Rossi Ventures, Inc. et al v. Pasquini et al

Filing 139

ORDER ON MOTION FOR CONTEMPT CITATION, CERTIFICATION OF FACTS, AND RELATED FILINGS. United States Magistrate Judge Boyd N. Boland's 118 Certification of Facts Pursuant to 28 U.S.C. § 636(e) (6) is adopted in whole by this Court. Plaintiff s' 108 Motion for Contempt Citation is granted. Defendants Tony Pasquini's and Pasquini Franchising, LLCs 123 Objections to United States Magistrate Judges Certification of Facts Pursuant to 28 U.S.C. § 636(e)(6) are overruled. Plaintiffs' 127 Motion to Strike Defendants' Objections to Certification of Facts is denied as moot. Defendants' 129 Motion to Dissolve or Modify Injunction is denied. By Judge Christine M. Arguello on 11/28/12.(mnfsl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Christine M. Arguello
Civil Action No. 11-cv-02838-CMA-BNB
ROSSI VENTURES, INC., and
Y. MELINDA PASQUINI,
Plaintiffs,
v.
ANTONIO PASQUINI,
PASQUINI FRANCHISING, LLC,
PASQUINI’S RESTAURANTS, LLC,
PASQUINI’S CHERRY CREEK, LLC,
PASQUINI’S 17th, LLC, and
PASQUINI’S COLFAX, LLC,
Defendants.

ORDER ON MOTION FOR CONTEMPT CITATION,
CERTIFICATION OF FACTS, AND RELATED FILINGS

This matter is before the Court on Plaintiffs’ “Motion for Contempt Citation” (Doc.
# 108) and the several other filings Plaintiff’s motion has engendered: United States
Magistrate Judge Boyd N. Boland’s “Certification of Facts Pursuant to 28 U.S.C.
§ 636(e)(6)” (Doc. # 118); Defendants Antonio (“Tony”) Pasquini’s and Pasquini
Franchising, LLC’s “Objections to United States Magistrate Judge’s Certification of
Facts Pursuant to 28 U.S.C. § 636(e)(6)” (Doc. # 123); Plaintiffs’ “Motion to Strike
Defendants’ Objections to Certification of Facts” (Doc. # 127); and Defendants’ “Motion
to Dissolve or Modify Injunction” (Doc. # 129). The Court’s disposition of these filings
is discussed in detail below.

I. BACKGROUND1
After a three-day evidentiary hearing in February of this year, Judge Boland
issued a Recommendation (Doc. # 56) on Plaintiffs’ “Motion for Preliminary Injunction”
(Doc. # 14). Judge Boland recommended that the Court grant Plaintiffs’ motion such
that “defendants [Tony Pasquini and Pasquini Franchising, LLC], their officers, agents,
servants, employees, and all other persons in active concert or participation with them,
be preliminarily enjoined from use of the name ‘Pasquini’s Pizzeria’ or any variation
thereof in connection with the operation of the restaurant located at 240 Milwaukee
Street, Denver, Colorado” (which has subsequently been re-named “Tony P’s”). (Id.
at 20.) The Recommendation was based, in part, on Judge Boland’s finding that,
despite Plaintiff Melinda Pasquini having purchased “[t]he use of the name(s)
‘Pasquini’s Pizzeria’ or any variation thereof” in 2004, she later acquiesced in Defendant
Tony Pasquini’s “use of the Pasquini Pizzeria mark in connection with stores distant
from her exclusive area,” but that “Tony exceeded the scope of Melinda’s consent . . .
when he opened [Tony P’s] within her exclusive area.” (Id. at 5–6, 18.)
This Court adopted and affirmed Judge Boland’s Recommendation, stating in
pertinent part that Defendants and “their officers, agents, servants, employees, and all
other persons in active concert or participation with them, [are] preliminarily enjoined
from use of the name ‘Pasquini’s Pizzeria’ or any variation thereof in connection with
the operation of [Tony P’s].” (Doc. # 78 (citation omitted).)

1

The facts and procedural history of this case are well known to the parties and will
be repeated here only to the extent that they pertain to the pending motions or Judge
Boland’s certification of facts.
2

On August 29, 2012, two months after this Court’s Order, Plaintiffs filed a motion
for contempt citation, based on Defendants Tony Pasquini’s and Pasquini Franchising,
LLC’s “multiple and ongoing violations” of this Court’s Order. (Doc. # 108 at 1.) After
the motion was fully briefed,2 Judge Boland conducted a full-day evidentiary hearing on
October 3, 2012. (Doc. ## 116 and 121.) The next day, Judge Boland certified facts to
this Court under 28 U.S.C. § 636(e)(6). (Doc. # 118.) As relevant here, Judge Boland
found and certified that:


in 2004, Plaintiffs acquired “[t]he use of the name(s) ‘Pasquini’s Pizzeria’ or any
variation thereof” (id. at 4 (quoting Doc. # 56 at 5–6));



“[n]otwithstanding their purchase and ownership of the Pasquini’s name,
[P]laintiffs acquiesced in Tony Pasquini’s use of the name Pasquini’s in
connection with four other restaurants – Pasquini’s Uptown, Pasquini’s
Highlands, Pasquini’s Lone Tree, and Pasquini’s DTC” (id. at 4–5);



“Tony Pasquini’s use of the Pasquini name at [Tony P’s] exceeded the scope
of [P]laintiff’s prior consent” (id. at 5);



this Court entered a preliminary injunction by which Defendants were precluded
from using “the name ‘Pasquini’s Pizzeria’ or any variation thereof in connection
with the operation of [Tony P’s]” (id. at 4 (citing Doc. # 78));



Defendants “had actual knowledge of the Preliminary Injunction” (id. at 4);

2

Defendants Tony Pasquini and Pasquini Franchising, LLC responded to Plaintiffs’
motion on August 31, 2012 (Doc. # 110), to which Plaintiffs replied on September 4,
2012 (Doc. # 111). Defendants thereafter submitted a “Supplemental Response in
Opposition to Plaintiffs’ Motion for Contempt Citation.” (Doc. # 119.)
3



“[s]ubsequent to the entry of the Preliminary Injunction, the Pasquini Defendants
have engaged in a marketing campaign using the tag line ‘Restaurants by Tony
Pasquini’” (id. at 5);



“[t]he Restaurants by Tony Pasquini marketing campaign obviously and blatantly
violates the Preliminary Injunction, and the Pasquini Defendants’ interpretation of
the Preliminary Injunction is unreasonable” (id. at 5–6);



“[c]ross-marketing runs afoul of and violates the Preliminary Injunction where,
as here, it takes the form of using the name ‘Pasquini’s’ to advertise and promote
‘the restaurant located at 240 Milwaukee Street,’ now known as Tony P’s” (id.
at 7); and



“the use of the name ‘Pasquini’s’ in the Pasquini Defendants’ marketing
campaign is overwhelming and constitutes a prohibited use of the Pasquini’s
trademark in connection with the operation of Tony P’s” (id.).

Judge Boland cited several instances supporting his determination that “the Pasquini
Defendants are using a variation of the name ‘Pasquini’s Pizzeria’ to advertise Tony P’s
. . . which is prohibited by the Preliminary Injunction.” (See id.) He ultimately concluded
that: “[t]he Pasquini Defendants’ failure to comply with the Preliminary Injunction . . . is
not merely inadvertent” but, rather, demonstrates that they “made a conscious decision,
based on an unreasonable interpretation of the Preliminary Injunction, to use a variation
of the ‘Pasquini’s Pizzeria’ trademark in connection with the operation of Tony P’s”;
“[t]he Pasquini Defendants have failed to comply with the Preliminary Injunction and
have failed to demonstrate either that they cannot comply with the Preliminary Injunction
4

or have taken all reasonable steps to ensure compliance”; and “[t]he Pasquini
Defendants’ deliberate uses of a variation of the ‘Pasquini’s Pizzeria’ trademark in
connection with the operation of Tony P’s . . . are acts of contempt.” (Id. at 8 – 9.)
Thereafter, additional briefing ensued. First, Defendants Tony Pasquini and
Pasquini Franchising, LLC objected to Judge Boland’s certification of facts.3 (Doc.
# 123.) Next, Plaintiffs moved to have the Court strike Defendants’ objections to
Judge Boland’s certification of facts.4 (Doc. # 127.) Finally, Defendants filed a motion
to dissolve or modify the preliminary injunction.5 (Doc. # 129.)
II. DISCUSSION
Although Plaintiffs’ motion for contempt citation prompted the subsequent filings,
disposition of the former depends on resolution of the latter. Accordingly, the Court
begins with Judge Boland’s certification of facts and Defendants Tony Pasquini’s and
Pasquini Franchising, LLC’s objections thereto.
A.

CERTIFICATION OF FACTS AND RELATED OBJECTIONS
Under 28 U.S.C. § 636(e)(6), for acts that constitute civil contempt, the

magistrate judge to whom a matter has been referred
shall forthwith certify the facts to a district judge and may serve or cause
to be served, upon any person whose behavior is brought into question
under this paragraph, an order requiring such person to appear before
a district judge upon a day certain to show cause why that person should
not be adjudged in contempt by reason of the facts so certified. The
3

Plaintiffs responded to Defendants’ objections on November 5, 2012. (Doc. # 134.)

4

Defendants responded to Plaintiffs’ motion to strike on October 23, 2012 (Doc. # 128),
to which Plaintiffs replied on November 5, 2012 (Doc. # 133).

5

Plaintiffs responded to Defendants motion on November 21, 2012. (Doc. # 137.)
5

district judge shall thereupon hear the evidence as to the act or conduct
complained of and, if it is such as to warrant punishment, punish such
person in the same manner and to the same extent as for a contempt
committed before a district judge.
As set forth above, Judge Boland adhered to this procedure in certifying the relevant
facts to this Court.
In following this procedure, Judge Boland correctly explained that an injunction
can be enforced through civil contempt. (Doc. # 118 at 3 (citing Federal Trade Comm’n
v. Kuykendall, 371 F.3d 745, 749 (10th Cir. 2004)).) In a motion for civil contempt,
plaintiffs have the “burden of proving, by clear and convincing evidence, that a valid
court order existed, that the defendant had knowledge of the order, and that the
defendant disobeyed the order.” United States v. Ford, 514 F.3d 1047, 1051 (10th Cir.
2008) (quotation marks and citation omitted). The burden then shifts to the defendant
“to show either that he had complied with the order or that he could not comply with it.”
Id.
Judge Boland also correctly noted that, in this case, the “thrust of the dispute”
between the parties “is whether the admitted conduct violates the Preliminary
Injunction,” which this Court entered on June 28, 2012. (Doc. # 118 at 3 n.1.)
Resolution of this dispute requires the Court to make a legal determination; as
Defendants point out, “[w]hether an injunctive order is ‘sufficiently specific’ under [Fed.
R. Civ. P.] 65(d) ‘is a question of law.’” (Doc. # 123 at 4 (quoting Reliance Ins. Co. v.
Mast Const. Co., 159 F.3d 1311, 1316 (10th Cir. 1998)).)
Accordingly, as a threshold matter, the Court determines that it need not conduct
an evidentiary hearing to rule on Plaintiffs’ contempt motion. Although § 636(e)(6)
6

contemplates such a hearing, holding one on the instant motion is unnecessary. The
parties have already produced evidence, during an extended evidentiary hearing before
Judge Boland, which this Court has reviewed. They have briefed the issues thoroughly
– both before and after the hearing. And no party has requested an additional hearing.
Moreover, because the Court’s determination hinges on a question of law, no additional
evidence is required. See Hart’s Rocky Mountain Retreat, Inc., v. Gayhart, No. 1:06-cv01235, 2007 WL 2491856, at *1 (D. Colo. Aug. 29, 2007) (unpublished) (in determining
the propriety of ruling on a motion for civil contempt, the court stated that “since there is
no dispute about any of the material facts, an evidentiary hearing is not necessary”);
Wyoming v. Livingston, 443 F.3d 1211, 1224 (10th Cir. 2006) (“There is no need for
a court to hold an evidentiary hearing in a matter when there are no material facts in
dispute.”). As such, the Court turns to Defendants’ objections.6
At the outset, the Court notes that Defendants have previously raised (see
Doc. # 58), and the Court has rejected (see Doc. # 78), many of the same arguments
they advance here. As such, and in the interest of efficiency, the Court declines to
re-examine in detail every assertion already raised. Nonetheless, out of an abundance
of caution, the Court will address Defendants’ principal arguments, even if doing so
requires traversing, again, trodden ground.
To begin with, Defendants assert that Judge Boland’s certification of facts
“makes a new finding of ownership of the Pasquini’s Mark – a finding not previously
6

Because, as explained in the accompanying text, Defendants’ objections fail to
dissuade the Court from adopting the facts certified by Judge Boland, the Court
assumes, without deciding, that Defendants’ objections are procedurally proper under
28 U.S.C. § 636(e)(6). As such, Plaintiffs’ motion to strike will be denied as moot.
7

reflected in the Recommendation or Order.” (Doc. # 123 at 11.) However, the finding
at issue – “[P]laintiffs purchased from Tony Pasquini in 2004 and now own ‘[t]he use of
the name(s) ‘Pasquini’s Pizzeria’ or any variation thereof’” – appears in, and in fact is
directly quoted from, Judge Boland’s April 9, 2012 Recommendation. (See Doc. # 118
at 4 (quoting Doc. # 56 at 5 – 6).) As explained above, Judge Boland’s Recommendation was based, in part, on his findings that: Plaintiff Melinda Pasquini purchased
“[t]he use of the name(s) ‘Pasquini’s Pizzeria’ or any variation thereof” in 2004; she
later acquiesced in Defendant Tony Pasquini’s “use of the Pasquini Pizzeria mark in
connection with stores distant from her exclusive area”; and “Tony exceeded the scope
of Melinda’s consent . . . when he opened [Tony P’s] within her exclusive area.” (Doc.
# 56 at 5–6, 18.) The Court accepted these findings in its June 28, 2012 Order. As
such, the Court rejects Defendants’ assertion that Judge Boland’s certified finding
had been neither previously made by him nor affirmed and adopted by this Court.
Defendants further argue that Judge Boland erred in stating that Defendants’
current marketing campaign violates the preliminary injunction because (1) that
conclusion conflicts with the previous finding regarding Plaintiff Melina Pasquini’s limited
acquiescence in Defendants’ use of the Pasquini Pizzeria mark, and (2) no evidence
indicates that Tony P’s “is calling itself Pasquini’s or seeking an association with the
Pasquini’s on Broadway” (which Plaintiff Melinda Pasquini owns). (Doc. # 123 at 7–11.)
Neither argument is persuasive.
To begin with, Defendants premise the former argument on their assertion that
the preliminary injunction was focused solely on territory: “that the Cherry Creek

8

restaurant [i.e., Tony P’s] was too close to the claimed exclusive territory that Plaintiffs
alleged they purchased from [Defendants].” (Id. at 5.) This interpretation, however,
conflicts with what the Court actually said: that is, Defendants and “their officers, agents,
servants, employees, and all other persons in active concert or participation with them,
are preliminarily enjoined from use of the name ‘Pasquini’s Pizzeria’ or any variation
thereof in connection with the operation of [Tony P’s].” (Doc. # 78 (brackets and citation
omitted).) Defendants’ interpretation also ignores the “safe distance rule,” as Plaintiffs
note. (Doc. # 134 at 5 (citing Supershuttle Int’l Inc. v. Schafer-Schonewill & Assocs.
Inc., No. CIV. A. 95-D-2272, 1995 WL 880778, at *1 (D. Colo. Nov. 17, 1995)
(unpublished) (“as infringers, the Defendants had and have an affirmative duty to and
must stay a ‘safe distance’ away from the Plaintiffs’ . . . service mark”)).) Again, under
the preliminary injunction imposed by the Court, Defendants are obligated not to use the
name “Pasquini’s Pizzeria” or any variation thereof in connection with the operation of
Tony P’s. This clearly precludes Defendants from promoting Tony P’s through use of
the Pasquini’s name – a tactic Defendants employed in their marketing campaign well
after issuance of the preliminary injunction.
Because Defendants’ use of this tactic is readily apparent in their marketing
campaign, the Court rejects their assertion that no evidence indicates Tony P’s is
“seeking an association with the Pasquini’s on Broadway.” (Doc. # 123 at 9.) Judge
Boland found, and the Court agrees, that “the use of the name ‘Pasquini’s’ in the
Pasquini Defendants’ marketing campaign is overwhelming and constitutes a prohibited
use of the Pasquini’s trademark in connection with the operation of Tony P’s.” (Doc.

9

# 118 at 7). An example of this prohibited use appears at Doc. # 108-1, which is an
August 27, 2012 screenshot of the “Restaurants by Tony Pasquini” homepage. As
Judge Boland found, “the name ‘Pasquini’s’ appears in logo form seven times.” (Doc.
# 118 at 7.) “The word ‘Pasquini’ appears in the advertisement at least 28 times”; by
contrast, “[t]he name ‘Tony P’s’ . . . appears only five times.” (Id.) A clearer example of
Defendants promoting Tony P’s through use of the Pasquini’s name would be difficult to
imagine.7
Finally, Defendants argue that “the Order should not be expanded given
Plaintiffs’ inequitable conduct . . . .” (Doc. # 123 at 13 (emphasis deleted).) According
to Defendants, such conduct purportedly occurred as a result of an alleged attorney/
client relationship between Plaintiff Melinda Pasquini and Defendant Tony Pasquini.
(See id. at 13 – 15.) As an initial matter, the Court notes that Plaintiffs have not
requested, nor is the Court permitting, an expansion of the Court’s June 28, 2012 Order,
which simply adopted and affirmed Judge Boland’s Recommendation to grant Plaintiffs’
motion for preliminary injunction. In any event, Defendants’ argument is irrelevant to
Judge Boland’s certification of facts and to the issues specifically raised by Plaintiffs in
their motion for contempt citation. Instead, the “public interest” concerns asserted by
Defendants go the merits of the preliminary injunction. (See id. at 13 (citing Flood v.
ClearOne Commc’ns, Inc., 618 F.3d 1110, 1117 (10th Cir. 2010) (party moving for
7

Defendants argue that prohibiting such cross-marketing is improper because the
injunction was not aimed at Defendants’ non-Cherry Creek restaurants. (Doc. # 123
at 8.) But Plaintiffs have not challenged Defendants’ use of the mark in connection with
their non-Cherry Creek restaurants. (See, e.g., Doc. # 134 at 5 – 6.) To the extent that
any limitation on Defendants’ marketing impacts those restaurants, the fault lies with
Defendant Tony Pasquini for exceeding the scope of Plaintiff Melinda Pasquini’s consent
when he opened the restaurant now known as Tony P’s.
10

preliminary injunction must show that “the injunction, if issued, will not adversely affect
the public interest”)).) In fact, Defendants previously raised such concerns in response
to Plaintiffs’ motion for preliminary injunction (see Doc. # 18 at 12 – 14); they persuaded
neither Judge Boland nor this Court and, again, fail to do so here.8
For the foregoing reasons, the Court concludes that its June 28, 2012 Order, and
Judge Boland’s April 9, 2012 Recommendation, were sufficiently specific under Fed. R.
Civ. P. 65(d) to convey to Defendants that they were obligated not to use the name
“Pasquini’s Pizzeria” or any variation thereof in connection with the operation of Tony
P’s. As such, and in light of Judge Boland’s certification of facts, which the Court
adopts in whole by incorporation herein, Defendants were prohibited from promoting
Tony P’s through use of the Pasquini’s name. Plaintiffs have proven, by clear and
convincing evidence, that Defendants violated the Court’s Order through their marketing
campaign, with numerous examples cited by Judge Boland.
Further, Defendants have failed to show either that they complied with the
injunction or that they could not do so. In fact, Plaintiffs have continuously pointed out
instances in which Defendants’ compliance with the injunction has been lacking. (See,
e.g., Doc. # 108 at 3.) In virtually every instance, Defendants’ response has shown both
that Plaintiffs’ allegation of noncompliance was correct and, also, that compliance could
be effectuated in a short period of time. (See, e.g., Docs. ## 110 at 4; 123 at 4 – 5.)

8

Moreover, whether Defendants are entitled to any relief based on the attorney/client
arguments they raise here is the proper subject of a malpractice suit, which Defendants
inform the Court they have filed against Plaintiff Melinda Pasquini and the law firm for
whom she works. (Doc. # 123 at 13 n.11.)
11

Accordingly, Defendants’ repetitive use of a variation of the “Pasquini’s Pizzeria”
trademark in connection with the operation of Tony P’s constitutes acts of contempt.
B.

MOTION TO DISSOLVE OR MODIFY INJUNCTION
Raising highly similar arguments to those asserted in their objections to Judge

Boland’s certification of facts, Defendants move the Court to dissolve or modify the
preliminary injunction. (Doc. # 129.) Defendants assert that, if the Court determines
“that cross-marketing is prohibited by the Order, and that Plaintiffs own the Pasquini’s
Pizzeria name[,]” such a decision would “be a changed condition that warrants
dissolving or modifying the Order entering the preliminary injunction . . . .” (Id. at 2.)
However, as recounted in this Order, Defendants have been on notice since April 9,
2012, of Judge Boland’s finding, which this Court subsequently adopted, that Plaintiff
Melinda Pasquini purchased “[t]he use of the name(s) ‘Pasquini’s Pizzeria’ or any
variation thereof” in 2004. (Doc. # 56 at 5–6.) Additionally, as also related in the
discussion above, the injunction, which precluded Defendants from using “the name
‘Pasquini’s Pizzeria’ or any variation thereof” in connection with the operation of Tony
P’s (see Doc. # 78), prohibited Defendants from promoting Tony P’s through use of
the Pasquini’s name, which Defendants clearly did through their marketing campaign.
As such, no changed circumstances exist through which Defendants could be entitled
to a dissolution or modification of the preliminary injunction.

12

III. CONCLUSION
For the foregoing reasons, it is ORDERED that United States Magistrate Judge
Boyd N. Boland’s “Certification of Facts Pursuant to 28 U.S.C. § 636(e)(6)” (Doc. # 118)
is ADOPTED in whole by this Court. In agreement with the certification of facts, as
detailed above, it is
FURTHER ORDERED that Plaintiffs’ “Motion for Contempt Citation” (Doc. # 108)
is GRANTED. It is
FURTHER ORDERED that Defendants Tony Pasquini’s and Pasquini
Franchising, LLC’s “Objections to United States Magistrate Judge’s Certification of
Facts Pursuant to 28 U.S.C. § 636(e)(6)” (Doc. # 123) are OVERRULED. As such, it is
FURTHER ORDERED that Plaintiffs’ “Motion to Strike Defendants’ Objections to
Certification of Facts” (Doc. # 127) is DENIED AS MOOT. It is
FURTHER ORDERED that Defendants’ “Motion to Dissolve or Modify Injunction”
(Doc. # 129) is DENIED.
Accordingly, having found Defendants Tony Pasquini and Pasquini Franchising,
LLC in contempt of the preliminary injunction and this Court’s prior Order, the Court
further FINDS and HOLDS these Defendants jointly and severally liable to Plaintiffs for
their costs and attorneys’ fees incurred in connection with their motion for contempt
citation and the subsequent filings and hearings on this issue. As such, it is
FURTHER ORDERED that within ten days of the entry of this Order, Plaintiffs
shall file and serve a declaration reciting all of their associated costs and attorneys’
fees. Within ten days of service of Plaintiffs’ declaration, Defendants Tony Pasquini and

13

Pasquini Franchising, LLC shall complete payment of the full amount to Plaintiffs or file
good faith objections with this Court. It is
FURTHER ORDERED that, in conjunction with Plaintiffs’ request for “such other
relief as the Court deems appropriate,” the Court permits Plaintiffs the opportunity, upon
further briefing, to move for an order of civil contempt sanctions. Such a motion, if
Plaintiffs choose to file one, must be submitted within fourteen days of the entry of this
Order.
DATED: November

28

, 2012
BY THE COURT:

_______________________________
CHRISTINE M. ARGUELLO
United States District Judge

14