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Menudo International, LLC v. In Miami Production LLC

United States District Court, S.D. Florida

October 31, 2017

MENUDO INTERNATIONAL, LLC a Florida LLC, Plaintiff,
v.
IN MIAMI PRODUCTION, LLC a Florida LLC, MARIA CRISTINA BRAUN, an individual, CHARLES MASSO, an individual, Defendants.

          ORDER ON PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION

          EDWIN G. TORRES UNITED STATES MAGISTRATE JUDGE.

         This matter is before the Court on Menudo International, LLC's (“Plaintiff”) motion for a preliminary injunction [D.E. 16] against In Miami Production, LLC (“IMP”) and Maria Cristina Braun (“Braun”) (collectively “Defendants”). Defendants responded to Plaintiff's Motion on June 30, 2017 [D.E. 23] to which Plaintiff did not timely reply. On October 3, 2017, the Court held an evidentiary hearing and the parties filed supplemental briefs on October 10, 2017. [D.E. 56, 57-1]. Therefore, Plaintiff's motion is now ripe for disposition. After careful consideration of the motion, response, related filings, and the record, along with the testimony of witnesses, arguments of counsel, and evidence presented, Plaintiff's motion is DENIED.

         I. BACKGROUND

         Plaintiff filed this action on April 26, 2017 for trademark infringement, unfair competition, and false description under §§ 31 and 43 of the Lanham Act, 15 U.S.C. §§ 1114(1) (trademark infringement) and §1125(a) (unfair competition and false description) for unfair business practices arising under Florida Statutes §§ 495.131, 495.151 and for injuries to Plaintiff's business reputation under the common law. [D.E. 1]. Plaintiff alleges that IMP[1] sells related merchandise in violation of Plaintiff's trademark and that Braun controls IMP's infringing activities. As such, Plaintiff seeks immediate relief in the form of a preliminary injunction to preserve the status quo and to prevent irreparable harm pending a final determination on the merits of Plaintiff's claims.

         The allegedly infringing trademark relates to a group of male performers that were former members of the internationally renowned Puerto Rican boy band called Menudo. Producer Edgardo Diaz formed Menudo in the 1970s and the group released their first album in 1977. The group enjoyed widespread success throughout the 1980s when Menudo appeared on television shows, films, and merchandise. The band continued its success until the group released its final album in 1996.

         In 2014, IMP began working with former members of Menudo when they expressed their desire to return to a music career. In August 2015, Braun, the principal of IMP, met with Carlos Pimentel, who at the time allegedly claimed to be the owner of the Menudo trademarks. Both met and agreed to work on a licensing agreement so that IMP could use the Menudo trademark for upcoming concerts where thirteen of the thirty-seven former Menudo members would reunite and perform for their fans. While researching the history of the Menudo trademarks, it purportedly became clear to IMP and Braun that neither Mr. Pimentel nor Menudo Entertainment had any authority to control the use of the Menudo trademarks. As a result, IMP reached no agreement with Mr. Pimentel or Menudo Entertainment regarding the Menudo trademarks.

         Since 2015, Plaintiff has marketed, distributed, and sold its good and services bearing the Menudo trademark. Yet, in that same year, IMP began to market and promote live performances by entertainers using the trademark without Plaintiff's permission. IMP has marketed and distributed t-shirts - and possibly other merchandise - containing a reference to the trademark to notify fans that Menudo has finally returned. More specifically, IMP produced, promoted, and sold over eighteen concert events using the Menudo trademark and invested significant sums of money in promoting and developing these events.

         At some point in 2016, IMP applied to register the Menudo trademark with the Mexican trademark office. Shortly thereafter, Mr. Pimentel emailed Braun to express disapproval of the use of the Menudo name. On May 2, 2016, counsel for Big Bar Entertainment, an alleged predecessor of Plaintiff, sent a cease and desist letter. In October 2016, Plaintiff filed an opposition to IMP's trademark application in Mexico. And on March 28, 2017, IMP filed a petition to cancel Plaintiff's registered trademark on the basis of fraud and Plaintiff's trademark counsel sent IMP another demand letter with a copy of the complaint on April 26, 2017.

         On June 5, 2017, IMP filed its answer, including affirmative defenses and counterclaims. IMP claims that this lawsuit, and in particular Plaintiff's motion for preliminary injunction, has no merit because Plaintiff is not using the Menudo trademark in commerce whereas IMP has used the mark for over two years. Each of Plaintiff's attempts to register the trademarks has allegedly been cancelled or pending on a mere intent to use basis.

         In sum, Plaintiff contends that the Menudo trademark has been in use since the 1970s and has been used continuously in commerce and by Plaintiff's predecessors since 1995. Because Defendants have purportedly attempted to profit from the success of the Menudo trademark, Plaintiff seeks a preliminary injunction to cease Defendants' activities and to set aside any consumer confusion that has resulted therefrom.

         II. ANALYSIS

         A. Standard of Review

         To obtain a preliminary injunction, a movant must demonstrate the following: A(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); Baker v. Buckeye Cellulose Corp., 856 F.2d 167, 169 (11th Cir. 1988).

         In the Eleventh Circuit, A[a] preliminary injunction is an extraordinary and drastic remedy not to be granted unless the movant clearly established the 'burden of persuasion' as to the four requisites.'' McDonald's Corp. v. Robertson, 147 F.3d 1301, 1306 (11th Cir. 1988); Siegel v. LePore, 234 F.3d 1163, 1176 (11th Cir. 2000) (''Because a preliminary injunction is >an extraordinary and drastic remedy, ' its grant is the exception rather than the rule, and plaintiff must clearly carry the burden of persuasion''). However, A[i]f the movant is unable to establish a likelihood of success on the merits, a court need not ...


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