SETAI HOTEL ACQUISITION LLC v. MIAMI BEACH LUXURY RENTALS, INC. et al

Filing 231

ORDER granting in part and denying in part 142 motion for judicial notice; denying 158 the Dedendants' motion for summary judgment; and denying 164 the Plaintiff's motion for partial summary judgment. Signed by Judge Robert N. Scola, Jr. on 8/15/17. (ars)

United States District Court
for the
Southern District of Florida
Setai Hotel Acquisition, LLC,
Plaintiff
v.
Miami Beach Luxury Rentals, Inc.
and Allen Tuller, Defendants.

)
)
) Civil Action No. 16-21296-Civ-Scola
)
)

Order on Motions for Summary Judgment
This matter is before the Court on the Plaintiff Setai Hotel Acquisition’s
(“SHA”) motion for partial summary judgment (ECF No. 164). The Defendants
Miami Beach Luxury Rentals, Inc. (“MBLR”), and Allen Tuller responded (ECF
No. 169), and SHA replied (ECF No. 181). Also before the Court is the
Defendants’ motion for summary judgment (ECF No. 158). SHA responded
(ECF No. 166), and the Defendants replied (ECF No. 183). Finally, SHA
requests that the Court take judicial notice of certain evidence in support of its
motion for summary judgment (ECF No. 142).
The Court has reviewed the record, the parties’ briefs, and the relevant
legal authorities. For the reasons more fully explained below, the Court grants
in part and denies in part SHA’s motion for judicial notice (ECF No. 142),
denies the Plaintiff’s Motions for Summary Judgment (ECF No. 164), and
denies the Defendants’ Motion for Summary Judgment (ECF No. 158).

1. Background
SHA brought this action against the Defendants, raising six statutory
and common-law trademark claims: counterfeiting pursuant to 15 U.S.C.
§ 1116 (Count 1); infringement pursuant to 15 U.S.C. § 1114 and common law
(Counts 2 and 4, respectively); unfair competition pursuant to the Lanham Act,
15 U.S.C. § 1125, and common law (Counts 3 and 5, respectively); and dilution
(Count 6). (Am. Compl., ECF No. 110.) SHA also alleges a state-law claim of
tortious interference in Count 7. (Id.) The Defendants raised thirty-one
affirmative defenses1 and brought three counterclaims: (1) false advertisement
As succinctly as possible, the Defendants raised the following affirmative defenses, some of
which are clearly duplicative: (1) fair use; (2) failure to police the mark; (3) abandoned mark; (4)
fraud in the registration of a trademark; (5) use of mark to misrepresent source of good or
services; (6) improper expansion of mark; (7) fair use; (8) fair use; (9) violation of antitrust laws;
(10) misuse of mark; (11) laches; (12) bad faith; (13) failure to police mark; (14) unclean hands;
(15) failure to police mark; (16) acquiescence; (17) estoppel; (18) preclusion based on the
Condominium Declaration; (19) misrepresentation; (20) fair use; (21) functional mark. (22)
1

under the Lanham Act; (2) unfair competition; and (3) violation of Florida’s
Deceptive and Unfair Trade Practices Act. (Answer and Countercls. at 35–41,
ECF No. 138.) SHA answered the counterclaims and raised four affirmative
defenses. (Answer, ECF No. 177.)
The United States Patent and Trademark Office (“USPTO”) issued a
trademark registration Number 2,506,974 for “The Setai” on November 13,
2001 (“the Setai Mark” or the ‘974 Mark). (USPTO File at 1,2 ECF No. 142-1.)
The Setai Mark includes real estate management, real estate development and
construction, and hotel and resort services. (Id.) The previous owners of the
mark renewed it on June 5, 2007, and May 21, 2012. (Id. at 1–2.) In fact, the
previous owners filed, and the USPTO accepted and acknowledged, and
affidavit of incontestability. (Id. at 3, 37, 41.)
On February 27, 2015, Lehman Brothers Holding, Inc., assigned and
transferred “all right, title[,] and interest in and to the [Setai] Mark[]” to BPI Lux
S.à.r.l. (“BPI”) and the Alexandre von Furstenberg Living Trust (“Trust”).
(Lehman Assignment, Mot. Extension of Time Ex. 1 at 3, ECF No. 96-1.) Under
the Lehman Assignment, BPI owns 85% of the ‘974 Mark, and the Trust owns
15% of the ‘974 Mark. (Id.) The Lehman Assignment provided that the
“Assignors and Assignees have caused this Assignment to be executed by their
duly authorized representatives as of the date first written above.” (Id. at 4.) All
of the relevant representatives signed the Lehman Assignment on April 1,
2015. (Id. at 4–5.)
Also on February 27, 2015, BPI and the Trust assigned to SHA “the
exclusive right and license to use the [‘974 Mark] . . . throughout the [United
States].” (SHA License §§ 1.1 & 3.1, Aff. of Mounayyer Ex. 1 at 2–3, ECF No.
143-2.) The SHA License provides that SHA “shall not . . . permit others to use
the . . . ‘SETAI’ formative trademark, . . . [or] domain name . . . in any way
inconsistent with [BPI and the Trust’s] rights therein and all uses of the [‘974
Mark] shall inure to the benefit of [BPI and the Trust].” (Id. § 4.1(a) at 3.) The
SHA License further provides, “[BPI and the Trust] shall have the exclusive
right to take action or institute proceedings with respect to such infringement,
and shall proceed as it may, in its sole discretion. If [BPI and the Trust] elect
not to take action or fail[] to diligently prosecute such action, [SHA] may take
such action at [SHA’s] expense.” (Id. § 4.2 at 3–4.)
merely descriptive mark; (23) indistinctive mark; (24) non-competition; (25) preclusion based
on date of assignment; (26) preclusion based on statute of limitations; (27) failure to mitigate;
(28) waiver of tortious interference claim; (29) privilege; (30) lack of rights created by
Declaration; and (31) failure to show that the Defendants provided hotel services. (Answer and
Countercls. at 27–34, ECF No. 138.)
2 The Court takes judicial notice of the USPTO file history of the Setai Mark. See infra.

Since February 27, 2015, SHA holds a Special Warranty Deed delineating
their ownership in a real property known as The Setai Resort & Residences, a
Condominium (“the Condominium”).3 It appears that SHA owns seventy-nine
“Condominium Parcels,” a retail/commercial unit, a hotel unit, and a utility
unit. (Deed at 4, ECF No. 142-3.) The “Hotel Unit” is not the same physical
space as the “Hotel Building.” (Declaration at 32, ECF No. 142-2.) Though not
clearly stated, it appears that the “Condominium Parcels” are actually located
in the Hotel Building, and not in the condominium Tower Building. (Depo. Alex
Furrer at 35–36, 38, ECF No. 140) (“[SHA] doesn’t own any condominium
apartments. . . . [SHA] owns about 70 hotel rooms in the Act Deco Building.”).
However, SHA “operat[es] multiple private condos as hotel suites . . . . Legally
speaking [guests] are staying in a private unit . . . . But they are staying in a
private unit which is completely . . . 100 percent managed by [SHA] . . . . under
a multiple-year contract for full hotel management.” (Id. at 35, 38, 39.) SHA
does not officially share this information with the public, and the private units
are considered collectively part of “the Setai Hotel.” (Id. at 39; Aff. Mounayyer
¶ 6, ECF No. 143-1.)
The Condominium, which SHA continues to refer to as “The Setai®,” is
governed by the Declaration of Setai Resort and Residences, a Condominium
(“the Declaration”), a publicly recorded document. (Mot. Ex. B, ECF No. 142-2.)
Pursuant to the Declaration, SHA’s “Hotel Unit” consists “of all of the
[property], . . . less and except only the following: (i) the Residential Units, the
Utility Unit and the Retail/Commercial Unit and (ii) the portion of the
Condominium Property below minus seventy feet . . . .” (Id. ¶ 3.2(b).) SHA
appears to interpret this provision to mean that it owns the entire “Tower
Building,” which contains the privately owned condominium units. The
Condominium’s “Common Elements” form part of the “Hotel Unit,” and thus
fall under SHA’s ownership. (Id. ¶ 2.16.) The Declaration also provides, “The
Owner from time to time of the Hotel Unit shall have the exclusive right (but
not the obligation) to provide hotel and/or transient rental services, including,
but not limited to, solicitation and/or provision of housekeeping, personal
services (i.e., massage, personal training, dry cleaning, etc.) and/or food and
beverage services to the Condominium and the Unit Owners.” (Id. ¶ 16.3.)
Signage on the real property does not distinguish the entryway to the
“Setai Hotel” versus the entryway to the Condominium. (Depo. Alex Furrer at
41.) In fact, Furrer notes that “Setai” refers to the “entire hotel and residences,”
and that private owners say ‘I live at the Setai.’” (Id. at 52.) Tuller also notes
The Declaration itself refers to “the Setai Resort and Residences, a Condominium,” as “the
Condominium.” (Decl. ¶ 1.3, Mot. Ex. B at 1, ECF No. 142-2.)
3

that as an owner of a unit in the Condominium and a previous resident of the
Condominium, he knows that the Condominium Tower is referred to as “The
Setai.” (Decl. Allen Tuller ¶ 7), ECF No. 168.) Owners of individual
condominium units, as well as their “guests,” possibly have access to “hotel”
amenities. (Id. ¶ 12(c).)
After SHA acquired the real property and the license, it began making
changes to the way in which the owners of individual condominium units could
conduct short-term rentals. One such change was a requirement that each
owner or third-party rental agency “register each tenant with the attached form
at the front desk of the Tower Building.” (Decl. Allen Tuller # 2 Ex. 2 at 20, ECF
No. 168.) The required transient rental unit registration form included the
double-palm logo and “The Setai” at the top of the page. (Id. Ex. 3. at 25.) The
hotel will no longer provide keys to guests of individually owned condo units,
instead requiring that the owner or third-party agency provide the keys to
short-term tenants. (Decl. Allen Tuller # 1 ¶ 21, ECF No. 154.) Also, at one
point, SHA refused access to certain privileges, such as “signing privileges” to
guests who had rented from third-party agencies. (Answer and Countercls. Exs.
10 & 11, ECF Nos. 138-10, 138-11.)
MBLR and Tuller, MBLR’s sole officer, director employee, and
shareholder, manage luxury private residential condominium suites, including
units at the Condominium. (Depo. Allen Tuller at 5, ECF No. 147-1.) To this
end, the Defendants operate a website at www.miamibeachluxuryrentals.com.4
(Depo. Allen Tuller at 6, 32.) On this website, the Defendants advertised “‘5star private accommodations at the Setai Resort and Spa . . . for up to 70%* off
the published hotel rates.” (Pl.’s SMF ¶ 29, ECF No. 152-1; Defs.’ SMF ¶ 29,
ECF No. 170.) The website also included the following information:
1. “Bearing the unmistakable imprint of legendary hotelier Adrian
Zecha, The Setai is an intimate oceanfront resort in the heart of
South Beach;”
2. “The Setai Miami was recently chosen as the ‘#1 hotel in Miami
Beach’ by U.S. World & News Report and The Spa being voted the
‘Best for Romance by SpaFinder Readers’ Choice Awards’ were just
a few among the other recent awards. Conde Nast Traveler recently
acknowledged The Setai on ‘The Gold List 2012’ in both US and
UK, ‘Readers’ Choice Awards Best in the World,’ as well as the ‘Top
The Court declines to take judicial notice of the historical versions of MBLR’s website.
However, to the extent that the Defendants do not dispute certain factual references to the
information previously found on the Defendants’ website, the Court will consider those facts.
See infra.
4

50 Hotel Spas in the US.’ Travel & Leisure The World’s Best List #9
Large City Hotel in US/Canada”, along with the Conde Nast
Johansens Awards for the ‘Most Excellent Hotel in the USA &
Canada;’”
3. advertising “Holiday Events at The Setai” and stating “[t]o
celebrate, we will present a series of special activities and events
this Christmas . . .;”
4. stating “Miami Beach Luxury Rentals provides luxurious suites
and villas from luxury hotels Miami in The Setai Miami Beach and
the Setai South Beach, all available for your pleasure and
enjoyment;”
5. stating “[w]e look forward to helping you find the best luxury
rentals in Miami Beach from South Beach Miami hotels. For
immediate assistance in booking your stay with Miami Beach
Luxury Rentals today, please complete the online booking inquiry
form below;”
6. stating “[t]he restaurant at the Setai is one of the many luxurious
amenities that you will enjoy during your stay . . . . You are sure to
enjoy your stay at the Setai Miami with a visit to the Setai
restaurant to explore one of Chef Mathias exquisite creations;”
7. stating “[y]our stay at the Setai Miami is full of amenities such as
the Pool & Beach Bar . . . . If you’re relaxing by one of the three
pools, or on our beach, service includes a select menu of snacks
and light meals, as well as full beverage service;” and
8. quoting an alleged client as stating “[s]taying at the Setai resort
was an experience that met all of my expectations, from the
friendly staff, to the beach and nightlife just next door, I will
definitely be back for another great stay.”
(Pl.’s SMF ¶ 30; Defs.’ SMF ¶ 30; Decl. Allen Tuller ¶ 9, ECF No. 168.)
The website continued to make the following representations:
1. “Starting with a perfect oceanfront setting in the heart of South
Beach, The Setai Group and hotelier Adrian Zecha have created a
private, luxurious world that is more than a condominium, hotel,
and resort . . . it is a way of life.;”
2. “The Setai is a new, 40-story oceanfront glass tower as well as an
8-story art deco landmark building. Setai is also a member of the
distinguished “Leading Hotels of the World.;”
3. “Set amid tropical gardens and sparkling pools at the edge of the
Atlantic Ocean, Setai introduces the Asian traditions of simplicity
and elegance to South Beach. A lavish spa, health club, and an

extraordinary restaurant and bar add to this 5-Star experience.
Setai as the ‘#1 hotel in Miami Beach’ by U.S. World & News
Report and The Spa being voted the ‘Best for Romance by
SpaFinder Readers’ Choice Awards’ were just a few among the
other awards received throughout the year of 2012.;”
4. “Conde Nast Traveler acknowledged The Setai on ‘The Gold List
2012’ in both US and UK, ‘Readers’ Choice Awards Best in the
World,’ [sic] as well as the ‘Top 50 Hotel Spas in the US’ [sic].
Travel & Leisure The World’s Best List #9 Large City Hotel in
US/Canada’,[sic] along with the Conde Nast Johansens Awards for
the ‘Most Excellent Hotel in the USA & Canada.;’”
5. “For more information please visit www.setai.com.”
6. “At the Setai, everything is available and all things are possible.
The Setai staff is there to serve you, with passion, intelligence, and
respect. At the Setai, you will be treated as if you are the most
important person in the world;” and
7. “[The Hotel Spa is a] haven of serenity and natural beauty, The Spa
at The Setai opens the door to an intimate private world dedicated
to the restoration of the body, mind and soul. The philosophy
behind this very special spa is derived from an ancient Sanskrit
legend of the gods, who embarked on a quest for a natural elixir of
immortality and eternal youth. Today, the unique and exotic
treatments of The Spa at Setai reflect this legend, bringing the
healing spirit and traditions of the east to South Beach.”
(Pl.’s SMF ¶ 31, 33; Defs.’ SMF ¶ 31, 33; Decl. Allen Tuller #2 ¶¶ 9, 11, ECF
No. 168.)
While Tuller ultimately concedes that the information excerpted above
appeared on previous versions of the Defendants’ website, Tuller also notes
that all the content on the website received approval from the previous owner of
the Setai Hotel in approximately 2011. (Decl. Allen Tuller # 1 ¶ 7, ECF No. 154;
Decl. Allen Tuller # 2 ¶¶ 9, 18, ECF No. 168.) In fact, in an email sent April 27,
2011, legal counsel to the previous owner of the Setai Hotel appears to approve
of MBLR’s webste, and requests that certain language found in the “About Us”
section be moved to the Home Page.5 (Decl. Allen Tuller # 1 Ex. 1 at 10.)
The Defendants also purchased Google AdWords containing the term
“Setai.” (Pl.’s SMF ¶ 28(b); Defs.’ SMF ¶ 28.) Finally, the Defendants stipulated
to owning the domain name www.setai.net and to redirecting internet traffic
from that page to MBLR’s website. (Resp. to Mot. to Compel at 2, ECF No. 224.)
5

The Court notes that some of the text in the correspondence is missing.

In addition to MBLR’s website, the Defendants used the Setai Mark in
their correspondence with customers and potential customers:
1. Offered “suite that boa[s]ts the Setai Hotel Finishings and
Furnishings package.” (Sealed Depo. Allen Tuller Ex. 8 at 16, ECF
No. 149-2);
2. Instructed customer to “check in as any guest” and that
“[h]ousekeeping is available for an additional fee directly from the
hotel.” (Id. Ex. 11 at 26, 28);
3. Referred to the “5 star Setai” (Id. Ex. 18 at 119);
4. Referred to the “oceanfront 5 star leading Hotels of the world
property” (Id. Ex. 19 at 121);
5. Told a client that “you can’t get an oceanfront suite in Miami
Beach at a 4 or 5 star hotel at that price level” (Id. Ex. 20 at 122);
6. Referred to The Setai as “the hotel” and stated that it is “the best
hotel in all of south Florida” (Id. Ex. 21 at 125);
7. Told a client, “I’ll try and get you in to Setai . . . standard rooms
can only be book[ed] directly from the hotel . . . I only offer suites
in the hotel tower . . . .” (Id. Ex. 22 at 127);
8. Told a client about “the Setai five star Hotel in the tower” (Id. Ex.
23 at 129);
9. Told a client that “[t]he hotel has made arrangements with []the
Raleigh hotel close by where all Setai guests will have access to
their pools complimentary” (Id. Ex. 24 at 131);
10. Referred to “the Hotel TOWER” to distinguish from the “art deco
building” (Id. Ex. 26 at 142);
11. Referred to The Setai as “a high quality hotel” (Id. Ex. 27 at 147);
12. In response to an accusation that the Defendants were “not the
hotel,” wrote “Not the hotel? You have The Setai concierge services,
room services, pool and beach services and gym/spa privileges
amenities available to you” (Id. Ex. 28 at 148, 150); and
13. Called The Setai “the most expensive hotel in South Florida” (Id.
Ex. 29 at 152).
Tuller regularly closed his initial-contact emails with the tagline, “You have all
the Setai amenities available to you including room service, concierge, services,
pool and beach services and gym/spa privileges. . . . I am also a Florida Realtor
and I have been offering huge discounts at The Setai since the Resort and Spa
first opened.” (Id. Exs. 12–13, 15–21, 24, 26, 29–30 at 28, 31, 110, 115, 117,
119, 121, 123, 125, 131, 144, 152, 158–159.) Also, at time the Defendants
arranged for housekeeping services for customers. (Id. Ex. 13 at 30; Sealed
Depo. Allen Tuller at 32–34, ECF No. 149-1.) The Defendants, on one recorded

occasion, attempted to obtain tickets to a Miami Heat basketball game. (Aff.
Daniel Barsky Ex. B at 1–2, ECF No. 146-2.)
Tuller does not dispute the statements in the emails, but notes that “the
phrases [are taken] out of context to misrepresent the actual contents.” (Decl.
Allen Tuller # 2 ¶ 12, ECF No. 168; Defs.’ SMF ¶ 34.) Tuller further notes that
the previous owner of the Setai Hotel provided third-party housekeepers with
key fobs to gain access to multiple units and that SHA only prohibited the
provision of housekeeping services as of November 1, 2016. (Id. ¶ 13; (Decl.
Allen Tuller # 1 ¶ 11, ECF No. 154; Defs.’ SMF ¶ 34; Answer and Countercls.
Ex. 12 at 1, ECF No. 138-12.) According to Tuller, the Defendants have acted
in good faith and have modified certain conduct as soon as SHA has requested
or required modification. (Decl. Allen Tuller # 1 ¶ 15, ECF No. 154; Decl. Allen
Tuller # 2 ¶ 18.)
Tuller denies having any knowledge that the term “Setai” was a
registered trademark. (Decl. Allen Tuller # 1 ¶ 10, ECF No. 154.) The
Condominium Association always used the term Setai, in the same font with
the same logo. (Decl. Allen Tuller # 1 ¶ 10, ECF No. 154.) The Condominium
Association has been registered with the Florida Department of State Division
of Corporations using the name Setai Resort & Residences Condominium
Association, Inc., since 2003. (Answer and Countercls. Ex. 2 at 1, ECF No.
138-2.) The Association Board of Directors’ meeting minutes are printed on
paper bearing the double-palm logo and The Setai, with the web address
www.setai.com. (Answer and Countercls. Ex. 3 at 1–2, 5–6, 8, ECF No. 138-3.)
Tuller asserts that “‘The Setai’ was always used to refer to the condominium,
including the Tower building where all the private residential suites are
located.” (Decl. Allen Tuller # 1 ¶¶ 10–11, ECF No. 154.)

2. Legal Standard
Summary judgment is proper if following discovery, the pleadings,
depositions, answers to interrogatories, affidavits and admissions on file show
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. Celotex Corp. v. Catrett, 477 U.S.
317, 322 (1986); Fed. R. Civ. P. 56. “An issue of fact is ‘material’ if, under the
applicable substantive law, it might affect the outcome of the case.” Hickson
Corp. v. N. Crossarm Co., 357 F.3d 1256, 1259–60 (11th Cir. 2004). “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.” Id. at 1260.
All the evidence and factual inferences reasonably drawn from the
evidence must be viewed in the light most favorable to the nonmoving party.
Adickes v. S.H. Kress & Co., 398 U.S. 144, 157 (1970); Jackson v. BellSouth

Telecomms., 372 F.3d 1250, 1280 (11th Cir. 2004). “If more than one inference
could be construed from the facts by a reasonable fact finder, and that
inference introduces a genuine issue of material fact, then the district court
should not grant summary judgment.” Bannum, Inc. v. City of Fort Lauderdale,
901 F.2d 989, 996 (11th Cir. 1990).
Once a party properly makes a summary judgment motion by
demonstrating the absence of a genuine issue of material fact, whether or not
accompanied by affidavits, the nonmoving party must go beyond the pleadings
through the use of affidavits, depositions, answers to interrogatories and
admissions on file, and designate specific facts showing that there is a genuine
issue for trial. Celotex, 477 U.S. at 323–24. The nonmovant’s evidence must be
significantly probative to support the claims. Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 249 (1986). The Court will not weigh the evidence or make
findings of fact. Id. at 249; Morrison v. Amway Corp., 323 F.3d 920, 924 (11th
Cir. 2003). Rather, the Court’s role is limited to deciding whether there is
sufficient evidence upon which a reasonable juror could find for the nonmoving
party. Id.
The filing of cross-motions for summary judgment does not alter this
legal standard. Hawaiian Airlines, Inc. v. AAR Aircraft Servs., Inc., 167 F. Supp.
3d 1311, 1317 (S.D. Fla. 2016), appeal dismissed (Aug. 4, 2016) (Moore, J.).
“Rather, cross-motions must be considered separately, as each movant bears
the burden of establishing that no genuine issue of material fact exists and
that it is entitled to judgment as a matter of law.” Id. (internal quotations and
citation omitted).

3. Legal Analysis
A. Motion for Judicial Notice
SHA asks the Court to take judicial notice of the following: (1) the file
history of the ‘974 Mark maintained by the United States Patent and
Trademark Office (“USPTO”); (2) the Declaration of Setai Resort & Residences, a
Condominium, and the Special Warranty Deed; and (3) printouts of historical
webpages for MBLR’s website. (Mot., ECF No. 142.) The Defendants do not
object to judicial notice of the Condominium Declaration and the Special
Warranty Deed. (Resp. at 1, ECF No. 173.) However, the Defendants object to
the other two requests. (Id. at 2–3.)
1. USPTO
SHA asks the Court to take judicial notice of the file history of trademark
registration Number 2,506,974 (“the Setai Mark”). (Mot. 2, ECF No. 142.) The
file is publically available at the USPTO’s website, http://tsdr.uspto.gov. (Reply
at 2, ECF No. 180.) The file shows: (1) The Setai is a service mark assigned

registration number 2,506,974, first registered on November 13, 2011 (File at
1, ECF No. 142-1); the ‘974 Mark covers real estate management, real estate
development and construction, and hotel and resort services (Id.); (2) the ‘974
Mark was renewed on June 5, 2007, and May 21, 2012 (Id. at 1–2); (3) the
owners filed a combined declaration of use and incontestability, which the
USPTO accepted and acknowledged on June 5, 2007 (Id. at 3, 37, 41); (4) the
word “Setai” has no meaning in the English language (Id. at 62).
The Defendants oppose judicial notice of the USPTO file for the ‘974
Mark because they claim the file is incomplete and not authenticated by an
affidavit. (Resp. at 2, ECF No. 173.) The Defendants also oppose judicial notice
because the “Plaintiff is also trying to use the file to make certain claims in this
lawsuit, even though those issues were not in dispute in the registrations filed
with the USPTO.” (Id.)
The Defendants raise no reasonable or understandable objection to the
Court taking judicial notice of information publically available from an official
government website. As such, the Court takes judicial notice of the USPTO file
history for the ‘974 Mark. See Turbyfill v. Scottsdale Indem. Co., No.
3:14CV283-RV/EMT, 2016 WL 741657, at *2 (N.D. Fla. Feb. 24, 2016) (taking
judicial notice of information available to the public via the Department of
Health official website); In re Everglades Island Boat Tours, LLC, 484 F. Supp.
2d 1259, 1261 (M.D. Fla. 2007) (taking judicial notice of government website);
Gent v. CUNA Mutual Ins. Society, 611 F.3d 79, 84 n.5 (1st Cir. 2010) (taking
judicial notice of relevant facts from the official website of the Center for
Disease Control and Prevention); Denius v. Dunlap, 330 F.3d 919, 927 (7th Cir.
2003) (“The defendants have simply caused additional judicial work by
contesting a factual issue that, according to information readily available in the
public domain, cannot be reasonably disputed.”).
2. Condominium Declaration and Special Warranty Deed
SHA asks the Court to take judicial notice of the Declaration of Setai
Resort & Residences, a Condominium, recorded on January 16, 204, in the
Official Records of Miami-Dade County. (Mot. at 3; see also Mot. Ex. B, ECF
No. 142-2.) SHA also requests that the Court take judicial notice of the Special
Warranty Deed recorded on March 3, 2015, in the Official Records of MiamiDade County. (Mot. at 3; see also Mot. Ex. C, ECF No. 142-3.) The Defendants
do not object (Resp. at 1), and the documents are ones that “can be accurately
and readily determined from sources whose accuracy cannot reasonably be
questioned.” Fed. R. Evid. 201(b)(2). The Court, therefore, takes judicial notice
of the Condominium Declaration and the Special Warranty Deed.

3. Internet Archives
Finally, SHA asks this Court to take judicial notice of an historical
version of MBLR’s website found on the Internet Archive’s Wayback Machine.
(Mot. at 4.) The Defendants object. (Resp. at 2.)
First, SHA claims that pages 1 through 13 of Exhibit D are somehow
related to the historical versions of the Defendants’ website. But these pages
show nothing more than what appears to be unintelligible computer coding.
For example:

(Mot. Ex. D. at 2.) SHA provides no expert affidavit or any other explanation or
interpretation of these pages. The Court cannot understand what information
SHA seeks to convey. Without any substantiating information, these pages
simply do not contain facts “not subject to reasonable dispute.” The Court will
not take judicial notices of pages 1 through 13 of Exhibit D.
Next, the remaining pages 14 through 40 of Exhibit D do appear to be
printouts from the Wayback Machine’s archive of the Defendants’ website,
www.miamibeachluxuryrentals.com. SHA argues that these documents are
subject to judicial notice in the Southern District of Florida, relying on an order
on a motion for temporary and preliminary injunctive relief in Trobinick, MD v.
Novella, Case No. 14-cv-80781 (S.D. Fla. Apr. 2, 2014) (Rosenberg, J.). (See
Order, Case No. 14-cv-80787, ECF No. 172 at 4.) Trobinick does not apply to
the situation here. Judge Rosenberg took judicial notice of the date the
webpage was created by consulting the Internet Archive’s history of the page.
(Id.) She did not judicially notice the documents for the truth of their contents.
(Id.) Further, she relied on the Internet Archive only after two days of
evidentiary hearings on the matters at issue. (Id.)
The other two federal district courts in Florida discussing a request for
judicial notice of documents culled from the Wayback Machine declined to take
judicial notice of those documents. Nassar v. Nassar, No. 3:14-CV-1501-J34MCR, 2017 WL 26859, at *5 (M.D. Fla. Jan. 3, 2017); St. Luke’s Cataract &
Laser Inst., P.A. v. Sanderson, No. 8:06CV223TMSS, 2006 WL 1320242, at *2

(M.D. Fla. May 12, 2006). In Nassar, the court noted that the historical
contents of a website could only be judicially noticed if it were “information
[that] ‘can be accurately and readily determined from sources whose accuracy
cannot reasonably be questioned.’” 2017 WL 26859, at *5 (quoting Fed. R.
Evid. 201(b)(2)). There, the court determined that judicial notice was
inappropriate because the information was from a private, non-governmental
website, and because the Wayback Machine site itself includes a disclaimer
that the Internet Archive “makes no warranty or representation regarding the
accuracy . . . of the content . . . .” 2017 WL 26859, at *5 (internal citation and
quotations omitted). In St. Luke’s, the court noted that the person seeking
judicial notice of information from the Internet Archive must provide an
“affidavit from the Internet Archive representative with personal knowledge of
the contents of the Internet Archive website.” 2006 WL 1320242, at *2.
A review of caselaw across several district courts in several circuits
reveals that this issue is far from settled. However, circuit courts generally have
required that the Wayback Machine print-outs be authenticated by a
representative with personal knowledge before they can be judicially noticed or
admitted. See, e.g., United States v. Bansal, 663 F.3d 634, 667–68 (3d Cir.
2011); Novak v. Tucows, Inc., No. 06CV1909(JFB)(ARL), 2007 WL 922306, at *5
(E.D.N.Y. Mar. 26, 2007), aff’d, 330 F. App’x 204 (2d Cir. 2009); Cf. Specht v.
Google Inc., 747 F.3d 929, 933–34 (7th Cir. 2014).
Thus, the Court declines to take judicial notice of pages 14 through 40 of
Exhibit D.
However, the Court notes that even though the Defendants objected to
the Court taking judicial notice of the historical versions of the website, Tuller
appears to provide lukewarm agreement that pages 14 through 40 are accurate
representations of an older version of MBLR’s website. Tuller, in his deposition,
at first claims to recognize the previous versions of MBLR’s webpage, but then
qualifies that recognition with “this was not a complete page” and “It’s not the
way that . . . I remember . . . .” (Depo. Allen Tuller at 26–27, 32–33, 34, ECG
No. 147-1.) Tuller claims not to have written or copied any of the information
found on the website. (Id. at 33.) And yet, in the Defendants’ statement of
material facts in opposition to SHA’s motion for summary judgment, the
Defendants practically concede the accuracy of the content that SHA seeks to
admit as evidence. As such, and as noted above, the Court will consider
evidence from the historical version of MBLR’s website to which the Defendants
have conceded its accuracy.
Accordingly, the Court grants in part and denies in part SHA’s motion
for judicial notice (ECF No. 142).

B. The Trademark Claims
SHA moves for summary judgment on the statutory trademark claims:
counterfeiting pursuant to 15 U.S.C. § 1116 (Count 1); infringement pursuant
to 15 U.S.C. § 1114 (Count 2); and unfair competition pursuant to the Lanham
Act, 15 U.S.C. § 1125 (Count 3). (SHA Mot. Summ. J. at 6, ECF No. 164.) The
Defendants move for summary judgment on all of SHA’s trademark claims,
including the additional common law claims: infringement (Count 4); unfair
competition (Count 5); and dilution (Count 6). (Defs.’ Mot. Summ. J. at 3–8,
ECF No. 158.)
1. Standing
As an initial matter, the Court finds that SHA has standing to bring this
action. The Defendants argue that SHA does not have standing to bring this
action because SHA did not obtain any rights to the Setai Mark until after April
1, 2015, the date BPI and the Trust signed the Lehman Assignment. (Defs.’
Resp. at 5–6, ECF No. 169; Defs.’ Mot. Summ. J. at 3–4, ECF No. 158.) The
Defendants also assert that only BPI and the Trust have the right to bring
claims arising in relation to the ‘974 Mark, unless certain “conditions
precedent” are met. (Defs.’ Resp. at 5–6; Defs.’ Mot. Summ. J. at 3–4.)
SHA notes that the Lehman Assignment is dated February 27, 2015, as
is the Special Warranty Deed transferring the real property to SHA. (Pl.’s Resp.
at 2–3, ECF No. 166; Special Warranty Deed, Am. Compl. Ex. 2 at 2, ECF No.
110-2.) SHA further asserts that the SHA License makes SHA the exclusive
licensee and expressly permits SHA to take action with respect to any
purported infringement of the ‘974 Mark. (Pl.’s Resp. at 3.) Finally, SHA
presented the Declaration of Robert Spiegleman, general counsel to Nakash
Holdings LLC, a manager of SHA, and director of BPI, noting that BPI
“specifically authorized and directed SHA to undertake this lawsuit in its own
name.” (Pl.’s Reply Ex. B at 4, ECF No. 181-2.)
The Defendants arguments do not overcome SHA’s standing to bring this
lawsuit. First, SHA is the exclusive licensee of the ‘974 Mark and, as such, has
standing to bring a suit in its name. Aceto Corp. v. TherapeuticsMD, Inc., 953 F.
Supp. 2d 1269, 1280 (S.D. Fla. 2013) (Marra, J.) (“[E]xclusive licensees of
Trademarks can sue to protect the Trademark from infringement.”); Cf. HakoMed USA, Inc. v. Axiom Worldwide, Inc., No. 806CV-1790T-27EAJ, 2006 WL
3755328, at *3 (M.D. Fla. Nov. 15, 2006), report and recommendation adopted,
No. 8:06CV1790 T27EAJ, 2006 WL 3760415 (M.D. Fla. Dec. 19, 2006)
(“[B]ecause an exclusive license is equivalent to an assignment, standing is
conferred on an exclusive licensee to bring suit in its own name if the exclusive

licensee holds ‘all substantial rights’ to the patent.” (citing Prima Tek II, LLC v.
A–Roo Co., 222 F.3d 1372, 1377 (Fed. Cir. 2000))).
Next, BPI and the Trust became the legal owners of the ‘974 Mark on
February 27, 2015. Regardless of the date of the signature on the Lehman
Assignment, the express language therein makes the assignment executed “as
of the date first written above”—which is clearly February 27, 2015. The
Defendants have cited no law that precludes post- or pre-dating an assignment
of a trademark. (Defs.’ Resp. at 5; Defs.’ Mot. Summ. J. at 4.) And although
SHA equally has not provided the Court with any law to support the validity of
a nunc pro tunc assignment of a trademark (Pl.’s Resp. at 2–3), the Court finds
that the post-dated signatures here do not alter the effective date expressly
provided for in the Lehman Assignment. Cf. Imperial Residential Design, Inc. v.
Palms Dev. Grp., Inc., 70 F.3d 96, 99 (11th Cir. 1995) (recognizing under
copyright law the validity of “an oral assignment later ratified or confirmed by a
written memorandum of the transfer”); Oceans of Images Photography, Inc. v.
Foster & Smith, Inc., No. 8:11-CV-1160-T-30AEP, 2012 WL 5878092, at *4
(M.D. Fla. Nov. 21, 2012) (recognizing the validity of a copyright assignment
signed on September 6, 2011, with an effective date of May 5, 2011).
Finally, SHA has the right to bring this lawsuit. The SHA License
simultaneously permits SHA to initiate legal action against any infringement of
the ‘974 Mark and obligates SHA to prohibit others from using the ‘974 Mark
in any way that does not inure to the benefit of BPI and the Trust. (Compare
SHA License § 4.2 and SHA License § 4.1(a).) Reading these two provisions
together, as this Court must, supports only an interpretation that authorizes
SHA to raise these infringement claims against the Defendants. See Sanofi–
Aventis Deutschland GmbH v. Genentech, Inc., 716 F.3d 586, 591–93 (Fed. Cir.
2013) (discussing breach of a license agreement analyzed under the law
governing the agreement); Macy’s Inc. v. Martha Stewart Living Omnimedia, Inc.,
127 A.D.3d 48, 54 (N.Y. App. Div. 2015) (noting that under New York law,6 a
court should interpret a contract in a way that “gives meaning to every
provision of the contract”) (internal citations and quotations omitted).
Moreover, BPI (with 85% ownership of the ‘974 Mark) and SHA (with the
exclusive license to use the ‘974 Mark) share a common owner. The Court must
consider this organizational relationship in interpreting the provisions of the
SHA License. Id. (noting a court “should read the entirety of the agreement in
the context of the parties’ relationship”).

6

New York law governs the SHA License. (SHA License § 8.2 at 7.)

2. Infringement
“Under the Lanham Act, 15 U.S.C. § 1114(1), a defendant is liable for
trademark infringement if, without consent, he uses in commerce any
reproduction, counterfeit, copy, or colorable imitation of a registered mark that
is likely to cause confusion, or to cause mistake, or to deceive.” Florida Int’l
Univ. Bd. of Trustees v. Florida Nat’l Univ., Inc., 830 F.3d 1242, 1255 (11th Cir.
2016) (internal citations and quotations omitted). Thus, in order to prevail on a
federal trademark infringement claim under the Lanham Act, SHA must
demonstrate (1) that its mark had priority, and (2) that the Defendants’ uses of
the mark were likely to cause consumer confusion. Id.
Somewhat surprisingly, the Defendants appear not to contest the priority
of SHA’s mark. Nonetheless, the Court notes that SHA’s mark is incontestable
and does have priority. The certificate of registration constitutes “prima facie
evidence of the validity of the registered mark . . . and of the owner’s exclusive
right to use the registered mark . . . in connection with the . . . services
specified in the certificate . . . .” 15 U.S.C. § 1057(b). Subject to a few caveats
and exceptions not relevant here, a mark “in continuous use for five
consecutive years subsequent to the date of [the] registration and . . . still in
use in commerce, shall be incontestable.” 15 U.S.C. § 1065.
In evaluating the second prong, whether the Defendants’ uses of the
mark create a likelihood of confusion, the Court must consider seven factors:
(1) type of mark, (2) similarity of mark, (3) similarity of the products the marks
represent, (4) similarity of the parties’ retail outlets and customers, (5)
similarity of advertising media used, (6) defendant’s intent and (7) actual
confusion. Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 122
F.3d 1379, 1382 (11th Cir. 1997); see also Florida Int’l Univ., 830 F.3d at 1255.
“Of these factors, the type of mark and the evidence of actual confusion are the
most important.” Id.
(a) Type of Mark
The type of mark that a plaintiff has determines whether it carries strong
or weak protection. Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330,
1335 (11th Cir. 1999). There are four categories of mark, ranging from weakest
to strongest:
(1) generic—marks that suggest the basic nature of the product or
service; (2) descriptive—marks that identify the characteristic or
quality of a product or service; (3) suggestive—marks that suggest
characteristics of the product or service and require an effort of the
imagination by the consumer in order to be understood as
descriptive; and (4) arbitrary or fanciful—marks that bear no

relationship to the product or service, and the strongest category of
trademarks.
Tana v. Dantanna’s, 611 F.3d 767, 774 (11th Cir. 2010) (citation omitted).
Here, the word “Setai” has no meaning in the English language and does
not suggest any particular kind of services or product. Further, the mark is
incontestable, which strengthens the mark. The Setai Mark is clearly fanciful,
and should be accorded the strongest protection.
(b) Similarity of mark
Under this factor, “the court compares the marks and considers the
overall impressions that the marks create, including the sound, appearance,
and manner in which they are used.” Frehling Enters., 192 F.3d at 1337. SHA
asserts that the Defendants are using an identical mark. (Pl.’s Mot. Summ. J.
at 15.) And yet, this is not the average case where the alleged infringer has
appropriated or incorporated the registered mark as its own. See, e.g., Lone
Star Steakhouse, 122 F.3d at 1382 (analyzing the use of the “Lone Star Steaks”
mark and the “Lone Star Café” mark); Florida Int’l Univ., 830 F.3d at 1260
(analyzing the use of the “Florida International University” mark and the
“Florida National University” mark).
Here, the Defendants’ business does not appropriate or incorporate the
term “Setai”—but the Defendants frequently used the term “Setai” in their
marketing of MBLR and in correspondence with potential customers in a way
that made it appear as if the Defendants and “the Setai” were one and the
same. For instance, the Defendants advertised special holiday events at the
Setai Hotel by stating, “we will present a series of special activities and
events . . . .” (Pl.’s SMF ¶ 30; Defs.’ SMF ¶ 30.) The Defendants claimed to offer
rooms for rent that included “the Setai Hotel Finishings and Furnishings
package.” (Sealed Depo. Allen Tuller Ex. 8 at 16.) Tuller’s standard tagline on
his initial correspondence with customers created an appearance of a close
alliance between MBLR and the Setai Hotel: “You have all the Setai amenities
available to you including room service, concierge, services, pool and beach
services and gym/spa privileges. . . . ” (Id. Exs. 12–13, 15–21, 24, 26, 29–30 at
28, 31, 110, 115, 117, 119, 121, 123, 125, 131, 144, 152, 158–159.) The
Defendants used “Setai” as a search term to direct internet traffic to MBLR’s
website. Finally, the Defendants owned the domain name www.setai.net and
redirected traffic from that domain name to MBLR’s website. All of this conduct
blurred the line between the Defendants and the Setai Mark. In this sense, the
manner in which the mark was used created similarity between the Setai Mark
and the Defendants.

(c) Similarity of the products the marks represent
“The third factor asks whether the parties’ services are the kind that the
public attributes to a single source.” Florida Int’l Univ., 830 F.3d at 1261
(internal quotations and citation omitted). “The test is not whether the products
can be readily distinguished, but rather whether the goods are ‘so related in
the minds of consumers that they get the sense that a single producer is likely
to put out both goods.’” Id. (internal quotations and citation omitted). “The
focus is on the reasonable belief of the average consumer as to what the likely
source of the goods is.” Id. (internal quotations, citation, and alterations
omitted).
Here, SHA contends that both parties offer to the public “marketing and
management of units for transient rental.” (Pl.’s Mot. Summ. J. at 16.) The
Defendants contend that “MBLR is a real estate company, which rents private
residential condominium units[,] [and SHA] is a hotel who [sic] is now trying to
expend [sic] its mark to include condominiums and condominium services.”
(Defs.’ Mot. Summ. J. at 11.) But the bottom line remains that both SHA and
the Defendants offer accommodations for short-term visitors to Miami Beach.
The Court imagines, but cannot find support in the record, that the
average traveler would not conceptualize that a “hotel” would be comprised of
individually owned condominium units. Certainly, Furrer stated that SHA
officially does not inform guests that their hotel room has an individual owner
separate from The Setai Hotel. And the Court has already found that the
Defendants blurred the line between the Setai Hotel and the units offered by
the Defendants. Thus, the average traveler might assume that when MBLR
offers a suite in the “Hotel tower” or the “Hotel in the tower,” it is doing so on
behalf of or for the benefit of the Setai Hotel and the traveler will be staying in
the “actual” hotel.7
(d) Similarity of the parties’ retail outlets and customers
“‘Dissimilarities between the retail outlets for and the predominant
customers of plaintiff’s and defendant’s goods lessen the possibility of
confusion, mistake, or deception.’” Frehling Enters., 192 F.3d at 1339 (quoting
Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 262 (5th Cir. 1980)). “This
factor takes into consideration where, how, and to whom the parties’ products
are sold. . . . The parties’ outlets and customer bases need not be identical, but
some degree of overlap should be present.” Frehling Enters., 192 F.3d at 1339.

In other words, the Court likens the “marketing” provided by MBLR to a third-party search
engine for airline tickets—ultimately, the purchaser obtains a ticket for a seat on the actual
commercial airline, even though purchased through the third-party website.
7

The record contains no clear evidence on this factor. SHA argues that
“SHA and [the] Defendants book customers through internet portals . . . and
that these customers are persons seeking short term or transient
accommodations on Miami Beach.” (Pl.’s Mot. Summ. J. at 16.) But an ordinary
stroll down Lincoln Road reveals a highly dissimilar customer base, and the
Court might assume the same of the pool of individuals seeking transient
accommodations via internet searches. In addition, given the price disparity
between rooms offered by the Setai Hotel and rooms offered by the Defendants,
the Court could conclude that the parties have separate and distinct customer
base. Regardless, such a conclusion remains unsupported by the record on
summary judgment, and likewise the record does not support a conclusion that
the parties’ customer base overlaps.
(e) Similarity of advertising media used
“This factor looks to each party’s method of advertising.” Frehling Enters.,
192 F.3d at 1339. SHA contends that the parties use the same advertising
methods because they both advertise on the internet. (Pl.’s Mot. Summ. J. at
17.) Certainly, sufficient and unrefuted evidence exists that the Defendants
advertise on the internet. However, neither party presented evidence regarding
how SHA advertises the Setai Hotel, other than its official website and booking
portal, www.thesetaihotel.com. (Pl.’s SMF ¶ 32.) Even if the Court assumed
that SHA advertised exclusively on the internet, that finding does not resolve
this factor. “[T]he standard is whether there is likely to be significant enough
overlap in the readership of the [websites] in which the parties advertise that a
possibility of confusion could result.” Frehling Enters., 192 F.3d at 1340. The
record does not disclose whether SHA advertises on Facebook, Pinterest,
Google+, and Homeaway, and does not disclose whether the same users of
those services also access advertising through some other avenue possibly
utilized by SHA. Again, the Court does not have sufficient information to
determine in whose favor this factor inures.
(f) Defendant’s intent
Under this factor, the Court “determin[es] whether the defendant had a
conscious intent to capitalize on the plaintiff’s business reputation, was
intentionally blind, or otherwise manifested improper intent . . . .” Custom Mfg.
& Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 648 (11th Cir. 2007)
(internal quotations omitted). SHA provided evidence of the Defendants’
repeated use of direct references to the Setai Mark and the Setai Hotel, some of
which likely went beyond mere location or comparison of prices. The Court
finds especially noteworthy the Defendants’ late stipulation to using the
domain name www.setai.net to redirect internet traffic to MBLR’s website.

All the same, the record raises issues of fact as to the Defendants’ intent.
First, Tuller expressly asserts good faith intentions and provides slight support
for that assertion—for example, legal counsel for the previous owner of the
Setai Hotel does appear to have approved MBLR’s website and its repeated
references to the Setai Mark. The Defendants contend that once they learned of
this lawsuit, those references to the Setai Mark were removed. Next, the
Declaration expressly allows the third-party transient rental of individually
owned condominium units and expressly requires unit owners to rely on thirdparty agencies for “service issues” and “distribution and exchange of Unit
keys.” (Am. Decl. ¶¶ 16.7, 17.1(c) & (d), Mot. Ex 1 at 171, ECF No. 19-1.) The
Declaration makes the Condominium’s common areas part of the Hotel Unit,
and thus part of SHA’s real property and under SHA’s control, but also allows
access to those areas for unit owners and their transient renters. Tuller
reasonably could have believed he was acting appropriately under the
Declaration. Further, the Condominium’s and the Association’s use of the term
Setai, the same distinctive font, and the double-palm logo could have
reasonably made Tuller believe he was authorized to use the Setai Mark.
In short, making a determination on this factor would require the Court
“to consider one party’s evidence more credible than the other.” Provide
Commerce, Inc. v. Preferred Commerce, Inc., No. 07-80185, 2008 WL 926777, at
*3 (S.D. Fla. Apr. 4, 2008) (Ryskamp, J.). Of course, “[c]redibility
determinations . . . are within the sole province of the jury.” Id. Moreover,
generally the determination of “a party’s state of mind (such as knowledge or
intent) is a question of fact for the factfinder, to be determined after trial.”
Chanel, Inc. v. Italian Activewear of Florida, Inc., 931 F.2d 1472, 1476 (11th Cir.
1991) (citing Morissette v. United States, 342 U.S. 246, 274 (1952)). Finally,
even if the facts in the record could “support an inference of knowledge or
willful blindness . . . they do not so clearly compel that conclusion as to
warrant finding intent as a matter of law.” Italian Activewear, 931 F.2d at 1476.
(g) Actual confusion
“It is undisputed that evidence of actual confusion is the best evidence of
a likelihood of confusion.” Frehling Enters., 192 F.3d at 1340. “However, such
evidence is not a prerequisite, and thus it is up to individual courts to assess
this factor in light of the particular facts of each case.” Id. Courts have not
found actual confusion in cases where evidence shows only a small number of
individuals experienced confusion over a moderate number of years. Safeway
Stores, Inc. v. Safeway Disc. Drugs, Inc., 675 F.2d 1160, 1167 (11th Cir. 1982)
(collecting cases). Further, “as important as . . . the number of instances of
confusion are the kinds of persons confused and degree of confusion.” Id.

“Short-lived confusion or confusion of individuals casually acquainted with a
business is worthy of little weight . . . while confusion of actual customers of a
business is worthy of substantial weight.” Id. In Safeway, the court found it
“worthy of some consideration” that the three instances of confusion involved
two suppliers who were familiar with the business and one customer. Id.
Here, SHA provided evidence of one confused customer in more than ten
years that the Defendants have been renting rooms at the Condominium. (Aff.
Daniel Barsky Exs. D, E, F, ECF Nos. 144-5, 144-6, 144-7.)8 The specific
customer stated his family had visited “the Setai” six times but the service had
diminished in quality and his “signing privileges” had been revoked. (Id. Ex. E
at 1.) But the record is unclear whether this confusion resulted from the
Defendants’ use of the Setai Mark, or whether it resulted from SHA’s policy
change that refused certain services and privileges to guests who had booked a
room through a third-party agency.9
Even though the confusion came from an actual customer, and so carries
significant weight in the balancing of factors, the source of the confusion
remains debatable. This, combined with the fact that SHA has presented
evidence of only one incident of confusion, shows only the slightest indication
that actual confusion exists.
(h) Balancing of Factors
The Court finds that the first three factors—type of mark, similarity of
mark, and similarity of the products the marks represent—weigh strongly in
favor of finding a likelihood of confusion, and the seventh factor—actual
prejudice—weighs only slights in SHA’s favor. However, because neither SHA
nor the Defendants have provided the Court with evidence to evaluate the
fourth and fifth factors—similarity of the parties’ retail outlets and customers
and similarity of advertising media used—the Court cannot make a
determination as to those factors. Finally, an issue of fact exists with respect to
the sixth factor—the defendant’s intent. As a result, the Court cannot find at
this point and on the record before it that the Defendants infringed on the Setai

The Court notes that SHA provided three exhibits regarding actual confusion. However, each
exhibit concerns the same customer.
9 The Court notes that the disgruntled customer arrived on July 27, 2016, and departed on
August 5, 2016. (Aff. Daniel Barsky Ex. F, ECF No. 144-7.) The Court further notes that SHA
issued a new registration form for transient tenants on March 18, 2016, that stated “signing
privileges are not available for payment at hotel outlets such as the restaurants, pools, bars
and spa.” (Answer and Countercls. Exs. 10 & 11, ECF Nos. 138-10, 138-11.) Later, after this
customer complained, SHA issued yet another new registration form that did not include the
same provision regarding signing privileges. (Id. Ex. 13, ECF No. 138-13.)
8

Mark, and neither party is entitled to summary judgment for SHA’s trademark
infringement claims (Counts 2 and 4).
3. Counterfeiting
To prove a claim for counterfeiting, SHA must prove that the Defendants
“infringed a registered trademark in violation of 15 U.S.C. § 1114(1)(a), and
[that the Defendants] ‘intentionally used a mark, knowing such mark is a
counterfeit mark.’” Babbit Elecs., Inc. v. Dynascan Corp., 38 F.3d 1161, 1181
(11th Cir. 1994) (quoting 15 U.S.C. § 1117(b)). A “counterfeit” mark means “a
spurious mark which is identical with, or substantially indistinguishable from,
a registered mark.” 15 U.S.C. § 1127. The Court has not been able to determine
whether the Defendants violated § 1114(1)(a). Moreover, even if the record
supports a finding that the Defendants intentionally used the Setai Mark, a
question of fact exists regarding whether the Setai Mark as the Defendants
used it was a “counterfeit mark” and, if so, whether the Defendants knew they
were using a “counterfeit mark.”
Neither party is entitled to summary judgment on SHA’s counterfeiting
claim (Count 1).
4. Unfair Competition
SHA’s sole argument for summary judgment on the unfair competition
claim is that “because SHA has shown it should prevail on it trademark
infringement claims, it necessarily follows that SHA prevails on its common law
unfair competition claim.” (Pl.’s Mot. Summ. J. at 22.) The Defendants agree
that the legal standard for determining an unfair competition claim is
essentially the same as for a trademark infringement claim. (Defs.’ Mot. Summ.
J. at 6.)
“[T]he Lanham Act creates a federal cause of action for unfair
competition in interstate commerce, and forbids unfair trade practices
involving infringement of trademarks, even in the absence of federal trademark
registration.” Custom Mfg., 508 F.3d at 647 (internal citation, quotations, and
ellipses omitted); see also 15 U.S.C. § 1125. “Courts may use an analysis of
federal infringement claims as a ‘measuring stick’ in evaluating the merits of
state law claims of unfair competition.” Planetary Motion, Inc. v. Techsplosion,
Inc., 261 F.3d 1188, 1193 n. 4 (11th Cir. 2001).
Again, because questions of fact remain as to SHA’s trademark
infringement claims, neither party is entitled to summary judgment on the
unfair competition claims (Counts 3 and 5).
5. Dilution
SHA did not move for summary judgment on its claim for trademark
dilution. (Pl.’s Mot. Summ. J. at 1, 17.) The Defendants purport to move for

summary judgment on all of SHA’s trademark claims. (Defs.’ Mot. Summ. J. at
3.) However, neither party raised any factual assertions or legal argument
regarding trademark dilution. As such, neither party is entitled to summary
judgment on SHA’s trademark dilution claim (Count 6.)
6. Trademark Affirmative Defenses
The Defendants raised twenty-seven affirmative defenses to SHA’s
trademark claims. In response to SHA’s motion for summary judgment on the
statutory trademark claims, the Defendants raise their First, Seventh, Eighth,
and Twentieth affirmative defenses—fair use. (Resp. at 16, ECF No. 169.)
Further, in their motion for summary judgment, the Defendants raised
arguments on their Fifth, Sixth, Eleventh, Fourteenth, Sixteenth, and
Nineteenth affirmative defenses. (Defs.’ Mot. Summ. J. at 5–8.) Although not
separately raised, the Defendants do mention in the summary judgment
pleadings their Eighteenth affirmative defense—that the Condominium
Declaration permits their use of the Setai Mark. The Defendants have failed to
put forth any evidence or arguments regarding their Second, Third, Fourth,
Ninth, Tenth, Twelfth, Thirteenth, Fifteenth, Seventeenth, Tweny-first, Twentysecond, Twenty-third, Twenty-fourth, Twenty-fifth, and Twenty-sixth, and
Twenty-seventh affirmative defenses, and the Court will not consider them.
Because the record did not support a determination of infringement, the
Court need not consider any of the Defendants’ affirmative defenses. See
Fitzpatrick v. City of Atlanta, 2 F.3d 1112, 1116 (11th Cir. 1993) (“If the party
moving for summary judgment fails to discharge the initial burden, then the
motion must be denied and the court need not consider what, if any, showing
the non-movant has made.”). However, in the interest of judicial economy and
to narrow the issues at trial, the Court will analyze the affirmative defenses
raised by the Defendants in their summary judgment pleadings.
(a) Fair Use
“A fair-use defense is established if a defendant proves that its use is
(1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.” Int’l
Stamp Art, Inc. v. U.S. Postal Serv., 456 F.3d 1270, 1274 (11th Cir. 2006)
(internal citations and quotations omitted). “The ‘fair-use’ defense, in essence,
forbids a trademark registrant [from] appropriat[ing] a descriptive term for its
exclusive use and so prevent[ing] others from accurately describing a
characteristic of their goods [or services].” Id. (internal citation and quotations
omitted). For example, a defendant can assert fair use where the mark is used
to describe a geographic location or to compare services. 15 U.S.C. § 1115(b)(4)
(mentioning description of geographic origin as a fair use); Setai Hotel
Acquisitions, LLC v. Luxury Rentals Miami Beach, Inc., No. 16-21289-CIV, 2016

WL 7217730, at *2 (S.D. Fla. Dec. 9, 2016) (Moreno, J.) (“‘One can use
another’s mark truthfully to identify another’s goods or services in order to
describe or compare its product to the markholder’s product.” (quoting Bd. of
Supervisors of the Louisiana State Univ. v. Smack Apparel Co., 438 F. Supp. 2d
653, 662 (E.D. La. 2006))).
Certainly, the record shows instances where the Defendants used the
Setai Mark merely to indicate the location of the unit or to compare the prices
available through the Defendants or directly through the Setai Hotel. But more
importantly, the record more than adequately shows that the Defendants went
beyond fair use of the Setai Mark. If SHA ultimately proves infringement, the
Defendants cannot rely on the affirmative defense of fair use. The Court denies
entry of summary judgment for the Defendants on the First, Seventh, Eighth,
and Twentieth affirmative defenses.
(b) Misrepresentation of Goods
The Defendants argue that SHA has misrepresented the source of goods
or services provided to the public by allowing the Condominium Association to
use the Setai Mark, its distinctive font, and the double-palm logo. (Defs.’ Mot.
Summ. J. at 5.) While the record contains evidence that the Condominium
Association did, in fact, use the Setai Mark, its distinctive font, and the doublepalm logo, the record does not contain any evidence that the Condominium
Association provides hotel and resort services. As such, the Court cannot grant
summary judgment in favor of the Defendants on their Fifth and Nineteenth
affirmative defenses.
(c) Improper Expansion of Mark
The Defendants assert that SHA is improperly trying to expand its mark
to cover condominiums. If the Court understands the Defendants’ argument,
they claim that SHA wishes to preclude any unit owners from using the Setai
Mark by asserting ownership over the building in which the individually owned
units are located. (Defs.’ Mot. Summ. J. at 5–6.) However, the Special Warranty
Deed accords SHA ownership rights over various components of the
Condominium. Asserting that proper ownership cannot transform into an
improper expansion of a trademark. In other words, SHA’s real property
ownership rights are established separate and apart from any license to use
the Setai Mark. Moreover, those ownership rights do not expand or contract
SHA’s status as exclusive licensee of the Setai Mark. The Court cannot grant
summary judgment in favor of the Defendants on their Fifth, Sixth, and
Fourteenth affirmative defenses.

(d) Laches
“Laches is an equitable defense and arises from the neglect or delay in
bringing suit to remedy an alleged wrong, which taken together with lapse of
time and other circumstances, causes prejudice to the adverse party and
operates as an equitable bar.” Ford Motor Co. v. O.E. Wheel Distributors, LLC,
868 F. Supp. 2d 1350, 1366 (M.D. Fla. 2012) (internal citation and quotations
omitted). “In order to put forth such a defense, a defendant must show that
there was: (1) an unreasonable delay in the plaintiff’s assertion of a right or
claim; (2) the delay was not excusable; and (3) the delay caused undue
prejudice.” Id.
Without more, the Defendants have not carried their burden on
summary judgment to bring forth evidence proving these three elements. The
Defendants cite only to Tuller’s declaration. Cf. Pdq Coolidge Formad, LLC v.
Landmark Am. Ins. Co., No. 12-CV-20627-KMM, 2013 WL 12077448, at *3
(S.D. Fla. Apr. 26, 2013) (Moore, J.), aff’d, 566 F. App’x 845 (11th Cir. 2014)
(“[O]ne cannot oppose summary judgment with a self-serving, conclusory
affidavit that fails to set forth specific facts to show why there is an issue for
trial, and fails to demonstrate that the facts presented in the affidavit are based
on personal knowledge beyond mere speculation or belief.”) (internal citation
omitted). Even if the Defendants had shown an inexcusable and unreasonable
delay, they do not mention or point to any evidence of undue prejudice. O.E.
Wheel Distributors, 868 F. Supp. 2d at 1366.
The Court cannot grant summary judgment in favor of the Defendants on
their Eleventh affirmative defense.
(e) Acquiescence
“Acquiescence is an equitable defense that denotes active consent by a
senior user to another's use of the mark.” SunAmerica Corp. v. Sun Life Assur.
Co. of Canada, 77 F.3d 1325, 1334 (11th Cir. 1996). “The defense requires
proof of three elements: (1) the senior user actively represented that it would
not assert a right or a claim; (2) the delay between the active representation
and assertion of the right or claim was not excusable; and (3) the delay caused
the defendant undue prejudice.” Id.
Here, the evidence shows that SHA’s predecessor actively represented in
cease-and-desist letters that it would assert a claim for infringement if the
Defendants did not comply with the advertising and solicitation guidelines. (Aff.
Daniel Barsky Exs. 1–3, ECF No. 165.) Certainly, a possibility exists—as
discussed above—that the Defendants reasonably could have believed that they
had resolved the issues that gave rise to the cease and desist letter. But the
Defendants’ belief remains inapposite to the elements required to prove the

defense of acquiescence. Furthermore, even if the Defendants had proven the
first two elements, the Defendants have not shown undue prejudice. The Court
cannot grant summary judgment in favor of the Defendants on their Sixteenth
affirmative defense.
C. Tortious Interference
The Defendants move for summary judgment on SHA’s claim for tortious
interference. To prevail on a claim for tortious interference under Florida law,
the plaintiff must prove: (1) the existence of a business relationship; (2) the
defendant’s knowledge of that business relationship; (3) the defendant’s
intentional and unjustifiable interference with that business relationship; and
(4) damages to the plaintiff as a result. Romika-USA, Inc. v. HSBC Bank USA,
N.A., 514 F. Supp. 2d 1334, 1339 (S.D. Fla. 2007) (McAliley, J.). “To be liable
for tortious interference a defendant must have both the intent to damage the
business relationship and a lack of justification for doing so.” Id. (internal
citation and quotations omitted).
Here, SHA has shown that as a “Unit Owner” under the Declaration it is
a party to the Declaration and has rights and obligations under that contract.
Also, the record shows that the Defendants clearly are aware of that
relationship. However the third and fourth elements remain far less clear on
the record.
First, as discussed above, the Defendants’ intent is a question of fact
best left for determination by the jury. Italian Activewear, 931 F.2d at 1476.
Next, the parameter of the “business relationship”—in this case, the scope of
“hotel-related services” under the Declaration—remains an unresolved issue of
fact. SHA concedes as much in its response. (Resp. at 9, ECF No. 166.) Finally,
the record contains little reference to actual damages to SHA. In fact, in its
motion for summary judgment, SHA asks the Court to reserve ruling on the
issue of non-statutory damages, presumably to be determined at trial. (Pl.’s
Mot. Summ. J. at 23.)
Thus, issues of fact preclude entry of summary judgment on SHA’s
tortious interference claim (Count 7).
Presumably, the Defendants also move for summary judgment on the
four affirmative defenses they raise to SHA’s tortious interference claim.
However, the Defendants have failed to put forth any evidence or arguments
regarding the Twenty-eighth, Twenty-ninth, and Thirty-first affirmative
defenses, and thus the Court will not consider those. As to the Thirtieth
affirmative defense, the Defendants argue that SHA cannot unilaterally
determine the definition of “hotel services” under the Declaration. This
argument concerns the scope of “hotel-related services” under the Declaration,

which the Court already has determine remains an unresolved issue of fact.
Thus, the Court cannot grant summary judgment on the Defendants’ Thirtieth
affirmative defense.
D. The Defendants’ Counterclaims
The Defendants raise as counterclaims false advertisement under the
Lanham Act, unfair competition, and a violation of Florida’s Deceptive and
Unfair Trade Practices Act. (Answer and Countercls. at 35–41.) Neither party
has moved for summary judgment on theses counterclaims. However, “the legal
analysis is the same for . . . violations of the Lanham Act, FDUPTA, and Florida
state common law for infringement and unfair competition.” Suntree Techs.,
693 F.3d at 1345. Thus, resolution at trial of SHA’s statutory trademark claims
will also resolve the Defendants’ counterclaims. Even so, should the
Defendants ultimately succeed in their counterclaims, nothing in this order will
preclude SHA from asserting its affirmative defenses to the Defendants’
counterclaims.

4. Conclusion
Accordingly, for the reasons set forth above, the Court grants in part
and denies in part SHA’s motion for judicial notice (ECF No. 142), denies the
Plaintiff’s Motions for Summary Judgment (ECF No. 164), and denies the
Defendants’ Motion for Summary Judgment (ECF No. 158).
Done and ordered, at Miami, Florida, on August 15, 2017.
________________________________
Robert N. Scola, Jr.
United States District Judge