992 F. Supp. 2d 1225
S.D. Fla.2014Background
- Blanco sued Laera, Vilanco/G-Tech-I for trademark infringement, cyber-squatting, and unfair competition; settlement culminated in a Final Judgment Upon Consent preserving jurisdiction to enforce terms.
- Post-Consent Judgment, Blanco moved for contempt and related relief based on alleged ongoing use of prohibited marks and domain-name designations by defendants and associates.
- Judge Hunt recommended contempt findings and substantial liquidated damages; the court adopted the recommendation, with broad injunctions and domain-name transfers to Blanco.
- Defendants and third parties (Robert Johnson, Joseph Napolitano, Vilanco Industries Inc.) were found to have violated the Consent Judgment through aliases, domain redirects, and illicit trademark/applications.
- Plaintiff sought additional relief including abandonment of Robert Johnson’s pending applications and injunctive relief related to license agreements; court approved$600,000 total liquidated damages and domain-name transfers, while denying some requests as unnecessary under the Consent Judgment.
- Blanco later moved for reconsideration to excuse/redirection obligations and to seek sanctions; the court granted reconsideration, imposed further fees, and clarified ongoing compliance duties.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Consent Judgment was violated | Blanco contends post-Consent Judgment acts violated prohibitions on marks and domain names. | Laera and affiliates argue compliance or lack of ongoing violation; possible ambiguities in prohibitions. | Yes; violations shown; contempt established. |
| Appropriateness of liquidated damages and who is liable | Blanco seeks $150,000 per violation, aggregating over categories. | Laera argues damages should be limited; contends categories overstate liability. | Aggregate $600,000 awarded; joint/several liability found. |
| Whether domain-name transfers and USPTO actions should proceed | Blanco requests transfer of prohibited-domain registrations and USPTO actions to finalize relief. | Laera contests extra-relief beyond the Consent Judgment. | Domain transfers and USPTO actions ordered. |
| Whether further injunctive relief is required given existing Consent Judgment | Plaintiff seeks additional injunctions for ongoing violations. | Defendants contend no further injunctions needed because already enjoined. | Injunctive relief unnecessary; contempt and damages suffice. |
| Whether reconsideration and sanctions for bad-faith conduct are warranted | Blanco seeks sanctions and relief for Nazi-symbol redirects and bad-faith conduct. | Laera disputes base for sanctions; argues compliance. | Reconsideration granted; sanctions awarded; additional attorney’s fees to follow. |
Key Cases Cited
- Alabama v. U.S. Army Corps of Engineers, 424 F.3d 1117 (11th Cir. 2005) (irreparable harm concept for preliminary injunctions)
- United Bonding Ins. Co. v. Stein, 410 F.2d 483 (3d Cir. 1969) (injunctions and irreparable harm framework)
- Commodity Futures Trading Com’n v. Wellington Precious Metals, Inc., 950 F.2d 1525 (11th Cir. 1992) (clear and convincing standard in contempt; burden shifting)
- Howard Johnson Co. v. Khimani, 892 F.2d 1512 (11th Cir. 1990) (clear and convincing proof for civil contempt)
- Jove Eng’g, Inc. v. IRS, 92 F.3d 1539 (11th Cir. 1996) (standards for contempt proof and burden shifting)
- Chanel, Inc. v. Krispin, 2010 WL 4822737 (S.D. Fla. 2010) (concerted-action doctrine in contempt of injunctions)
- Country Inns & Suites by Carlson, Inc. v. Interstate Props., LLC, 329 Fed.Appx. 220 (11th Cir. 2009) (enforceability of liquidated damages and reasonableness)
- Lefemine v. Baron, 573 So.2d 326 (Fla. 1991) (Florida standard on liquidated damages reasonableness)
- Aronowitz v. HealthChem Corp., 513 F.3d 1229 (11th Cir. 2008) (liquidated damages in trademark contexts; reasonableness)
- Regal Knitwear Co. v. NLRB, 324 U.S. 9 (U.S. 1945) (injunction and contempt principles in broad enforcement)
- United States v. Jefferson Cnty., 720 F.2d 1511 (11th Cir. 1983) (injunction standards and relief considerations)
