Harris v. Thompson

Filing 13

ORDER AND OPINION denying without prejudice plaintiffs motion for a temporary restraining order and preliminary injunction 4 . Signed by Judge Julie E. Carnes on 6/18/14. (ddm)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION

THOMAS HARRIS a/k/a TOMMY
SOTOMAYOR,
Plaintiff,
CIVIL ACTION NO.
v.

1:14-cv-01106-JEC

RICHARD LIONEL THOMPSON,
Defendant.
ORDER & OPINION
This matter is before the Court on plaintiff Thomas Harris’
motion for a temporary restraining order and preliminary
[4].

injunction

The Court has reviewed the arguments of plaintiff, and for the

reasons set out below, DENIES without prejudice plaintiff’s motion
for a temporary restraining order and preliminary injunction.
BACKGROUND
Thomas Harris (“plaintiff”) is a Georgia citizen residing in
Atlanta.

Plaintiff places videos of himself on the internet, in

which he provides social commentary under the name “Tommy Sotomayor.”
(Pl.’s Mot. [4-1] at 2.) He also sells clothing featuring that name.
(Id.)

Richard Lionel Thompson (“defendant”) is a resident of Myrtle

Beach, South Carolina.

(Compl. [1] at ¶ 9; Answer [7] at ¶ 9.)

He

maintains a website where he provides social commentary, and also

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posts videos on the site www.youtube.com.

(Thompson Decl. [9-1] at

¶ 4.)
Defendant

began

posting

plaintiff’s

website on or around February 5, 2014.

videos

on

defendant’s

(Compl. [1] at ¶ 10.)

On or

around February 28, 2014, defendant began offering on that website
shirts containing the name “Tommy Sotomayor” and, in one case, a
photograph of plaintiff.
Ex. B6.)

(Id. at ¶ 11; Thompson Decl. [9-1] at Sub-

Plaintiff had not given defendant permission to post his

videos or sell shirts with his name or likeness.
17.)

(Compl. [1] at ¶

Plaintiff believes he holds a common-law trademark in the name

“Tommy Sotomayor.”

(Id. at ¶ 59.)

Plaintiff also complains that

defendant harassed him “by releasing the [p]laintiff’s name to the
public, creating a public video giving instructions on how to find
the [p]laintiff’s criminal record, making [p]laintiff’s mug shots
readily accessible online, and placing threatening phone calls to the
[p]laintiff’s girlfriend.”

(Id. at ¶ 69.)

On April 15, 2014, plaintiff filed suit in this Court, alleging
various causes of action under federal and Georgia state law:
invasion of privacy (Counts I and II); deceptive trade practices
(Count III); false advertising and unfair competition (Count IV);
fraud and unfair competition (Count V); trademark dilution (Count
VI); unjust enrichment (Count VII); and emotional distress and
cyberstalking (Count VIII).

(See Compl. [1] at ¶¶ 22-71.)

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On May 8,

2014, defendant filed an Answer to the Complaint. (Answer [7].)
Although denying liability, defendant admits that he posted publicly
available information about plaintiff on his website, placed videos
created by plaintiff on his website without plaintiff’s permission,
and also advertised shirts with plaintiff’s name and image without
permission. (Id. at ¶¶ 10-13; see also Thompson Decl. [9-1] at Exs.)
Upon receipt of plaintiff’s Complaint, this Court instructed
plaintiff to file a motion for immediate injunctive relief if
plaintiff sought such relief.

(Order [3] at 1.)

Under Local Rule

65.1, NDGa, a motion must be filed with the court whenever immediate
judicial action is requested.

Such motion must be accompanied by a

memorandum of law that cites supporting authority and, if allegations
of fact are relied on, supporting affidavits.
Court

instructed

plaintiff

to

address

the

LR 7.1(A)(1).
four-part

injunctive relief used in the Eleventh Circuit.

test

The
for

(Order [3] at 1-2.)

The Court also instructed plaintiff to “explain, with specificity,
why the facts of the present case justify immediate injunctive
relief.”

(Id. at 2.)

On April 17, 2014, plaintiff filed a motion for a temporary
restraining order and preliminary injunction, seeking to stop the
alleged trademark infringement and stalking.

(Pl.’s Mot. [4].)

On

May 13, 2014, defendant filed a response to plaintiff’s motion.
(Def.’s Resp. [9].)

On May 27, 2014, plaintiff filed a reply.

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(Def.’s Reply [11].)1
DISCUSSION
Upon motion, district courts may issue preliminary injunctions
and temporary restraining orders.

FED. R. CIV. P. 65(a) and (b).

“Every motion presented to the clerk for filing shall be accompanied
by

a

memorandum

of

law

which

cites

supporting

authority.

If

allegations of fact are relied upon, supporting affidavits must be
attached to the memorandum of law.”

LR 7.1(A)(1).

Further, motions

must “state with particularity the grounds for seeking the order.”
FED. R. CIV. P. 7(b)(1)(B).

In the Eleventh Circuit, a plaintiff

seeking a temporary restraining order or preliminary injunction must
show: “(1) a substantial likelihood of success on the merits; (2) a
substantial threat of irreparable injury; (3) that the threatened
injury to the plaintiff outweighs the injury to the nonmovant; and
(4) that the injunction would not disserve the public interest.”
Statewide Detective Agency v. Miller, 115 F.3d 904, 905 (11th Cir.
1997).
The Court notes as a preliminary matter that a temporary

1

Plaintiff’s reply brief departs wholly from the standards for
reply briefs, and is by all appearances a draft of an amended
complaint. It contains numbered paragraphs, outlines a complaint,
and even refers to itself as a complaint. Because it is a reply
brief in name only, this Court does not consider it in this Order.
Further, plaintiff submitted an unapproved amended complaint on June
4, 2014, further complicating the pleadings.
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restraining order is only available when the opposing party has not
been given notice and the moving party has shown that irreparable
harm will result unless the restraining order is entered immediately,
without giving the opposing party an opportunity to respond. Because
defendant has been served with the complaint and the motion, the
temporary restraining order is inappropriate, and the Court will only
consider the preliminary injunction plaintiff seeks.
The Court further notes that, although plaintiff has filed the
motion

as

instructed

by

the

Court,

plaintiff

requirements for this Court to grant it.

has

not

(See Mem. [4-1].)

met

the

First,

plaintiff has failed to provide any affidavits as required by Local
Rule 7.1(A)(1). Further, the facts alleged in plaintiff’s memorandum
of law are vague and generally insufficient to support the requested
relief, falling short of the Rule 7 requirements and the previous
instructions of this Court.

The Court now turns to those pleading

deficiencies.
I.

PLAINTIFF’S TRADEMARK CLAIM
To establish a substantial likelihood of success on the merits

of his trademark claim, plaintiff would first have to show that he
holds a trademark in the name “Tommy Sotomayor.”

“To be entitled to

trademark protection, a mark must be valid and distinctive.” Atlanta
Allergy and Asthma Clinic, P.A. v. Allergy & Asthma of Atlanta, LLC,
685 F. Supp. 2d 1360, 1367 (N.D. Ga. 2010)(Duffey, J.)(citing Freedom
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Sav. & Loan Ass’n v. Way, 757 F.2d 1176 (11th Cir. 1985)).

This

Circuit classifies marks into four levels of distinctiveness, ranging
from least to most distinctive:
(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.2
Gift of Learning Found., Inc. v. TGC, Inc., 329 F.3d 792, 797-98
(11th Cir. 2003)(emphasis added). Generic marks are generally barred
from trademark protection.

Welding Servs., Inc. v. Forman, 509 F.3d

1351, 1358 (11th Cir. 2007).

Suggestive and arbitrary or fanciful

marks are considered “inherently distinctive,” and thus qualified for
trademark protection, because “their intrinsic nature serves to
identify a particular source of a product.”
Cabana, Inc., 505 U.S. 763, 768 (1992).
spectrum are descriptive marks.

Two Pesos, Inc. v. Taco

Falling in the middle of the

Descriptive marks only acquire the

distinctiveness requisite to trademark protection when they have
acquired “secondary meaning.” Coach House Rest., Inc. v. Coach & Six

2

The Eleventh Circuit has illustrated these categories using
some possible names for a hypothetical milk-delivery business: “Milk
Delivery”
(generic),
“BarnMilk”
(descriptive),
“Barn-Barn”
(suggestive),
and
“barnbarnfish”
(arbitrary
or
fanciful).
Investacorp, Inc. v. Arabian Inv. Banking Corp. (Investcorp) E.C.,
931 F.2d 1519, 1522-23 (11th Cir. 1991).
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Rests., Inc., 934 F.2d 1551, 1560 (11th Cir. 1991). The criterion of
secondary meaning is that “the primary significance of the term in
the minds of the consuming public is not the product but the
producer.” Welding Servs, Inc., 509 F.3d at 1358 (internal quotation
and citation omitted).
The

name

“Tommy

Sotomayor”

would

be

a

descriptive

mark.

“Names–both surnames and first names–are regarded as descriptive
terms and therefore one who claims federal trademark rights in a name
must prove that the name has acquired a secondary meaning.”

Tana v.

Dantanna’s, 611 F.3d 767, 776 (11th Cir. 2010)(quoting Perini Corp.
v.

Perini

Constr.,

Inc.,

915

F.2d

121,

125

(4th

Cir.

1990).

Establishing secondary meaning of a descriptive mark requires “a high
degree of proof.”
(Investcorp)

E.C.,

Investacorp, Inc. v. Arabian Inv. Banking Corp.
931

F.2d

1519,

1525

(11th

Cir.

1991).

In

addressing the question of secondary meaning, courts in this Circuit
will look at “the length and nature of the name’s use, the nature and
extent of advertising and promotion of the name, the efforts of the
proprietor to promote a conscious connection between the name and the
business, and the degree of actual recognition by the public that the
name designates the proprietor’s product or service.”

Welding

Servs., Inc., 509 F.3d at 1358 (citing Conagra, Inc. v. Singleton,
743 F.2d 1508, 1513 (11th Cir. 1984)); see also Restatement (Third)
of Unfair Competition § 13, Comment e (1995)(“Secondary meaning
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exists

only

if

a

significant

number

of

prospective

purchasers

understand the term, when used in connection with a particular kind
of good, service, or business, not merely in its lexicographic sense,
but also as an indication of association with a particular, even if
anonymous, entity.”)
Plaintiff does not provide the facts to support his contention
that he holds a trademark in the name “Tommy Sotomayor” or anything
else.

Instead, plaintiff simply asserts that he “has been using the

distinctive Tommy Sotomayor trademark on commercialized products for
over the last five years.”
provided.

Plaintiff

(Mem. [4-1] at 2-3.)

provides

nothing

that

No examples are

would

support

the

conclusion that anyone actually purchased these “commercialized
products.”

When

infringement

in

plaintiff

this

discusses

Circuit,

the

plaintiff

test

provides

for

trademark

nothing

but

conclusory statements about his trademark and defendant’s allegedly
infringing marks.

(Id. at 9-10.)

Plaintiff baldly states, without

supporting facts, that “[d]efendant’s mark . . . does not differ from
[p]laintiff’s mark . . . .”

(Id. at 9.)

the marks to support this contention.

There is no description of

At one point, plaintiff does

nothing but recite a legal standard (for determining the strength of
a mark), without even attempting to apply it to the facts of the
case.

(Id. at 8-9.)
The vagueness of plaintiff’s motion gives this Court no basis
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upon which to determine that any injunctive relief is warranted, as
it is unclear that plaintiff even has a valid trademark, much less
that any trademark has been infringed.

From what plaintiff has thus

far provided, there is no reason to believe that he is likely to
ultimately prevail on the merits.

The Court therefore denies

plaintiff’s motion with regard to his trademark claims.
II.

PLAINTIFF’S STALKING CLAIM
Plaintiff

also

seeks

an

order

from

this

Court

enjoining

defendant “from having further contact with [p]laintiff.”

(Mem. [4-

1] at 2; see also Proposed Order [4-2] at 2.)

Plaintiff complains

that defendant’s online comments about plaintiff and alleged phone
calls to plaintiff’s girlfriend amount to stalking.
3.)

(Mem. [4-1] at

The proposed statutory basis for this injunction is O.C.G.A. §

16-5-94.
statute.

(Id. at 1.)

This is part of Georgia’s criminal stalking

O.C.G.A. §§ 16-5-90 to 96.

It permits a person “who

alleges stalking by another person [to] seek a restraining order by
filing a petition alleging conduct constituting stalking as defined
in Code Section 16-5-90.”

O.C.G.A. § 16-5-94(a).

The referenced

code section provides the elements of criminal stalking and its
penalties.
Federal courts are courts of limited jurisdiction, requiring a
constitutional or statutory basis for their exercise of jurisdiction
over a cause of action.

Kokkonen v. Guardian Life Ins. Co. of Am.,
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511 U.S. 375, 377 (1994).

“It is to be presumed that a cause lies

outside this limited jurisdiction, and the burden of establishing the
contrary

rests

upon

(citations removed).

the

party

asserting

jurisdiction.”

Id.

There is no constitutional or statutory grant

of jurisdiction over state crimes.
is somewhat ambiguous.

The status of O.C.G.A. § 16-5-94

Although it provides a mechanism for a

private party to pursue a restraining order, it is part of a criminal
stalking statute, itself within Title 16–titled “Crimes”–of the
Georgia Code.

This calls into question this Court’s jurisdiction

over plaintiff’s claim.
jurisdictional rules.
specifically

vest

The section further provides its own
See O.C.G.A. § 16-5-94(b).

jurisdiction

in

the

Georgia

Those rules

superior

courts.

O.C.G.A. § 19-13-2. Finally, this Court can find no precedent of any
federal court exercising jurisdiction over a cause of action brought
under O.C.G.A. § 16-5-94(b).
This Court is thus inclined to the view that it is not empowered
to exercise jurisdiction over plaintiff’s O.C.G.A. § 16-5-94 claim.
For that reason–along with the general insufficiency of plaintiff’s
pleading–this Court denies plaintiff’s motion with respect to the
stalking claim.
this

claim

If plaintiff elects to file a new motion or pursue

further,

the

Court

instructs

jurisdictional issue.

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him

to

address

this

CONCLUSION
The Court must DENY without prejudice plaintiff’s motion for a
temporary restraining order and preliminary injunction [4].

If

plaintiff wishes to again apply for a preliminary injunction, his
attorney

must

submit

pleadings

that

adequately

address

requirements for issuance of such an order.
SO ORDERED, this 18th day of June, 2014.

/s/ Julie E. Carnes
JULIE E. CARNES
CHIEF UNITED STATES DISTRICT JUDGE

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the