BLANCO GmbH + Co. KG v. Vlanco Industries, LLC et al

Filing 195

AMENDED ORDER Adopting Magistrate Judge's Report and Recommendation re 194 Plaintiff's Motion to Amend. Please see Order for details. Signed by Judge Robin S. Rosenbaum on 1/21/2014. (ssk)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO. 12-61580-CIV-ROSENBAUM/HUNT
BLANCO GMBH + CO. KG,
Plaintiff,
v.
VLANCO INDUSTRIES, LLC, G-TECH-I, INC.,
and VITO ANTONIO LAERA,
Defendants.
_______________________________________/
AMENDED ORDER ADOPTING MAGISTRATE JUDGE’S REPORT AND
RECOMMENDATION
This matter is before the Court on Plaintiff’s Motion to Re-open and for an Order to Show
Cause [ECF No. 79], Plaintiff’s Second Motion for Order to Show Cause [ECF No. 95], Defendant’s
Motion for Order to Show Cause [ECF No. 125], Plaintiff’s Motion for Preliminary Injunction [ECF
No. 126], Plaintiff’s Motion for Default Judgment [ECF No. 153], and Defendant’s Motion for
Default Judgment [ECF No. 157], which were previously referred to the Honorable Patrick M. Hunt
for a Report and Recommendation. Judge Hunt issued a Report and Recommendation on all of the
Motions [ECF No. 185], and Defendant Laera has filed objections to the Report and
Recommendation [ECF No. 189]. Plaintiff has also filed Objections [ECF No. 188]. For the reasons
set forth below, the Court overrules Defendant’s Objections, sustains in part and overrules in part
Plaintiff’s Objections, and adopts Judge Hunt’s Report and Recommendation.
I. Background
Plaintiff Blanco GmbH+Co. KG brought this action against Defendants Vlanco Industries,
LLC, G-Tech-I, Inc., and Vito Antonio Laera, asserting claims for trademark infringement, cyber-

squatting, and unfair competition. The parties ultimately reached a settlement, and the Court entered
a Final Judgment Upon Consent [ECF No. 76], in which the Court retained jurisdiction to enforce
the terms of the parties’ agreement.

The various motions addressed by the Report and

Recommendation relate to various issues arising after entry of the Consent Judgment.
II. Discussion
A. Plaintiff’s Emergency Motion for Preliminary Injunction [ECF No. 126]
Plaintiff moved for the entry of a preliminary injunction on the grounds that Laera
purportedly impersonated Plaintiff and its intellectual property counsel, Franka Kuschnirek, by
changing the domain-name account of a GoDaddy domain name registrar to falsely reflect Plaintiff
and Kuschnirek as the account owners. See ECF No. 126. Judge Hunt recommended that the
Motion be denied because Plaintiff failed to satisfy the elements necessary for a preliminary
injunction. The Court agrees. In particular, Plaintiff has failed to show that it lacks an adequate
remedy at law or that it will suffer irreparable injury if its motion is not granted.
The purpose of a preliminary injunction is to restrain conduct “in those extraordinary
situations where irreparable injury might result from delay or inaction.” Alabama v. U.S. Army
Corps of Engineers, 424 F.3d 1117, 1133 (11th Cir. 2005) (citing United Bonding Ins. Co. v. Stein,
410 F.2d 483, 486-87 (3d Cir. 1969)). Because its sole function is to forestall future harm, injunctive
relief is “completely at odds with a sanction for past conduct that may be addressed by adequate
remedies at law.” Id. As such, even if Defendant wrongfully impersonated Plaintiff, no indication
exists that Defendant’s alleged wrongdoing is ongoing. Thus, no threat of irreparable injury exists.
To the extent that Plaintiff seeks relief from any harm imposed by Defendant’s past conduct, Plaintiff

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may pursue a legal remedy; hence, equitable relief is barred. Plaintiff’s Motion for Preliminary
Injunction is therefore denied.
B. Plaintiff’s Motions for Contempt [ECF Nos. 79, 95]
1. Plaintiff’s Motion to Re-Open and for an Order to Show Cause [ECF No. 79]
Plaintiff requests that the Court find Defendants in contempt of the parties’ Consent
Judgment. ECF No. 79. In this regard, Plaintiff avers that Defendants (i) filed three applications
with the United States Trademark Office containing prohibited designations; (ii) registered fifty-five
new domain names containing prohibited designations; (iii) re-directed a number of domain names
to a website using the prohibited designation “BLANCO;” and (iv) refused to cooperate in the
transfer of certain domain names and transferred ownership of such domain names to third parties.
ECF No. 79 at 2-3. In the Report and Recommendation, Judge Hunt found that Plaintiff presented
sufficient evidence showing that Defendants, or persons acting in concert with Defendants, violated,
and continue to violate, the terms of the Consent Judgment. The Court agrees with Judge Hunt’s
determination.
The Consent Judgment provides, in pertinent part, that
2.

Defendants, their officers, servants, agents, employees,
attorneys, and representatives, and/or anyone acting in active
concert or participation with any or all of them, are hereby
permanently restrained and enjoined from actively engaging
in any of the following acts:
(a) applying to register with the U.S. Trademark
Office and/or using the Infringing Marks and/or any
other slogan, name, or mark confusingly similar to the
BLANCO Marks, including, without limitation,
VALANCO, VIANCO, VLANCO, or BLANCO, but
excluding VILANCO and VALCO, which the
Defendants may use
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...
(c) registering any domain name which consists of or
incorporates any slogan, name or mark confusingly
similar to the BLANCO Marks, including, without
limitation VALANCO, VIANCO, VLANCO, or
BLANCO, but excluding VILANCO and VALCO,
which the Defendants may use . . . .
ECF No. 76 at 2-3. After entry of the Consent Judgment, a third party, Robert Johnson, filed
trademark applications that included the term “VLANCO” and registered domain names containing
the terms “BLANCO,” “VIANCO,” and “VLANCO”—all of which constitute prohibited
designations under the Consent Judgment.
According to Plaintiff, Robert Johnson is either an alias of Laera or a person acting in concert
with Laera. In support of this contention, Plaintiff notes that Johnson’s pending trademark
applications are virtually identical to those originally filed by Defendants. Indeed, several of the
specimens attached to Johnson’s applications contain photographs that match those of Defendants’
products included in the parties’ Stipulation of Settlement and in Plaintiff’s original Complaint. See
e.g., ECF No. 2-3; ECF No. 79-6; and ECF No. 79-8. Interestingly, the address listed for Robert
Johnson in the trademark applications belongs to a leasing office, and no record exists of a Robert
Johnson having lived or worked there.
As further evidence of Defendants’ relationship with Robert Johnson, Plaintiff points to
Defendants’ redirection of their former domain names. The Consent Judgment required the
registrars of Defendants’ infringing domain names to transfer ownership of the domain names to
Plaintiff. ECF No. 76 at 7. The Stipulation of Settlement, in turn, required Plaintiff to redirect those
domain names to an IP address provided by Defendants for a limited transition period. ECF No. 79-4-

6 at 6. The IP address provided by Laera, however, redirects users to “blancoamerica.us,” a domain
name registered to Robert Johnson.
Finally, Robert Johnson is currently listed as the registered agent for Defendant Vilanco
Industries, LLC.1 Laera initially formed the company and was its manager and authorized
representative. A Google search of “Vito Laera and Robert Johnson” also revealed a now-inactive
Facebook page for “ViLanco-Vito Laera and Company,” which stated: “We ship internationally. Ask
for Robert Johnson.” ECF No. 79-2.
The Court agrees with Judge Hunt that Plaintiff has satisfied its burden of establishing a
prima facie case of contempt. “A party seeking civil contempt bears the initial burden of proving
by clear and convincing evidence that the alleged contemnor has violated an outstanding court
order.” Commodity Futures Trading Com’n v. Wellington Precious Metals, Inc., 950 F.2d 1525,
1529 (11th Cir. 1992). Whether or not Robert Johnson is merely an alias—although the facts
strongly suggest that he is—ample support exists for the notion that Robert Johnson was at least an
agent of Defendants and acted in concert with Laera, and the actions undertaken by them are clear
violations of the Consent Judgment. Indeed, it appears that Defendants were utilizing Robert
Johnson in order to attempt to circumvent the Consent Judgment.
Once a prima facie showing of contempt has been made, the burden shifts to the contemnor
to show that he was unable to comply with the Court’s order. See Commodity Futures Trading

1

In January 2013, Defendant changed its name from “Vlanco Industries, LLC,” to
“Vilanco Industries, LLC.” See Articles of Amendment to Articles of Organization,
www.sunbiz.org.
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Com’n, 950 F.2d at 1529. In Laera’s opposition brief to Plaintiff’s Motion, Laera stated simply that
he had “no information or belief” on the subject. See ECF No. 132 at 47. Additionally, he did not
raise the issue in his Objections to the Report and Recommendation. The corporate Defendants have
filed no response to Plaintiff’s motion, and Judge Hunt therefore recommended that the Court grant
Plaintiff’s Motion for Default. See ECF No. 153. Because Laera and the corporate Defendants have
failed to rebut Plaintiff’s showing, the Court concurs with Judge Hunt that Defendants are in
contempt of the Consent Judgment.
2. Plaintiff’s Second Motion for an Order to Show Cause [ECF No. 95]
Plaintiff then filed a Second Motion for Contempt, alleging further violations of the Consent
Judgment by Laera and third parties Joseph Napolitano, Vilanco Industries, Inc., and Robert
Johnson. In particular, Plaintiff avers that Laera, in concert with these non-parties, sought to evade
the Consent Judgment by filing an ancillary lawsuit and assigning certain trademark rights.
On May 21, 2013, Joseph Napolitano and Vilanco Industries, Inc., instituted an action against
Laera in the United States District Court for the District of South Carolina. ECF No. 95-4. In that
lawsuit, Joseph Napolitano and Vilanco Industries, Inc., sought a judgment against Laera for the
same rights to the trademark and domain names that are encompassed in the Consent Judgment. The
basis for the lawsuit involved several license agreements—executed after the commencement of this
lawsuit—that purported to grant a license from Laera to Vilanco Industries, Inc., to use numerous
trademarks and domain names that are the subject of the present action.

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Plaintiff posits that the South Carolina lawsuit was merely an attempt by Laera to obtain an
order allowing him to use the trademarks that he had been prohibited from using by the Consent
Judgment. In support of this assertion, Plaintiff provides evidence that demonstrates a clear
relationship between Laera, Joseph Napolitano, and Vilanco Industries, Inc. Specifically, Laera was
the company’s incorporator and was listed as the president and registered agent of Vilanco
Industries, Inc., in various corporate documents, including the Articles of Dissolution. See, e.g., ECF
Nos. 95-5, 95-6. Joseph Napolitano also appears to be an officer of Vilanco Industries, Inc. ECF
No. 95-7. The Florida address associated with both Joseph Napolitano and Vilanco Industries, Inc.,
is Laera’s Florida homestead property, and the mailing address provided in the company’s Annual
Report corresponds to a property owned by Laera.

See ECF No. 185 at 24. Based on these

affiliations, Plaintiff maintains that Joseph Napolitano is an alias of Laera’s, and the lawsuit was
actually brought by Laera against himself in an effort to retain rights to the use of the prohibited
designations.
In light of the evidence provided by Plaintiff, Judge Hunt determined that the South Carolina
action was a subversive tactic designed to shirk the terms of the parties’ settlement agreement. Judge
Hunt noted that compelling evidence existed supporting the notion that Joseph Napolitano was
merely an alias, but regardless, Plaintiff had presented enough evidence demonstrating that Joseph
Napolitano and Vilanco Industries, Inc., had actual notice of the Consent Judgment and acted in
concert with Laera in violating its terms. Moreover, Laera provided insufficient explanation for the
license agreements and the ancillary lawsuit, and Laera did not address the issue in his Objections

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to the Report and Recommendation. As a result, the Court agrees that Laera, Joseph Napolitano, and
Vilanco Industries, Inc., are in contempt of the Consent Judgment.2
Plaintiff has also presented evidence that Laera assigned a fifty-percent ownership interest
in twenty-four trademarks to Robert Johnson, in violation of the parties’ Stipulation of Settlement.
This, along with the other evidence of Robert Johnson’s affiliaion with Laera, led Judge Hunt to
again appropriately conclude that Robert Johnson had notice of the Consent Judgement and acted
in concert with Laera in violating its terms.
3. Damages
The Consent Judgment provides for $150,000 in liquidated damages per violation. ECF No.
76 at ¶ 10. Judge Hunt noted that “the evidence strongly indicates that [Laera] has been using fake
names, shell companies, and subversive tactics to violate [the] agreement” and recommended that
the Court award Plaintiff $150,000 per categorical violation. In this regard, Judge Hunt divided the
violations into four categories, amounting to a total of $600,000 in liquidated damages, exclusive
of attorney’s fees and costs, for which Defendants, Robert Johnson, Joseph Napolitano, and Vilanco
Industries, Inc., are jointly and severally liable. See ECF No. 185 at 33. Judge Hunt concluded that
injunctive relief is unnecessary because the Consent Judgment already prohibits the conduct that
Plaintiff seeks to enjoin. He further recommended that the Court direct the Registrars and Registries

2

A non-party may be held in contempt where the non-party violated an order in active
concert or participation with a named party and had actual notice of the enjoined acts. See Rule
65, Fed. R. Civ. P.; see also Regal Knitwear Co. v. NLRB, 324 U.S. 9, 14 (1945) (“[Parties] may
not nullify a decree by carrying out prohibited acts through aiders and abettors, although they
were not parties to the original proceeding.”).
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of the domain names containing prohibited designations identified in the Consent Judgment to
transfer ownership of the domain names to Plaintiff and that the Court direct the United States
Trademark Office to comply with the Consent Judgment and enter judgment in favor of Plaintiff in
the opposition/cancellation proceedings identified in Schedule A of the Consent Judgment. The
Court finds that the relief recommended is appropriate.
In its Objections to the Report and Recommendation, Plaintiff requests that the Court also
direct the United States Trademark Office to abandon with prejudice the three pending trademark
applications filed by Robert Johnson. As the Court has determined those applications to be in
violation of the Consent Judgment, the Court grants Plaintiff’s request. Plaintiff also asks the Court
to award injunctive relief with respect to the license agreements between Laera, Vilanco Industries,
Inc., and Joseph Napolitano. But such relief is unnecessary because the license agreements are
already in direct violation of the Consent Judgment. As the conduct has previously been enjoined,
no additional injunction is required.
Finally, the Court agrees with Judge Hunt that Plaintiff must continue to abide by the terms
of the Consent Judgment. Despite Defendants’ actions in this matter, the Court finds no good cause
to relieve Plaintiff of its obligations at this time.
D. Defendant Laera’s Motion for an Order to Show Cause [ECF No. 125]
Laera asserts that Plaintiff failed to abide by the terms set forth in the Consent Judgment.
Specifically, Laera appears to contend that Plaintiff wrongfully challenged Laera’s use of certain
designations because he believes that the Consent Judgment allows him to register any name or mark
“confusingly similar to ‘VILANCO and ‘VALCO.’” See, e.g., ECF No. 125 at 4, 10, 11. This
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contention is wholly incorrect. The Consent Judgment makes clear that Defendants are permanently
enjoined from registering any slogan, name, mark, or domain name that is confusingly similar to
“BLANCO,” with the exception of “VILANCO” and “VALCO.” ECF No. 76 at 2-3. Thus, although
Defendants are permitted to use the designations “VILANCO” and “VALCO,” other confusingly
similar designations are expressly prohibited. As a result, Plaintiff’s challenges to Defendants’ use
of the prohibited designations were proper.
Laera also asserts that Plaintiff failed to redirect certain domain names as required by the
Stipulation of Settlement. As noted by Judge Hunt, however, Plaintiff has already demonstrated its
compliance with the parties’ agreement. See ECF No. 185 at 36. For these reasons, Defendant’s
Motion for an Order to Show Cause is denied.
E. Defendant Laera’s Motion for Entry of Default Judgment [ECF No. 157]
Finally, Laera moves for an entry of default judgment against Defendants G-Tech-I, Inc., and
Vilanco Industries, LLC, because of their failure to respond to Laera’s Counterclaim. Because Judge
Hunt granted Plaintiff’s Motion to Strike Defendant’s Counterclaim [ECF No. 184 at 6], Laera’s
Motion was properly denied as moot.
III. Conclusion
For the foregoing reasons, it is ORDERED AND ADJUDGED as follows:
1.

Magistrate Judge Hunt’s Report and Recommendation [ECF No. 185] is hereby
ADOPTED;

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2.

Plaintiff’s Emergency Motion for Preliminary Injunction [ECF No. 126] is
DENIED;

3.

Plaintiff’s Motion to Re-Open and for an Order to Show Cause [ECF No. 79],
Plaintiff’s Second Motion for an Order to Show Cause [ECF No. 95], and
Plaintiff’s Motion for Entry of Default Judgment [ECF No. 153] are GRANTED
IN PART as follows:
a.

Defendants Vito Antonio Laera, Vilanco Industries, LLC, and G-Tech-I,
Inc., and Third-Party Defendants Robert Johnson, Joseph Napolitano, and
Vilanco Industries, Inc., are in contempt of this Court’s Final Judgment on
Consent [ECF No. 76];

b.

Defendants Vito Antonio Laera, Vilanco Industries, LLC, and G-Tech-I,
Inc., and Third-Party Defendants Robert Johnson, Joseph Napolitano, and
Vilanco Industries, Inc., are jointly and severally liable for $600,000 in
liquidate damages awarded to Plaintiff;

c.

The Registrar(s) and Registry(ies) of the domain names containing
prohibited designations identified in the Consent Judgment and licensed in
the license agreements at issue in the South Carolina action discussed
herein shall transfer ownership of the domain names to Plaintiff, including
vlanco.cn and vlanco.it;

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d.

The United States Trademark Office shall comply with the Consent
Judgment and is directed to abandon with prejudice the following
applications submitted by Robert Johnson: U.S. Trademark Application
Serial Nos. 85/911,435 for “VLANCO” (stylized); 85/911,213 for
“WWW.VLANCO.COM” (stylized), and 85/911,425 for
“VLANCO.COM” (stylized);

e.

Plaintiff shall continue to comply with the Consent Judgment;

f.

Plaintiff is entitled to attorney’s fees and costs associated with this action
pursuant to the Consent Judgment;

4.

Defendant Laera’s Motion for an Order to Show Cause [ECF No. 125] is
DENIED;

5.

Defendant Laera’s Motion for Entry of Default Judgment [ECF No. 157] is
DENIED.

DONE and ORDERED in Fort Lauderdale, Florida, this 21st day of January 2014.

ROBIN S. ROSENBAUM
UNITED STATES DISTRICT JUDGE
Copies furnished to:
Counsel of Record
Vito Antonio Laera
5960 SW 32 Terrace

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Ft. Lauderdale, FL 33312

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