Mishiyev et al v. Cierra et al
ORDERED: Defendants Eliseo Cierra and iHeartMedia, Inc.'s Motion to Dismiss for Failure to State a Claim (Doc. 18) is GRANTED in part and DENIED in part. Counts 1-3, 7 and 8 are DISMISSED as to Short-E LLC (but not as to Mishiyev). Defendants must answer the Complaint on or before July 29, 2021. Signed by Judge Sheri Polster Chappell on 7/14/2021. (AEH)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
ERIK MISHIYEV and SHORT-E
Case No: 2:21-cv-162-SPC-MRM
ELISEO CIERRA and
OPINION AND ORDER1
Before the Court is Defendants Eliseo Cierra and iHeartMedia, Inc.’s
Motion to Dismiss for Failure to State a Claim (Doc. 18).
This is a trademark and unfair competition case. The Court recounts the
factual background as pled in Plaintiffs’ Complaint, which it must take as true
to decide whether the Complaint states a plausible claim. See Chandler v.
Sec’y Fla. Dep’t of Transp., 695 F.3d 1194, 1198-99 (11th Cir. 2012).
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Plaintiff Erik Mishiyev—professionally known as “DJ Short-E”—is a DJ,
recording artist, journalist, and internet, television, and radio personality. He
began using the DJ Short-E moniker in January 1993 in connection with DJ
services he offered in New York. In 1996, Mishiyev moved to Tampa, Florida,
where he continued to offer DJ services as DJ Short-E.
promoting himself on his website, www.djshorte.com, in August 1998, and he
has since maintained an internet presence through his website and social
media. Mishiyev also hosts a television show—“The Short-E Show”—that airs
on The CW Network in Miami and Las Vegas; Mishiyev also publishes it on
Plaintiff Short-E LLC is a Florida limited liability company Mishiyev
founded in January 2020. Mishiyev is the sole member of the LLC, which
provides DJ and other entertainment services.
Mishiyev has used the SHORT-E and DJ SHORTE marks to promote DJ
and entertainment services since 1993. He owns U.S. Trademark Registration
No. 4,493,986 on the Principle Register for the mark DJ SHORTE, registered
on March 11, 2014. Short-E LLC owns Florida Trademark Registration No.
T20000000318 for the SHORT-E mark for “live DJ, radio, and television
personality performances.” (Doc. 1 at 32).
Defendant Eliseo Cierra has been working in the Florida radio and
entertainment market under the moniker “Short-E” since 2018. He works for
Defendant iHeartMedia as a program director and radio personality, which
includes daily appearances on WBTT 105.5 The Beat. Cierra also writes blog
posts and hosts a podcast on iHeartMedia websites as “Short-E,” and he uses
the moniker on his social media pages. iHeartMedia uses the SHORT-E mark
to promote Cierra. Mishiyev’s counsel sent Defendants a cease-and-desist
letter on June 30, 2020, but they continue to use the SHORT-E mark.
Plaintiffs assert nine counts: (1) federal trademark infringement against
Cierra; (2) federal contributory trademark infringement against iHeartMedia;
(3) federal unfair competition against both Defendants; (4) Florida statutory
trademark infringement against Sierra; (5) Florida contributory statutory
trademark infringement against iHeartMedia; (6) Florida statutory deceptive
and unfair trade practices against both Defendants; (7) Florida common law
trademark infringement against Cierra; (8) vicarious infringement of a
federally registered trademark against iHeartMedia; and (9) vicarious
infringement of a Florida registered trademark against iHeartMedia.
The Federal Rules of Civil Procedure require a complaint to contain “a
short and plain statement of the claim showing that the pleader is entitled to
relief.” Fed. R. Civ. Pro. 8(a)(2). The rules also require plaintiffs to set out
their claims in separate, numbered paragraphs, “each limited as far as
practicable to a single set of circumstances.”
Fed. R. Civ. Pro. 10(b).
“Complaints that violate either Rule 8(a)(2) or Rule 10(b), or both, are often
disparagingly referred to as ‘shotgun pleadings.’” Weiland v. Palm Beach
County Sheriff’s Office, 792 F.3d 1313, 1320 (11th Cir. 2015). The problem with
shotgun pleadings is that they fail “to give the defendants adequate notice of
the claims against them and the grounds upon which each claim rests.” Id.
When considering a motion to dismiss under Rule 12(b)(6), courts must
accept all factual allegations in the complaint as true and view them in a light
most favorable to the plaintiff. See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
The preferential standard of review, however, does not let all pleadings
adorned with facts survive to the next stage of litigation. The Supreme Court
has been clear on this point—a district court should dismiss a claim when a
party does not plead facts that make the claim facially plausible. See Bell Atl.
Corp. v. Twombly, 550 U.S. 544, 570 (2007). A claim is facially plausible when
a court can draw a reasonable inference, based on facts pled, that the opposing
party is liable for the alleged misconduct. See Iqbal, 556 U.S. at 678. This
plausibility standard requires “more than a sheer possibility that a defendant
has acted unlawfully.” Id. (citing Twombly, 550 U.S. at 557 (internal quotation
marks omitted)). And a plaintiff must allege more than labels and conclusions
amounting to a formulaic recitation of the elements of a cause of action.
Twombly, 550 U.S. at 555.
Defendants argue Plaintiffs failed to allege facts sufficient to support any
claim. They also argue the Complaint is a shotgun pleading, and they attack
Short-E LLC’s standing to assert the counts relating to Mishiyev’s federal DJ
A. Pleading Sufficiency
Plaintiffs plead federal and state trademark and unfair competition
claims. The Lanham Act, codified at 15 U.S.C. §§ 1051–1127, governs the
Under the Lanham Act, the legal standard for unfair
competition and trademark infringement—which is a type of unfair
competition—is essentially the same. Turner Greenberg Assocs., Inc. v. C & C
Imports, Inc., 320 F. Supp. 2d 1317, 1330 (S.D. Fla. 2004) (citing Chanel, Inc.
v. Italian Activewear of Fla., Inc., 931 F.2d 1472, 1475 n.3 (11th Cir. 1991)).
That standard also applies to Florida trademark and unfair competition
claims. Suntree Techs., Inc. v. Ecosense Intern., Inc., 693 F.3d 1338, 1345 (11th
1. Direct and Contributory Trademark Infringement (Counts 1-2, 4-5, 7)
To state a claim for federal trademark infringement, a trademark owner
must plead “(1) that it had trademark rights in the mark or name at issue and
(2) that the other party had adopted a mark or name that was the same, or
confusingly similar to its mark, such that consumers were likely to confuse the
two.” Id. at 1346. Defendants challenge the second element—i.e., confusion.
Courts in the Eleventh Circuit consider seven factors to determine
whether a likelihood of confusion exists between two marks:
strength of the mark alleged to have been infringed; (2)
similarity of the infringing marks; (3) similarity between the goods
and services offered under the two marks; (4) similarity of the
actual sales methods used by the holders of the marks, such as
their sales outlets and customer base; (5) similarity of advertising
methods; (6) intent of the alleged infringer to misappropriate the
proprietor’s good will; and (7) the existence and extent of actual
confusion in the consuming public.
Savanah Coll. of Art and Design, Inc. v. Sportswear, Inc., 983 F.3d 1273, 128081 (11th Cir. 2020) (citation and quotation marks omitted). Courts “need not
consider all factors in every case[,]” but “the type of the mark and the evidence
of actual confusion are the most important of all the factors.” Id. at 1281
(citations and quotation marks omitted).
Defendants argue confusion is unlikely because Cierra’s moniker—
“Short-E”—lacks “DJ” and uses a hyphen, unlike Mishiyev’s federally
registered mark. In response, Plaintiffs point to their allegations that their
marks are well-known and uniquely associated with Plaintiffs, that
Defendants use a similar mark to advertise competing services to many of the
same consumers served by Plaintiffs, and that Defendants used the similar
mark with the intent to capitalize on Plaintiffs’ goodwill. Based on these
allegations and accepting them as true, the Court finds that confusion is
While Cierra’s “Short-E” moniker is not identical to
Mishiyev’s DJ SHORTE mark, it is similar enough that consumers might
confuse the two. That is particularly so because the parties provide related
services to overlapping audiences.
Defendants also argue Plaintiffs fail to sufficiently plead damages. The
Court disagrees. Plaintiffs allege Mishiyev has suffered loss of income and
goodwill as a result of consumer confusion caused by Cierra’s use of the “ShortE” name. That is enough to survive a 12(b)(6) challenge.
Defendants raise an additional ground for dismissal of Count 7 (Florida
common law trademark infringement): that Plaintiffs fail to sufficiently allege
the DJ SHORTE trademark is inherently distinctive or has acquired secondary
meaning. But a mark that is registered with the USPTO “is presumed to be
inherently distinctive[.]” Engineered Tax Servs., Inc. v. Scarpello Consulting,
Inc., 958 F.3d 1323, 1328 (11th Cir. 2020). Plaintiffs attached a copy of the
USPTO registration for the DJ SHORTE mark to their Complaint. Thus, they
have sufficiently pled distinctiveness.
Having rejected each of Defendants’ attacks on the trademark counts,
the Court finds that that Plaintiffs sufficiently pled their claims for direct and
contributory trademark infringement.
2. Federal Unfair Competition (Count 3)
Defendants attack Count 3 from two angles. They first argue that to the
extent Count 3 is for false designation of origin, it fatally lacks any allegation
that Defendants misrepresented the source of Cierra’s services.
Defendants argue Count 3 should be dismissed because it does not specify
which theory of unfair competition—trademark infringement, palming off, or
false designation of origin—on which it rests. Reading the Complaint as a
whole, the Court finds it sufficiently clear that Count 3 rests on trademark
Thus, the same facts that support Plaintiffs’ trademark
infringement claims are sufficient to state a claim for unfair competition.
3. Florida Deceptive and Unfair Trade Practices Act (FDUTPA) (Count
Defendants argue Count 6 should be dismissed because Plaintiffs fail to
allege how Defendants’ conduct could cause consumer harm or injury, which
the FDUTPA is meant to address. But, as Plaintiffs point out, “trademark
infringement is an unfair and deceptive trade practice that constitutes a
violation of FDUTPA.” Commodores Entm’t Corp. v. McClary, 324 F. Supp. 3d
1245, 1252 (M.D. Fla. 2018).
That makes sense because trademark
infringement requires harm to consumers in the form of confusion.
another way, trademark infringement is an inherently deceptive and unfair
trade practice. Because Plaintiffs pled sufficient facts to support a claim of
trademark infringement, they also state a FDUTPA claim.
4. Vicarious Trademark Infringement (Counts 8-9)
Vicarious liability in the trademark context “requires ‘a finding that the
defendant and the infringer have an apparent or actual partnership, have
authority to bind one another in transactions with third parties or exercise
joint ownership or control over the infringing product.’” Coach, Inc. v. Swap
Shop, Inc., 916 F. Supp. 2d 1271, 1279 (11th Cir. 2012) (quoting Rosetta Stone
Ltd. V. Google, Inc., 676 F.3d 144, 165 (4th Cir. 2012)); see also Hard Rock Café
Licensing Corp. v. Concession Servs., Inc., 955 F.2d 1143, 1150 (7th Cir. 1992).
Plaintiffs allege, “Defendant iHeartMedia has an apparent and actual
partnership with Defendant Cierra and has the authority to exercise control
over Defendant Cierra’s use of the infringing SHORT-E mark.” (Doc. 1 at 18).
Defendants argue that Plaintiffs fail to allege sufficient facts to show
that Cierra and iHeartMedia have a partnership. The Court agrees. But
Defendants do not address the rest of Plaintiffs’ allegation—that iHeartMedia
“has the authority to exercise control over Defendant Cierra’s use of the
infringing SHORT-E mark.” (Doc. 1 at 18). That claim is consistent with the
alleged relationship between Defendants—that Cierra works for iHeartMedia
as a program director and radio personality.
The Court finds the Complaint plausibly states that iHeartMedia has
some authority or control over the allegedly infringing use of the SHORT-E
mark. Thus, the vicarious infringement counts survive.
B. Shotgun Pleading
Defendants contend the Complaint is a shotgun pleading because
Plaintiffs begin each count by realleging and incorporating a common set of
The Eleventh Circuit addressed the propriety of this
technique in Weiland:
Weiland’s re-alleging of paragraphs 1 through 49 at the beginning
of each count looks, at first glance, like the most common type of
shotgun pleading. But it is not. As we have already discussed,
this Court has condemned the incorporation of preceding
paragraphs where a complaint contains several counts, each one
incorporating by reference the allegations of its predecessors (i.e.,
the preceding counts), leading to a situation where most of the
counts, (i.e., all but the first) contain irrelevant factual allegations
and legal conclusions. What we have here is different. The
allegations of each count are not rolled into every successive count
on down the line.
Weiland, 792 F.3d at 1324.
Plaintiffs’ Complaint is not particularly confusing. Each of the nine
counts stem from the same straightforward set of factual allegations. Like in
Weiland, “this is not a situation where a failure to more precisely parcel out
and identify the facts relevant to each claim materially increased the burden
of understanding the factual allegations underlying each count.” Id. The
Complaint is not a shotgun pleading.
C. Short-E LLC’s Standing
Finally, Defendants argue Short-E LLC has no standing to assert the
claims based on Mishiyev’s federally registered trademark—Counts 1-3, 7, and
8—because the LLC has no ownership interest in the mark. For its part, ShortE LLC does not claim to have direct standing on the challenged counts.
Instead, it claims associational standing.
Associational standing allows membership organizations to bring suit on
behalf of its members when:
(a) its members would otherwise have standing to sue in their own
right; (b) the interests it seeks to protect are germane to the
organization’s purpose; and (c) neither the claim asserted nor the
relief requested requires the participation of individual members
in the lawsuit.
Hunt v. Wash. State Apple Advert. Comm’n, 432 U.S. 333, 343 (1977).
Associational standing is normally invoked by membership organizations that
represent individuals and/or firms with common interests. For example, the
appellee in Hunt sued on behalf of Washington apple growers. Short-E LLC is
not that type of organization, so associational standing appears inapplicable.
Even if Short-E LLC can invoke associational standing, it has not
satisfied the third element. “To bring a trademark infringement claim under
the Lanham Act, a plaintiff must hold a valid trademark.” Fla. VirtualSchool
v. K12, Inc., 735 F.3d 1271, 1272 (11th Cir. 2013) (citation and quotation marks
omitted). Mishiyev is the sole owner of the DJ SHORTE trademark. Plaintiffs
claim in their response brief—but did not allege in their Complaint—that
Mishiyev licensed the DJ SHORTE mark to Short-E LLC.
But a license
agreement does not necessarily provide standing. See Kroma Makeup EU, LLC
v. Boldface Licensing + Branding, Inc., 920 F.3d 704, 709-10 (11th Cir. 2019).
The language of a particular license agreement determines the rights afforded
and the obligations imposed. The Complaint does not allege the existence of a
license agreement, much less state any terms that could confer standing.
Thus, Mishiyev’s participation is necessary to prosecute Counts 1-3, 7, and 8.
For the foregoing reasons, Short-E LLC does not have standing on
Counts 1-3, 7, and 8.
Accordingly, it is now
Defendants Eliseo Cierra and iHeartMedia, Inc.’s Motion to Dismiss for
Failure to State a Claim (Doc. 18) is GRANTED in part and DENIED in
(1) Counts 1-3, 7 and 8 are DISMISSED as to Short-E LLC (but not as
(2) Defendants must answer the Complaint on or before July 29, 2021.
DONE and ORDERED in Fort Myers, Florida on July 14, 2021.
Copies: All Parties of Record
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