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PB Legacy, Inc. v. American Mariculture, Inc.

United States District Court, M.D. Florida, Fort Myers Division

January 9, 2020

PB LEGACY, INC, a Texas Corporation and TB FOODS USA, LLC, Plaintiffs,
v.
AMERICAN MARICULTURE, INC., a Florida corporation, AMERICAN PENAEID, INC., a Florida corporation, and ROBIN PEARL, Defendants. AMERICAN MARICULTURE, INC., a Florida corporation, Counter-Plaintiff,
v.
PB LEGACY, INC, a Texas Corporation, KENNETH GERVAIS, and RANDALL AUNGST, Counter/Third-Party Defendants.

          OPINION AND ORDER

          JOHN E. STEELE, UNITED STATES DISTRICT JUDGE.

         This matter comes before the Court on defendants' Amended Motion to Dissolve Preliminary Injunction (Doc. #228) filed on October 9, 2019. Plaintiff's Response in Opposition (Doc. #240) was filed on November 6, 2019. With the permission of the Court (Docs. #251, 260), defendants filed a Reply (Doc. #256) on November 26, 2019 and plaintiff filed a Sur-Reply (Doc. #262) on December 9, 2019. For the reasons set forth below, the motion is granted in part and denied in part.

         I.

         On January 9, 2017, plaintiff Primo Broodstock, Inc. (Primo Broodstock) filed a three-count Complaint (Doc. #1) against defendants and others. A corresponding Motion for a Temporary Restraining Order (Doc. #2) sought to preclude defendants from removing or relocating any shrimp broodstock in their possession. On January 11, 2017, the Court denied the motion for a temporary restraining order. (Doc. #9.)

         On January 26, 2017, Primo Broodstock filed an Amended Complaint (Doc. #20) setting forth nine causes of action against defendants and others.[1] Plaintiff also filed a Renewed Motion for Temporary Restraining Order or Alternatively Preliminary Injunction (Doc. #21) seeking an order enjoining defendants from selling, soliciting the sale of, or marketing Primo shrimp, particularly in China. On January 29, 2017, the Court denied this requested temporary restraining order, but scheduled a hearing on the request for a preliminary injunction. (Doc. #25.)

         On February 10, 2017, the Court conducted a hearing on plaintiff's pending motion for a preliminary injunction (Doc. #53), which was followed by supplemental briefing. (Docs. ##64, 67.) On April 27, 2017, the Court filed an Opinion and Order (Doc. #84) granting in part and denying in part plaintiff's request for a preliminary injunction. On the same day, a Preliminary Injunction (Doc. #85) was filed.

         On May 10, 2017, plaintiff filed an unopposed motion to amend the Amended Complaint to reflect that plaintiff Primo Broodstock, Inc.'s name had been changed to PB Legacy, Inc. (PB Legacy) and to add TB Foods USA, LLC (TB Foods) as an additional plaintiff. (Doc. #86.) The motion recited that on February 17, 2017, TB Foods had purchased substantially all of Primo Broodstock's assets, including intellectual property assets and rights in causes of action, and that following the sale plaintiff had changed its name to PB Legacy, Inc. (Id.) The Motion was granted on May 15, 2017. (Doc. #87.)

         On February 27, 2019, plaintiffs filed a motion for an order to show cause why defendants should not be held in contempt for violating the provisions of the Preliminary Injunction. (Doc. #144.) On May 7 and 8, 2019, the Court conducted an evidentiary hearing on the motion. (Docs. ##190, 191.) On May 22, 2019, the Court filed an Opinion and Order (Doc. #196) denying the motion.

         Two days later, on May 24, 2019, defendants filed their Motion to Dissolve Preliminary Injunction (Doc. #197.) An Amended Motion to Dissolve Preliminary Injunction (Doc. #228) was filed on October 9, 2019, and is the operative motion.

         II.

         The narrow scope of the Preliminary Injunction issued in this case was a far cry from that requested by plaintiff. See (Doc. #84, pp. 8-9.) The Preliminary Injunction was premised on the unfair competition and false advertising claim under the Lanham Act (Count VI), and also referenced the unfair competition claim under Florida common law (Count VII) and the violations of the Florida Deceptive and Unfair Trade Practices Act (Count VIII). (Doc. #84, pp. 29-42.) The operative portion of the Preliminary Injunction provides:

1. Defendants American Mariculture, Inc. (AMI), American Penaeid, Inc. (API), and Robin Pearl, and all officers, agents, servants, employees, and attorneys, and other persons who are in active concert or participation with Defendants within the meaning Federal Rule of Civil Procedure 65(c)(2), and who receive proper notice of the preliminary injunction, are enjoined from:
a. Referring to AMI's or API's shrimp as “Primo” anything, including “Primo shrimp, ” “Primo animals, ” “Primo breeders, ” or “Primo broodstock”;
b. Stating that AMI's or API's shrimp were created by breeding a male shrimp and a female shrimp from the same Primo family line;
c. Stating that AMI or API acquired or possessed Primo's “genetic bank” or “full genetic bank” or that Primo left or abandoned its “genetic bank” or “full genetic bank” at the AMI Facility; and d. Appearing via teleconference, videoconference, or in person at any Primo China or Dingda promotional event.
2. Defendants are not enjoined from stating that certain of their animals were derived from pure Primo stock whose genetic makeup was unknown to Defendants at the time.

(Doc. #85, p. 2.)

         As the Court noted in its Opinion and Order explaining the issuance of the Preliminary Injunction, there is no direct Chinese translation for the English word “Primo.” Rather, there are two similar phonetic words, “pu rui mo” and “pu li mao, ” each of which has distinct Chinese characters and different literal meanings. The prohibition in the Preliminary Injunction against referring to defendants' shrimp as “‘Primo' anything” includes the English “Primo” and both Chinese phonetic words.

         III.

         At the hearing on the motion for a preliminary injunction, defendants agreed that the use of the Primo name was improper and that they did not necessarily oppose an injunction preventing the use of the “Primo” name. (Doc. # 53, p. 111.) The Court noted this position in its Opinion and Order. (Doc. #84, p. 30.) At the show cause hearing on May 7, 2019, counsel for defendants noted that defendants had agreed to the narrow preliminary injunction forbidding the future use of “Primo”. (Doc. #190, p. 35.) At the same hearing, defendant Robin Pearl testified that he had “no problem being barred forever and ever and ever from [using] the word Primo” (Doc. #190, p. 185) and ...


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