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)

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.

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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
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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

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