Restivo v. Pennachio et al

Filing 50

ORDER adopting #43 Report and Recommendation; denying #26 Plaintiff Joseph Restivo's Amended Ex Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction. Signed by Judge Jose E. Martinez on 11/17/2021. See attached document for full details. (cvl)

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Case 1:21-cv-23388-JEM Document 50 Entered on FLSD Docket 11/17/2021 Page 1 of 3 UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF FLORIDA MIAMI DIVISION Case Number: 21-23388-CIV-MARTINEZ-BECERRA JOSEPH RESTIVO , Plaintiff, V. CHARLES PENNACHIO and RESTORED DREAMS, LLC , Defendants. - - - - - - - - - - - - -- - -I ORDER ADOPTING REPORT A D RECOMMENDATION THE MATTER was referred to the Honorable Jacqueline Becerra, United States Magistrate Judge, for a Report and Recommendation on Plaintiff Joseph Restivo ' s Amended ExParte Application for Entry of Temporary Restraining Order and Preliminary Injunction ("TRO Motion"). (ECF No. 26). After holding an evidentiat)' hearing on the Motion, Magistrate Judge Becerra filed a Report and Recommendation ("R&R"), recommending that the Motion be denied (ECF No. 43). Plaintiff timely fi led Objections to the R&R (ECF No. 45), and Defendant Charles Pennachio responded to those Objections (ECF No. 46) . The Court, having conducted a de nova review of the record and the issues presented in Plaintiffs Objections, agrees with Magistrate Judge Becerra that Plaintiff is not entitled to injunctive relief. Though Plaintiffs Objections were thoroughly and properly analyzed in the R&R, the Court will briefly address them below. Plaintiff Restivo makes five specific objections to the R&R' s find ings, which he contends "wholly ignore [his] entire argument that the question of priority is established by issue preclusion[.]" (ECF No. 45 , at 4) (emphasis in original). Stated differently , Plaintiff Restivo argues that because priority of the LINEAR mark was decided in 2017 by the Trademark Trial and Case 1:21-cv-23388-JEM Document 50 Entered on FLSD Docket 11/17/2021 Page 2 of 3 Appeal Board ("TTAB"), he met his "burden of showing trademark priority for purposes of the present application for TRO. " (ECF No. 45 , at 4). This argument merely reiterates the arguments made in the TRO Motion and ignores Judge Becerra's conclusion that the TTAB ' s decision on the issue of ownership does not preclude Defendant Pennachio from defending the instant action on the issue of trademark infringement. (ECF o. 43, at 14 ). Simply put, ownership and infringement are different issues. Relatedly, Plaintiff Restivo argues that Judge Becerra erred in considering Defendant Pennachio ' s declarations on the issue of priority because this issue was already litigated and decided by the TTAB. (ECF o. 45, at 4). Plaintiff Restivo contends that he established priority because he registered the LI EAR mark in 2012 and the TT AB dismissed Defendant Pennachio ' s petition for cancellation of the registration for failure to prosecute. (ECF No. 43 at 2). As Judge Becerra correctly noted, the registration of the LINEAR mark creates a rebuttable presumption of validity and exclusive use. (ECF No. 43 , at 16). Indeed, ownership via registration can be limited by priority of use. (ECF No. 43 , at 17). Here, Defendant Pennachio claims to have first use of the mark and offered significant evidence regarding his use of the LINEAR mark, which Plaintiff Restivo did not rebut by counter affidavit. (ECF No. 43, at 17- 18). Judge Becerra correctly determined that Plaintiff Restivo failed to show a substantial likelihood of success on the issue of priority, an element of Plaintiff Restivo ' s trademark infringement claims. (ECF o. 43 , at 3, 17- 18). Plaintiff Restivo ' s last objection contests Judge Becerra' s determination that the TRO Motion did not establish irreparable harm. (ECF No . 45 , at 4). Judge Becerra concluded that the TRO Motion did not establish irreparable harm because the "unrebutted evidence submitted by Defendant Pennachio indicates that he has been continuously using the LINEAR mark as the name for a band he created in 1989," that Plaintiff Restivo was a part of that band from 1989 through 2 Case 1:21-cv-23388-JEM Document 50 Entered on FLSD Docket 11/17/2021 Page 3 of 3 1994, and that Plaintiff Restivo knew Defendant Pennachio continued to use the mark after Plaintiff registered it but did nothing to stop that use. (ECF o. 43, at 19-20). Judge Becerra found that because Plaintiff Restivo has not had control of the mark since 2012, no irreparable harm wi ll occur by allowing Defendant Pennachio to use the mark at the upcoming "I Love the 80 's" concert. (ECF No. 43 , at 20). Plainti ff Resti vo objects, arguing that Defendant Pennachio ' s prior references to LINEAR " had always been autobiographical, and never in connection with live music events or any other offering." (ECF No. 45 , at 5). But, as Defendant Pennachio notes, the evidence shows that he "continuously released and re-released LINEAR music throughout the entire time period," used social media to maintain LINEAR goodwill and sell LI EAR music, and took action against Plaintiff Restivo on two separate occasions for Plaintiff's use of the mark. (ECF o. 43 , at 10). Thus, the Court adopts Judge Becerra' s well-reasoned anal ysis and conclusion regarding Plaintiff Restivo ' s failure to show an entitl ement to injunctive relief. Accordingly, after careful consideratio n, it is hereby ADJUDGED that 1. United States Magistrate Judge Becerra's Report and Recommendation, (ECF No. 43 ), is AFFIRMED and ADOPTED. 2. Plaintiff's TRO Motion, (ECF No . 26), is DENIED . 3. Plaintiff's Motion for Leave to Fi le a Reply in Support of Objections to Magistrate Judge's Report and Recommendations, (ECF o. 47), is DENIED . DONE A D ORDERED in Chambers at Miami , Florida, this 17th day of November, 202 1. Copies provided to: Magistrate Judge Becerra A ll Counsel of Record 3

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