Fisher Island Club, Inc. et al v. Arboleya Sulichin International Marketing, LLC et al
Filing
28
ORDER granting 16 Motion for Preliminary Injunction; granting 17 Motion for Temporary Restraining Order. Signed by Judge Robert N. Scola, Jr. on 2/23/2015. (jkr)
United States District Court
for the
Southern District of Florida
Fisher Island Club, Inc. and Fisher
Island Holdings, LLC, Plaintiffs
v.
Arboleya Sulichin International
Marketing, LLC, and others,
Defendants
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)
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Civil Action No. 14-24741-Civ-Scola
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Order on Plaintiffs’ Motion for Preliminary Injunction
and Motion for Temporary Restraining Order
THIS MATTER is before the Court on Plaintiffs’ Motion for Preliminary
Injunction, (ECF No. 16), and Plaintiffs’ Motion for Temporary Restraining
Order. (ECF No. 17).
The Court considered the Motions, the evidence
presented, and the arguments of counsel at the February 20, 2015 hearing.
Although the Court formally noticed that hearing only on the Motion for a
Temporary Restraining Order (due to a scrivener’s error), both the Court and
the parties proceeded as if it were a hearing on both Motions (for preliminary
injunction and temporary restraining order). The parties’ briefing confirms this
understanding. (See e.g., Defs.’ Omnibus Resp. to Mots. for Prelim. Inj. & TRO,
ECF No. 21.) After full consideration, the Court grants Plaintiffs’ Motion for
Preliminary Injunction and grants Plaintiffs’ Motion for Temporary Restraining
Order.
1.
Background.
Island Developers, Ltd. (“IDL”) began using the marks FISHER ISLAND
and FISHER ISLAND CLUB (the “Fisher Island Marks”) in commerce in 1984,
and the marks were eventually licensed to Fisher Island Club. Years later, in
1997, the USPTO issued registrations to IDL for both marks. After registration,
IDL assigned both marks to Fisher Island Holdings, which then executed an
amendment to the license agreement with Fisher Island Club. Presently,
Fisher Island Holdings owns the marks and Fisher Island Club uses them as a
licensee.
In 2011, more than a decade after Fisher Island Holdings received the
Fisher Island Marks, Plaintiff Fisher Island Club entered into the Fisher Island
Club Magazine Publishing Agreement (the “Publishing Agreement”) with
Defendants Sulichin and Arboleya, who signed on behalf of ASI Marketing,
LLC. The Publishing Agreement required Defendants to, among other things,
publish 30,000 copies of Fisher Island Magazine in quarterly installments.
Approximately a year into the Publishing Agreement’s 5-year term, Sulichin
applied to the USPTO for registration of the FISHER ISLAND MAGAZINE mark.
Sulichin’s application was granted on March 26, 2013.
Citing non-performance with the Publishing Agreement—specifically,
failure to publish and distribute the required 30,000 copies of Fisher Island
Magazine and various quality control issues—Plaintiff Fisher Island Club
terminated the Publishing Agreement on April 1, 2014, to be effective
immediately following publication of the magazine’s Spring 2014 issue.
Defendants, however, did not stop after the Spring issue. They continued on
and published a Summer 2014 issue. They also published a Fall 2014 issue,
but, this time, changed the name of the magazine to Fisher Magazine.
Defendants plan to publish a Spring 2015 issue of their magazine in a matter
of weeks. Plaintiffs allege that Defendants’ continued use of the FISHER
ISLAND MAGAZINE and FISHER MAGAZINE marks infringes the FISHER
ISLAND and FISHER ISLAND CLUB marks.
2.
Legal Standard.
The standards for obtaining a preliminary injunction and a temporary
restraining order are the same. Siegel v. LePore, 120 F. Supp. 2d 1041 (S.D.
Fla. 2000), aff’d 2000 WL 1781946 (11th Cir. 2000). To prevail on their
Motions, Plaintiffs must establish four elements: (1) substantial likelihood of
success on the merits; (2) that they would be irreparably harmed if injunctive
relief were denied; (3) that the threatened injury outweighs whatever damage
the injunction may cause to Defendants; and (4) that the injunction, if issued,
would not be adverse to the public interest. Davidoff & CIE, S.A. v. PLD Int’l
Corp., 263 F.3d 1297, 1300 (11th Cir. 2001).
3.
Discussion.
A.
Plaintiffs’ likelihood of success on the merits.
Plaintiffs have demonstrated their likelihood of success on the merits of
their trademark claims. To prevail on those claims, Plaintiffs must prove (1)
the Fisher Island Marks are valid, protectable marks; and (2) Defendants’ use
of the FISHER ISLAND MAGAZINE and FISHER MAGAZINE marks is likely to
cause consumer confusion. See Tracfone Wireless, Inc. v. Cabrera, 883 F.
Supp. 2d 1220, 1224 (S.D. Fla. 2012) (Lenard, J.).
The first element is easily shown: Plaintiffs’ marks have been used since
1984, (See Reg. No. 2,073,672, ECF No. 16-2; Reg. No. 2,061,165, ECF No. 163), and were registered with the USPTO in 1997. (See id.) “The Eleventh Circuit
strongly presumes registered marks to be valid.” Tracfone Wireless, 883 F.
Supp. 2d at 1224. Since the marks have been used continuously for more
than five years, they are also incontestable. See 15 U.S.C. § 1065. And if “a
registered mark is incontestable, its validity, ownership, and exclusive right of
use are conclusive and irrebuttable, subject only to a limited number of
defenses.” Tracfone Wireless, 883 F. Supp. 2d at 1224. Plaintiffs have thus
shown that their marks are valid and enforceable. The Court must next
analyze whether Defendants’ use of the FISHER ISLAND MAGAZINE and
FISHER MAGAZINE marks is likely to lead to consumer confusion.
Seven factors inform the likelihood of confusion analysis: (1) the type of
mark; (2) the similarity of the marks; (3) the similarity of the products or
services offered; (4) the identity of purchasers and similarity of retail outlets; (5)
the similarity of advertising campaigns; (6) the defendant’s intent; and (7)
instances of actual confusion. Safeway Stores, Inc. v. Safeway Discount Drugs,
675 F.2d 1160, 1164 (11th Cir. 1982). After conducting its analysis, the Court
finds that a likelihood of consumer confusion exists.
Regarding the first factor, marks are classified, in order of increasing
strength, as generic, descriptive, arbitrary, or fanciful. It’s A 10, Inc. v. Beauty
Elite Group, Inc., 932 F. Supp. 2d 1325, 1331 (S.D. Fla. 2013) (Cohn, J.)
Stronger marks generally receive greater protection than weaker marks. Id.
(citation omitted). As explained by the Eleventh Circuit:
Generic marks refer to a particular genus or class of which an
individual [product] is but a member; such marks may never
receive . . . protection. Descriptive marks directly describe a
characteristic or quality of the service [or product], and can only be
protected if they have acquired “secondary meaning.” “Vision
Center,” when used to describe a place to purchase eyeglasses,
would be a descriptive name. Suggestive marks subtly connote
something about the [product] so that a consumer could use his or
her imagination and determine the nature of the [product]. The
term “Penguin” would be suggestive of refrigerators . . . . An
arbitrary or fanciful mark is a word in common usage applied to a
[product] unrelated to its meaning; “Sun Bank” is such an
arbitrary or fanciful mark when applied to banking services.
Id. (citation omitted). Fisher Island has “been the home of numerous highprofile celebrities and individuals, and [Fisher Island Club] counts equally
prosperous and high profile individuals among its members,” say Plaintiffs.
(Lackner Decl. ¶ 6, ECF No. 16-1.) For those reasons, “Fisher Island and
Fisher Island Club have become associated with the highest levels of affluence
and influence[.]” (Id. at ¶ 7.) The FISHER ISLAND and FISHER ISLAND CLUB
marks connote this affluence and influence and are thus suggestive marks
entitled to protection.
Moving on to the next factor, the similarity of the marks is determined by
considering their overall impression, including their appearance, sound, and
meaning. It’s A 10, Inc., 932 F. Supp. 2d at 1331. Here, the marks are very
similar. Indeed, Plaintiffs’ FISHER ISLAND and FISHER ISLAND CLUB marks
have wording that overlap significantly with Defendants’ FISHER ISLAND
MAGAZINE and FISHER MAGAZINE marks. Of course, when spoken, the
marks sound very much alike. The effect of the marks is also the same:
evoking luxurious thoughts from consumers.
Next in the analysis come the similarity of the products or services
offered; the identity of purchasers and retail outlets; and the similarity of
advertising campaigns. Safeway Stores, Inc., 675 F.2d at 1164. The parties’
products and services are similar in that they all relate to the sale and
promotion of luxury goods and lifestyles. And beginning in Spring 2015,
Plaintiffs will use their Fisher Island Marks to publish their own luxury
magazine. Similarities extend to the next factors too. The parties offer their
products to the same purchasers. Although the parties advertise in an area
wider than Fisher Island’s borders, its residents are one of their targets.
Likewise, the parties use similar retail outlets and advertising campaigns to
appeal to their upper-crust clientele.
The sixth factor is intent. It seems clear, based on the similarity of the
marks, that Defendants intended to capitalize on the recognition of the Fisher
Island name. Indeed, after the parties’ dispute arose, Defendants changed
their magazine’s name, but made sure to keep the word “Fisher.” Defendants
could have called their magazine Island Magazine or anything else, but their
desire to keep the word “Fisher” shows their intent to benefit from its
recognition in the marketplace.
Turning to the final factor, the Court finds particularly compelling the
actual confusion of those most knowledgeable of the Fisher Island brand.
Indeed, both sides have introduced evidence that those familiar with the Fisher
Island Marks and Fisher Island Magazine were confused. (See Mann Decl. ¶ 6,
ECF No. 16-21) (“Some of our advertising clients have informed Executive that
they were contacted by the Defendants, and were confused. They believed
Defendants’ Fisher Magazine was authorized by Fisher Island Club. When we
contacted them, they thought they had already advertised with us.”); (Arboleya
Decl. ¶ 29, ECF No. 22) (“I have been in continuous contact with the same
advertisers with whom I have traditionally worked for magazine ads since 2011.
Some indicated an awareness of [Fisher Island Club’s] attempts to solicit them
for [its] new magazine. Some expressed confusion by [Fisher Island Club’s]
solicitations because they were accustomed to communicating exclusively with
our staff and me.”); (“E-Blast” sent Feb. 10, 2011, ECF No. 17-1) (“For our
partners who have mistakenly signed contracts with the Fisher Island Club’s
new magazine . . . .”); (see also Resp. to Mots., 18; ECF No. 21) (“. . .
Defendants do not deny that its advertisers are likely to be confused[.]”). The
Eleventh Circuit notes that “confusion of actual customers of a business is
worthy of substantial weight.” Safeway Stores, Inc., 675 F. 2d at 1167 (citation
omitted). This is precisely the case here. Advertisers, presumably familiar with
the parties’ brands, were confused as to the identities and sources of the
products offered by the parties. (See Mann Decl. ¶ 6, ECF No. 16-21; Arboleya
Decl. ¶ 29, ECF No. 22.)
In sum, the Court finds that there is a substantial likelihood that a
reasonable consumer would confuse the parties’ products.
B.
Irreparable harm.
“Defendants’ use of FISHER MAGAZINE is likely to cause irreparable
damage to Plaintiffs’ reputation because Plaintiffs would no longer control the
quality and the content of the magazine,” argue Plaintiffs. (ECF No. 16, 23.) A
poorly produced product by Defendant, Plaintiffs claim, will tarnish the
reputation that Fisher Island has built for itself since 1984. This concern is
justified, as Plaintiffs already had quality control issues with Defendants. (See
Letter dated Dec. 6, 2013, ECF No. 25-7) (“[Fisher Island Club’s] relationship
with ASI Marketing has been continually strained, often times experiencing
your inability to comply with requests, a lack of communication or difficulty
throughout the publishing process. We have also been consistently dissatisfied
with the quality of the magazine’s design and layout, of which we have had no
control.”); (see also, Emails, ECF No. 25-9.) The Court finds Plaintiffs’
argument persuasive. What’s more, the Court already determined that there
exists a high likelihood of consumer confusion and “‘a sufficiently strong
showing of likelihood of confusion [caused by trademark infringement] may by
itself constitute a showing of . . . a substantial threat of irreparable harm.’” It’s
a 10, Inc., 932 F. Supp. 2d at 1332.
C.
Balancing of harms.
The harm suffered by Plaintiffs without an injunction outweighs
Defendants’ potential harm if an injunction is entered, argue Plaintiffs. The
Court agrees. Plaintiffs have spent substantial time and money developing the
FISHER ISLAND and FISHER ISLAND CLUB marks since 1984. On the other
hand, Defendants have used the FISHER ISLAND MAGAZINE mark since 2011
and now use the FISHER MAGAZINE mark instead. The Court finds that the
harm caused by Plaintiffs’ potential diminution of reputation outweighs the
harm Defendants may suffer if they cannot publish a magazine under the
Fisher Island Magazine or Fisher Magazine names. Defendants’ injuries from
an injunction—if any—will take the form of lost advertising revenue. Plaintiffs’
loss, however, cannot be quantified.
D.
The public interest.
“[T]he ‘public interest’ relevant to the issuance of a permanent injunction
is the public’s interest in avoiding unnecessary confusion.” Angel Flight of
Georgia, Inc. v. Angel Flight America, Inc., 522 F.3d 1200, 1209 (11th Cir. 2008)
(citation omitted). As previously described, the Court finds that it is likely that
the public will be confused by Defendants’ FISHER ISLAND MAGAZINE and
FISHER MAGAZINE marks. The Court thus concludes that the public interest
is served by a preliminary injunction.
4.
Conclusion.
For the foregoing reasons, the Court grants Plaintiffs’ Motion for
Preliminary Injunction, (ECF No. 16), and grants Plaintiffs’ Motion for
Temporary Restraining Order. (ECF No. 17). Effective at 4:00 P.M. EST on
February 23, 2015, and continuing through the pendency of this action, the
Defendants, including their affiliates, subsidiaries and related entities or
companies, agents, servants, employees, owners, officers, assigns and
successors in interest are hereby enjoined and prohibited from:
(A) Printing, publishing, or distributing any hard-copy or electronic
publication under the marks FISHER ISLAND MAGAZINE or FISHER
ISLAND CLUB;
(B) Making in any manner whatsoever any statement or representation,
or performing any act, likely to lead members of the public to believe
that Defendants or Defendants’ publications are in any manner,
directly or indirectly, associated, affiliated, or connected with, or
licensed, sponsored, authorized or approved by Plaintiffs;
(C) Using any words or symbols which so resemble any of Plaintiffs’
trademarks, trade or commercial names, or trade dress as to be likely
to cause confusion, mistake, or deception, or in connection with the
publication, distribution, sale, offering for sale, advertisement, or
promotion of any product which is not authorized by Plaintiffs;
(D) Using any word, term, name, symbol, device, or combination thereof
which causes or is likely to cause confusion, deception, or mistake as
to the affiliation of Defendants or their products with Plaintiffs, or as
to the origin of Defendants’ products, or any false designation of
origin, false or misleading description or representation of fact; and
(E) Further diluting or infringing Plaintiffs’ rights in and to any of
Plaintiffs’ trademarks, trade or commercial names, or trade dress,
including but not limited to the FISHER ISLAND and FISHER ISLAND
CLUB trademarks, or otherwise damaging Plaintiffs’ goodwill or
business reputation.
As a condition of this Order, and pursuant to Federal Rule of Civil
Procedure 65(c), the Plaintiffs shall post a bond in the amount of $15,000.00
by no later than March 9, 2013.
A copy of the Order shall be personally served upon Minerva Arboleya,
1655 N.E. 145th Street, Miami, Florida, 33181; Silvio Sulichin, 1655 N.E. 145th
Street, Miami, Florida, 33181; Blumar Media, Inc., c/o Silvio Sulichin, 1655
N.E. 145th Street, Miami, Florida 33181; and Arboleya Sulichin International
Marketing, LLC, c/o Minerva Arboleya, 1655 N.E. 145th Street, Miami, Florida
33181, or at such other locations at which they may be found and that such
service shall be deemed good and sufficient notice of this Order.
Done and ordered in chambers, at Miami, Florida, on February 23,
2015.
________________________________
Robert N. Scola, Jr.
United States District Judge
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