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992 F. Supp. 2d 1225
S.D. Fla.
2014
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Background

  • 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)
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Case Details

Case Name: Blanco GmbH + Co. Kg v. Vlanco Industries, LLC
Court Name: District Court, S.D. Florida
Date Published: Jan 21, 2014
Citations: 992 F. Supp. 2d 1225; 2014 U.S. Dist. LEXIS 7192; 2014 WL 222332; Case No. 12-61580-CIV
Docket Number: Case No. 12-61580-CIV
Court Abbreviation: S.D. Fla.
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