Restivo v. Pennachio

REPORT AND RECOMMENDATION ON AMENDED EX-PARTE APPLICATION FOR ENTRY OF TEMPORARY RESTRAINING ORDER AND PRELIMINARY INJUNCTION^[1]

JACQUELINE BECERRA, United States Magistrate Judge.

THIS CAUSE came before the Court on Plaintiff Joseph Restivo's (“Plaintiff”) Amended Ex-Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction (the “Motion”). ECF No. [26]. Defendant Charles Pennachio filed an Opposition to the Motion (the “Opposition”). ECF Nos. [28], [39]. Plaintiff filed a Reply. ECF No. [40]. Defendant Restored' Dreams, LLC did not file a response and the time to do so has passed. On November 2, 2021, the undersigned held an evidentiary hearing on this matter. ECF No. [41]. Counsel for Plaintiff Restivo, Defendant Pennachio, and Defendant Restored' Dreams appeared for the hearing.^[2] Upon due consideration, it is hereby RECOMMENDED that Plaintiff's Motion be DENIED.

2

I. BACKGROUND

This matter is the latest round in a long-standing dispute between two former bandmates about the use of the mark LINEAR, the name of the band that each have been associated with for decades. Plaintiff Restivo is a “singer, songwriter, musician, and performer.” ECF No. [16] ¶ 11. In the late eighties and early nineties, Plaintiff Restivo performed with Defendant Pennachio and Non-Party Wyatt Pauley in the band named “LINEAR.” Id. After a few years, the group disbanded. Id. ¶ 12. Plaintiff Restivo claims that he has continued to perform under the name LINEAR. Id. ¶¶ 12, 14. In 2012, Plaintiff Restivo applied for and received a federal trademark registration for the mark LINEAR and was assigned Registration No. 4, 291, 291. Id. ¶ 13.

On February 27, 2013, Defendant Pennachio filed a petition for cancellation with the Trademark Trial and Appeal Board (the “TTAB”). ECF No. [16-3]. Therein, Defendant Pennachio sought to cancel Plaintiff Restivo's LINEAR trademark registration. Id. at 1. Defendant Pennachio argued that he had prior use of the mark and that “due to this extensive use of the name ‘LINEAR' during the last 24 years, [he] has acquired the common law rights to mark ....” Id. at 2. Specifically, Defendant Pennachio argued that as the lead singer, songwriter, and founding member of the group, he continuously recorded, toured, and performed under the name LINEAR since its inception in 1989. Id. at 12. Thus, Defendant Pennachio claimed that he was the true common law owner of the name and rightful owner of the mark. Id. ¶ 42. In 2017, upon a motion to dismiss filed by Plaintiff Restivo, the TTAB dismissed Defendant Pennachio's petition for cancellation. Id. at 17-20. The TTAB concluded that because Defendant Pennachio failed to prosecute the case by not submitting any testimony or evidence, dismissal with prejudice

3

was appropriate. Id. at 17-18, 20.

Plaintiff Restivo states that in July 2021, he learned that Defendants were promoting an “I Love the 80's” concert featuring “LINEAR, ” which is currently scheduled for November 20, 2021 at the Miramar Regional Park Amphitheater. ECF No. [16] ¶¶ 21-23. Plaintiff Restivo alleges that he did not give any authorization or prior consent to Defendants to use the LINEAR mark, nor agreed to perform at the event. Id. ¶ 24. Thus, on July 7, 2021, Plaintiff Restivo sent a demand letter to the promoter of the event, the ticket manager, and the amphitheater's point of contact explaining the alleged infringement. Id. ¶ 25. In addition, on August 13, 2021, Plaintiff sent a cease-and-desist letter to Defendant Pennachio. Id. ¶ 25. Plaintiff states that he did not receive a response to any of the letters. Id. ¶ 26. Instead, the event was continuously promoted using the LINEAR mark. Id. ¶ 27. For example, BoxOfficeHero.com, a ticket seller (that appears not to be related to the parties), continues to promote “LINEAR 2021 tour dates, ” referencing the subject concert. Id. ¶ 30.

On September 21, 2021, Plaintiff Restivo initiated the instant suit, ECF No. [1], on September 24, 2021, he filed an Amended Complaint, ECF No. [6], and on October 15, 2021, he filed a Second Amended Complaint, ECF No. [16]. The Second Amended Complaint asserts (1) one count for trademark infringement under 15 U.S.C. § 1114 (Count I); (2) one count for common law trademark infringement (Count II); (3) one count for false designation of origin under 15 U.S.C. § 1125(a) (Count III); and (4) one count for violation of Florida's Deceptive and Unfair Trade Practices Act (Count IV). See ECF No. [16].

On September 24, 2021, Plaintiff Restivo filed a Motion for Preliminary Injunction. ECF No. [7]. That Motion was referred to the undersigned, and as a result, the Court entered a briefing schedule requiring Defendants to file a response to the Motion for Preliminary Injunction within

4

seven days of service and permitting Plaintiff Restivo to file a reply within three days. ECF No. [9]. On October 15, 2021, Plaintiff Restivo filed an Ex-Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction. ECF No. [17]. The Motion for Preliminary Injunction, ECF No. [7], and the Ex-Parte Application, ECF No. [17], are substantively identical except for Plaintiff Restivo's request for a temporary restraining order in the latter motion. Following a status conference before the undersigned, Plaintiff Restivo was permitted to amend its Ex-Parte Application to add the required certification under Federal Rule of Civil Procedure 65(b)(1)(b). ECF No. [25]. On October 21, 2021, Plaintiff Restivo filed the instant Amended Ex-Parte Application. ECF No. [26]. Again, the substantive arguments made in the Motion for Preliminary Injunction, ECF No. [7], the Ex-Parte Application, ECF No. [17], and the Amended Ex-Parte Application, ECF No. [26], are identical.

Defendant Restored' Dreams has been served but has chosen to not file any response and to not take any position on the issues presented. ECF No. [12]. Plaintiff Restivo states that he has been unable to serve Defendant Pennachio given his tour schedule. ECF No. [26] at 13. However, an attorney has made an appearance on Defendant Pennachio's behalf for the purpose of the temporary restraining order and preliminary injunction. ECF No. [34]. In addition, Defendant Pennachio and his counsel appeared for the evidentiary hearing on the instant Motion. ECF No. [41].

II. LEGAL STANDARD

Plaintiff Restivo now seeks a “temporary restraining order, and upon expiration of the temporary restraining order, a preliminary injunction” to preclude Defendants from using the LINEAR trademark. ECF No. [26] at 1. The standard for issuing a temporary restraining order is the same as the standard for issuing a preliminary injunction pursuant to Federal Rule of Civil

5

Procedure 65. See Enrique v. Dep't of Children & Family Services, No. 08-21441-CIV, 2008 WL 4809234, at *2 (S.D. Fla. Nov. 4, 2008). To prevail on a request for a preliminary injunction, a movant must demonstrate the following four elements:

(1) a substantial likelihood of success on the merits of the underlying case, (2) the movant will suffer irreparable harm in the absence of an injunction, (3) the harm suffered by the movant in the absence of an injunction would exceed the harm suffered by the opposing party if the injunction issued, and (4) an injunction would not disserve the public interest

Johnson & Johnson Vision Care. Inc. v. 1-800 Contacts, Inc., 299 F.3d 1242, 1246-47 (11th Cir. 2002) (citation omitted). A preliminary injunction is an extraordinary and drastic remedy which should not be granted unless the movant can clearly establish each of the four elements. Wreal, LLC v. Amazon.com, Inc., 840 F.3d 1244, 1247 (11th Cir. 2016) (citing Siegel v. LePore, 234 F.3d 1163, 1176 (11th Cir. 2000)). The failure to establish an element will warrant denial of the request for preliminary injunctive relief and obviate the need to consider the remaining prerequisites. Dawson v. Ameritox, Ltd., 571 Fed.Appx. 875, 880 (11th Cir. 2014). Indeed, “a preliminary injunction is a powerful exercise of judicial authority in advance of trial. The chief function of a preliminary injunction is to preserve the status quo until the merits of the controversy can be fully and fairly adjudicated.” Northeastern Fla. Chapter of the Ass'n of Gen. Contractors v. City of Jacksonville, 896 F.2d 1283, 1284 (11th Cir. 1990). Thus, “a preliminary injunction ‘is not the same as an adjudication on the merits,' but is merely a device created to preserve the rights of the parties until a determination can be made on the merits.” Tipsey McStumbles, LLC, v. Griffin, No. CV 111-053, 2011 WL 13217129, *1 n.1 (S.D. Ga. Aug. 2, 2011) (quoting Augusta Video, Inc. v. Augusta-Richmond Cnty., Ga., 249 Fed.Appx. 93, 98 n.4 (11th Cir. 2007)).

In considering a motion for preliminary injunctive relief, “a district court may rely on affidavits and hearsay materials which would not be admissible evidence for a permanent

6

injunction, if the evidence is ‘appropriate given the character and objectives of the injunctive proceeding.'” Levi Strauss & Co. v. Sunrise Int'l Trading Inc., 51 F.3d 982, 985 (11th Cir. 1995) (citing Asseo v. Pan Am. Grain Co., 805 F.2d 23, 26 (1st Cir. 1986)). When considering a motion for preliminary injunction, a district court may assess the relative strength and persuasiveness of the evidence presented by the parties, and is not required to resolve factual disputes in favor of the non-moving party. See Imaging Business Machines, LLC. v. BancTec, Inc., 459 F.3d 1186, 1192 (11th Cir. 2006).

III. THE INSTANT MOTION, OPPOSITION, AND REPLY

Plaintiff Restivo seeks the entry of a temporary restraining order and preliminary injunction to preclude Defendants from using...