Our Notable Cases
Battling Ubers Case Leaves Behemoth Unable to Launch New Feature
Gainesville.com, (February 17, 2016) — Uber, the mobile application that allows users to call for a community-based taxi-like service, is tangling with a local company – called Uber Promotions – over what the Gainesville-based company says is trademark infringement.
And Tuesday, a federal judge agreed, at least in part, ordering the transportation mobile app juggernaut to halt usage of the company’s newest feature, called UberEvents, in Alachua County until further notice.
Judge Mark E. Walker of the Northern District of Florida said Uber Technologies Inc. may not use its new UberEvents service in Alachua County for the time being, saying consumers might confuse it with the similarly-named local company that offers limousine, bus and charter services.
Late Wednesday afternoon, Joseph V. Priore, a Fort Lauderdale-based attorney representing Uber Promotions Inc., said his client is pleased with the judge’s ruling.
“We are happy the court recognized our client’s trademark rights and we are looking forward to trial,” he wrote in an email to The Sun.
Uber Technologies Inc., whose representatives couldn’t be reached, argued in legal documents that they don’t believe there anyone is confusing the two companies, despite similar names.
“Uber disagrees that there is any potential confusion regarding its use of the “Uber Promotions” heading on Twitter. However, to resolve the matter amicably, and without admission, Uber has removed the “Uber Promotions” reference.”
Uber Promotions initiated contact between the two companies over the term “Uber Promotions” on the Uber Technologies Inc. Twitter through a letter on April 18, 2014.
Uber Technologies Inc. said company officials did not hear from Uber Promotions again until the lawsuit was filed in September 2015, the court order said.
Shortly after the lawsuit was filed, Uber Technologies Inc. unveiled UberEvents, a service that allows customers to buy rides for others that can be used at a set time in the future, a service much like the bus/charter services Uber Promotions offers in the Gainesville area, according to court documents.
Walker, the judge, concluded that Uber Promotions is likely to show that Uber Technologies Inc. has infringed on its common-law trademark rights in the Gainesville area, the order said.
In his ruling, the judge ordered that Uber Technologies may not advertise UberEvents in Alachua County, must ensure that any customer inputting an Alachua County address into the UberEvents form on Uber Technologies Inc.’s website is unable to continue and the company must set up a 352 area code phone number to handle phone calls.
The phone number must match all Google, Yahoo, Bing and other search engine searches and Uber Technologies Inc. must ensure any searches for “Uber Promotions Gainesville” don’t return Uber Technologies Inc.’s phone number, the court order said.
A trial date is set for Nov. 28.
HP Can’t Ditch IP Claims In ‘Chubby Checker’ App Suit
Law360, New York (August 16, 2013) — A California federal judge on Thursday denied an attempt by Hewlett-Packard Co. and Palm Inc. to dismiss federal trademark infringement claims brought against “The Chubby Checker” penis measurement app by the famous musician.
U.S. District Judge William Alsup did toss out Pennsylvania and California state claims against HP, ruling that the Communications Decency Act protected the tech giant from litigation because it was not the publisher of the app, but merely its provider.
HP attempted to have the federal claims tossed by arguing that the complaint brought by Ernest Evans — Checker’s real name — did not allege that HP knew about the app’s infringement or that it continued to sell the app even after Evans served them with a cease-and-desist letter. Judge Alsup roundly rejected that reasoning in his order.
“The complaint specifically alleges that when defendants chose to place the app in commerce, defendants had ‘actual knowledge’ that none of the plaintiffs had consented to the use of the name ‘Chubby Checker,’ and that defendants had ‘full knowledge’ of plaintiffs’ marks from the beginning of their approval process,” Judge Alsup said.
The judge went on to say that HP knew or should have known that the owner of the “Chubby Checker” mark “would never have consented to license the mark for such a vulgar purpose.”
With regard to the state claims, Judge Alsup said that Evans wrongly relied on a 2011 suit against Facebook Inc. to make its arguments. In that case, the judge explained, Facebook was both the creator and the provider of content that infringed the plaintiff’s publicity rights, meaning it could not be shielded from state infringement litigation, which is not the case in the suit against HP.
“The allegations only show that defendants’ HP App Catalogue is an interactive computer service provider,” Judge Alsup said. “It therefore enjoys the broad immunity provided under Section 230 of the CDA from all state claims relating to publishing content created by third parties.”
Evans sued HP and Palm in February, claiming that he registered the “Chubby Checker” trademark for live performances in 1998, and for music recordings, printed material and memorabilia in 2005. Palm began offering downloads of “The Chubby Checker” app in late 2006, an “entertainment” app that allows users to estimate the size of a man’s penis based on his shoe size, according to the complaint.
Evans is represented by Michael Ingrassi Santucci of 500Law, Willie E. Gary of Gary Williams Parenti Watson & Gary PL and James Leonard Brown.
The case is Evans et al. v. Hewlett Packard Co. et al., case number 3:13-cv-02477, in the U.S. District Court for the Northern District of California.
Attorney Michael Santucci Helps Settle Bob Marley Family Dispute
Ft Lauderdale, FL (PRWEB) December 03, 2012
Fort Lauderdale attorney Michael I. Santucci recently helped family members of Bob Marley settle a federal lawsuit regarding intellectual property rights relating to the reggae music legend, his mother Cedella Marley Booker and Miami’s Nine Mile Music Festival. A Stipulation for Dismissal With Prejudice Based on Settlement was filed Friday in the United States District for the Southern District of Florida.
Santucci, who practices with the law firm of 500Law, represents Bob Marley’s brother Richard Booker, Bob Marley Movement of Jah People, originally a Bob Marley & The Wailers fan club and the Bob Marley Heritage Foundation, which helps needy and hungry families. He recently responded to a telephone inquiry from media personnel at Nutricompany.com, which specializes in celebrity-endorsed nutritional products.
“This was a sensitive case which involved historic facts and many moving parts. The legacy of a great man and a great family were at stake. Fortunately, we were able to come up with a settlement which was amenable to the family members involved,” said Santucci. “From what I learned about Bob Marley and his intentions, he would be happy with our recent achievements, especially the peace brought to the family,” said Santucci.
Richard Booker was close to Marley and several of his children, as the two shared the same mother in well-known reggae artist and restaurateur Cedella Marley Booker. After Bob Marley’s death in 1981 and then Cedella Marley Booker’s in 2008, Richard Booker inherited control of the Movement of Jah People. Since then, he has operated the annual Nine Mile Music Festival in Miami, “Mama Marley” restaurants in Jamaica and Nine Mile a tourist destination in the Saint Anne Parish, Jamaica, near Ocho Rios where Bob and their mother were born, lived and laid to rest.
While this was a well-publicized case, attorney Michael Santucci is no stranger to high profile litigation. He previously served on the litigation team of the 2002 landmark All Pro Sports Camps, Inc. vs. Walt Disney Company, in which he helped secure a record $240 million verdict for his clients with legendary attorneys Johnnie Cochran and Willie Gary. The Marley family settlement occurred on the heels of Santucci’s August, 2012 settlement of the decade-long litigation between electronic music giants Ultra Music Festival and Ultra Records. Santucci and one other attorney for Ultra Music Festival sat in a conference room from 6:00 PM until 7:30 AM the next morning after a two week trial in New York City, and forged a strategic alliance between the two adverse companies minutes before the jury was scheduled to begin deliberations. Regarding the Ultra settlement, Santucci simply said: “The work day ends when the job is done.”
Santucci has also served as a reliable legal source for members of the news media. “I am grateful for the trust my clients have put in me and my firm throughout the years. It is truly a privilege to work with such clients and fellow attorneys on both sides of the “v.” said Santucci.
Disney Loses $240M Suit
Jury decides company stole plans for Wide World of Sports complex NEW YORK (CNNfn) – A Florida circuit court jury on Friday ordered Walt Disney Co. to pay $240 million to two men who claimed entertainment conglomerate stole their idea for the Wide World of Sports complex, used by the Atlanta Braves baseball team for spring training.
The Orlando, Fla., jury found that Disney (DIS: Research, Estimates) willfully and maliciously misappropriated the plaintiffs’ “trade secrets.” The award was significantly less than the $1.4 billion the plaintiffs had asked for. But trial judge George Sprinkle IV has the discretion of increasing the damages.
Nicholas Stracick and Edward Russell, the two entrepreneurs behind All Pro Sports Camp, maintained that Disney pilfered their design for its Wide World of Sports park, a 200-acre property that opened at Orlando’s Walt Disney World resort in Orlando in 1997.
During the trial, which began July 10, Stracick and Russell accused Burbank, Calif.-based Disney of fraud, theft of trade secrets, breaking an implied contract and breaching a confidential relationship. The six-member jury, which deliberated for 12 hours, accepted all the claims except fraud.
“(The decision) says to America that small companies can get justice,” said attorney Johnnie Cochran Jr., a member of O.J. Simpson’s famed defense team, who represented the plaintiffs. “They had the idea, and you can’t take someone’s idea in America, and that’s what this company did.”
“We worked our butts off,” Stracick said. “Disney took advantage of it and ran with it.”
All Pro claimed 88 similarities between its plans and the Disney complex. But Disney’s attorneys said in-house designers planned the park, and argued that the park is essentially similar to existing sports centers and other Olympic training centers.
“The Walt Disney Company doesn’t need to borrow anybody else’s ideas,” Lou Meisinger, general counsel for Disney, told CNNfn.com. “It has its own good ideas.”
He also took issue with the manner with which the plaintiff’s lawyers appealed to the jury’s perceived biases against Disney, a $25 billion company that operates theme parks around the globe, and is one of world’s most recognizable corporate names.
“They played the David-versus-Goliath card about as well and persistently as anything I’ve ever seen,” he added.
Meisinger told CNNfn.com that the company would next file a motion to have the decision set aside, citing a miscarriage of justice. If denied, the company will appeal, challenging what he said were prejudicial statements in closing arguments and improper evidence.
“We’re not knocked out,” he said. “The notion that we had to steal this idea is utterly preposterous. This verdict will not stand.”
Two sides met first in 1987
Judge Sprinkle severely limited the scope of what jurors could consider by adopting jury instructions that said the architecture, site plan and business plan for the sports complex were not copied from All Pro and could not be considered.
Stracick, a retired baseball umpire from Buffalo, N.Y., and Russell, an architect from Fonthill, Ontario, testified they pitched their idea for a sports complex to Disney officials in the late 1980s.
Four years after Disney officials rejected their plans in 1989, the company announced it would build a $100 million complex.
“There were some meeting with them in 1987 in which there were some discussion about sports camps,” Meisinger said. “Then many, many years later, Disney independently conceived of the idea for the Wide World of Sports Complex.”
Jimmy Johnson Jr., a dismissed alternate juror, said he would have decided against Disney and awarded the full request of $1.4 billion in damages to teach the entertainment giant a lesson.
Johnson questioned the testimony of Disney executives, particularly architect Wing Chao, who claimed they knew nothing of Stracick and Russell’s plans. Johnson said Disney Chairman and CEO Michael Eisner appeared evasive in his videotaped deposition played in the five-week trial.
“I found most of the Disney executives to be less than forthcoming,” Johnson said.
— from staff and wire reports
Disney Must Pay $240 Million in Sports Park Lawsuit
ORLANDO, Florida (CNN) — A Florida jury ruled Friday that the Walt Disney Co. stole the idea for a sports theme park from a former baseball umpire and his architect partner and must pay $240 million in damages.
An Orange County civil court jury accepted the plaintiffs’ claim that Disney’s Wide World of Sports complex, which opened in 1997 near Orlando, Florida, was based on plans and a model the two men proposed in a 1987 meeting with Disney executives.
“It says to America that small companies can get justice,” Johnnie Cochran Jr., an attorney for the plaintiffs, said afterward. “They had the idea, and you can’t take someone’s ideas in America, and that’s what this company did.”
Because the jury found Disney acted with malicious intent, the trial judge has the discretion to increase the damages. The judge could also award attorneys’ fees to the plaintiffs. There was no indication when the judge would make those decisions.
“Justice caught up with Disney,” said victorious plaintiffs’ attorney Willie Gary, adding that Disney felt it had the right to steal ideas from people who lacked the wherewithal to develop them.
The plaintiffs, former baseball umpire and businessman Nicholas Stracick of Buffalo, New York, and architect Edward Russell of Fonthill, Ontario, alleged that Disney fraudulently appropriated plans drawn up by their company, All Pro Sports Camps Inc.
Disney denied the allegation and said the sports park was created by its in-house designers. They said it was similar to many existing sports centers and Olympic training centers and that no one could claim ownership of the idea to build sports complexes.
Disney’s park has a baseball field designed for major league baseball — it is the spring training home for the Atlanta Braves — and other facilities for sports ranging from football to badminton, all included in the plans drawn up by All Pro Sports Camps Inc., Stracick and Russell’s company.
While the plaintiffs acknowledged some differences between their park and the one built by Disney, they said the company had stolen the concept.
Disney general counsel Lou Meisinger said Disney would appeal the “runaway” verdict, first at the trial level and then if necessary in an appellate court.
“The notion that we had to steal the idea from the plaintiffs, an idea as old as ancient Greece, is preposterous,” he said.
“We’re not knocked out,” he said. “This verdict will not stand. This is an aberrational verdict and a one-time thing.”
Meisinger said the plaintiffs lawyers had tried to frame the case as “little people against big business” and attempted to “inflame their prejudice.”
Plaintiffs’ lawyer Willie Gary called Disney’s reaction “sour grapes.”
“We beat ’em and quite frankly we’ll beat ’em again if we need to,” Gary said. “They’re crying like little babies.”
Disney figures show that about 800,000 people a year visit the sports complex. Given Disney’s overall performance since the Wide World of Sports opened in 1997, the plaintiffs estimated they were deprived of up to $1.6 billion.
The trial was held in a Florida circuit court in Orlando, an area in which Disney is the largest employer, with about 55,000 workers.
The judge severely limited the scope of what jurors could consider by adopting jury instructions that said the architecture, site plan and business plan for the sports complex were not copied from All Pro and could not be considered.
All Pro claimed 88 similarities between its plans and the Disney complex and documented more than 200 telephone calls with Disney executives.
A plaintiffs attorney had said on Thursday that the two sides were involved in settlement talks. The jury, meanwhile, deliberated for about seven hours Thursday and five more Friday before reaching the decision.
The two sides disagreed on how much the judge could raise the $240 million damage award. The plaintiffs’ lawyers said the judge could triple it, while Disney said he could double it.
One alternate juror, dismissed from the case before deliberations began because he wasn’t needed on the jury, said he would have decided against Disney and awarded the full request of $1.4 billion in damages to teach the entertainment giant a lesson.
Jimmy Johnson Jr., a 35-year-old truck driver, questioned the testimony of Disney executives, particularly architect Wing Chao, who claimed they knew nothing of Stracick and Russell’s plans.
Johnson said Disney chairman and CEO Michael Eisner appeared evasive in his videotaped deposition played in the five-week trial.
“I found most of the Disney executives to be less than forthcoming,” Johnson said.
The Associated Press and Reuters contributed to this report.
Former Miss Vermont Sues Over Website Portrayal
The Associated Press
WEST PALM BEACH, Fla. – A two-time former Miss Vermont has filed suit against the operator of a Web site, alleging the man is commercially exploiting her name by disclosing “embarrassing private facts” about their relationship.
Katy Johnson, 24, of Delray Beach filed the suit in Palm Beach County Circuit Court on Monday. The suit alleges that Tucker Max, 27, of Chicago uses Johnson’s “name, portrait, photograph and other likeness to promote his Web site, books, merchandise and career as an authority on ‘picking up’ women.”
Johnson, who promoted sexual abstinence as a teenager, is asking that “The Miss Vermont Story” be banned from appearing on Max’s Web site.
“You cannot use someone’s name and likeness in the state of Florida for a commercial purpose without their consent,” said Johnson’s attorney, Michael Santucci of Fort Lauderdale. He said Johnson did not given Max permission to use her name or likeness.
Max, whose Web site was recently profiled on an MTV reality show, could not be reached for comment.
The suit also alleges Johnson suffered a “harmful and offensive bodily contact” from Max in August 2001 in front of Max’s Grille, a Boca Raton restaurant owned by Max’s family.
Max’s Web site contains a section that talks about an alleged relationship he had with Johnson after they met at a Boca Raton gym, and does detail a visit to the restaurant.
Johnson was crowned Miss Vermont in 1999 and Miss Vermont USA in 2001. She entered those pageants because she was attending college in Vermont.
Santucci said he has asked the lawsuit be sealed to protect his client’s privacy.
Man Forbidden to Talk About Relationship with Beauty Queen
The Associated Press
WEST PALM BEACH, Fla. — A judge has ordered a Chicago man to stop telling stories, regardless of their truth, about his alleged relationship with a former Vermont beauty queen.
The temporary order forbids Tucker Max, 27, from “disclosing any stories, facts or information, notwithstanding its truth, about any intimate or sexual act” involving Katy Johnson, a two-time Miss Vermont.
Johnson, 24, who has promoted sexual abstinence since she was a teenager, denies the stories. She sued Max last month, arguing that he was using her name and photograph on his Web site, www.tuckermax.com, to promote his “career as an authority on ‘picking up’ women.”
Max’s attorney, John C. Carey, called the order “inconsistent with the freedom of speech guaranteed by the Constitution.” He said it was “even more unusual” because the order was issued before Max knew of the lawsuit.
“Tucker Max has the right to tell his autobiographical account of their relationship,” Carey said in an e-mail to the Associated Press. He said they would ask for the order to be dismissed.
The order bars Max from using any photos or references to Katy Johnson’s first or last names, or her title, “Miss Vermont,” on his Web site or in any books or periodicals. It also excludes him from providing a link to Johnson’s Web site, www.katyjohnson.com. Judge Diana Lewis granted the injunction on May 6, a day after the lawsuit was filed in circuit court.
John Seigenthaler, founder of the First Amendment Center at Vanderbilt University, said because Johnson has arguably made herself a public figure by becoming a beauty queen, the burden of proving a privacy violation is greater. He questioned whether the order would stand.
“At the very least you would think before you muzzle and gag a critic of a public figure, you should give that critic an opportunity to be heard in court and weigh what that critic testified,” Seigenthaler said.
Federal courts have found that the same First Amendment guarantees that protect newspapers and television should be extended to the Internet, he said.
“What’s the difference of saying it in a hall or saying it in a chat room?” he asked.
Max no longer mentions Johnson on his Web site. But he does provide a link to “this ridiculous lawsuit against me” that takes viewers to a list of news stories about the case. The judge’s order stops short of prohibiting Max from making any statements about the suit.
Johnson’s attorney, Michael Santucci, declined comment yesterday. He has asked for the lawsuit to be sealed to protect his client’s privacy. But in a news release he issued last month, Santucci said the “victory should send a clear message to all parasitic smut peddlers who live off of the good names of others.”
The release also promotes Johnson’s upcoming appearance in MADE, an MTV show where Johnson coaches a tomboy to become a beauty queen. Her Web site promotes her book on beauty pageants and her career as a spokeswoman for self esteem, truth, abstinence and other values.
Johnson, who lives in Delray Beach, was crowned Miss Vermont in 1999 and Miss Vermont USA in 2001. She entered those pageants when she was attending college in Vermont.
Her suit alleges that Johnson suffered a “harmful and offensive bodily contact” with Max in August 2001 in front of Max’s Grille, a Boca Raton restaurant owned by Max’s family.
Through his agent, Max denied the allegations.
“That charge holds no ground. He has never nor would he ever even remotely consider applying any sort of force to a woman, whether it be physical or emotional,” said the agent, Ross Hendin.
Max’s Web site previously discussed an alleged sexual relationship he had with Johnson, whom he claimed to have met at a Boca Raton gym and had dinner with at the restaurant. His Web site currently includes an application for women who want to date him and promotes his book, The Definitive Book of Pick-Up Lines. In a disclaimer, he says the site is “intended to be humorous.”
Estefans Go Bonkers Over Bongos
By Jose Lambiet
Palm Beach Post Staff Writer
Looks like former Latin music superstar Gloria Estefan and her producer hubby Emilio could use a hobby, now that her career has waned.
They’re locked in a legal screaming match with the owner of a WPB nightclub who dared call his reggaeton/salsa danceteria Cocobongos.
The Estefans claim the name of the modest nightclub in a not-so-good part of town is “confusingly similar” to the name of their two luxurious eateries, Bongos Cuban Cafe. Cocobongos owner Christopher Marrero has been told to remove “bongos” from the name of his Forest Hills Boulevard joint.
So Marrero filed a lawsuit last week to ask a federal court here to force Estefan Enterprise to stop hassling him. He’s been in business under that name since 2000, never had a problem and won’t change.
“The little guy won’t be bullied by the Estefans,” said Michael Santucci, Marrero’s Lauderdale lawyer. “In 1999, the Estefans were sued by Bongos jeans for naming their business Bongos cafe, and they won by arguing that the word ‘bongo’ means drum and can’t be protected by trademark. Now, they’re reversing that argument against the little guy.”
The Estefans’ lawyer said the two Bongos cafes — one at the Miami Heat’s AmericanAirlines Arena and the other at Disney in Orlando — have received calls from people wondering whether they’re associated with Cocobongos.
“Trademark laws are there primarily to protect consumers,” said Karen Stetson. “We’ve found at least four other businesses called Cocobongos in this country, and we’ll address this with them, too.”
Tim Allen and Touchstone Pictures Sued Over Wild Hogs Rip-Off
One week before the national release of the much publicized John Travolta road comedy, Wild Hog’s, Travolta’s co-star, and Hollywood funny man, Tim Allen, and Disney’s Touchtone Pictures, are being sued for theft of trade secrets under Florida law. The suit is still pending.
If South Florida screen writers Steven Battaglia and Paul Danner get their way, and the Florida courts aprove, all money generated by the movie will be deposited in a trust fund pending the outcome of the lawsuit.
The lawsuit claims that on two occasions, first in 2000 on the set of the Touchstone movie The Crew, and then again in 2002 on the set of another Touchstone release Big Trouble starring Tim Allen, Battaglia handed copies of his work to agents and representatives of Touchtone Pictures and to one of Tim Allen’s personal assistants. Writer Steven Battaglia is a well known South Florida based hair dresser who works on movie sets in the area. Paul Danner is a author/screen writer with extensive credentials as well as being a police detective in South Florida.
The action, was filed in Broward County Florida Circuit Court, the same court recently hearing the Anna Nicole Smith case. Intellectual property attorneys Silverman Santucci, LLP represent the plaintiff Battle One Productions, Inc., a Florida production company, concerning a story treatment and script written by two South Florida based screen writers, Steven Battaglia and Paul Danner. In 1999 the two writers created and authored a proprietary treatment and script entitled The Harvey Davidson Gang. The production company has asked the courts to enter a judgment on their behalf requiring Touchtone and various other named defendants to provide an accounting of revenues derived from the release of Wild Hogs. They also asked that the court set up a “constructive trust” to secure these revenues and that Battle One Productions be compensated by all defendants for “unjust enrichment” due to the use of Battaglia’s and Danner’s intellectual property.
Attorney Michael Santucci is quoted as saying,” We are eager to get this case to trial. This happens all too often in tinsel-town. These media giants shouldn’t get away with trampling on the intellectual property rights of independent writers and artists.”
Similar to this action, Mr. Santucci and his firm have been involved in many high profile intellectual property cases. He was an original member of the litigation team with the late Johnnie Cochran, Willie E. Gary and Melvin K. Silverman in the 2000 landmark intellectual property case of All Pro Sports Camps, Inc. vs. Walt Disney Company in which he helped obtain a record $240,000,000 record jury verdict for his clients against the media giant. Touchtone is also a Disney company. Others being named in the law suit are Tollin/Robins Productions, owned by Clear Channel Communications, Boxing Cat Productions, Inc. a Tim Allen company, and Stacy Morris, Tim Allen’s personal assistant.Contact Us Today!