1 WO 2 3 4 5
9 Arizona Grain Incorporated, et al., No. CV-18-03371-PHX-GMS
10 Plaintiffs, ORDER
11 v.
12 Barkley Ag Enterprises LLC, et al.,
13 Defendants. 14 Northern Agri Brands, LLC,
15 Counterclaim Plaintiff,
16 v.
17 Arizona Plant Breeders, Inc., et al.,
18 Counterclaim Defendants. 19 Northern Agri Brands, LLC, 20 Third-Party Plaintiff, 21 v. 22 Eric Wilkey, et al., 23
Third-Party Defendants. 24 25 Pending before the Court is a Motion by Counterclaim Defendants Arizona Plant 26 Breeders, Inc. and Arizona Grain, Inc. (jointly, “APB”), as well as APB’s officers and 27 directors and certain spouses, namely Eric Wilkey, Lisa Lynn Morris-Wilkey, K. Andrew 28 1 Kroese, William Ken Dickey, Russell S. Dickey, Erika Sahagun Dickey, and Tod V. 2 Dickey (collectively, “Third-Party Defendants”; jointly with APB, “APB Defendants”), to 3 Dismiss or, in the Alternative, for Judgment on the Pleadings on Counts VII and VIII of 4 Counterclaims Asserted by Counterclaim Plaintiff Northern Agri Brands, LLC (NAB). 5 (Doc. 106.) The Motion is granted. 7 The factual background of this case was summarized in the Court’s order on a prior 8 motion to dismiss. (Doc. 62 at 2–5.) In that order, the Court dismissed with leave to amend 9 NAB’s unjust enrichment claim as to all Defendants; NAB had not yet alleged a violation 10 of the Lanham Act. Following that order, NAB filed a Motion for Leave to Amend Second 11 Amended Answer & Affirmative Defenses to First Amended Complaint & Counterclaims 12 & Third-Party Complaint, (Doc. 84), which the Court granted, (Doc. 99).1 In those 13 Counterclaims, NAB realleged its unjust enrichment claim and added a claim for violation 14 of the Lanham Act. Both claims were brought against all Defendants. Subsequently, Third- 15 Party Defendant Lockwood Seed and Grain (“Lockwood,” collectively with APB 16 Defendants, “Defendants”) filed a Motion to Dismiss for Failure to State a Claim on both 17 claims, which the Court granted. This Motion followed. Arguing that the Court’s reasoning 18 for dismissing both the unjust enrichment claim and the Lanham Act claim is not specific 19 to Lockwood, APB Defendants move to dismiss or, in the alternative, move for judgment 20 on the pleadings on, those same claims—Counts VII (unjust enrichment) and VIII 21 (violation of the Lanham Act). 23 I. Legal Standard 24 To survive dismissal for failure to state a claim pursuant to Federal Rule of Civil 25 Procedure 12(b)(6), a complaint must contain more than a “formulaic recitation of the 26 elements of a cause of action”; it must contain factual allegations sufficient to “raise the 27 1 The Third Amended Answer & Affirmative Defenses to First Amended Complaint & 28 Counterclaims & Third-Party Complaint (collectively, “Third Amended Counterclaims”) is filed at Doc. 103. 1 right of relief above the speculative level.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 2 (2007) (quoting Conley v. Gibson, 355 U.S. 41, 47 (1957)). When analyzing a complaint 3 for failure to state a claim, “allegations of material fact are taken as true and construed in 4 the light most favorable to the non-moving party.” Smith v. Jackson, 84 F.3d 1213, 1217 5 (9th Cir. 1996). However, legal conclusions couched as factual allegations are not given a 6 presumption of truthfulness, and “conclusory allegations of law and unwarranted 7 inferences are not sufficient to defeat a motion to dismiss.” Pareto v. F.D.I.C., 139 F.3d 8 696, 699 (9th Cir. 1998). 9 II. Unjust Enrichment (Count VII) 10 In the Court’s initial order addressing Defendants’ Motion to Dismiss Count VII, 11 the Court dismissed NAB’s unjust enrichment claim as preempted by the AUTSA because 12 “NAB relies heavily on fact allegations that are based on or rooted in misappropriation of 13 trade secrets.” (Doc. 62 at 18–19.) The Court reasoned that NAB had not provided any 14 factual allegations in support of unjust enrichment that were unrelated to theft of its 15 proprietary information, since NAB’s claims were “based on APB and Lockwood’s sale of 16 RAPTOR triticale” coupled with RAPTOR’s “genetic[] match[ with] NAB’s SY 158T 17 triticale variety.” (Doc. 62 at 19.) 18 Subsequently, NAB filed its Third Amended Counterclaims. As in its initial 19 counterclaims, NAB alleged that “Counterclaim Defendants and Third-party Defendants 20 were enriched by their acquisition and use of NAB’s triticale germplasm” and “pedigree 21 information concerning NAB’s products,” and that NAB was damaged by “Counterclaim 22 Defendants and Third-party Defendants’ acquisition and use of NAB’s triticale germplasm, 23 pedigree information concerning NAB’s products, and other proprietary triticale breeding 24 information.” (Doc. 25 at 34; Doc. 78 at 36.) In its Third Amended Counterclaims, 25 however, NAB caveated these allegations to “the extent any germplasm, pedigree and 26 breeding information is found not to rise to the level of a trade secret.” (Doc. 78 at 36.) 27 Lockwood again filed a Motion to Dismiss the unjust enrichment claim. (Doc. 68.) In 28 granting that Motion, the Court found that the additional support NAB added to the Third 1 Amended Counterclaims “d[id] not alter the Court’s prior analysis.” (Doc. 99 at 7.) 2 APB Defendants argues that the Court “should extend that reasoning to Defendants 3 and dismiss Count VII as to all.” (Doc. 106 at 6.) NAB, for its part, does not reference the 4 Court’s prior orders at all; however, it cites Orca Communications Unlimited, LLC v. 5 Noder, 236 Ariz. 180, 337 P.3d 545 (2014), to argue that reliance on Unisource Worldwide, 6 Inc. v. Swope, 964 F. Supp.2d 1050, 1057 (D. Ariz. 2013)—on which the Court relied in 7 its order dismissing this claim as to Lockwood—is misplaced. In Orca, the Arizona 8 Supreme Court held that the AUTSA does not “broadly displace[] all common-law claims 9 for misuse of confidential information that do[] not fall within AUTSA’s definition of 10 ‘trade secret’”; rather, according to the Orca court, the AUTSA “displaces only conflicting 11 tort claims for ‘misappropriation’ of a ‘trade secret,’ terms AUTSA specifically defines, 12 A.R.S. § 44–401(2), (4).” 236 Ariz. at 182, 337 P.3d at 547. The AUTSA thus leaves 13 undisturbed claims “that are not based on misappropriation of a trade secret.” Id. However, 14 the Orca court noted that it would not decide “what aspects, if any, of the confidential 15 information alleged in Orca’s unfair-competition claim might fall within AUTSA’s broad 16 definition of ‘trade secret’ and therefore be displaced.” Id. at 549. The inference to be 17 drawn from that comment, the Ninth Circuit subsequently observed, “is that a claim for 18 misappropriation of confidential information, though a separate tort cause of action, would 19 be displaced to the extent that it fell within the trade secrets claims.” Universal Engraving, 20 Inc. v. Metal Magic, Inc., 602 F. App’x 367, 369 (9th Cir. 2015). In other words, “a claim 21 that was encompassed by a claim for misappropriation of trade secrets would still be 22 displaced even if it could be given a different label.” Id. 23 The AUTSA defines a “trade secret” as 24 information, including a formula, pattern, compilation, program, device, method, technique or process, that both: 25 (a) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, 26 other persons who can obtain economic value from its disclosure or use.
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1 WO 2 3 4 5
9 Arizona Grain Incorporated, et al., No. CV-18-03371-PHX-GMS
10 Plaintiffs, ORDER
11 v.
12 Barkley Ag Enterprises LLC, et al.,
13 Defendants. 14 Northern Agri Brands, LLC,
15 Counterclaim Plaintiff,
16 v.
17 Arizona Plant Breeders, Inc., et al.,
18 Counterclaim Defendants. 19 Northern Agri Brands, LLC, 20 Third-Party Plaintiff, 21 v. 22 Eric Wilkey, et al., 23
Third-Party Defendants. 24 25 Pending before the Court is a Motion by Counterclaim Defendants Arizona Plant 26 Breeders, Inc. and Arizona Grain, Inc. (jointly, “APB”), as well as APB’s officers and 27 directors and certain spouses, namely Eric Wilkey, Lisa Lynn Morris-Wilkey, K. Andrew 28 1 Kroese, William Ken Dickey, Russell S. Dickey, Erika Sahagun Dickey, and Tod V. 2 Dickey (collectively, “Third-Party Defendants”; jointly with APB, “APB Defendants”), to 3 Dismiss or, in the Alternative, for Judgment on the Pleadings on Counts VII and VIII of 4 Counterclaims Asserted by Counterclaim Plaintiff Northern Agri Brands, LLC (NAB). 5 (Doc. 106.) The Motion is granted. 7 The factual background of this case was summarized in the Court’s order on a prior 8 motion to dismiss. (Doc. 62 at 2–5.) In that order, the Court dismissed with leave to amend 9 NAB’s unjust enrichment claim as to all Defendants; NAB had not yet alleged a violation 10 of the Lanham Act. Following that order, NAB filed a Motion for Leave to Amend Second 11 Amended Answer & Affirmative Defenses to First Amended Complaint & Counterclaims 12 & Third-Party Complaint, (Doc. 84), which the Court granted, (Doc. 99).1 In those 13 Counterclaims, NAB realleged its unjust enrichment claim and added a claim for violation 14 of the Lanham Act. Both claims were brought against all Defendants. Subsequently, Third- 15 Party Defendant Lockwood Seed and Grain (“Lockwood,” collectively with APB 16 Defendants, “Defendants”) filed a Motion to Dismiss for Failure to State a Claim on both 17 claims, which the Court granted. This Motion followed. Arguing that the Court’s reasoning 18 for dismissing both the unjust enrichment claim and the Lanham Act claim is not specific 19 to Lockwood, APB Defendants move to dismiss or, in the alternative, move for judgment 20 on the pleadings on, those same claims—Counts VII (unjust enrichment) and VIII 21 (violation of the Lanham Act). 23 I. Legal Standard 24 To survive dismissal for failure to state a claim pursuant to Federal Rule of Civil 25 Procedure 12(b)(6), a complaint must contain more than a “formulaic recitation of the 26 elements of a cause of action”; it must contain factual allegations sufficient to “raise the 27 1 The Third Amended Answer & Affirmative Defenses to First Amended Complaint & 28 Counterclaims & Third-Party Complaint (collectively, “Third Amended Counterclaims”) is filed at Doc. 103. 1 right of relief above the speculative level.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 2 (2007) (quoting Conley v. Gibson, 355 U.S. 41, 47 (1957)). When analyzing a complaint 3 for failure to state a claim, “allegations of material fact are taken as true and construed in 4 the light most favorable to the non-moving party.” Smith v. Jackson, 84 F.3d 1213, 1217 5 (9th Cir. 1996). However, legal conclusions couched as factual allegations are not given a 6 presumption of truthfulness, and “conclusory allegations of law and unwarranted 7 inferences are not sufficient to defeat a motion to dismiss.” Pareto v. F.D.I.C., 139 F.3d 8 696, 699 (9th Cir. 1998). 9 II. Unjust Enrichment (Count VII) 10 In the Court’s initial order addressing Defendants’ Motion to Dismiss Count VII, 11 the Court dismissed NAB’s unjust enrichment claim as preempted by the AUTSA because 12 “NAB relies heavily on fact allegations that are based on or rooted in misappropriation of 13 trade secrets.” (Doc. 62 at 18–19.) The Court reasoned that NAB had not provided any 14 factual allegations in support of unjust enrichment that were unrelated to theft of its 15 proprietary information, since NAB’s claims were “based on APB and Lockwood’s sale of 16 RAPTOR triticale” coupled with RAPTOR’s “genetic[] match[ with] NAB’s SY 158T 17 triticale variety.” (Doc. 62 at 19.) 18 Subsequently, NAB filed its Third Amended Counterclaims. As in its initial 19 counterclaims, NAB alleged that “Counterclaim Defendants and Third-party Defendants 20 were enriched by their acquisition and use of NAB’s triticale germplasm” and “pedigree 21 information concerning NAB’s products,” and that NAB was damaged by “Counterclaim 22 Defendants and Third-party Defendants’ acquisition and use of NAB’s triticale germplasm, 23 pedigree information concerning NAB’s products, and other proprietary triticale breeding 24 information.” (Doc. 25 at 34; Doc. 78 at 36.) In its Third Amended Counterclaims, 25 however, NAB caveated these allegations to “the extent any germplasm, pedigree and 26 breeding information is found not to rise to the level of a trade secret.” (Doc. 78 at 36.) 27 Lockwood again filed a Motion to Dismiss the unjust enrichment claim. (Doc. 68.) In 28 granting that Motion, the Court found that the additional support NAB added to the Third 1 Amended Counterclaims “d[id] not alter the Court’s prior analysis.” (Doc. 99 at 7.) 2 APB Defendants argues that the Court “should extend that reasoning to Defendants 3 and dismiss Count VII as to all.” (Doc. 106 at 6.) NAB, for its part, does not reference the 4 Court’s prior orders at all; however, it cites Orca Communications Unlimited, LLC v. 5 Noder, 236 Ariz. 180, 337 P.3d 545 (2014), to argue that reliance on Unisource Worldwide, 6 Inc. v. Swope, 964 F. Supp.2d 1050, 1057 (D. Ariz. 2013)—on which the Court relied in 7 its order dismissing this claim as to Lockwood—is misplaced. In Orca, the Arizona 8 Supreme Court held that the AUTSA does not “broadly displace[] all common-law claims 9 for misuse of confidential information that do[] not fall within AUTSA’s definition of 10 ‘trade secret’”; rather, according to the Orca court, the AUTSA “displaces only conflicting 11 tort claims for ‘misappropriation’ of a ‘trade secret,’ terms AUTSA specifically defines, 12 A.R.S. § 44–401(2), (4).” 236 Ariz. at 182, 337 P.3d at 547. The AUTSA thus leaves 13 undisturbed claims “that are not based on misappropriation of a trade secret.” Id. However, 14 the Orca court noted that it would not decide “what aspects, if any, of the confidential 15 information alleged in Orca’s unfair-competition claim might fall within AUTSA’s broad 16 definition of ‘trade secret’ and therefore be displaced.” Id. at 549. The inference to be 17 drawn from that comment, the Ninth Circuit subsequently observed, “is that a claim for 18 misappropriation of confidential information, though a separate tort cause of action, would 19 be displaced to the extent that it fell within the trade secrets claims.” Universal Engraving, 20 Inc. v. Metal Magic, Inc., 602 F. App’x 367, 369 (9th Cir. 2015). In other words, “a claim 21 that was encompassed by a claim for misappropriation of trade secrets would still be 22 displaced even if it could be given a different label.” Id. 23 The AUTSA defines a “trade secret” as 24 information, including a formula, pattern, compilation, program, device, method, technique or process, that both: 25 (a) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, 26 other persons who can obtain economic value from its disclosure or use. (b) Is the subject of efforts that are reasonable under the circumstances to 27 maintain its secrecy. 28 A.R.S. § 44-401. Citing various paragraphs in its Third Amended Counterclaims, NAB 1 argues that the Third Amended Counterclaims “allege[] . . . that APB benefitted by use of 2 more than trade secrets that were taken from NAB.” (Doc. 109 at 4.) The cited paragraphs 3 describe Oly Cantu (a field technician with NAB’s predecessor in interest, Syngenta) 4 “secretly and without authority . . . remov[ing] a portion of triticale breeding materials, and 5 related information contained within confidential breeding records covered by PVPA 6 Certificate 201200083 and other triticale lines”; “t[aking] these materials to APB where he 7 . . . used the materials to establish a directly competitive triticale breeding program founded 8 upon Syngenta’s triticale Breeding Materials, including APB’s Raptor triticale product”; 9 “secretly and without authority . . . remov[ing] awnless triticale seedstock, breeding lines, 10 and parental lines having the genetic expressions and technology covered by the ‘219 11 patent”; and “misappropriat[ing] awned triticale seedstock, triticale breeding lines, and 12 triticale lines that were in the process of being selected for stability and for release.” (Doc. 13 103 at 25–26.)2 Even if these claims could plausibly “be given a different label,” Universal 14 Engraving, 602 F. App’x at 369, each fits under the AUTSA’s definition of trade secrets. 15 TLX Inc. v. JetBlue Airways Corp., No. CV-19-04734-PHX-SMB, 2020 WL 16 364198 (D. Ariz. Jan. 22, 2020), is not to the contrary. In that case, the court found it 17 “unlikely that Plaintiff’s unfair competition claim encompasses only trade secret 18 misappropriations.” 2020 WL 364198 at *3. “Indeed,” the court continued, “Plaintiff even 19 argues its unfair competition claim is not based on trade secrets, but on JetBlue’s decision 20 to give TLX’s direct competitor an unfair advantage by releasing TLX’s confidential and 21 proprietary bid to the direct competitor.” Id. Thus, while the AUTSA “would preempt 22 Plaintiff’s unfair competition claim insofar as it is based solely on trade secret 23 2 In its Response to APB Defendants’ Motion to Dismiss, NAB claims that it alleged in the 24 Third Amended Complaint that “in addition to trade secrets, materials taken by Mr. Cantu related to its triticale breeding program included know-how, technology, inventions, 25 breeding materials, physical seed samples, research logs and notes, reserve seed stocks, progeny materials, breeder lots, restorer lines, maintainer lines, hybrid components, 26 licenses and technology agreements, contracts, Commercialized Varieties, PVPA applications and issued Certificates of Protection, patent applications and issued patents.” 27 (Doc. 109 at 4.) However, the Third Amended Complaint states only that these items were encompassed in Syngenta’s 2015 sale of all right, title, and interest in its entire triticale 28 breeding program and accompanying germplasm to NAB. The Complaint does not mention Cantu’s alleged theft in that context. 1 misappropriation, the Plaintiff’s disclosed ‘bid’ or other information at issue does not 2 appear to fall within AUTSA’s very specific definition of a ‘trade secret.’” Id. (emphasis 3 added). Unlike in TLX, the allegations supporting NAB’s unjust enrichment claim 4 encompass only allegations of trade secret misappropriations. NAB has failed to identify 5 any allegation in its Third Amended Counterclaims that falls outside the AUTSA definition 6 of a trade secret. This claim is therefore preempted as to all Defendants. 7 III. Violation of the Lanham Act (Count VIII) 8 In the Court’s prior order addressing Lockwood’s Motion to Dismiss for Failure to 9 State a Claim, the Court found the Lanham Act “inapplicable” to Lockwood, where “NAB 10 alleges that Lockwood ‘cop[ied NAB’s] intellectual property,’ . . . by ‘directing 11 APB/Arizona Grain . . . to advance the development of up to four (4) new triticale cultivars 12 . . . some of which contained the legally protected germplasm of NAB,’ (Doc. 84-1 at 23), 13 and by selling a seed variety created from NAB’s misappropriated confidential and/or trade 14 secret breeding information,” (Doc. 99 at 8), because the Lanham Act “does not exist to 15 reward manufacturers for their innovation in creating a particular device; that is the purpose 16 of the patent law and its period of exclusivity,” Dastar Corp. v. Twentieth Century Fox 17 Film Corp., 539 U.S. 23, 34 (2003). 18 NAB makes no attempt to distinguish the Court’s prior decision on the facts; rather, 19 NAB advances a different legal interpretation of Dastar Corporation. The Court stands by 20 its previous analysis. The Lanham Act prohibits misleading representations regarding “the 21 producer of the tangible goods that are offered for sale” but not misrepresentations 22 regarding “the author of any idea, concept, or communication embodied in those goods.” 23 Dastar Corp., 539 U.S. at 37. NAB alleges that “APB has been and is continuing to claim 24 SY 158T as its own and . . . sell SY 158T under the Raptor name in the triticale market” 25 and that “RAPTOR triticale is the same variety as NAB’s SU 158T,” as determined by 26 observation of their “identical characteristics” and “genetic[] match[ing].” (Doc. 103 at 27 26–27). NAB thus does not allege that APB sold NAB’s actual product repackaged, but 28 rather that APB used NAB’s product to create an identical product, RAPTOR, that 1|| “displays specific traits in the form of SY 158T.” (Doc. 109 at 8.) The Court finds no legal 2|| distinction between NAB’s claims against Lockwood and APB Defendants on this point, 3 || and accordingly dismisses this claim as to all Defendants. 4 IT IS THEREFORE ORDERED that APB Defendants’ Motion to Dismiss or, in 5 || the Alternative, for Judgment on the Pleadings on Counts VII and VUI of Counterclaims 6|| Asserted by Counterclaim Plaintiff Northern Agri Brands, LLC, (Doc. 106), is GRANTED. NAB’s claims for unjust enrichment (Count VID) and a violation of the 8 || Lanham Act (Count VIID are dismissed as to all Defendants with prejudice. 9 Dated this 30th day of July, 2020. Wars ) A Whacrsay Sooo) 12 Chief United states District Judge 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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