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Simon Property Group, L.P. v. Casino Travel, Inc.

United States District Court, S.D. Florida

July 9, 2019

SIMON PROPERTY GROUP, L.P., et al., Plaintiffs,
v.
CASINO TRAVEL, INC., et al., Defendants.

          ORDER

          ROY K. ALTMAN, UNITED STATES DISTRICT JUDGE

         THIS MATTER came before the Court upon the Plaintiffs' Motion for Preliminary Injunction (the “Motion”) [ECF No. 6]. The Court conducted an evidentiary hearing on the Motion on May 9, 2019, at which the Plaintiffs presented the testimony of two witnesses. The hearing resumed on May 29, 2019, when the Plaintiffs and the Defendants each called witnesses and at the conclusion of which the parties presented their oral arguments. The Court has carefully reviewed the Plaintiffs' Motion, the record, and the applicable law. For the reasons set out below, the Court hereby DENIES the Plaintiffs' Motion.

         The Facts

         On March 27, 2019, the Plaintiffs, Simon Property Group, L.P. (“Simon Property”); Simon-Mills III, LLC (“Simon-Mills”); and Sunrise Mills (MLP), L.P. (“SMLP”), brought this action for injunctive relief and damages against the Defendants, Casino Travel, Inc. (“Casino”); Half Price Tour Tickets, LLC (“Half Price”); Tour95, LLC (“Tour95”); John Sansac; and Sol Taylor. See Compl. [ECF No. 1].

         The Plaintiffs own and operate Sawgrass Mills, a large shopping mall in Sunrise, Florida. Simon Property and Simon-Mills are the registered owners of the following trademarks (the “Sawgrass Marks”), which are valid marks registered on the Principal Register of the United States Patent and Trademark Office:

Registered Trademark

Registration Number

Registration Date

Classes/Goods/Services

SAWGRASS MILLS (the “Word Mark”)

1750400

February 2, 1993

IC 036 - Shopping center services and leasing of shopping mall space

(Image Omitted) (the “First Design Mark”

1750401

February 2, 1993

IC 036 - Shopping center services and leasing of shopping mall space

(Image Omitted) (the “Second Design Mark”)

2316377

February 8, 2000

IC 036 - Shopping center services and leasing of shopping mall space

(Image Omitted) (the “Third Design Mark”)

5350812

December 5, 2017

IC 009 -Magnetically encoded gift cards; magnetically encoded stored value cards. IC 035 - business management services in connection with retail shopping centers; promoting the goods and services of others by means of operating retail shopping centers; advertising and marketing services; digital marketing services; promoting the goods and services of others by means of marketing and selling gift cards; promoting the goods and services of others by means of sponsorship relationships and strategic alliances; on- line retail store services in the field of gift cards. IC 036 - Management and leasing of retail shopping center space; retail shopping center services, namely, rental of shopping center space. IC 037 - real estate development of retail shopping centers, namely, the planning and management of the construction of retail shopping venues. IC 041 - retail shopping center services, namely, the hosting and conducting of entertainment events at retail shopping venues.

Compl. ¶ 15.

         The Complaint asserts federal claims of trademark infringement, false designation of origin, and unfair competition, along with related state-law claims, against the Defendants. See generally Compl. In essence, the Complaint alleges that the Defendants misappropriated the Sawgrass Marks and thereby caused confusion in the marketplace. Id. ¶¶ 15-85. SMLP also brings a breach-of-contract claim against Casino. Id. ¶¶ 86-91. The Complaint seeks damages and injunctive relief, both preliminary and permanent, against the Defendants. Id. at 22.

         The Motion avers that the Defendants' misuse of the Sawgrass Marks will, if allowed to persist, cause the Plaintiffs irreparable harm. [See ECF No. 6]. After filing the Motion, the Plaintiffs voluntarily dismissed their claims against Taylor. [ECF No. 54]. Two other Defendants, Half Price and Sansac, never appeared in this action, and the Plaintiffs have obtained default final judgments and permanent injunctions against both of them. [See ECF Nos. 63, 65]. As of this Order, then, the Motion remains pending only against Casino and Tour95.

         At the hearing, the parties presented testimony and exhibits that established the following relevant facts. Casino, through its president, Diego Casaballe, entered into a contract with SMLP (the “Service Agreement”), whereby Casino agreed to provide private shuttle services to transport customers to Sawgrass Mills. [See ECF No. 6-1 at 12-22]. The Service Agreement allowed Casino to use the Sawgrass Marks to promote its shuttle services. Id. at 13. At the same time, the Agreement required Casino to cease using the Sawgrass Marks-and to destroy or return to SMLP all materials bearing the Sawgrass Marks-immediately upon the expiration or termination of the Service Agreement. Id. The Service Agreement was renewed multiple times. The final renewal took effect on October 1, 2018 and would have expired on March 31, 2019. Id. at 12. Notably, SMLP retained the right to terminate the Service Agreement for any reason during the renewed term. Id. at 13.

         Much of the testimony surrounded a November 14, 2018 meeting attended by Casaballe, Sawgrass Mills Director of Tourism Victoria Cervantes, Sawgrass Mills Marketing Director Chris Valle, and Sansac (a South Florida tourism services provider who owned Half Price). At the time of the meeting, the parties agree, Casino's financial condition was poor. During the meeting, Casaballe informed the Sawgrass Mills representatives that Sansac would be helping Casino to operate the Sawgrass-branded shuttles, which were now housed in a parking lot that Sansac owned. According to the Sawgrass Mills representatives, Casaballe also informed them that Sansac had taken control of sawgrassmillsshuttle.com, a website Casino had previously operated, which displayed the Sawgrass Marks for the purpose of advertising Casino's shuttle services.

         The news at the November 14 meeting alarmed the Sawgrass Mills representatives because the Service Agreement prohibited Casino from assigning any of its rights under that agreement to any other party without SMLP's prior written consent. [See ECF No. 6-1 at 17]. Shortly after the meeting, Sawgrass Mills instructed Casaballe and Sansac to remove both the Sawgrass-branded wrapping from the shuttle buses and the Sawgrass Marks from the sawgrassmillsshuttle.com website. On November 29, 2018, after it became clear that neither Casaballe nor Sansac planned to respond to its demand, SMLP sent Casino a written notice terminating the Service Agreement. Id. at 24.

         In December 2018, Cervantes learned that the Sawgrass-branded buses were still operating without Sawgrass Mills' authorization. Cervantes testified that the quality of the shuttle service had declined substantially in the closing months of 2018, and that the Sawgrass Mills branding on the buses had led to a significant increase in marketplace confusion. Specifically, Cervantes testified that a number of local concierge operators had been misled into believing that the now-degraded bus services were still affiliated with Sawgrass Mills. Moreover, in January 2019, Cervantes visited the sawgrassmillsshuttle.com website and noticed that it continued to display the Sawgrass Marks.

         Casaballe, for his part, testified that he shut down Casino in late November 2018. Notably, the record contains no evidence that Casino has operated a single bus trip since. In any case, the parties agree that Casino is no longer in operation. Moreover, Casaballe testified that, as of October 2018, he stopped paying the fees that are required to operate the sawgrassmillsshuttle.com website. According to Casaballe, Sansac ...


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