embry, 29 F.4th 527, 532 n.1 (9th
Cir. 2022) (“The Noerr–Pennington doctrine . . . provides that litigation activity (including pre-
litigation cease-and-desist letters) cannot form the basis of liability unless the litigation is a
‘sham.’” (alterations added; citations omitted)).
Not all petitioning activity is immunized, however. An exception to the Noerr-Pennington
doctrine exists where the defendant engages in “sham” litigation. Prof’l Real Estate Inv’rs, Inc. v.
Columbia Pictures Indus., Inc., 508 U.S. 49, 56 (1993). Under the sham exception, activity
“‘ostensibly directed toward influencing governmental action’ does not qualify for Noerr
immunity if it ‘is a mere sham to cover . . . an attempt to interfere directly with the business
relationships of a competitor.’” Prof’l Real Estate Inv’rs, 508 U.S. at 51 (quoting Noerr, 365 U.S.
at 144). This exception seeks to prevent the immunization of conduct that uses “governmental
process . . . as an anticompetitive weapon.” Kearney v. Foley & Lardner, LLP, 590 F.3d 638, 644
(9th Cir. 2009) (quoting Kottle v. Nw. Kidney Ctrs., 146 F.3d 1056, 1060 (9th Cir. 1998)).
Defendant’s 	sixth 	counterclaim 	alleges 	only 	pre-litigative 	and 	litigative 	activity.
Specifically, Defendant alleges Plaintiff “is seeking ongoing market exclusivity through trade dress
law[,]” and that Plaintiff’s “enforcement tactics—including litigation threats, lawsuits, and public
claims of exclusive design rights—have had the effect of chilling competitive entry, increasing
competitor costs, and deterring innovation and alternative designs.” Ans. 38. Defendant supports
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its sixth counterclaim by alleging that Plaintiff asserted its rights, threatened litigation, and initiated
litigation of its trade dress claims. See id. Defendant alleges no marketplace activities outside the
realm of pre-litigative and litigative actions. See Mot. 7; see also McGuire Oil Co. v. Mapco, Inc.,
958 F.2d 1552, 1560 (11th Cir. 1992) (holding that threatening litigation is a protected, pre-
litigative activity and commencing litigation is a protected, litigative activity); Atico, 2009 WL
2589148, at *3 (“The filing of a suit is a litigative activity.”). Thus, the counterclaim fails to state
a cause of action. See id. at *2 (holding that “a complaint that alleges only pre-litigative and
litigative activities cannot state a cause of action” under the Sherman Act); cf. B&G Foods, 29
F.4th at 532 n.1 (“The Noerr–Pennington doctrine. . . provides that litigation activity (including
pre-litigation cease-and-desist letters) cannot form the basis of liability unless the litigation is a
‘sham.’” (alterations added; citations omitted)). Accordingly, the Noerr-Pennington doctrine bars
Defendant’s sixth counterclaim so long as these pre-litigative and litigative activities were not a
“sham.” See Prof’l Real Estate Inv’rs, 508 U.S. at 51.
A party invoking the sham exception must establish that (1) “the lawsuit [is] objectively
baseless in the sense that no reasonable litigant could realistically expect success on the merits,”
and (2) the party bringing the allegedly baseless suit did so with a “subjective motivation” to
“interfere directly with the business relationships of a competitor.” Prof’l Real Estate Inv’rs, 508
U.S. at 60–61 (quoting Noerr, 365 U.S. at 144). Thus, the burden falls on the party challenging
immunity. See McGuire Oil, 958 F.2d at 1560. Only if challenged litigation is objectively
meritless—meaning the first prong is satisfied—may a court examine the litigant’s subjective
motivation. Prof’l Real Estate Inv’rs, 508 U.S at 60. As such, “an objectively reasonable effort to
litigate cannot be sham regardless of subjective intent.” Id. at 57.
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Defendant alleges Plaintiff’s pre-litigative and litigative conduct “constitutes exclusionary
and anticompetitive conduct designed to suppress competition and maintain its dominance in the
relevant market.” Ans. 38. Referring to Plaintiff’s alleged efforts to enforce expired patent rights,
Defendant asserts that Plaintiff’s conduct is “not based on any legitimate claim of source-
identifying nonfunctional trade dress. Instead, it is an objectively baseless attempt to maintain
control over product features that should now be freely available to competitors.” Id.
A conclusory allegation that a lawsuit is objectively baseless is insufficient to survive a
motion to dismiss. See Atico, 2009 WL 2589148, at *4; Twombly, 550 U.S. at 555; Havoco of Am.,
Ltd. v. Hollobow, 702 F.2d 643, 649 (7th Cir. 1983) (“[A] plaintiff must do more than merely allege
that defendant’s petitioning activity was a sham in order to overcome the First Amendment
privilege.”). In Atico, the plaintiff failed to meet its burden of showing that a New York lawsuit
was sham litigation because the plaintiff’s allegations focused mainly on the defendant’s subjective
intent and contained no information establishing that the lawsuit was objectively meritless. See
2009 WL 2589148, at *4. Instead, the plaintiff alleged in a conclusory manner that the lawsuit was
baseless. Id. The court found the conclusory allegation insufficient and dismissed the claim on
First Amendment grounds, reasoning that even if the allegations regarding the defendant’s
subjective intent were true, they would not render the New York suit a sham unless the New York
suit was objectively meritless. Id.
Here, Defendant’s allegation that Plaintiff’s conduct “is an objectively baseless attempt to
maintain control over product features that should now be freely available to competitors” is
conclusory. Ans. 38. Defendant’s claim focuses on Plaintiff asserting trade dress claims in this
litigation and “in prior enforcement actions” in an apparent attempt to “continue excluding
competitors from the market,” but Defendant fails to allege sufficient facts for the Court to find
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this litigation or those prior actions objectively meritless. See Ans. 37; see also Ans. 31 (identifying
prior patent infringement lawsuits by Plaintiff against other entities). Thus, regardless of Plaintiff’s
subjective motivation, the sham exception cannot apply. See Prof’l Real Estate Inv’rs, 508 U.S at
57 (“[A]n objectively reasonable effort to litigate cannot be sham regardless of subjective intent.”).
Like in Atico, here, Defendant’s conclusory allegation is insufficient to survive dismissal. 2009
WL 2589148, at *4. The sixth counterclaim is dismissed.
a. 	Fourth Counterclaim: Unfair Competition under the Lanham Act
Defendant’s fourth counterclaim alleges unfair competition under the Lanham Act. See
Ans. 34-35. Defendant contends Plaintiff “has made, and continues to make, false or misleading
representations of fact in commerce concerning the nature, origin, and exclusivity of certain
features of its umbrella products.” Ans. 34. Specifically, Plaintiff allegedly claimed—both publicly
and in litigation—that various features of its umbrellas are “distinctive, proprietary, and non-
functional” and that “competitors who adopt similar features are infringing [Plaintiff]’s rights or
unlawfully ‘copying] [Plaintiff]’s designs.” Id. Defendant further alleges Plaintiff “has made such
statements and allegations in marketing, trade communications, litigation, and discussions with
retailers and industry partners.” Id. at 35 (emphasis added). Plaintiff moves to dismiss the fourth
counterclaim on the basis of immunity, arguing courts have extended the Noerr-Pennington
doctrine’s application to lawsuits brought outside the antitrust context and that the fourth
counterclaim arises from statements Plaintiff made in litigation. Mot. 8.
Defendant’s fourth counterclaim appears to allege conduct beyond litigative and pre-
litigative activity. In support, Defendant alleges that Plaintiff made false or misleading statements
“in marketing, trade communications, litigation, and discussions with retailers and industry
partners.” Ans. 35. Thus, unlike the allegations in support of Defendant’s sixth counterclaim, these
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allegations do not focus merely on Plaintiff’s litigation activity. See Ans. 36-38. This broader
factual focus takes the fourth counterclaim out of the reach of the Noerr-Pennington doctrine, as
the alleged conduct is not the type of protected petitioning activity the doctrine is intended to
immunize. See Banneker Ventures, LLC v. Graham, 798 F.3d 1119, 1137 n.8 (D.C. Cir. 2015)
(quoting Cont’l Ore Co. v. Union Carbide & Carbon Corp., 370 U.S. 690, 707 (1962)) (“[T]he
doctrine does not apply to parties ‘engaged in private commercial activity . . . .’”). And because
Plaintiff sets forth no other sufficient basis for dismissal of the fourth counterclaim, the
counterclaim survives dismissal.
b. 	Seventh and Eighth Counterclaims: FDUTPA and Florida Unfair
Competition
Defendant asserts its seventh counterclaim under the Florida Deceptive and Unfair Trade
Practices Act, Fla. Stat. § 501.201, et seq, and alleges Plaintiff has engaged in “unfair methods of
competition, unconscionable acts or practices, and/or unfair or deceptive acts or practices[.]”
Id. at 39. Specifically, Plaintiff “continu[es] to advertise and promote to consumers that its [Ocean
Master] product line is protected by patents when such patents have expired.” Id. This conduct,
according to Defendant, is “likely to deceive consumers into thinking that no other competitors
may use a cylindrical hub cover and/or a dual-spoke cam cleat in its outdoor umbrella products
and, thus, if they desire either of those features, then they must purchase an outdoor umbrella only
from [Plaintiff].” Id.
Defendant’s eighth counterclaim for Florida common law unfair competition relies on
similar facts, claiming Plaintiff has unfairly competed with Defendant. See id. at 39-40. Defendant
again focuses on Plaintiff’s expired patents, alleging Plaintiff has “continu[e]d to market and
advertise its products in interstate commerce in connection with the sale of its outdoor umbrellas
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as being patented when its patents have expired . . . .” Id. Defendant contends this is likely to
deceive purchasers and potential purchasers in the same manner as Defendant alleges in the
seventh counterclaim. See id. at 39. Defendant further alleges Plaintiff “willfully misrepresented
its expired patents as continuing to provide it exclusive rights, in interstate commerce in connection
with outdoor umbrella products, and knew or should have known[] that their conduct was unlawful
and would damage [Defendant].” Id. at 40.
In seeking to dismiss the seventh and eighth counterclaims, Plaintiff argues Defendant fails
to state claims for relief. See Mot. 8–10. First, Plaintiff points out that the legal analysis applicable
to FDUTPA claims and claims of Florida common law unfair competition is the same analysis that
applies to Lanham Act violation claims. Id. at 9. Second, Plaintiff relies on Crocs v. Effervescent,
Inc., 119 F.4th 1, 6–7 (Fed. Cir. 2024), in which the Federal Circuit held a false claim about the
possession of a patent on a product feature, without more, does not give rise to a cause of action
under Section 43(a)(1)(B) of the Lanham Act. Id. And even assuming that the use of the term
“patented” is a false claim in this context, third, Plaintiff argues Defendant fails to state a false
advertising claim because Defendant “point[s] to no misleading statements about the nature,
characteristics, or qualities of the product features [at issue] . . . .” Id. at 9–10. Plaintiff also urges
that Congress has abrogated liability for this type of false patent marking under 35 U.S.C. § 292(c).
See id. at 10.
Plaintiff is correct that the legal analysis is the same for claims under the Lanham Act,
FDUTPA, and Florida state common law for unfair competition. See Crystal Entm’t & Filmworks,
Inc. v. Jurado, 643 F.3d 1313, 1323 (11th Cir. 2011) (“[T]he legal standards we apply to [the
FDUTPA] claim are the same as those we have applied under section 43(a) of the Lanham Act.”);
Suntree Techs., Inc. v. Ecosense Intern., Inc., 693 F.3d 1338, 1345 (11th Cir. 2012) (affirming that
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legal analysis is the same for claims alleging violations of Lanham Act, FDUTPA, and Florida
state common law for infringement and unfair competition); Custom Mfg. and Eng’g, Inc. v.
Midway Servs., Inc., 508 F.3d 641, 652 (11th Cir. 2007) (“Plaintiff’s failure to establish a likelihood
of confusion as to its Lanham Act claim also extinguishes its claim under Florida law.”); Planetary
Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 n.4 (11th Cir. 2001) (“Courts may use an
analysis of federal infringement claims as a ‘measuring stick’ in evaluating the merits of state law
claims of unfair competition.”). Therefore, the Court may consider opinions analyzing false
advertising claims under the Lanham Act.
However, Plaintiff sets forth no basis to preclude the seventh and eighth counterclaims.
Plaintiff points to Crocs to suggest that the counterclaims are subject to dismissal. Mot. 9. In Crocs,
the defendant asserted a counterclaim for false advertising in violation of the Lanham Act, alleging
Crocs had “engaged in a ‘campaign to mislead its customers’ about the characteristics of the
primary material Crocs uses to make its footwear products . . . .” Crocs, 119 F.4th at 2. Crocs’s
website allegedly falsely described the material as “patented,” “proprietary,” and “exclusive.” Id.
The district court granted summary judgment in favor of Crocs, but the Federal Circuit reversed.
Id. at 2-3. The court held that “a cause of action arises from Section 43(a)(1)(B) [of the Lanham
Act] where a party falsely claims that it possesses a patent on a product feature and advertises that
product feature in a manner that causes consumers to be misled about the nature, characteristics,
or qualities of its product.” Id. at 2. Thus, a party may violate Section 43(a)(1)(B) of the Lanham
Act by falsely claiming it holds a patent on a product feature and using that false claim to mislead
consumers. See id.
Crocs is not dispositive. Plaintiff argues that Defendant has made no allegations similar to
those made in Crocs regarding false descriptions of material as proprietary and exclusive, but the
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Federal Circuit never imposed such a requirement, nor did the court indicate that the mere failure
to allege such facts necessitates dismissal. See generally id.; Mot. 9. Rather, the court held merely
that these facts could serve as the basis for such a claim. See Crocs, 119 F.4th at 2. And in any
event, the allegation that Plaintiff falsely advertised a specific feature as “patented” when
Plaintiff’s patents had in fact expired, taken as true, sufficiently links the alleged misrepresentation
to the nature, characteristics, or qualities of Plaintiff’s products—satisfying the rule laid down in
Crocs. See id.; Resp. 15-16. Accordingly, Plaintiff’s reliance on Crocs alone is insufficient to
warrant dismissal.
The Court thus turns to Plaintiff’s argument that Congress has abrogated liability for the
alleged type of false patent marking under 35 U.S.C. § 292(c). See Mot. 10. According to Plaintiff,
the statute “completely exculpates [Plaintiff] of liability.” Id. But Defendant disagrees, arguing
§ 292 applies to criminal or qui tam actions for physically marking products and does not preempt
the false advertising claim brought here. See Resp. 16.
While the law prohibits false marking, only a plaintiff who has suffered a competitive
injury from that false marking may bring suit. 35 U.S.C. § 292(b); see also Sukumar v. Nautilus,
Inc., 785 F.3d 1396, 1399 (Fed. Cir. 2015) (“Section 292(b)’s ‘competitive injury’ standing
requirement was added in 2011 by the AIA.”). But despite this private right of action granted to
specific individuals, § 292(c) clarifies that “[t]he marking of a product . . . with matter relating to
a patent that covered that product but has expired is not a violation of [Section 292].”
However, Defendant’s seventh and eighth counterclaims are not based on § 292. Rather,
Defendant challenges Plaintiff’s conduct under the Lanham Act, the Sherman Act, FDUTPA, and
Florida common law. Plaintiff provides no sufficient basis for the Court to construe § 292(c)’s bar
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as applicable to all false advertising and unfair competition claims based on the alleged marking
of expired patents.
At this juncture, Plaintiff has failed to satisfy its burden of demonstrating that dismissal of
the seventh and eighth counterclaims is warranted.
IV. 	CONCLUSION
For the foregoing reasons, it is hereby ORDERED AND ADJUDGED:
1. 	Plaintiff’s Motion to Dismiss Defendant’s Counterclaims, ECF No. [27], is
GRANTED in part and DENIED in part.
2. 	Defendant’s First, Second, Third, Fifth, and Sixth Counterclaims are DISMISSED.
3. 	Plaintiff shall file its Answer to Defendant’s Fourth, Seventh, and Eighth
Counterclaims by February 2, 2026.
DONE AND ORDERED in Chambers at Miami, Florida, on January 20, 2026.
_________________________________
BETH BLOOM
UNITED STATES DISTRICT JUDGE
Copies to:
Counsel of Record
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