Vivid Entertainment, LLC v. J&B PB, LLC et al

Filing 164

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 Defendant 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
California
limited
liability company,
Plaintiff,
v.

Case No: 2:13-cv-524-FtM-29DNF

JOSE BASERVA,
Defendant.

OPINION AND ORDER
This matter comes before the Court on the plaintiff’s Motion
for

Summary

Judgment

Against

Defendant

Jose

Counterclaims (Doc. #117) filed on November 28, 2014.

Baserva's
Defendant

Jose Baserva filed a Verified Response in Opposition (Doc. #128)
on

December

8,

2014.

Also

before

the

Court

is

plaintiff's

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.
I.
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.

(Doc.

#1)

Defendants

appeared

and

filed

an

answer

and

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).
(Doc. #35.)

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.
#50)

on

May

22,

2014,

and

adopted

Affirmative Defenses and Counterclaims.

their

previously

filed

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
(Doc. #70).
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.
#66.)

The Court granted the motion on July 24, 2014, and provided

J&B and Baserva with thirty days to obtain new counsel.
#67.)

(Doc.

(Doc.

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).

2

The Clerk’s Entry of Default against J&B was issued on September
19, 2014.

(Doc. #92.)

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.
#71.)
a

(Doc.

The Court granted Baserva’s motion (Doc. #77), and entered

Second

Amended

Case

Management

and

Scheduling

Order

which

required the parties to complete discovery by November 28, 2014,
meet in person to prepare a Joint Final Pretrial Statement by
December

10,

2014,

file

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.
#115.)

(Doc.

This motion, however, was denied because Baserva failed to

show that his request on an extension was supported by good cause.
(Doc. #137.)
Plaintiff

now

moves

for

summary

judgment

on

Baserva’s

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).
II.
The Court will first address plaintiff’s motion for summary
judgment.

3

A.
Summary

judgment

is

appropriate

only

when

the

Court

is

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
law.”

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).

“A

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
non-moving party.

Scott v. Harris, 550 U.S. 372, 380 (2007); Tana

v. Dantanna’s, 611 F.3d 767, 772 (11th Cir. 2010).

However, “if

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)

4

(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
of

material

judgment.”

fact,

then

the

court

should

not

grant

summary

Allen v. Bd. of Pub. Educ., 495 F.3d 1306, 1315 (11th

Cir. 2007).
B.
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

1Baserva’s

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
plaintiff’s motion.

5

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
worldwide.
the

Plaintiff owns over 350 domain names, which include

Trademarks

prominently

displayed.

The

Trademarks

are

distinctive, and the public associates the Trademarks with the
goods and services of plaintiff and high quality erotic and adult
entertainment.

Plaintiff

has

granted

licenses

to

use

the

Trademarks for nightclubs in Las Vegas, Nevada (Vivid), New York,
NY and Los Angeles, CA (Vivid Cabaret), Charlotte, NC (Vivid’s
Gentleman’s

Club),

and

Miami-Dade

County,

FL

(Vivid

Live

Gentlemen’s Club).
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
renovations.

Before reopening the club in January 2011, J&B

changed the name to “Vivid Cabaret.”

6

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
owner.

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
the

likelihood

of

confusion

with

plaintiff’s

Trademarks

and

suspended based on the pendency of this action.
C.
Plaintiff argues that summary judgment is warranted because
there is no evidence supporting Baserva’s counterclaims. The Court
agrees.

7

1.
In Counterclaim I, Baserva alleges, upon information and
belief,

that

plaintiff’s

mark

should

be

cancelled

because

plaintiff fraudulently told the USPTO that it used the VIVID mark
in connection with night club services at the time it filed its
trademark application.

(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.”

In

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.

Angel Flight

of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200, 1209 (11th
Cir. 2008).

The party seeking to cancel a mark bears the burden

of proving the alleged fraud by clear and convincing evidence.
Id.
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.

Baserva

has failed to identify any evidence supporting his claim and the

8

time for obtaining such evidence has lapsed.

Accordingly, summary

judgment is granted in favor of plaintiff as to Counterclaim I.
2.
In Counterclaim II, Baserva alleges, upon information and
belief,

that

plaintiff’s

mark

should

be

cancelled

because

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.”

Natural

Answers, 529 F.3d at 1330.
On this record, it is clear that plaintiff has made continuous
use

of

VIVID

in

connection

with

nightclub

services.

It

is

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.

9

(Doc.

#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
judgment on

Counterclaim

II

because

there

is

no

evidence

of

abandonment.
3.
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).

After

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.
III.
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
Conference.

Specifically, plaintiff requests that the Court enter

a default against Baserva on plaintiff’s claims, strike Baserva’s

10

affirmative defenses, and award plaintiff reasonable attorneys’
fees.

(Doc. #136, p. 3.)
A.

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

10,

2014,

file

a

Joint

Final

Pretrial

Statement

by

December 29, 2014, and appear at the Final Pretrial Conference on
January 20, 2015.
filed

a

Joint

(Doc. #87.)

Motion

to

On December 9, 2014, the parties

Extend

Meeting

in

Person

Deadline,

requesting that the deadline be extended to December 19, 2014, due
to scheduling conflicts.

(Doc. #129.)

The Court granted the

motion, but indicated that all other deadlines will remain the
same.

(Doc. #130.)

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
17, 2014.

(Doc. #131.)

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.

(Id.)

The Court granted the motion and extended

the deadlines as requested.

(Doc. #132.)

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.

11

(Doc. #136.)

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.
(Doc. #136.)

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.
(Doc. #146.)

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
Joint

Final

Pretrial

Statement,

trial

briefs,

and

jury

instructions before the close of business on January 15, 2015.
(Doc. #147.)
a

unilateral

The Order further stated that plaintiff shall file
final

pretrial

statement

if

Baserva

fails

participate in the preparation of the pretrial statement.

to

(Id.)

Baserva once again failed to participate in the formulation
of a pretrial statement, causing plaintiff to file a Unilateral
Final Pretrial Statement.

(Doc. #155.)

The Court held a Final

Pretrial Conference on February 20, 2015, and Baserva failed to
appear.

12

B.
A

district

court

may

impose

misconduct under its inherent power.

sanctions

for

litigation

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
pretrial conference;

at

a

scheduling

or

other

(B) is substantially unprepared to participate--or
does not participate in good faith--in the
conference; or
(C) fails to obey a scheduling or other pretrial
order.
(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
preparation.’”

Maus v. Ennis, 513 F. App’x 872, 878 (11th Cir.

2013) (quoting Goforth v. Owens, 766 F.2d 1533, 1535 (11th Cir.
1985)).
Under Rule 37, the district court may, among other sanctions,
render a default judgment against the disobedient party.

13

Fed. R.

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.

Malautea v.

Suzuki Motor Co., Ltd., 987 F.2d 1536, 1542 (11th Cir. 1993).
Violations

of

a

court

order

“caused

by

simple

negligence,

misunderstanding, or inability to comply will not justify a Rule
37 default judgment.”

Id.

Moreover, a default judgment is

appropriate only as a “last resort, when less drastic sanctions
would not ensure compliance with the court’s orders.”

Id.

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
Civil

Procedure,

including

sanctions

failure to comply with court orders.

for

misconduct

and

for

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
and

by

failing

Conference.

to

appear

at

the

scheduled

Final

Pretrial

Baserva contends that his failure to participate in

the in person meeting because he was waiting for the Court to rule

14

on his Amended Motion for Clarification and Extension of Time to
Meet Discovery Deadline.

(Doc. #160.)

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
Pretrial Conference.
Baserva’s conduct shows a clear pattern of delay and a
conscious disregard of this Court’s Orders.
the

imposition

of

sanctions.

Such conduct warrants

Accordingly,

Baserva’s

Amended

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.
2013).

Therefore, plaintiff’s motion for sanctions is due to be

granted.
Accordingly, it is now
ORDERED:
1.

Plaintiff’s

Motion

for

Summary

Judgment

Against

Defendant Jose Baserva's Counterclaims (Doc. #117) is GRANTED and

2Baserva’s

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.

15

the Counterclaims are dismissed with prejudice.

The Clerk shall

withhold the entry of judgment until the conclusion of the case.
2.

Plaintiff's

Corrected

Motion

for

Sanctions

against

Defendant Baserva (Doc. #136) is GRANTED.
3.

Baserva’s Amended Answer (Doc. #50) is STRICKEN.

4.

The Clerk shall enter a default against defendant Jose

Baserva and remove this case from the trial calendar.
5.

Plaintiff’s Motions in Limine (Doc. #140; Doc. #141;

Doc. #142; Doc. #143; Doc. #144) are DENIED as moot.
6.

Defendant

Jose

Baserva’s

Motions

for

Continuance

of

Trial Period and Trial (Doc. #160; Doc. #162) are DENIED.
7.

Defendant Jose Baserva’s Motions for Expedited Ruling

(Doc. #161; Doc. #163) are DENIED.
DONE AND ORDERED at Fort Myers, Florida, this
January, 2015.

Copies:
Counsel of record
Jose Baserva

16

30th

day of