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finding no threat of imminent harm necessitating the issuance of a TRO where counsel for the parties had been in discussions for months, where plaintiffs had sent defendants a cease-and-desist letter, and where plaintiffs had notice of the alleged harm for over a month
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Case No: 8:19-cv-595-T-36AEP
2019-03-13
RUMFISH Y VINO CORPORATION and JPL Partners #1 LP, Plaintiffs, v. FORTUNE HOTELS, INC., Ria-Sandpiper, Inc., Resort Inns of America, Inc., TradeWinds Island Resort and Does 1-10, Defendants.
Jacob Lawrence Boehner, Murray B. Silverstein, Greenspoon Marder, PA, Tampa, FL, Michael DiNardo, Pro Hac Vice, Kelly & Kelley LLP, Woodland Hills, CA, for Plaintiffs. Joshua D. Martin, Johnson & Martin, PA, Ft. Lauderdale, FL, for Defendants.
Jacob Lawrence Boehner, Murray B. Silverstein, Greenspoon Marder, PA, Tampa, FL, Michael DiNardo, Pro Hac Vice, Kelly & Kelley LLP, Woodland Hills, CA, for Plaintiffs.
Joshua D. Martin, Johnson & Martin, PA, Ft. Lauderdale, FL, for Defendants.
ORDER
Charlene Edwards Honeywell, United States District Judge This matter comes before the Court upon Plaintiffs' Motion for Temporary Restraining Order (Doc. 2). In the Motion, Plaintiffs, owners of restaurants titled "RUMFISH y vino," contend that they will be irreparably harmed unless Defendants are enjoined from rebranding their resort property as the "RUMFISH BEACH RESORT" and using certain other similar names and phrases as part of their rebranding. The Court, having considered the Motion and being fully advised in the premises, will deny the Motion.
The Background is based on the facts as alleged in Plaintiffs' Motion, including the attached affidavits and exhibits.
Plaintiff Rumfish Y Vino Corporation ("RYV") owns and operates the "RUMFISH y vino" restaurant in Palencia, Belize, which has been in operation since November 2008. Doc. 2-1 at p. 6. Plaintiff JPL Partners #1 LP ("JPL1") owns and operates the "RUMFISH y vino" restaurant in Ventura, California, which has been in operation since November 2016. Doc 2-1 at p. 6. RYV and JPL1 (collectively, "Plaintiffs") are both owned by John Solomon and Pamela Solomon (the "Solomons"). Doc. 2-1 at p. 6; Solomon Decl. at ¶ 3.
In June 2008, the Solomons registered the domain name RumfishYVino.com. Doc. 2-1 at p. 6; Solomon Decl. at ¶ 5. RYV has operated the website www.rumfishyvino.com since October 2009. Doc. 2-1 at p. 7; Solomon Decl. at ¶ 9. Since November 2008, RYV has continuously and extensively used the name "RUMFISH y vino" and various "RUMFISH-related" marks in Belize to identify the source of its restaurant and bar services and to distinguish itself in the marketplace. Doc. 2-1 at p. 6. RYV owns trademark registrations for "RUMFISH" and "RUMFISH y vino" in Belize. Doc. 2-1 at p. 6.
In early 2013, the Solomons began to consider expanding their business into the United States. Doc. 2-1 at p. 7; Solomon Decl. at ¶ 10. On October 7, 2013, RYV filed U.S. Trademark Application Serial No. 86/084,571 for "RUMFISH y vino" for use with bar and restaurant services. Doc. 2-1 at p. 7. The "RUMFISH y vino" mark was registered on January 17, 2017 as U.S. Trademark Registration No. 5,124,613. Doc. 2-1 at p. 7; Solomon Decl. at ¶ 28; Exh. A.
In the fall of 2013, the Solomons met Hugh Darley ("Darley"), who expressed interest in RYV's brand and proposed a relationship to help spread "RUMFISH y vino" throughout the Caribbean. Doc. 2-1 at p. 7. Darley worked with a design and development group, called Idea, Inc., which had a partnership with Norwegian Cruise Lines ("NCL").
In the spring of 2014, RYV learned that one or more of Defendants, Fortune Hotels, Inc. ("Fortune"), Ria-Sandpiper, Inc. ("Sandpiper"), Resort Inns of America, Inc. ("Tradewinds"), and Does 1-10 ("Does") (collectively, "Defendants"), and non-party Guy Harvey, an executive of Tradewinds, planned to open a restaurant called "Guy Harvey's Rumfish" in May 2014. Doc. 2-1 at p. 7. It was then that Plaintiffs "learned of Mr. Darley's partnership with NCL, from which Plaintiff's [sic] presumed a connection to NCL's partnership with Guy Harvey and the Defendants." Doc. 2-1 at p. 8; Solomon Decl. at ¶¶ 13-14. Plaintiffs suspect that Darley suggested the RUMFISH name to Guy Harvey and Defendants following Darley's visits to "RUMFISH y vino" and conversations with the Solomons. Doc. 2-1 at p. 8; Solomon Decl. at ¶ 15.
On April 11, 2014, the Solomons filed U.S. Trademark Application Serial No. 86/249,678 for "RUMFISH" for use with bar services and restaurant services based on a bona fide intent to use the mark in United States commerce. Doc. 2-1 at p. 8. That application was a continuation of the Solomons' intention and drive to expand their business into the United States. Doc. 2-1 at p. 8; Solomon Decl. at ¶ 16; Exh. O.
On or about May 1, 2014, Defendants, or persons associated with them, filed U.S. Trademark Application Serial No. 86/269,370 for "RUMFISH GRILL" for use with clothing and restaurant and bar services. Doc. 2-1 at p. 8. That application was registered on October 13, 2015 as U.S. Trademark Registration No. 4,832,829. Doc. 2-1 at p. 8; Solomon Decl. at ¶¶ 17-18; Exhs. B, P. On or about May 9, 2014, Defendants, or persons associated with them, filed a trademark application for "GUY HARVEY RUMFISH." Doc. 2-1 at p. 8. However, the "GUY HARVEY RUMFISH" application was eventually abandoned. Doc. 2-1 at p. 8; Solomon Decl. at ¶ 19; Exh. Q. On or about January 16, 2015, Defendants, or persons associated with them, filed U.S. Trademark Application Serial No. 86/505,726 for a "RUMFISH GRILL" logo for use with clothing and restaurant and bar services. Doc. 2-1 at p. 10; Solomon Decl. at ¶ 25; Exh. R.
In May 2014, Plaintiffs and Defendants entered into negotiations concerning their respective rights to use and register their respective marks incorporating the term "RUMFISH." Doc. 2-1 at p. 9. Ultimately, the parties reached an agreement and executed a binding consent and settlement agreement with an effective date of May 23, 2014. Doc. 2-1 at p. 9; Solomon Decl. at ¶ 20; Exh. C.
As part of the settlement agreement, Plaintiffs voluntarily abandoned their previously-filed application, Serial No. 86/249,678 to register the term "RUMFISH" on its own. Doc. 2-1 at p. 9. Plaintiffs also acknowledged Defendants' ownership of and right to use and register the mark "RUMFISH GRILL" in connection with restaurant and bar services and clothing. Doc. 2-1 at p. 9; Solomon Decl. at ¶¶ 21-22; Exh. C.
Defendants paid Plaintiffs an undisclosed sum as consideration for Plaintiffs' obligations. Doc. 2-1 at p. 9; Solomon Decl. at ¶ 22; Exh. C. Defendants acknowledged Plaintiffs' ownership of and right to use and register the mark "RUMFISH Y VINO" in connection with restaurant and bar services. Doc. 2-1 at p. 9; Solomon Decl. at ¶ 22; Exh. C. Pursuant to the settlement agreement, neither party would use an adversarial party's full trademarks or the term "RUMFISH" on its own in connection with restaurant services or bar services in the United States. Doc. 2-1 at p. 9; Solomon Decl. at ¶ 23; Exh. C. Defendants further agreed that "any and all uses of the term ‘Rumfish’ [by Defendants] must be used in connection with and immediately followed by the term ‘Grill.’ " Doc. 2-1 at p. 9; Solomon Decl. at ¶ 23; Exh. C.
In March 2016, Plaintiffs learned that Defendants had announced the opening of "Guy Harvey's Rumfish Grill" at Tampa International Airport. Doc. 2-1 at p. 10. An announcement included an artist's rendering of the signage which read, "Guy Harvey's Rumfish." Doc. 2-1 at p. 10. Plaintiffs, concerned about Defendants' potential violation of the parties' settlement agreement, sent a notice to Defendants that they had used "RUMFISH" in a manner inconsistent with the settlement agreement. Doc. 2-1 at p. 10. Defendants admitted that the artist's rendering was in error and acknowledged that the name would be displayed as "RUMFISH GRILL" consistent with the parties' settlement agreement. Doc. 2-1 at p. 10; Solomon Decl. at ¶ 26; Exhs. G-H.
Plaintiffs began using their "RUMFISH y vino" mark in the United States as early as November 2016, about two and a half years after the effective date of the settlement agreement. Doc. 2-1 at p. 10. Plaintiffs opened "RUMFISH y vino" in Ventura, California in November 2016 and have continuously operated the restaurant and bar since. Doc. 2-1 at p. 10; Solomon Decl. at ¶ 27.
Counsel for Defendants contacted counsel for Plaintiffs on or about September 2018 to discuss a proposed addendum to the settlement agreement such that Defendants would be permitted to use the terms "RUMFISH," "RUMFISH BEACH RESORT," and "RUMFISH CHARTERS" for clothing, towels, hotel services, resort services, reservation and lodging services, and fishing services. Doc. 2-1 at p. 11. During their discussions, the parties realized that Plaintiffs and Defendants had both used the term "RUMFISH" within their businesses and social media in a manner not entirely consistent with the settlement agreement. Doc. 2-1 at p. 12; DiNardo Decl. at ¶ 4. However, Plaintiffs believe that both parties corrected these minor violations. Doc. 2-1 at p. 12; DiNardo Decl. at ¶ 4.
The parties were unable to reach an agreement on the addendum and Plaintiffs understood that Defendants would go in a different direction for their branding. Doc. 2-1 at p. 11; Solomon Decl. at ¶¶ 29-30. However, Plaintiffs became aware of additional trademark applications filed by Defendants. Doc. 2-1 at p. 11. On or about August 6, 2018, Defendants, or persons associated with Defendants, filed: (1) U.S. Trademark Application Serial No. 88/066,454 for "RUMFISH" for use with clothing, towels, hotel and resort services, online reservations and bookings, and fishing services; (2) U.S. Trademark Application Serial No. 88/066,480 for "RUMFISH BEACH RESORT" for use with clothing, towels, hotel and resort services, and online reservations and bookings; and (3) U.S. Trademark Application Serial No. 88/066,500 for "RUMFISH CHARTERS" for use with clothing, towels, and fishing services. Doc. 2-1 at p. 11; Solomon Decl. at ¶ 31; Exhs. T-V.
On or about February 14, 2019, Plaintiffs became aware of news articles and press releases regarding Defendants' intention to rebrand its resort property. Doc. 2-1 at p. 12. The articles and press releases announced that Defendants' licensing agreement with Guy Harvey was ending, and that Defendants intended to rebrand as "RUMFISH BEACH RESORT." Doc. 2-1 at p. 12. In addition, Defendants intended to use the terms "RUMFISH BEACH LIFE" and the "RUMFISH BRAND." Doc. 2-1 at p. 12. Plaintiffs allege that Defendants' actions and potential actions are violations of the settlement agreement. Doc. 2-1 at p. 12; Solomon Decl. at ¶ 33; Exh. I.
Plaintiffs filed their complaint (Doc. 1) on March 8, 2019 setting forth claims against Defendants for actual and anticipatory breach of contract, trademark infringement, false designation of origin and false representation of trademarks under the Lanham Act, declaratory judgment, and cancellation of trademarks under the Lanham Act. The same day, Plaintiffs filed a Motion for Temporary Restraining Order and Motion for Preliminary Injunction. The Motion for Temporary Restraining Order requests that the Court enjoin Defendants from (1) rebranding the resort property as the "RUMFISH BEACH RESORT"; (2) using "RUMFISH," "RUMFISH BEACH RESORT," "RUMFISH CHARTERS," or any name or phrase including "RUMFISH" other than "RUMFISH GRILL"; and (3) using any of the aforementioned marks in connection with the establishment and/or operation of a restaurant, bar, hotel, fishing charter service, or similar hospitality service provider. Doc. 2 at pp. 1-2.
The Court will refer Plaintiffs' Motion for Preliminary Injunction to the Magistrate Judge.
II. LEGAL STANDARD
Federal Rule of Civil Procedure 65(b)(1) authorizes the court to issue a temporary restraining order where "specific facts in an affidavit or a verified complaint clearly show that immediate and irreparable injury, loss, or damage will result to the movant before the adverse party can be heard in opposition" and "the movant's attorney certifies in writing any efforts made to give notice and the reasons why it should not be required." However, a temporary restraining order "is an extraordinary remedy to be granted only under exceptional circumstances." Cheng Ke Chen v. Holder , 783 F. Supp. 2d 1183, 1186 (N.D. Ala. 2011) (citing Sampson v. Murray , 415 U.S. 61, 94 S.Ct. 937, 39 L.Ed.2d 166 (1974) ).
To obtain a temporary restraining order, a movant must show: (1) a substantial likelihood of success on the merits; (2) an irreparable injury in the absence of the requested injunction; (3) a threatened injury that exceeds any injury to the non-moving party caused by the injunction; and (4) that public policy favors such an order. Dimare Ruskin, Inc. v. Del Campo Fresh, Inc. , No. 8:10-cv-1332-T-23AEP, 2010 WL 2465158, at *1 (M.D. Fla. June 15, 2010) (citing Four Seasons Hotels & Resorts, B.V. v. Consorcio Barr, S.A. , 320 F.3d 1205, 1210 (11th Cir. 2003) ); see also M.D. Fla. L.R. 4.05(b)(4) (requiring a party requesting a temporary restraining order to submit a brief or memorandum addressing these factors).
In addition, Local Rule 4.05(b)(3), Middle District of Florida, requires that a motion for a temporary restraining order: (1) describe precisely the conduct sought to be enjoined; (2) set forth facts on which the Court can make a reasoned determination as to the amount of security which must be posted pursuant to Rule 65(c) ; (3) be accompanied by a proposed form of temporary restraining order prepared in strict accordance with the several requirements contained in Rule 65(b) and (d); and (4) be accompanied by a supporting legal memorandum or brief. See M.D. Fla. L.R. 4.05(b)(3). Additionally, the Local Rules provide that a motion for temporary restraining order must demonstrate that the movant's anticipated injury "is so imminent that notice and a hearing on the application for preliminary injunction is impractical if not impossible." Id. at 4.05(b)(2).
III. DISCUSSION
The extraordinary remedy of a temporary restraining order is not warranted in this case. Plaintiffs have not shown that immediate and irreparable injury would result before the adverse party can be heard in opposition, or that injury is so imminent that notice and a hearing is impractical if not impossible. Plaintiffs contend that they will be threatened with immediate and irreparable injury in the form of the erosion and confusion of Plaintiffs' trade identity rights when Defendants launch their rebranded resort property on March 13, 2019. Doc. 2 at p. 3; Solomon Decl. at ¶ 35. But Plaintiffs were aware of Defendants' rebranding intentions as early as September 2018, when Plaintiffs learned that Defendants had filed trademark applications for the terms "RUMFISH," "RUMFISH BEACH RESORT," and "RUMFISH CHARTERS." Doc. 2-1 at p. 11. And Plaintiffs were aware one month ago of Defendants' formal announcement in mid-February that they intended to rebrand their resort property as "RUMFISH BEACH RESORT," create a brand of goods under the name "RUMFISH BEACH LIFE," and refer to their business generally as the "RUMFISH BRAND." Doc. 2-1 at pp. 4, 12; Solomon Decl. at ¶ 32; Exh. L. Multiple press releases and news articles at that time discussed the rebranding. Solomon Decl. at ¶ 32; Exh. L. Defendants have further advertised the rebranding in advance of the change: a screenshot of the Tradewinds' website advertises the "RumFish Beach Resort," and another advertisement encourages viewers to "book now" for "New Adventures at the All New RumFish Beach Resort at TradeWinds." Exh. M.
Assuming, without deciding, that Defendants' conduct harms Plaintiffs in the manner they allege, such harm originated—at the latest—one month ago. Given Defendants' ongoing activities and prior advertising, Plaintiffs do not sufficiently explain what additional or different harm will coincide with Defendants' official "launch" date such that the Court should enter an order enjoining Defendants without adequate notice or opportunity to be heard. Plaintiffs' beliefs regarding the immediacy of the injury on a specific future date is misplaced and is insufficient to warrant the issuance of a temporary restraining order without a hearing.
Plaintiffs contend that giving notice to Defendants is impractical and cannot be given. Doc. 2-1 at p. 24. But Plaintiffs' Motion for Temporary Restraining Order and exhibits shows that attorneys for Plaintiffs and Defendants have been in recent and continuous contact regarding potential breaches of the settlement agreement and Defendants' plans to rebrand. Specifically, Plaintiffs note that they sent a cease and desist letter to Defendants and Defendants' counsel on February 15, 2019 and informed Defendants' counsel on March 1, 2019 of Plaintiffs' intention to file the Motion for Temporary Restraining Order and Motion for Preliminary Injunction. Doc. 2 at p. 4; Exhs. I-J. Defendants' counsel responded to Plaintiffs' letters on March 4, 2019. Exh. K (noting "numerous communications over several weeks" between Plaintiffs' and Defendants' counsels). And, Defendants' counsel filed a notice of appearance on March 11, 2019, one business day after Plaintiffs' complaint and motions were filed. Doc. 10. The next day, March 12, 2019, Defendants' counsel filed a motion requesting that the Court strike Plaintiffs' Motion for Temporary Restraining Order or allow Defendants an opportunity to respond (Doc. 11). Clearly, notice to Defendants and the opportunity to attend a hearing is not impractical or impossible. Moreover, the injury of which Plaintiffs complain is not so imminent that notice and a hearing should not be required.
Defendants' motion will be addressed by separate order.
Plaintiffs' Motion for Temporary Restraining Order is also procedurally deficient. Plaintiffs have not included a proposed form of temporary restraining order prepared in accordance with the requirements contained in Local Rule 4.05(b)(3) and Federal Rules of Civil Procedure 65(b) and (d). The Motion also fails to comply with Local Rule 3.01(a), which provides: "In a motion or other application for an order, the movant shall include a concise statement of the precise relief requested, a statement of the basis for the request, and a memorandum of legal authority in support of the request, all of which the movant shall include in a single document not more than twenty-five (25) pages." The Motion itself, which is approximately four pages without the case caption, signature page, and certificate of service, includes no memorandum of legal authority. Doc. 2. Rather, Plaintiffs' memorandum of legal authority is provided in a separate document, attached as an exhibit to the Motion. Doc. 2-1. That document, without the caption, signature page, and certificate of service, is approximately 26 pages. The result is a 30-page motion spanning more than one document in violation of Local Rule 3.01(a).
Plaintiffs did not include a certification of efforts made to give notice to Defendants and the reasons why it should not be required. See Fed. R. Civ. P. 65 (b)(1)(B). It appears, however, that Plaintiffs provided notice of the motion to Defendants.
The Motion for Preliminary Injunction at Doc. 3 references the memorandum of legal authority separately filed at Doc. 2-1 and is similarly in violation of Local Rule 3.01(a).
After careful consideration, the Court finds that the extraordinary remedy of a temporary restraining order is not warranted. Accordingly, it is ORDERED:
1. Plaintiffs' Motion for a Temporary Restraining Order (Doc. 2) is DENIED.
DONE and ORDERED in Tampa, Florida, this 13 day of March 2019.