Caracol Television S.A. et al v. TVmia International, Corp. et al
Filing
168
ORDER granting in part and denying in part 157 Motion for Summary Judgment. Signed by Judge Robert N. Scola, Jr. on 12/11/2017. (ls)
United States District Court
for the
Southern District of Florida
Caracol Television, S.A. and Caracol
Television, Inc., Plaintiffs,
v.
TVmia International Corp., and
others, Defendants.
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)
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) Civil Action No. 16-23486-Civ-Scola
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Order on Motion for Summary Judgment
This matter is before the Court upon the Plaintiffs Caracol Television,
S.A. and Caracol Television, Inc.’s motion for summary judgment (ECF No.
157). The Defendants Eduardo Perez Bucci and Marcelo J. Adarvez, proceeding
pro se, filed a response (ECF No. 162), to which the Plaintiffs replied (ECF No.
163). Following careful consideration of the motion, all supporting and
opposing submissions, the record in this case and the applicable law, the
Court grants the motion as to Defendant Bucci, and denies the motion as to
Defendant Adarvez.
1. Background and Relevant Facts1
The Plaintiffs initiated this action against multiple defendants, including
TVmia International, Corp, TeVeYa, Corp., World Pass Communications Corp.,
Bucci, and Adarvez, asserting claims for copyright and trademark infringement
(Compl., ECF No. 1.) Defaults have been entered against the corporate
defendants. (See ECF Nos. 123, 130.)
The following facts are undisputed. Caracol Television, S.A. produces and
compiles television programming in Colombia, which is transmitted and
distributed by Caracol Television, Inc. and other authorized entities,
throughout Colombia and the world. Caracol Television, Inc. is the exclusive
licensing agent for original programming and the exclusive licensee for
distribution of the Caracol International Channel in the United States. (Pls.’
Statement of Material Facts (“SOMF”), ECF No. 158 ¶ 3.) Bucci created TVmia
Although the Defendants responded in substance to the Plaintiffs’ motion for
summary judgment, they did not separately file a statement of material facts, as
required by the Local Rules. See S.D. Fla. L.R. 56.1(a). Nevertheless, to the extent that
the Defendants’ response sets forth material facts, the Court takes those into
consideration.
1
International Corp. in 2011, through which television signals from one country
are retransmitted to users in another. (Id., ¶¶ 4-5.) Subscribers pay a fee for
access to the Caracol channel on the satelitecolombia.com website, created by
Bucci. (Id., ¶ 7.) However, TVmia does this without the consent of the television
networks. (Id., ¶ 6.) Bucci is also associated with the websites for TeVeYa and
diplomaticostv.com, which streamed Caracol content as well. (Id., ¶¶ 9, 13-14.)
Despite numerous notices of potential infringement, the rebroadcasting and
streaming continued. (Id., ¶¶ 12-13, 19-23, 28.)
Bucci served as the president of TVmia until 2014, when he sold the
satelitecolombia.com and teveya.com websites to their current owner, Hector
Maturan. (Id., ¶ 17.) Adarvez served as the vice president of TVmia, and then
its president, following Bucci’s resignation. (Id., ¶¶ 44, 53-54.) Adarvez
promoted TVmia. (Id., ¶ 55.) In fact, the Caracol logos and name were used on
the
TeVeYa
application,
TVmia.com,
satelitecolombia.com,
and
diplomaticostv.com to indicate the unauthorized Caracol stream. (Id., ¶¶ 59.)
After filing suit, the Plaintiffs filed a motion for preliminary injunction,
arguing that the Defendants continued to infringe by streaming Caracol
content on their associated websites, even after being served with take-down
notices and notices of potential infringement. (ECF No. 43.) The Defendants did
not object to the entry of a preliminary injunction, so the Court granted the
motion. (ECF No. 54.) Thereafter, the Plaintiffs filed a motion for contempt (ECF
No. 55) against the Defendants based upon their continuing to stream
unauthorized Caracol content via the satelitecolombia.com website. In
response, the Defendants claimed that they had no control over what was being
disseminated over the website. (ECF No. 61) Following a hearing on the motion,
the Magistrate Judge certified the following facts: Caracol content continued to
be video streamed after the effective date of the preliminary injunction via
satelitecolombia.com, which was accessible to TVmia subscribers; Bucci
controls satelitecolombia.com; the sale of satelitecolombia.com to Maturan was
a sham and Bucci continued to control the site; and, that notwithstanding his
resignation, Bucci continued to control TVmia’s internet operations and
finances. (See R. & R., ECF No. 151.) Thus, the Magistrate Judge recommended
that the Court grant the motion for contempt and enter an order of contempt
against Bucci. (Id.) The Court adopted the Magistrate Judge’s report and
recommendation (ECF No. 154), and entered an order of civil contempt (ECF
No. 155) against Bucci.
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.
3. Analysis
Based upon the evidence presented and the undisputed facts, the
Plaintiffs are entitled to summary judgment against Bucci upon their copyright
and trademark infringement claims, but not against Adarvez. While neither
Defendant offers relevant opposing facts or evidence to dispute the evidence
provided by the Plaintiffs, upon a review of the record, a genuine issue of
material fact remains with respect to the claims against Adarvez.
a. The Plaintiffs are entitled to summary judgment against Bucci for
copyright infringement
There is no evidence in the record to overcome the overwhelming
evidence establishing the Plaintiffs’ claims against Bucci in this case. Indeed, in
the response to the Plaintiffs’ motion, Bucci merely quibbles with some of the
characterizations of ancillary facts made by the Plaintiffs. (See Response, ECF
No. 162.) Even construed in the light must favorable to Bucci, these facts are
neither material, nor do they create an issue of fact that is genuine.
In their first cause of action, the Plaintiffs assert a claim for copyright
infringement under the Copyright Act, 17 U.S.C. §§ 106, 501. In order to
establish a claim for copyright infringement, “two elements must be proven: (1)
ownership of a valid copyright, and (2) copying of constituent elements of the
work that are original.” Latimer v. Roring Toyz, Inc., 601 F.3d 1224, 1232-33
(1th Cir. 2010) (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S.
340, 361 (1991)); see also Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1541
(11th Cir. 1996). “In judicial proceedings, a certificate of registration made
before or within five years after first publication of the work shall constitute
prima facie evidence of the validity of the copyright and of the facts stated in
the certificate.” Bateman, 79 F.3d at 1541 (quoting 17 U.S.C. § 410(c)). Bucci
does not dispute the existence or validity of the Plaintiffs’ copyrights with
respect to eleven (11) programs for which it claims infringement. (See Mot. at 8,
ECF No. 157.) In addition, the Plaintiffs have provided Certificates of
Registration from the United States Copyright Office made within the
statutorily prescribed timeframe for the eleven programs, including three
episodes of “Tu Voz Estéreo,” “Día a Día I” and “Día a Día II,” “Noticias” 6:30,
12:30, and 19:00 on August 20, 2013, and three episodes of “La Niña.” (See
ECF No. 1-9.) Therefore, the Court finds that the Plaintiffs have satisfied their
burden in establishing the first element.
In order to establish the second element, “a plaintiff must establish, as a
factual matter, that the alleged infringer actually used the copyrighted material
to create his own work.” Bateman, 79 F.3d at 1541 (internal citation and
quotations omitted). In other words, the plaintiff must establish “that the
alleged infringer actually copied plaintiff’s copyrighted material.” Latimer, 601
F.3d at 1233. One of the rights guaranteed to a copyright owner by the
Copyright Act is the “exclusive right to perform the copyrighted work publicly,”
which is infringed by transmitting or otherwise communicating a performance
to the public in the form of streaming over the internet. Am. Broadcasting Cos.,
Inc. v. Aereo, Inc., 134 S. Ct. 2498, 2502 (2014) (internal citations and
quotations omitted). Once again, Bucci does not dispute that the websites over
which the Magistrate Judge previously determined he exercised control
rebroadcast Caracol content, nor that he did not have a license or permission
to do so. Thus, the Plaintiffs have also established the second element of
copyright infringement.
Finally, the Plaintiffs urge the Court to find that Bucci’s infringement
was willful. Under the circumstances of this case, the Court agrees and finds
that it was. Indeed, the Court need look no further than an attachment
provided by Bucci himself, in response to the Plaintiffs’ motion, which
demonstrates that Bucci was on notice as early as the beginning of 2012 that
TVmia’s business model implicated serious potential infringement concerns.
(See Response at 40-44, ECF No. 162.) Although Bucci appears to place much
emphasis on the fact that the letter does not constitute a formal legal opinion
letter, and is only a “preliminary review” of “possible” issues, the conclusion is
unequivocal,
we cannot give you assurance that the FCC or any
alleged copyright owner, will not sue TVmia an you
individually, or that TVmia and you individually will
not have potential liability for retransmitting distant
television broadcast signals without complying with all
the U.S. regulatory requirements of cable service
operators and without securing the written consent of
the distant broadcasters to TVmia’s retransmission.
(Id. at 44.) As such, Bucci chose to continue to infringe upon the Plaintiffs’
rights notwithstanding the potentially serious consequences.
b. The Plaintiffs are entitled to summary judgment against Bucci for
trademark infringement and dilution
In their second and third causes of action, the Plaintiffs assert claims for
trademark infringement and dilution pursuant to the Lanham Act, 15 U.S.C. §§
1125(a), and (c). “To establish a prima facie case of trademark infringement
under § 43(a), a plaintiff must show ‘(1) that it had trademark rights in the
mark or name at issue and (2) that the other party had adopted a mark or
name that was the same, or confusingly similar to its mark, such that
consumers were likely to confuse the two.’” Tana v. Dantanna’s, 611 F.3d 767,
772 (11th Cir. 2010) (quoting Lone Star Steakhouse & Saloon, Inc. v. Longhorn
Steaks, Inc., 106 F.3d 355, 358 (11th Cir. 1997)). The Lanham act protects
common law trademarks, even in the absence of federal trademark registration.
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). “Under
common law, trademark ownership rights are ‘appropriated only through
actual prior use in commerce.’” Planetary Motion, Inc. v. Techsplosion, Inc., 261
F.3d 1188, 1193 (11th Cir. 2001) (quoting Tally-Ho, Inc. v. Coast Cmty. College
Dist., 889 F.2d 1018, 1022 (11th Cir. 1989)). In this case, Bucci does not
dispute the validity of Caracol’s mark, and the Plaintiffs provide sufficient
evidence to establish that they possess trademark rights in the Caracol mark
and name associated with television programming, in the absence of a federal
trademark registration. Thus, the Court considers the second prong of the
trademark infringement claim.
Normally, when determining the likelihood of confusion, the court
considers seven (7) factors: “(1) the strength of the allegedly infringed mark; (2)
the similarity of the infringed and infringing marks; (3) the similarity of the
goods and services the marks represent; (4) the similarity of the parties’ trade
channels and customers; (5) the similarity of advertising media used by the
parties; (6) the intent of the alleged infringer to misappropriate the proprietor’s
good will; and (7) the existence and extent of actual confusion in the
consuming public. Fla. Int’l Univ. Bd. of Trs. v. Fla. Nat’l Univ. Online Learning
Campus, 830 F.3d 1242, 1255 (11th Cir. 2016) (citing Tana, 611 F.3d at 77475). Furthermore, in order to prove a dilution claim, “a plaintiff must provide
sufficient evidence that 1) its mark is famous; 2) the defendant adopted its
mark after the plaintiff’s mark became famous; 3) the defendant’s mark diluted
the plaintiff’s mark; and 4) the defendant’s use is commercial and in
commerce.” Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d
1261, 1269 (S.D. Fla. 1999) (Moreno, J). In this case, the Court need not
engage in a lengthy consideration of these factors, since it is undisputed that
the exact Caracol logos and marks were used on the infringing websites
controlled by Bucci to indicate access to unauthorized streams of Caracol
content. Therefore, the Court finds that no genuine issue of material fact
remains, and the Plaintiffs are entitled to summary judgment on their claims of
trademark infringement and dilution against Bucci.
c. A genuine issue of material fact remains with respect to
Adarvez’s involvement
In general, “[i]f an individual actively and knowingly caused the
infringement, he is personally liable.” Chanel, Inc. v. Italian Activewear of Fla.,
Inc. 931 F.2d 1472, 1477 (11th Cir. 1991). “Alternatively, one who induces[,]
causes or materially contributes to the infringing activity of another, with
knowledge of the infringing activity, may be held liable as a ‘contributory’
infringer. Thus, a corporate officer who knowingly directs, authorizes, controls,
approves or ratifies the infringing activity may be personally liable, without
regard to piercing the corporate veil.” ADT LLC v. Sec. Networks, LLC, No. 1281120-CIV-HURLEY, 2017 WL 2113410, *2 (S.D. Fla. Mar. 16, 2017) (Hurley,
J.) (emphasis in original); see also ADT LLC v. Alarm Protection Tech. Fla., LLC,
646 F. App’x 781, 788-89 (11th Cir. 2016) (“Specifically, a corporate officer who
directs, controls, ratifies, participates in or is the moving force behind the
infringing activity, is personally liable for such infringement.”) (quoting Babbit
Elecs., Inc. v. Dynascan Corp., 38 F.3d 1161, 1184 (11th Cir. 1994).
The Plaintiffs conceded at the hearing on the motion for contempt that
the evidence was not the same in character or volume with respect to Adarvez’s
conduct as it is with respect to Bucci’s. (ECF No. 165 at 31-32.) In fact,
according to the Plaintiffs, Adarvez’s role with respect to the defendant
corporations was largely on paper—in the position of officer and billing
contact—and he was not profiting from the business model or otherwise
involved in the control and management of the defaulted defendant companies.
Id. at 32. Though Adarvez did admit to promoting TVmia, he also professed
ignorance with respect to what and how exactly the defendant companies and
Bucci provided services to their customers. (See ECF No. 157-3 at 26-27). As a
result, the Plaintiffs ultimately abandoned their motion for contempt against
Adarvez, and the Magistrate Judge made no finding with respect to the degree
of Adarvez’s involvement or whether Adarvez violated the preliminary
injunction order.
As such, at this juncture, the only evidence against Adarvez is his name
on corporate documents, the fact that he promoted TVmia, and a personal
association with Bucci. However, Adarvez’s testimony is that he does not in fact
exercise any true role with respect to any of the defendant companies. The
Plaintiffs have provided no comparable financial evidence with respect Adarvez,
other than the fact that he received a salary, and had signature authorization
on TVmia International’s bank accounts; therefore, the Plaintiffs hypothesize
that he helped cover Bucci’s involvement in the ongoing infringement through
the purported loan Bucci gave to TVmia International. (See ECF No. 157-4 at
21-22.) In fact, Adarvez was not present at the meeting during which the
preliminary report of potential liability with respect to the infringing business
model was discussed. (Id. at 25) Therefore, there is genuine issue of material
fact as to Adarvez’s involvement, such that the Court cannot say as a matter of
law that the Plaintiffs are entitled to summary judgment against him.
4. Conclusion
For the reasons set forth above, the Plaintiffs’ motion for summary
judgment (ECF No. 157) is granted in part and denied in part. This matter
remains on the Court trial calendar for the two week period commencing
January 8, 2018 with the calendar call scheduled for January 2, 2018 at 9:00
a.m. The Defendant Marcelo J. Adarvez must personally appear at the calendar
call or the Court will strike his pleadings and enter a default against him. In
light of the impending trial date, if Adarvez wishes the Court to find an attorney
who is willing to represent him on a pro bono basis for the trial, he should
advise the Court of his wish no later than December 20, 2017. The Court will
then attempt to find a volunteer attorney to represent Adarvez at the trial but
the Court will not reschedule the trial date.
Done and ordered at Miami, Florida, on December 11, 2017.
________________________________
Robert N. Scola, Jr.
United States District Judge
Copies to counsel of record and:
Eduardo Perez Bucci
168 SE 1st Street
Suite 407
Miami, FL 33131
bucci@tvmia.com
Marcelo J. Adarvez
168 SE 1st Street
Suite 407
Miami, FL 33131
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