Argento et al v. Santiago et al

Filing 81

DECISION & ORDER The claims asserted by plaintiff Argento against defendants Santiago and For the Love of Ramon, LLC, are dismissed with prejudice pursuant to Fed. R. Civ. P. 41(b). Further, the counterclaims asserted by defendant Santiago against plaintiff Argento are dismissed with prejudice pursuant to Fed. R. Civ. P. 41(b). The Clerk of the Court is directed to close the case. Signed by Hon. Marian W. Payson on 9/19/2019. Copies of this Decision & Order sent by First Class Mail to plaintiff Steven C. Argento, 510 Park Avenue, Rochester, NY 14607 and to defendants Marilyn Santiago and For the Love of Ramon, LLP, 180 Wyatt Drive, Rochester, NY 14610 on 6/12/2019. (KAH) -CLERK TO FOLLOW UP-

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
_______________________________________
STEVEN C. ARGENTO, individually and
d/b/a as S.C. FINE ARTS,
DECISION & ORDER
Plaintiff,
16-CV-6172P
v.
MARILYN SANTIAGO, et al.,
Defendants.
_______________________________________

PRELIMINARY STATEMENT
On August 15, 2019, the Court issued an Order to Show Cause to plaintiff Steven
C. Argento (“Argento”) and defendants Marilyn Santiago (“Santiago”) and For the Love of
Ramon, LLC (“FTLR”) why their claims and counterclaims should not be dismissed for failure
to prosecute them. (Docket # 80). The Order set a deadline of September 16, 2019 for the
parties to file sworn affidavits demonstrating why dismissal was not appropriate. (Id.). No
affidavits have been filed.
Pursuant to 28 U.S.C. § 636(c), the parties have consented to the disposition of
this case by a United States magistrate judge.1 (Docket # 71). For the reasons explained herein,
plaintiff’s claims against defendants Santiago and FTLR, and defendant Santiago’s
counterclaims against plaintiff are dismissed.

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The consent was entered on August 21, 2018. (Docket # 71). Prior to that time, dispositive motions were
decided by Chief United States District Judge Frank P. Geraci, Jr., the district judge to whom the case had been
assigned.

PROCEDURAL HISTORY
Argento commenced this action against defendants Santiago, FTLR, and All That
Jazz Rochester, LLC, in March 2016. (Docket # 1). His amended complaint asserted claims for,
inter alia, copyright infringement, trademark infringement, unfair competition, and breach of
contract. (Docket # 7). Defendants Santiago and FTLR answered the complaint; in the answer,
Santiago asserted various counterclaims against Argento. (Docket # 10). Defendant All That
Jazz Rochester, LLC (“All That Jazz”) also answered. (Docket # 15).
Mediation was conducted several months after the initial Rule 16 scheduling
conference, and a few months thereafter counsel for Argento withdrew from representation.2
(Docket ## 22, 34, 39). Argento has represented himself since that time.
On February 15, 2018, the district court granted the summary judgment motion
filed by defendant All That Jazz and dismissed Argento’s claims. (Docket ## 44, 48). With
respect to Argento’s claimed common law trademark, the court found that he “has no right to
claim a trademark in the words ‘Estate of Ramon Santiago’” and that his “trademark rights in the
seal are illusory, as is his claim that [d]efendant violated his rights by selling art that it purchased
from the estate’s only authorized representative, Marilyn Santiago.” (Docket # 44 at 10). With
respect to the copyright design, the court found that Argento “included inaccurate information
concerning the authorship of the [design] on his copyright application with the knowledge that it
was inaccurate” and held that his registration is “invalid and thus unable to support a copyright
infringement suit.” (Docket # 48 at 3). The district court also granted summary judgment to

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The mediator’s certificate filed with the Court reflected that the claims and counterclaims between
Argento and Santiago had settled. (Docket # 34). No agreement was apparently ever signed, no stipulation of
dismissal was ever filed, and plaintiff and defendants later indicated that they were unable to reach agreement on
“final terms.” (Docket # 35).

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defendant All That Jazz on Argento’s claim under New York Arts and Cultural Affairs Law
Section 33.09. (Docket # 44 at 8-10).
The next day, counsel for defendants Santiago and FTLR moved to withdraw
from representation of those defendants. (Docket # 49). The motion to withdraw was granted,
and defendants were afforded thirty days to retain new counsel. (Docket # 57). The parties were
advised at oral argument that a corporation is not permitted to proceed pro se and that FTLR had
to secure new counsel within that time frame. (Docket ## 56, 57). No notice of appearance on
behalf of either Santiago or FTLR was filed by the court-ordered deadline. They remain
unrepresented.
This Court scheduled a further status conference for May 22, 2018. (Docket
# 56). Argento appeared for the scheduled conference, but neither Santiago nor counsel
appeared. (Docket # 59). Chambers staff attempted to reach Santiago by telephone and was
advised that she had recently undergone surgery. (Id.). The status conference was rescheduled
for June 28, 2018. (Docket # 60). In the rescheduling Order, the Court again noted that a
corporation could not represent itself, and that no attorney had appeared on behalf of FTLR.
(Id.).
Santiago appeared for the June 28, 2018 status conference, at which the Court
addressed the status of discovery. (Docket ## 61, 63). Counsel did not appear on behalf of the
corporation. (Id.). That same date, Argento filed a motion for default judgment against FTLR
on the grounds that it had “failed to retain counsel or otherwise defend within the time allowed.”
(Docket # 63 at ¶ 6). Despite the issuance of a motion scheduling order (Docket # 68), no
opposition or response was filed by the corporation.

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On February 27, 2019, this Court denied Argento’s motion for default judgment
against defendant FTLR. (Docket # 74). The Court noted that the district court’s earlier
determination that
Argento’s common law trademark and copyright registration are
invalid appears to preclude his claims against [FTLR] and
foreclose his entitlement to judgment as a matter of law, even
assuming that the corporation has forfeited its right to defend this
action by failing to retain counsel.
(Id. at 6). Although the Court denied Argento’s motion, it did so without prejudice to Argento’s
right to file a new motion “address[ing] the invalidity determinations and their effects on
Argento’s claims.” (Id. at 7). Argento did not file any new motion for default judgment against
the corporate defendant.
Cognizant that neither side appeared to be pursuing discovery, filing motions, or
otherwise prosecuting his or her claims or counterclaims, this Court scheduled a status
conference for April 25, 2019. On April 25, 2019, Argento appeared. (Docket # 76). Santiago
did not appear or contact the Court in advance of the scheduled conference to request an
adjournment. The Court attempted to reach Santiago by telephone at the time scheduled for the
appearance, but was unable to reach her. The Court rescheduled the status conference for May 7,
2019. (Docket # 75). Both Argento and Santiago appeared by phone for that conference.
(Docket # 78).
As the Court noted in its Order dated April 25, 2019, the purpose of the May 7,
2019 conference was “to determine whether this Court should schedule a further mediation in
this case and, if so, whether either or both of the pro se parties wish to request appointment of
pro bono counsel for the limited purpose of having the assistance of counsel during mediation.”
(Docket # 75). In response to this Court’s inquiry on these issues, Argento indicated that he

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would be interested in a further mediation with the assistance of pro bono counsel. Santiago,
however, indicated that she neither wished to mediate this case, nor have this Court appoint her
pro bono counsel. She also represented clearly that she did not intend to defend against the
claims asserted by Argento in the amended complaint or pursue her counterclaims against
Argento. In response to these representations, this Court advised Santiago of the consequences
of both failing to defend against Argento’s claims and failing to prosecute her own
counterclaims. Despite these warnings, Santiago did not change her position, and the Court set a
deadline of June 10, 2019, for Argento to file a motion for default judgment on any of the claims
asserted against Santiago in the amended complaint. (Docket # 77).
In the written order reflecting that deadline, Argento was reminded:
“[B]efore a district court enters a default judgment, it must
determine whether the allegations in a complaint establish the
defendant’s liability as a matter of law.” Taizhou Zhongneng Imp.
& Exp. Co., Ltd. v. Koutsobinas, 509 F. App’x 54, 56 (2d Cir.
2013). Therefore, “in order to warrant a finding of liability, the
[p]laintiff[] must demonstrate that the allegations set forth in the
[c]omplaint state valid claims.” Airbinder v. Money Ctr. Fin. Grp.,
Inc., 2013 WL 1335997, *7 (E.D.N.Y.), report and
recommendation adopted by, 2013 WL 1335893 (E.D.N.Y. 2013).
Moreover, “while a party’s default is deemed to constitute
concession of all well-pleaded allegations of liability, it is not
considered an admission of damages . . . [and] [a] [p]laintiff[] must
still establish that [he] [is] entitled to the damages [he] seek[s],
providing adequate support for the same.” Id. at *12 (citations
omitted).
(Id. at 2-3). Argento was directed to address the standards set forth above with regard to both
liability and damages in any motion for default judgment that he filed. (Id. at 4). Moreover, the
Court noted in its Order that the same claims pled in the amended complaint against FTLR – as
to which the Court denied summary judgment in Argento’s favor because they appeared
foreclosed by the district court’s earlier determination – are also pled against Santiago (see

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Docket # 7 at ¶¶ 117-79). (Id. at 3). Accordingly, Argento was also directed to address whether
his claims against Santiago were precluded by the district court’s findings that Argento’s claimed
rights in the intellectual property on which he based his claims against All That Jazz were
illusory, invalid or non-existent. (Id. at 3-4).
The Court received a letter from Argento dated June 11, 2019 (the day following
the court-ordered deadline) requesting a two-week extension to file a motion for default
judgment. (Docket # 79). The Court granted the request and extended the deadline until June
24, 2019. (Id.). No motion for default judgment was filed by the deadline.

THE ORDER TO SHOW CAUSE
On August 5, 2019, this Court issued the pending Order to Show Cause to
plaintiff and defendants Santiago and FTLR. (Docket # 80). The Order advised them that the
Court was considering whether (1) plaintiff’s claims against defendants Santiago and FTLR
should be dismissed for failure to prosecute them – specifically, by failing to take any action for
over twelve months to prosecute his claims, including by failing to pursue party or non-party
discovery or to file motions for default judgments against defendants Santiago and FTLR that
addressed the issues identified in this Court’s Orders (Docket ## 74, 77); and (2) defendant
Santiago’s counterclaims against Argento should be dismissed for failing to prosecute them –
specifically, by failing to take any action for over twelve months to prosecute the counterclaims,
including by failing to pursue any discovery relating to the counterclaims and by representing at
the May 7, 2019 telephone conference with the Court her intention to abandon her counterclaims.
(Id. at 2). Pursuant to Rule 41(b) of the Local Rules of Civil Procedure for the United States
District Court for the Western District of New York, (1) Argento was directed to file a sworn

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affidavit by September 16, 2019, demonstrating why his claims against defendants Santiago and
FTLR are not foreclosed by the district court’s prior invalidity determinations and why his
claims should not be dismissed notwithstanding his lack of prosecutive action for over twelve
months; and (2) Santiago was directed to serve and file a sworn affidavit by September 16, 2019,
demonstrating why her counterclaims against plaintiff Argento should not be dismissed
notwithstanding her lack of prosecutive action for over twelve months and her prior
representation that she does not intend to pursue the counterclaims. (Id. at 3). Both were
explicitly cautioned that “failure to show cause as directed . . . shall be construed by the Court as
absence of opposition to dismissal of plaintiff’s claims and/or defendant’s counterclaims and will
result in an order dismissing the claims and/or counterclaims.” (Id.).
The record in this case justifies the exercise of the Court’s discretion in a
concededly unusual manner: to dismiss the plaintiff’s claims in his amended complaint against
the two remaining defendants, and concurrently to dismiss defendant Santiago’s counterclaims
against the plaintiff. The parties have been repeatedly warned about the consequences of failing
to take action to prosecute their claims. Despite those warnings, no meaningful action has been
taken either by plaintiff or defendants in over twelve months, including any steps to pursue
discovery on their claims. At the May 7, 2019 telephone conference, defendant Santiago was
crystal clear in her articulation of her intent to abandon her counterclaims – an intent
underscored by her failure to respond to the Court’s August 15 Order to Show Cause. This Court
has explained to plaintiff in several written decisions and orders that the Court’s authority to
grant judgment to plaintiff despite defendants’ inaction is constrained by the district court’s
previous rulings that his claimed intellectual property rights are invalid or non-existent. (See
Docket ## 44, 48). Plaintiff has been given ample time and multiple opportunities to attempt to

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show why his claims against defendants Santiago and FTLR are not foreclosed by those rulings.
He has not done so. Although he requested and was granted one extension of time to file a
motion making such a showing, he did not file any papers by the extended deadline. The
reasonable construction of plaintiff’s failure to file such a motion is that he does not intend to
attempt to make the required showing – an intent also underscored by his failure to respond to
the Court’s Order to Show Cause.
In sum, considering Santiago’s (1) expressed intent to abandon her counterclaims,
(2) her failure to have taken any action to pursue her claims in over one year, (3) the Court’s
warning to her that the consequences of that inaction would be dismissal of her counterclaims,
and (4) her failure to respond to the Court’s Order to Show Cause, her counterclaims against
Argento are hereby dismissed with prejudice pursuant to Fed. R. Civ. P. 41(b). Further,
considering Argento’s failure for over one year to pursue discovery or file a motion for default
judgment addressing the legal issues identified by the Court, (2) the Court’s warning to him that
the consequences of that inaction would be dismissal of his claims, and (3) his failure to respond
to the Court’s Order to Show Cause, his claims against defendants Santiago and FTLR are
hereby dismissed with prejudice pursuant to Fed. R. Civ. P. 41(b). See Collins v. Clinton, 2019
WL 1965037, *2 (W.D.N.Y.) (noting that although discretionary dismissal is “a harsh remedy to
be utilized only in extreme situations,”Minnette v. Time Warner, 997 F.2d 1023, 1027 (2d Cir.
1993) (internal quotations omitted), “courts frequently have found dismissal of [claims] justified
when the [party] fails to take any specific or concrete actions over a substantial length of time”)
(collecting cases), report and recommendation adopted by, 2019 WL 1959483 (W.D.N.Y. 2019);
Estate of Ellington ex.rel. Ellington v. Harbrew Imports Ltd., 812 F. Supp. 2d 186, 197-98
(E.D.N.Y. 2011) (dismissing counterclaims with prejudice under Rule 41(b) where corporate

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defendants stopped prosecuting them and failed to retain counsel). See also Link v. Wabash R.R.
Co., 370 U.S. 626, 630-31 (1962) (“[t]he authority of a court to dismiss sua sponte for lack of
prosecution has generally been considered an ‘inherent power,’ governed not by rule or statute
but by the control necessary vested in courts to manage their own affairs so as to achieve the
orderly and expeditious disposition of cases”).

CONCLUSION
For the reasons stated above, the claims asserted by plaintiff Argento against
defendants Santiago and For the Love of Ramon, LLC, are dismissed with prejudice pursuant to
Fed. R. Civ. P. 41(b). Further, the counterclaims asserted by defendant Santiago against plaintiff
Argento are dismissed with prejudice pursuant to Fed. R. Civ. P. 41(b).
The Clerk of the Court is directed to close the case.
IT IS SO ORDERED.

s/Marian W. Payson
MARIAN W. PAYSON
United States Magistrate Judge
Dated: Rochester, New York
September 19, 2019

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