Vivid Entertainment, LLC v. J&B PB, LLC et al
OPINION AND ORDER granting 117 Plaintiff's Motion for Summary Judgment Against Defendant Jose Baserva's Counterclaims and dismissing the Counterclaims with prejudice; granting 136 Plaintiff's Corrected Motion for Sanctions against Defendant Baserva and striking 50 Baserva's Amended Answer; denying as moot 140 , 141 , 142 , 143 , 144 Plaintiff's Motions in Limine; denying 160 , 162 Defendant Jose Baserva's Motions to Continue; denying 161 , 163 Defe ndant Jose Baserva's Motions for Expedited Ruling. The Clerk shall enter a default against Defendant Jose Baserva and remove this case from the trial calendar. See Opinion and Order for details. Signed by Judge John E. Steele on 1/30/2015. (MAB)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
VIVID ENTERTAINMENT, LLC, a
Case No: 2:13-cv-524-FtM-29DNF
OPINION AND ORDER
This matter comes before the Court on the plaintiff’s Motion
Counterclaims (Doc. #117) filed on November 28, 2014.
Jose Baserva filed a Verified Response in Opposition (Doc. #128)
Corrected Motion for Sanctions against Defendant Baserva (Doc.
#136) filed on January 6, 2015.
Defendant Jose Baserva filed a
Motion for Continuance of Trial Period and Trial (Doc. #160) and
a Motion for Expedited Ruling (Doc. #161) on January 28, 2015.
Vivid Entertainment, LLC (plaintiff) initiated this action on
July 15, 2013, by filing a Complaint against J&B PB, LLC (J&B) and
Jose Baserva (Baserva) alleging trademark infringement, use of
false designation of origin, cybersquatting, and state law claims.
counterclaims for cancellation of Federal Trademark Registration
No. 2,475,741 pursuant to 15 U.S.C. § 1064(3) on grounds of
procurement by fraud (Counterclaim I), cancellation of Federal
Trademark Registration No. 2,475,741 pursuant to 15 U.S.C. §
1064(3) on grounds of abandonment (Counterclaim II), and trademark
infringement pursuant to 15 U.S.C. § 1125(a) (Counterclaim III).
On May 6, 2014, plaintiff filed an Amended Complaint
(Doc. #45) adding Vivid, LLC (Vivid) and Anthony McCarty (McCarty)
as defendants and adding additional state law claims.
J&B and Baserva filed an Answer to Amended Complaint (Doc.
Affirmative Defenses and Counterclaims.
After proper service of
process, Vivid and McCarty both failed to appear and respond to
the Amended Complaint, and upon appropriate motions, a Clerk’s
Entry of Default was issued against Vivid (Doc. #60) and McCarty
On July 21, 2014, counsel for J&B and Baserva filed a Motion
to Withdraw as Counsel at the request of J&B and Baserva.
The Court granted the motion on July 24, 2014, and provided
J&B and Baserva with thirty days to obtain new counsel.
An extension of time to secure new counsel for J&B was
denied (Doc. #86), and upon failing to timely secure new counsel,
the Clerk was directed to enter a default against J&B (Doc. #88).
The Clerk’s Entry of Default against J&B was issued on September
Baserva also failed to secure new counsel
and is proceeding pro se.
On August 11, 2014, Baserva filed a Motion to Modify the Case
Management and Scheduling Order to Extend the Deadlines.
The Court granted Baserva’s motion (Doc. #77), and entered
required the parties to complete discovery by November 28, 2014,
meet in person to prepare a Joint Final Pretrial Statement by
December 29, 2014, and appear at the Final Pretrial Conference on
January 20, 2015 (Doc. #87).
Baserva made another request to
extend to the discovery deadline on November 21, 2014.
This motion, however, was denied because Baserva failed to
show that his request on an extension was supported by good cause.
counterclaims (Doc. #117) and seeks the imposition of sanctions
for Baserva’s failure to comply with the Court’s Second Amended
Scheduling Order (Doc. #136).
The Court will first address plaintiff’s motion for summary
satisfied that “there is no genuine issue as to any material fact
and that the moving party is entitled to judgment as a matter of
Fed. R. Civ. P. 56(a).
“An issue of fact is ‘genuine’ if
the record taken as a whole could lead a rational trier of fact to
find for the nonmoving party.”
Baby Buddies, Inc. v. Toys “R” Us,
Inc., 611 F.3d 1308, 1314 (11th Cir. 2010).
A fact is “material”
if it may affect the outcome of the suit under governing law.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
court must decide ‘whether the evidence presents a sufficient
disagreement to require submission to a jury or whether it is so
one-sided that one party must prevail as a matter of law.’”
Hickson Corp. v. N. Crossarm Co., Inc., 357 F.3d 1256, 1260 (11th
Cir. 2004) (citing Anderson, 477 U.S. at 251).
In ruling on a motion for summary judgment, the Court views
all evidence and draws all reasonable inferences in favor of the
Scott v. Harris, 550 U.S. 372, 380 (2007); Tana
v. Dantanna’s, 611 F.3d 767, 772 (11th Cir. 2010).
reasonable minds might differ on the inferences arising from
undisputed facts, then the court should deny summary judgment.”
St. Charles Foods, Inc. v. America’s Favorite Chicken Co., 198
F.3d 815, 819 (11th Cir. 1999) (quoting Warrior Tombigbee Transp.
Co. v. M/V Nan Fung, 695 F.2d 1294, 1296-97 (11th Cir. 1983)
(finding summary judgment “may be inappropriate where the parties
agree on the basic facts, but disagree about the factual inferences
that should be drawn from these facts”)).
“If a reasonable fact
finder evaluating the evidence could draw more than one inference
from the facts, and if that inference introduces a genuine issue
Allen v. Bd. of Pub. Educ., 495 F.3d 1306, 1315 (11th
The following facts are undisputed and taken in the light
most favorable to the non-moving party, Baserva 1:
Plaintiff is one of the world’s largest producers of high
quality adult entertainment.
Plaintiff’s predecessor in interest,
Vivid Video, Inc. (Vivid Video), registered the mark “VIVID” with
Verified Response in Opposition to Plaintiff’s
Motion for Summary asserts that plaintiff’s motion should be denied
as premature “because relevant discovery has not been obtained.”
(Doc. #128, p. 1.) Rule 56(d) provides that if, in response to a
motion for summary judgment, “a nonmovant shows by affidavit or
declaration that, for specified reasons, it cannot present facts
essential to justify its opposition, the court may: (1) defer
considering the motion or deny it; (2) allow time to obtain
affidavits or declarations or to take discovery; or (3) issue any
other appropriate order.” Fed. R. Civ. P. 56(d). After reviewing
Baserva’s response, the Court finds that Baserva is not entitled
to shelter under Rule 56(d). The discovery deadline in this matter
has been extended on multiple occasions and Baserva has failed to
support his request for additional time with good cause. The Court
will therefore consider the facts undisputed for purposes of
the United States Patent and Trademark Office (USPTO) for several
different products and services, including for online websites and
night club services.
On December 26, 2000, Vivid Video was issued
Registration No. 2,415,035, for the websites, and on August 7,
2001, Vivid Video was issued Registration No. 2,475,741, for night
club services (collectively the Trademarks).
On August 30, 2007,
Vivid Video, Inc. assigned the Trademarks to plaintiff under a
Nunc Pro Tunc assignment effective July 26, 2002.
Plaintiff sells and distributes goods bearing the Trademarks,
and plaintiff’s products are famous, recognized, and distributed
Plaintiff owns over 350 domain names, which include
distinctive, and the public associates the Trademarks with the
goods and services of plaintiff and high quality erotic and adult
Trademarks for nightclubs in Las Vegas, Nevada (Vivid), New York,
NY and Los Angeles, CA (Vivid Cabaret), Charlotte, NC (Vivid’s
In August 2010, J&B purchased “Club Goddess,” a night club
located in Palm Bay, Florida.
“Club Goddess” remained open for at
least a month, possibly two, before it was shut it down for
Before reopening the club in January 2011, J&B
changed the name to “Vivid Cabaret.”
Prior to renaming “Club
Goddess,” Baserva, the sole owner of J&B, had never used “Vivid”
or “Cabaret” in connection with night club services.
On October 19, 2011, J&B sold the assets of Vivid Cabaret,
including the trade name, to Vivid, of which McCarty is the sole
Baserva also turned over the social media page he created
for Vivid Cabaret and the Vivid Cabaret website.
On December 4,
2012, plaintiff sent a cease and desist letter to Vivid, and on
May 10, 2013, Vivid signed an Agreement agreeing to cease using
and imitating the Trademarks.
Vivid, however, continued to use
and imitate the Trademarks in the operation of Vivid Cabaret.
On April 10, 2013, plaintiff sent J&B a cease and desist
letter demanding that it discontinue its use of the Trademarks and
to transfer the vividcabaret.com domain name to plaintiff. Baserva
responded and admitted to registering the domain name, and offered
to sell his rights to Vivid Cabaret to plaintiff.
On April 23,
2013, Baserva filed a trademark application for “Vivid Cabaret,”
however, in February 2014, the application was refused because of
suspended based on the pendency of this action.
Plaintiff argues that summary judgment is warranted because
there is no evidence supporting Baserva’s counterclaims. The Court
In Counterclaim I, Baserva alleges, upon information and
plaintiff fraudulently told the USPTO that it used the VIVID mark
in connection with night club services at the time it filed its
(Doc. #35, ¶¶ 5-22.)
A third party may petition to cancel a registered trademark
on the ground that the “registration was obtained fraudulently.”
15 U.S.C. § 1064(3).
“Fraud in procuring a trademark registration
or renewal occurs when an applicant knowingly makes false, material
representations of fact in connection with his application.”
re Bose Corp., 580 F.3d 1240, 1243 (Fed. Cir. 2009) (quoting Torres
v. Cantine Torresella S.r.l., 808 F.2d 46, 48 (Fed. Cir. 1986)).
A trademark is obtained fraudulently under the Lanham Act only if
the applicant or registrant knowingly makes a false, material
representation with the intent to deceive the USPTO.
of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200, 1209 (11th
The party seeking to cancel a mark bears the burden
of proving the alleged fraud by clear and convincing evidence.
The Court finds that Baserva has not met his heavy burden of
proving that plaintiff knowingly made a false statement to the
USPTO or that plaintiff intended to deceive the USPTO.
has failed to identify any evidence supporting his claim and the
time for obtaining such evidence has lapsed.
judgment is granted in favor of plaintiff as to Counterclaim I.
In Counterclaim II, Baserva alleges, upon information and
plaintiff did not use VIVID in connection with night club services
for at least three consecutive years prior to December 1, 2010.
(Doc. #35, ¶¶ 23-26.)
Under the Lanham Act, a trademark is deemed abandoned, and,
thus no longer valid, “[w]hen its use has been discontinued with
intent not to resume such use.”
15 U.S.C. § 1127.
In order to
show that plaintiff has abandoned its trademark, Baserva must show
that: (1) plaintiff has ceased using the mark in dispute and (2)
plaintiff has done so with an intent not to resume its use. Natural
Answers, Inc. v. SmithKline Beecham Corp., 529 F.3d 1325, 1329
(11th Cir. 2008).
“Nonuse for 3 consecutive years shall be prima
facie evidence of abandonment,” 15 U.S.C. 1127, which creates a
“rebuttable presumption of intent not to resume use.”
Answers, 529 F.3d at 1330.
On this record, it is clear that plaintiff has made continuous
undisputed that plaintiff hosted events at clubs owned and operated
by third parties prior to Baserva’s use of “Vivid Cabaret,” and
that plaintiff prominently displayed VIVID at these events.
#117-8, Doc. #117-9.)
Furthermore, plaintiff has granted licenses
to use VIVID for nightclubs throughout the country.
Based on the
foregoing, the Court finds that plaintiff is entitled to summary
In Counterclaim III, Baserva asserts a claim for trademark
infringement under 15 U.S.C. § 1125(a).
To establish a claim of
trademark infringement, a plaintiff must show that (1) he owns a
valid and protectable mark, and (2) the defendant’s use of the
mark is likely to cause confusion.
Custom Mfg. & Eng’g, Inc. v.
Midways Servs., Inc., 508 F.3d 641, 647 (11th Cir. 2007).
reviewing the evidence, the Court finds that Baserva is unable to
establish a claim for trademark infringement because he does not
own a valid trademark.
Indeed, Baserva testified that “I don’t
have a trademark for Vivid Cabaret.”
(Doc. #117-1, p. 37.)
Because Baserva does not own a valid trademark, summary judgment
is granted in favor of plaintiff.
Plaintiff seeks the imposition of sanctions against Baserva
because Baserva failed to participate in the preparation of a Joint
Final Pretrial Statement and failed to appear at the Final Pretrial
Specifically, plaintiff requests that the Court enter
a default against Baserva on plaintiff’s claims, strike Baserva’s
affirmative defenses, and award plaintiff reasonable attorneys’
(Doc. #136, p. 3.)
On September 10, 2014, the Court entered a Second Amended
Case Management and Scheduling Order which required the parties to
meet in person to prepare a Joint Final Pretrial Statement by
December 29, 2014, and appear at the Final Pretrial Conference on
January 20, 2015.
On December 9, 2014, the parties
requesting that the deadline be extended to December 19, 2014, due
to scheduling conflicts.
The Court granted the
motion, but indicated that all other deadlines will remain the
Plaintiff and Baserva filed a Second Joint
Motion to Extend Meeting in Person Deadline, Joint Final Pretrial
Statement Deadline, and Deadline for All Other Motions on December
The motion stated that the parties
attempted to resolve some pending claims and agreed to meet on
January 5, 2015, and file a Joint Final Pretrial Statement on
January 7, 2015.
The Court granted the motion and extended
the deadlines as requested.
On January 6, 2015, plaintiff filed a motion requesting
sanctions against Baserva for failing to appear in person at the
meeting scheduled to prepare a Joint Final Pretrial Statement.
Plaintiff contends that on the eve of the scheduled
in person meeting, Baserva informed plaintiff’s counsel that he
would not be attending the meeting, may be retaining new counsel,
and suggested that plaintiff agree to extend all case deadlines.
Baserva did not appear at the scheduled meeting.
The next day, plaintiff filed a Motion for Extension of Time
to File Trial Brief, Pretrial Statement and Jury Instructions.
The motion asserted that Baserva contacted counsel
for plaintiff on January 7, 2014, and agreed to participate in the
in person meeting.
The Court granted plaintiff’s motion and
ordered the parties to meet in person to prepare a Joint Final
Pretrial Statement on or before January 14, 2015, and to file a
instructions before the close of business on January 15, 2015.
The Order further stated that plaintiff shall file
participate in the preparation of the pretrial statement.
Baserva once again failed to participate in the formulation
of a pretrial statement, causing plaintiff to file a Unilateral
Final Pretrial Statement.
The Court held a Final
Pretrial Conference on February 20, 2015, and Baserva failed to
misconduct under its inherent power.
Eagle Hosp. Physicians, LLC
v. SRG Consulting, Inc., 561 F.3d 1298, 1306 (11th Cir. 2009).
Further, Fed. R. Civ. P. 16(f) provides for sanctions as follows:
(1) In General. On motion or on its own, the court may
issue any just orders, including those authorized by
Rule 37(b)(2)(A)(ii)-(vii), if a party or its attorney:
(A) fails to appear
(B) is substantially unprepared to participate--or
does not participate in good faith--in the
(C) fails to obey a scheduling or other pretrial
(2) Imposing Fees and Costs. Instead of or in addition
to any other sanction, the court must order the party,
its attorney, or both to pay the reasonable expenses-including attorney's fees--incurred because of any
noncompliance with this rule, unless the noncompliance
was substantially justified or other circumstances make
an award of expenses unjust.
Fed. R. Civ. P. 16(f).
“Sanctions under Rule 16(f) are ‘designed
to punish lawyers and parties for conduct which unreasonably delays
or otherwise interferes with the expeditious management of trial
Maus v. Ennis, 513 F. App’x 872, 878 (11th Cir.
2013) (quoting Goforth v. Owens, 766 F.2d 1533, 1535 (11th Cir.
Under Rule 37, the district court may, among other sanctions,
render a default judgment against the disobedient party.
Civ. P. 37(b)(2)(A)(vi).
Before imposing such a severe sanction,
a court must find that the party’s failure to comply with a
discovery order was either willful or in bad faith.
Suzuki Motor Co., Ltd., 987 F.2d 1536, 1542 (11th Cir. 1993).
misunderstanding, or inability to comply will not justify a Rule
37 default judgment.”
Moreover, a default judgment is
appropriate only as a “last resort, when less drastic sanctions
would not ensure compliance with the court’s orders.”
Finally, while the pleadings of pro se litigants are held to
a less stringent standard than pleadings drafted by attorneys,
Tannenbaum v. United States, 148 F.2d 1262, 1263 (11th Cir. 1998),
pro se litigants are still required to comply with procedural
rules, Moton v. Cowart, 631 F.3d 1337, 1340 n.2 (11th Cir. 2011).
Specifically, pro se litigants are subject to the Federal Rules of
failure to comply with court orders.
Moon v. Newsome, 863 F.2d
835, 937 (11th Cir. 1989).
There is no dispute that Baserva violated the requirements of
this Court’s Case Management and Scheduling Order by failing to
participate in the preparation of a joint final pretrial statement
Baserva contends that his failure to participate in
the in person meeting because he was waiting for the Court to rule
on his Amended Motion for Clarification and Extension of Time to
Meet Discovery Deadline.
The Court finds that
Baserva’s proffered excuse does not amount to good cause because
the pendency of a motion does not stay the deadlines in a case.
Furthermore, Baserva has failed to explain his absence at the Final
Baserva’s conduct shows a clear pattern of delay and a
conscious disregard of this Court’s Orders.
Such conduct warrants
Answer (Doc. #50) will be stricken and a Clerk’s Default will be
entered against Baserva.
Given the imminence of trial, the Court
finds that lesser sanctions would not suffice. 2
See Williams v.
Talladega Cmty. Action Agency, 528 F. App’x 979, 980 (11th Cir.
Therefore, plaintiff’s motion for sanctions is due to be
Accordingly, it is now
Defendant Jose Baserva's Counterclaims (Doc. #117) is GRANTED and
Motion for Continuance of Trial Period and Trial
seeks a sixty day extension so that he may obtain counsel.
Baserva’s failure to diligently defend this matter does not justify
the requested extension. The motion is therefore denied.
the Counterclaims are dismissed with prejudice.
The Clerk shall
withhold the entry of judgment until the conclusion of the case.
Defendant Baserva (Doc. #136) is GRANTED.
Baserva’s Amended Answer (Doc. #50) is STRICKEN.
The Clerk shall enter a default against defendant Jose
Baserva and remove this case from the trial calendar.
Plaintiff’s Motions in Limine (Doc. #140; Doc. #141;
Doc. #142; Doc. #143; Doc. #144) are DENIED as moot.
Trial Period and Trial (Doc. #160; Doc. #162) are DENIED.
Defendant Jose Baserva’s Motions for Expedited Ruling
(Doc. #161; Doc. #163) are DENIED.
DONE AND ORDERED at Fort Myers, Florida, this
Counsel of record
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