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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA CASE NO. 10-61856-CIV-JORDAN/OSULLIVAN INTERNATIONAL IMPORTERS, INC., Plaintiff, v. INTERNATIONAL SPIRITS & WINES, LLC, and DAQUINO GROUP OF COMPANIES, Defendants. ___________________________________/ REPORT AND RECOMMENDATION THIS CAUSE comes before the Court on the Defendants, International Spirits & Wines, LLC and DAquino Group of Companies, Motion to Dismiss Under Rules 12(b)(1), 12(b)(4), 12(b)(5) and 12 (b)(7) and Incorporated Memorandum of Law (DE# 22, 1/25/11) and the Opposition to Motion to Dismiss; Request for Sanctions for Violation of S.D. Fla. L.R. 7.1.A.3; and Motion to Substitute Real Party in Interest Pursuant to FED . R. CIV. P. 17(a) (DE# 23, 2/8/11) filed by the plaintiff. This matter was referred to the undersigned by the Honorable Adalberto Jordan, United States District Court Judge for the Southern District of Florida, pursuant to 28 U.S.C. 636(b). See Order Referring Matter to Judge OSullivan (DE# 36, 5/20/11). Having reviewed the applicable filings and law, the undersigned respectfully RECOMMENDS that the Defendants, International Spirits & Wines, LLC and DAquino Group of Companies, Motion to Dismiss Under Rules 12(b)(1), 12(b)(4), 12(b)(5) and 12 (b)(7) and Incorporated Memorandum of Law (DE# 22, 1/25/11) be GRANTED in part and DENIED in part and that the plaintiffs Opposition to Motion to Dismiss; Request for Sanctions for Violation of S.D. Fla. L.R. 7.1.A.3; and Motion to Substitute Real Party in Interest Pursuant to FED . R. CIV. P. 17(a) (DE# 23, 2/8/11) be DENIED.

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BACKGROUND On October 5, 2010, the plaintiff filed the instant action against the defendants for Trademark Infringement under 15 U.S.C. 1114(1) and 1125(a), Unfair Competition under 15 U.S.C. 1125(a), Trademark Infringement under the Common Law of the State of Florida, Unfair Competition under the Common Law of the State of Florida and Deceptive and Unfair Trade Practices under Fla. Stat. 501.201, et seq. See Complaint (DE# 1, 10/5/10). The plaintiffs claims stem from the defendants importation and sale of wine under the mark Wallaby Creek. Id. at 5, 7. The complaint alleges that defendant DAquino Group of Companies (hereinafter DAquino) imports wine into the United States for sale and distribution by defendant International Spirits & Wines, LLC (hereinafter ISW). Id. On January 25, 2011, the defendants filed the instant motion to dismiss the complaint. See Defendants, International Spirits & Wines, LLC and DAquino Group of Companies, Motion to Dismiss Under Rules 12(b)(1), 12(b)(4), 12(b)(5) and 12 (b)(7) and Incorporated Memorandum of Law (DE# 22, 1/25/11). The plaintiff filed its response on February 8, 2011. See Opposition to Motion to Dismiss; Request for Sanctions for Violation of S.D. Fla. L.R. 7.1.A.3; and Motion to Substitute Real Party in Interest Pursuant to FED . R. CIV. P. 17(a) (DE# 23, 2/8/11). The defendants reply in support of their motion to dismiss was filed on February 18, 2011. See Reply in Further Support of Defendants Motion to Dismiss (DE# 29, 2/18/11). On February 24, 2011, the defendants filed Defendants Memorandum in Opposition to Plaintiffs Motion to Substitute Real Party in Interest Pursuant to FED . R. CIV. P. 17(a) (DE# 30, 2/24/11). On March 7, 2011, the plaintiff filed its reply. See Reply to Opposition to Motion to 2

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Substitute Real Party in Interest (DE# 31, 3/7/11). The parties presented their arguments before Judge Jordan at a hearing on May 2, 2011. See Order Setting Hearing (DE# 33, 4/26/11). At the May 2, 2011 hearing, Judge Jordan asked the parties to further brief the issues. On May 16, 2011, the defendants filed Defendants Supplemental Memorandum in Support of Motion to Dismiss (DE# 34, 5/16/11) and the plaintiff filed its Supplemental Briefing in Opposition to Motion to Dismiss (DE# 35, 5/16/11). This matter is ripe for judicial review. STANDARDS OF REVIEW The defendants challenge the plaintiffs standing to bring the instant action pursuant to Rule 12(b)(1) of the Federal Rules of Civil Procedure. See Defendants, International Spirits & Wines, LLC and DAquino Group of Companies, Motion to Dismiss Under Rules 12(b)(1), 12(b)(4), 12(b)(5) and 12 (b)(7) and Incorporated Memorandum of Law (DE# 22 at 2, 1/25/11). Rule 12(b)(1) of the Federal Rules of Civil Procedure allows for the dismissal of a claim when it is determined that the court lacks subject-matter jurisdiction. See FED . R. CIV. P. 12 (b)(1). [B]ecause a federal court is powerless to act beyond its statutory grant of subject matter jurisdiction, a court must zealously insure that jurisdiction exists over a case . . . . Smith v. GTE Corp., 236 F.3d 1292, 1299 (11th Cir. 2001). [W]hen a defendant properly challenges subject matter jurisdiction under Rule 12(b)(1) the district court is free to independently weigh facts, and may proceed as it never could under Rule 12(b)(6) or FED . R. CIV. P. 56. Morrison v. Amway Corp., 323 F.3d 920, 925 (11th Cir. 2003) (quoting Lawrence v. Dunbar, 919 F.2d 1525, 1529 (11th Cir. 1990)). The defendants also seek to dismiss the plaintiffs complaint pursuant to Rule 3

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12(b)(7) on the ground that the plaintiff has failed to join a necessary and indispensable party under FED . R. CIV. P. 19. See Defendants, International Spirits & Wines, LLC and DAquino Group of Companies, Motion to Dismiss Under Rules 12(b)(1), 12(b)(4), 12(b)(5) and 12 (b)(7) and Incorporated Memorandum of Law (DE# 22 at 6, 1/25/11). Courts deciding a motion to dismiss under Rule 12(b)(7) undergo a two-step inquiry. First, they decide whether an absent party is required in the case under Rule 19. See Molinos Valle del Cibao v. Lama, 633 F.3d 1330, 1344 (11th Cir. 2011). If the party is a required party, the court must order that the person be made a party. FED . R. CIV. P. 19(a)(2). Second, if the parties cannot join the new party, the court must consider if, in equity and good conscience, the action should proceed among the existing parties or should be dismissed. FED . R. CIV. P. 19(b). When making this decision, courts look at the pleadings and affidavits as well as evidence introduced by the parties. See Estes v. Shell Oil Co., 234 F.2d 847, 849 n.5, 850 (5th Cir. 1956);1 Citizen Band Potawatomi Indian Tribe of Okla. v. Collier, 17 F.3d 1292, 1293 (10th Cir. 1994). The moving party must produce evidence showing that an absent party has an interest that may be harmed by being absent from the case. See Citizen Band, 17 F.3d at 1293. Lastly, the defendants seek to dismiss the complaint as to defendant DAquino for insufficient process and insufficient service of process pursuant to FED . R. CIV. P. 12(b)(4) and (b)(5). Rule 12(b)(4) allows for the dismissal of the complaint based on insufficient process. Proper service of process requires inclusion of the summons containing, among other things, the name of the court and the court's seal. Brown v.
1

In Bonner v. City of Prichard, 661 F.2d 1206, 1209 (11th Cir. 1981) (en banc), the Eleventh Circuit adopted as binding precedent all decisions handed down by the former Fifth Circuit before October 1, 1981. 4

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Hillsborough Area Regl Transit, No. 8:08-CV-1465-T-33TBM, 2010 WL 455310, at * 2 (M.D. Fla. Feb. 3, 2010) (citing FED . R. CIV. P. 4(a)(1)). A party objecting to the sufficiency of process under Rule 12(b)(4) must identify substantive deficiencies in the summons, complaint or accompanying documentation. Fly Brazil Group, Inc. v. The Government of Gabon, Africa, 709 F. Supp. 2d 1274, 1279 (S.D. Fla. 2010) (citation and internal quotation marks omitted). Rule 12(b)(5) allows for dismissal for insufficient service of process. FED R. CIV. P. 12(b)(5). The defendant has the initial burden of challenging the sufficiency of service and must describe with specificity how the service of process failed to meet the procedural requirements of [FED . R. CIV. P. 4]. Hollander v. Wolf, No. 0980587CIV, 2009 WL 3336012, at *3 (S.D. Fla. Oct. 14, 2009). The burden then shifts to the plaintiff to prove a prima facie case of proper service of process. Id. If the plaintiff can establish that service was proper, the burden shifts back to the defendant to bring strong and convincing evidence of insufficient process. Id. (citation omitted). The Court may look to affidavits, depositions, and oral testimony to resolve disputed questions of fact. Id. (citations omitted). ANALYSIS At the outset, the undersigned notes that the plaintiff conditionally requested an evidentiary hearing if there are outstanding factual issues needed to resolve this motion on Defendants asserted grounds of lack of standing. See Opposition to Motion to Dismiss; Request for Sanctions for Violation of S.D. Fla. L.R. 7.1.A.3; and Motion to Substitute Real Party in Interest Pursuant to FED . R. CIV. P. 17(a) (DE# 23 at 13-14, 2/8/11). The undersigned finds that an evidentiary hearing is unnecessary because the 5

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issues raised in the instant motions can be resolved as matters of law. Accordingly, the plaintiffs conditional request for an evidentiary hearing is DENIED. A. Defendants Motion to Dismiss under FED . R. CIV. P. 12(b)(1) and (b)(7) The defendants seek to dismiss the plaintiffs complaint for lack of subject matter jurisdiction, insufficient process, insufficient service of process and failure to join a party under FED . R. CIV. P. 19. See Defendants, International Spirits & Wines, LLC and DAquino Group of Companies, Motion to Dismiss Under Rules 12(b)(1), 12(b)(4), 12(b)(5) and 12 (b)(7) and Incorporated Memorandum of Law (DE# 22, 1/25/11). The defendants argue that the plaintiff failed to join all owners of the mark at issue in the instant case. Id. at 4-5. The defendants further argue that the complaint should be dismissed as to defendant DAquino because it is an umbrella term used to refer to several separate and distinct Australian companies. Id. at 8. 1. Standing

The defendants argue that the complaint should be dismissed pursuant to FED . R. CIV. P. 12(b)(1) because the plaintiff lacks standing to bring the instant action. Specifically, the defendants argue that the plaintiff, as a part-owner of the mark, lacks standing to bring the instant action without joining all other co-owners of the mark. The case law on standing as it pertains to co-owners of a trademark is scarce. Of note, the defendants rely on patent cases to support their argument that the plaintiff lacks standing to bring the instant action. See Defendants, International Spirits & Wines, LLC and DAquino Group of Companies, Motion to Dismiss Under Rules 12(b)(1), 12(b)(4), 12(b)(5) and 12 (b)(7) and Incorporated Memorandum of Law (DE# 22 at 2-3, 1/25/11). The Court does not need to rule on the defendants standing argument because the 6

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alleged standing deficiency will be cured and the argument rendered moot by the recommendation below that the plaintiff be required to join all other co-owner(s) of the mark. 2. Failure to Join a Party under FED . R. CIV. P. 19

The defendants argue that the complaint should be dismissed pursuant to FED . R. CIV. P. 12(b)(7) because the plaintiff failed to join a necessary and indispensable party to this litigation, the co-owner of the mark at issue. See Defendants, International Spirits & Wines, LLC and DAquino Group of Companies, Motion to Dismiss Under Rules 12(b)(1), 12(b)(4), 12(b)(5) and 12 (b)(7) and Incorporated Memorandum of Law (DE# 22 at 3, 1/25/11). a. The Existence of a Co-owner to the Mark

As a threshold matter, the Court should determine whether there are any coowners of the mark. If the plaintiff is the sole owner of the mark, then the Court does not need to proceed further with a Rule 19 inquiry. If, on the other hand, the Court determines that the plaintiff is not the sole owner of the mark, the Court will need to determine whether the co-owner(s) of the mark are required parties under Rule 19. If the co-owner(s) cannot be joined, the Court must consider if, in equity and good conscience, the action should proceed among the existing parties or should be dismissed. FED . R. CIV. P. 19(b); see also Molinos Valle del Cibao v. Lama, 633 F.3d 1330, 1344 (11th Cir. 2011). The existence of any co-owners to the mark is heavily disputed by the parties. When the defendants filed their motion to dismiss, they argued that Maple Leaf Distillers (hereinafter Maple) was the co-owner of the mark. See Defendants, 7

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International Spirits & Wines, LLC and DAquino Group of Companies, Motion to Dismiss Under Rules 12(b)(1), 12(b)(4), 12(b)(5) and 12 (b)(7) and Incorporated Memorandum of Law (DE# 22 at 5, 1/25/11) (citing Certified Status Copy of the Federal Registration, Exhibit A (DE# 22-1, 1/25/11)). Maple appears as a co-owner of the mark at issue in the instant case in U.S. Trademark Registration No. 3064051. See Federal Registration, Exhibit A (DE# 22-1, 1/25/11). The defendants no longer argue that Maple is the co-owner of the mark. In their supplemental brief, the defendants explain that Maples interest in the mark was transferred to non-party Fernbrew Pty Limited (hereinafter Fernbrew) when Maple went into bankruptcy in Canada in 2006: [i]n accordance with an agreement dated May 4, 2004 between Maple Leaf and Rex DAquino (on behalf of Fernbrew), upon Maple Leafs insolvency, Maple Leafs remaining 25% interest in the trademark registration vested in Fernbrew . . . . Thus, after Maple Leafs bankruptcy, Fernbrews ownership share in the Wallaby Creek trademark grew from 25% to 50%. Defendants Supplemental Memorandum in Support of Motion to Dismiss (DE# 34 at 2, 5-6, 5/16/11) (footnotes omitted). [A]s the trademark sits today, Plaintiffs 50% co-owner is Fernbrew, a company that has been using the Wallaby Creek trademark continuously for the past 10 years. Accordingly, Fernbrew is the indispensable party in this casenot Maple Leaf . . . . Id. at 2. The defendants argue that because Fernbrew has a 50 percent ownership in the mark, Fernbrew must agree2 to join this case as a plaintiff in order for plaintiff International Importers to continue the instant action against the defendants. Id. at 8.

The defendants argument assumes that Fernbrew cannot be joined as an involuntary plaintiff under Fed. R. Civ. P. 19(a)(2). 8

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The plaintiff responds that Fernbrew did not receive Maples interest in the mark following Maples insolvency because most of Maples assets, including the registration at issue (U.S. Trademark Registration No. 3064051) were transferred to Angostura Canada, Inc. (hereinafter Angostura) free and clear of all claims. See Supplemental Briefing in Opposition to Motion to Dismiss (DE# 35 at 2, 5/16/11).3 The plaintiff further

The plaintiff takes issue with the May 4, 2004 letter relied on by the defendants as evidence that the mark was transferred from Maple to Fernbrew upon Maples insolvency. See May 4, 2004 Letter (DE# 35-15 at 2, 5/16/11). The plaintiff argues that: An inspection of the document purporting to be the conditional May 4, 2004 assignment from [Maple] to Fernbrew demonstrates several glaring errors. See Exhibit C. First, as of May 4, 2004, [Maple] did not own any rights in the Mark or the Registration A.V. Imports, Inc. owned the Mark at that time and was the applicant seeking to register the Mark with the USPTO. See Opposition to Motion to Dismiss, Exhibit F. The application did not mature into a Registration until February 28, 2006. Second, Defendants have not produced a written document transferring the Mark or Registration along with the goodwill associated with the Mark or the Registration from [Maple] to Fernbrew, as required by 15 U.S.C. 1060. Third, the document states that the condition for transfer of rights is the insolvency or bankruptcy, or inability to fulfill the agreement, of either [Maple] or [New World Brands, Inc.]. Under Canadian law, [Maple]s assets vested in the trustee when [Maple] was adjudged bankrupt so [Maple] could not have transferred anything to Fernbrew upon the occurrence of that event. Ward Dec. at 25. This assignment is at best an assignment on gross, and fails to constitute strong evidence to establish an actual assignment from [Maple] to Fernbrew, but rather is more akin to self-serving testimony by these parties to gain ownership of the Mark. Supplemental Briefing in Opposition to Motion to Dismiss (DE# 35 at 11-12, 5/16/11). The May 4, 2004 Letter states that [i]n the event that any one of the companies [Maple and New World Brands, Inc.] become insolvent or unable to fulfill [the] agreement (i[.]e. Sales and marketing of products), the trademark will revert to Fernbrew Pty Limited Corporation ownership. See May 4, 2004 Letter (DE# 35-15 at 2, 5/16/11). The Letter also notes Fernbrews 25% interest in the Wallaby Creek trademark. Id. The Court does not need to determine whether the transfer upon Maples insolvency of Maple interest in the mark to Fernbrew was valid because even assuming that it was not a valid transfer, Fernbrew would still have its original 25 percent interest in the mark. 9

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argues that Angostura is not a co-owner of the mark because it never used the mark in connection with the sale of wine and spirits in the United States: Angostura did not and does not own any trademark rights because Angostura never used the [m]ark in connection with the sale of wine and spirits in the United States; it never licensed rights to use the [m]ark from or to [the p]laintiff; and it never controlled the quality of goods offered by [the p]laintiff under the [m]ark and never controlled [the p]laintiffs use of the [m]ark in the United States. Id. at 13 (footnote omitted). The plaintiff further argues that [a]ttempting to unwind the schemes of [Maple], Fernbrew . . . or any other company with regard to allegations of ownership in the Registration or the [m]ark is unnecessary because no entity other than [the p]laintiff or its predecessor, New World Brands, Inc., has actually used the [m]ark on wine and spirits in the United States since 2005 (when A.V. Imports, Inc. transferred its rights). Id. at 2.4 The undersigned finds that the plaintiff is not the sole owner of the mark at issue. The plaintiff relies on In re Impact Distributors, Inc., 260 B.R. 48, 53 (Bankr. S.D. Fla. 2001) for the general proposition that: a party that registers or owns [a] mark, without use, develops no trademark rights under the U.S. trademark laws. Supplemental Briefing in Opposition to Motion to Dismiss (DE# 35 at 11, 5/16/11) (quoting In re Impact Distributors, Inc., 260 B.R. at 53) (alteration in original) (emphasis omitted). The plaintiff reasons that because Fernbrew and Angostura did not use the mark in connection with wine and spirits in the United States for over three consecutive years since 2006, they may be presumed to have abandoned any rights they may have had

In 2005, the [p]laintiff succeeded to the trademark rights established by A.V. Imports, Inc. in the WALLABY CREEK trademark. Opposition to Motion to Dismiss; Request for Sanctions for Violation of S.D. Fla. L.R. 7.1.A.3; and Motion to Substitute Real Party in Interest Pursuant to FED . R. CIV. P. 17(a) (DE# 23 at 9 n.8, 2/8/11). 10

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under the mark. See Natural Answers, Inc. v. SmithKline Beecham Corp. 529 F.3d 1325, 1329-30 (11th Cir. 2008) (stating that [n]onuse for 3 consecutive years shall be prima facie evidence of abandonment, 15 U.S.C. 1127, which creates a rebuttable presumption of intent not to resume use.) (citation and internal quotation marks omitted). The cases relied on by the plaintiff do not address the issue at hand, whether a mark can be deemed abandoned by an owner where the mark has been continuously in use by a co-owner. In Mears v. Montgomery, No. 02 Civ. 0407 (MHD), 2006 WL 1084347, at *9 (S.D. N.Y. Apr. 24, 2006), the court addressed the issue of abandonment where there were joint owners of a service mark.5 The mark at issue, The Intruders, had been used in connection with musical performances by two bands: the Mears Band and the Montgomery Band. Id. at *3. The prior owner of the mark transferred ownership of the mark to Fred Daughtry (hereinafter co-owner) and Phil Terry6 as joint tenants with a right of survivorship. Approximately five and a half years later, the co-owner passed away. [The p]laintiff argue[d] that Terry abandoned his rights in the Mark by doing nothing to use it in commerce for at least seven years. Id. at *8. The court rejected the plaintiffs argument. In determining that Terry had not abandoned his rights to the mark, the court reasoned as follows:

A service mark is identical to a trademark in all respects except that it is intended to indicate the origin of services, rather than goods. University of Florida v. KPB, Inc., 89 F.3d 773, 776 n.4 (11th Cir. 1996) (per curiam) (citing Restatement (Second) of Unfair Competition 9 cmt. f (1994)). Terry filed an intervenor complaint one month after the defendants answered the complaint. Mears, 2006 WL 1084347 at *1. It does not appear that the defendants raised any Rule 12(b)(7) arguments. Terry was dismissed with prejudice approximately two and a half years later for failing to participate in the case. Id. 11
6

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First, [the co-owner]'s use of the Mark c[ould] be imputed to Terry. The purpose of the use requirement is to maintain the public's identification of the mark with the proprietor. Stetson[ v. Howard D. Wolf & Associates], 955 F.2d [847,] 851 [(2d Cir. 1992)] (citing Silverman [v. CBS Inc.], 870 F.2d [40,] 48 [(2d Cir. 1989)]). Therefore, as long as [the co-owner], Terry's co-proprietor, was actively using the name The Intruders for his own band, there was no danger of improper identification of the owner of the Mark by the public, and Terry had no reason to take additional steps to use or protect the Mark. Second, Terry testified that he knew about, and tacitly approved of, the Montgomery Band, and that he was at least aware of and approved [the co-owner]'s plans to start his own band. As he understood his role as a joint owner of the Mark, his obligation was to protect the Mark from misuse. Terry had no obligation to take any action against either band performing as the Intruders, so long as he viewed each of the bands as an appropriate user of the name. See, e.g., Defiance Button Machine Co. v. C & C Metal Products Corp., 759 F.2d 1053, 1060-61 (2d Cir.1985); Saratoga Spring Co. v. Lehman, 625 F.2d 1037, 1044 (2d Cir.1980) (permitting another to use a mark constitutes use in the context of a claim of abandonment). . . . Finally, after [the co-owner]'s death, Terry did take steps to shut down the Mears Band, including telling Mears to stop using the name The Intruders . . . and intervening in this lawsuit. Although Terry ultimately elected not to have his rights in the Name adjudicated by participating in this ligation, these actions are consistent with a lack of an intent by Terry to abandon the Mark. In sum, we find that Terry did not abandon his rights in the Mark. Id. at 10 (emphasis added) (citations to the record omitted). Under the Lanham Act, a certificate of registration of a trademark is prima facie evidence that the person or entity registering the mark is its owner, and that the mark is valid. 15 U.S.C. 1057(b). Here, the Certificate of Registration shows that the instant mark was owned by Maple and the plaintiff. See U.S. Trademark Registration (DE# 221, 1/25/11). Thus, Maple would be the presumptive co-owner of the mark. The plaintiff argues that it has rebutted this presumption of ownership with evidence of Maples nonuse of the mark. See Supplemental Briefing in Opposition to Motion to Dismiss (DE# 35 12

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at 2-3, 5/16/11). However, the mark has been continuously in use in the United States for approximately 10 years by a co-owner of the mark the plaintiff or its predecessor. See Exhibit A, Declaration of Rex DAquino (DE# 34-1 at 5, 5/16/11) (stating that [w]ine bearing the trade mark "WALLABY CREEK" has been sold in the United Stales for around a decade . . . . Wine bearing the trade mark ''WALLABY CREEK" was initially Imported Into the United Slates by A.V. Imports, Inc., and later by [the plaintiff].).7 In Mears, discussed supra, the court found that one co-owners use of the mark could be attributed to the other co-owner. Mears, 2006 WL 1084347, at *9. Similarly here, the plaintiffs use of the mark can be imputed on Maple, its co-owner. Thus, the plaintiff has not rebutted Maples presumptive co-ownership of the mark through non-use. Upon its insolvency, Maple, as the co-owner of the mark, transferred its interest in the mark to Fernbrew pursuant to the May 4, 2004 Letter. See May 4, 2004 Letter (DE# 35-15 at 2, 5/16/11). The marks abstract of title shows an assignment of interest of 25 percent from Maple to Fernbrew dated May 4, 2004. See Exhibit F (DE# 23-6 at 1, 2/8/11). The May 4, 2004 Letter also evidences a preexisting 25% interest in the mark by Fernbrew independent of any transfer of ownership by Maple. See May 4, 2004 Letter (DE# 35-15 at 2, 5/16/11). Alternatively, Maples interest in the

The plaintiff states that illegal uses do not result in trademark rights. Supplemental Briefing in Opposition to Motion to Dismiss (DE# 35 at 3, 5/16/11) (emphasis omitted). However, the plaintiff acknowledges that its predecessor, A.V. Imports, Inc., legally used the brand. See Opposition to Motion to Dismiss; Request for Sanctions for Violation of S.D. Fla. L.R. 7.1.A.3; and Motion to Substitute Real Party in Interest Pursuant to FED . R. CIV. P. 17(a) (DE# 23 at 8, 2/8/11) (stating that the records of the Alcohol and Tobacco Tax and Trade Bureau (TTB) of the Department of the Treasury . . . show that no entities other than A.V. Imports, Inc. and Plaintiff have legally used the brand name WALLABY CREEK in connection with wines and spirits in the United States since 2001.) (emphasis added) (footnote omitted). 13

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mark was transferred to Angostura through the bankruptcy proceeding.8 The plaintiff further argues that Maple, Fernbrew and Angostura have abandoned any interest in the mark. See Supplemental Briefing in Opposition to Motion to Dismiss (DE# 35 at 11-13, 5/16/11). There are two elements to a claim of abandonment: that the [owner] has ceased using the mark in dispute, and that he has done so with an intent not to resume its use. Cumulus Media, Inc. v. Clear Channel Communications, 304 F.3d 1167, 1173-74 (11th 2002) (footnote omitted). Here, the plaintiff has not established the first element - non-use of the mark. As noted above, one co-owners use of the mark can be imputed on the other co-owner. Mears, 2006 WL 1084347, at *9. The plaintiff has also failed to establish the second element - intent not to resume use. In determining whether a mark has been used or abandoned, a trier of fact must take into account the trademark holders occupation or business. Mears, 2006 WL 1084347 at *9 (citing Stetson, 955 F.2d at 851). Here, Fernbrew has continuously produced Wallaby Creek brand wine, including all such wine that was sold by the [p]laintiff. Defendants Supplemental Memorandum in Support of Motion to Dismiss (DE# 34 at 4, 5/16/11) (capitalizations omitted) (citing DAquino Declaration

The schedule of Trademarks, Brands and Formulas attached to the Purchase Agreement between Maples receiver and Angostura lists Fernbrew under the column owner for the Wallaby Creek wines. See Schedule (DE# 35-7 at 50, 5/16/11). Additionally, one of the notations corresponding to the notes column states Receiver does not know how this will affect Maple Leafs interest in the trademark/brands in question. Thus, whether Maple transferred its interest in the mark to Angostura during the bankruptcy proceedings is not as clear as the plaintiff would like it to be. Additionally, on May 3, 2006, Maple assigned its entire interest in 17 trademark properties to Angostura. See Trademark Assignment Details (DE# 34-1 at 42-43, 5/16/11). Wallaby Creek is not one of the 17 marks listed. This omission would be consistent with Maples prior assignment of its interest in the Wallaby Creek mark to Fernbrew. 14

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(DE# 34-1 at 3-4)). Fernbrew is a wine producer. Id. Fernbrews wines are sold through distributors including the plaintiff and defendant ISW. See DAquino Declaration (DE# 34-1 at 6-7); Complaint (DE# 1 at 7, 10/5/10) (stating that Defendant D'Aquino imports wine into the United States for distribution and sale by Defendant ISW under the mark WALLABY CREEK.). Given Fernbrews role as a wine producer, the Court cannot infer an intent to abandon the mark from Fernbrews non-use of the mark in connection with the sale of wine and spirits in the United States. The parties have not provided the Court with sufficient information regarding Angosturas business to make the same determination. Because the plaintiff has failed to show Fernbrew abandoned its ownership interest9 in the mark, the plaintiff has not shown that it is the sole owner of the instant mark. b. Whether the Co-Owner of the Mark is a Required Party under Rule 19(a)

Having determined that the plaintiff is not the sole owner of the mark at issue, the undersigned will now address whether the co-owner of the mark is a required party to the instant action. Rule 19(a) of the Federal Rules of Civil Procedure provides as follows: (a) Persons Required to Be Joined if Feasible. (1) Required Party. A person who is subject to service of process and whose joinder will not deprive the court of subject-matter jurisdiction must be joined as a party if: (A) in that person's absence, the court cannot accord complete relief among Fernbrew has either a 25 percent ownership interest or a 50 percent ownership interest in the mark, depending on whether the transfer by Maple was valid. See May 4, 2004 Letter (DE# 35-15 at 2, 5/16/11). 15
9

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existing parties; or (B) that person claims an interest relating to the subject of the action and is so situated that disposing of the action in the person's absence may: (i) as a practical matter impair or impede the person's ability to protect the interest; or (ii) leave an existing party subject to a substantial risk of incurring double, multiple, or otherwise inconsistent obligations because of the interest. FED . R. CIV. P. 19(a)(1)(A)-(B) (emphasis added). Courts deciding a motion to dismiss under Rule 12(b)(7) undergo a two-step inquiry. First, they decide whether an absent party is required in the case under Rule 19(a). See Molinos Valle del Cibao v. Lama, 633 F.3d 1330, 1344 (11th Cir. 2011). If the party is a required party, the court must order that the person be made a party. FED . R. CIV. P. 19(a)(2). Second, if the parties cannot join the new party, the court must consider if, in equity and good conscience, the action should proceed among the existing parties or should be dismissed. FED . R. CIV. P. 19(b). A party is required if in [the] persons absence, the court cannot accord complete relief among existing parties. FED . R. CIV. P. 19(a)(1)(A). A party is also required if the party has an interest in the action and resolution of the action may either as a practical matter impair or impede the persons ability to protect the interest or leave an existing party subject to a substantial risk of incurring double, multiple, or otherwise inconsistent obligations. FED . R. CIV. P. 19(a)(1)(B). Here, the co-owner(s) of the mark have interests in the action. The resolution of this case may affect those 16

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interests. For example, if the trial ends with an invalidation of the registered mark, Fernbrews interest in the mark may be damaged. Moreover, the defendants may be at risk of multiple obligations. The jury could find that the defendants did not infringe the Wallaby Creek trademark. That judgment would only be binding on the plaintiff. It would not bar Maples successors10 from suing the defendants for infringement of the instant mark. Of note, courts have found that trademark owners constitute required parties under Rule 19. See, e.g., Lisseveld v. Marcus, 173 F.R.D. 689, 694 (M.D. Fla. 1997); May Apparel Grp., Inc. V. Ava Import-Export, Inc., 902 F. Supp. 93, 96 (M.D. N.C. 1995); JTG of Nashville, Inc. v. Rhythm Band, Inc., 693 F. Supp. 623, 626 (M.D. Tenn. 1988); Marrero Enters. of Palm Beach, Inc. v. Estefan Enters. Inc., No. 06-cv81036, 2007 WL 4218990, at *2 (S.D. Fla. Nov. 29, 2007); Jaguar Cars Ltd. v. Mfrs. Des Montres Jaguar, S.A., 196 F.R.D. 306, 308 (E.D. Mich. 2000) (Courts that have faced the issue have treated trademark owners as indispensable for Rule 19 purposes in infringement actions.) (citations omitted). Because the outcome of this dispute may affect the trademark co-owner(s) rights and because the defendants may face multiple lawsuits, the undersigned concludes that the co-owner(s) of the mark are necessary parties. Accordingly, the plaintiff must join its fellow co-owner(s), including Fernbrew, which at the very least owns a 25 percent interest in the trademark. c. Whether the Co-owner of the Mark Can Feasibly Be Joined

The next step in the Rule 19 analysis is to decide whether joinder of the co-

Fernbrew is part of the DAquino Group of Companies. See Exhibit A, Declaration of Rex DAquino (DE# 34-1 at 1, 5/16/11). Thus, it is highly unlikely that Fernbrew would file suit against the other companies referred to under the umbrella term DAquino Group. Nonetheless, Angostura or any successors to Angosturas interest could sue the defendants for infringement. 17

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owner(s) is feasible. Neither party offers much assistance in making this determination. In their motion, the defendants argued that Maple . . . is a Canadian corporation, over which this [C]ourt does not have jurisdiction, and which has not voluntarily joined with [the p]laintiff in bringing this action. Defendants, International Spirits & Wines, LLC and DAquino Group of Companies, Motion to Dismiss Under Rules 12(b)(1), 12(b)(4), 12(b)(5) and 12 (b)(7) and Incorporated Memorandum of Law (DE# 22 at 6, 1/25/11). The defendants now argue that Fernbrew has 50 percent ownership of the mark. Defendants Supplemental Memorandum in Support of Motion to Dismiss (DE# 34 at 2, 5-6, 5/16/11). Presumably, the defendants would also make the argument that the Court has no jurisdiction over Fernbrew.11 Fernbrew is an Australian company. However, Fernbrews citizenship does little to further the inquiry of whether the Court has personal jurisdiction over this corporation. See Lisseveld, 173 F.R.D. at 695 (stating that th[e] Courts jurisdiction over [New Zealand] corporation [in trademark infringement action] w[ould] depend on an analysis under Floridas long-arm statute and [the] due process requirements of the Fourteenth Amendment). Fernbrews likely unwillingness to join the instant action is also not dispositive because Rule 19 contemplates the involuntary joinder of parties in certain instances. See FED . R. CIV. P. 19(a)(2) (stating that [a] person who refuses to join as a plaintiff may be made either a defendant or, in a proper case, an involuntary plaintiff.). The defendants do not address the feasibility of joining Angostura. The record is insufficient to determine whether the Court would Curiously, Fernbrew may already be a defendant in the instant lawsuit as part of defendant DAquino Group of Companies. Mr. DAquinos declaration states that Fernbrew . . . is part of the DAquino Group of Companies. See Exhibit A, Declaration of Rex DAquino (DE# 34-1 at 1, 5/16/11). However, because defendant DAquino Group of Companies is not a legal entity with the capacity to be sued, the undersigned will recommend that it be dismissed from this lawsuit. See discussion, infra. 18
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have personal jurisdiction over or whether Angostura would voluntarily join the instant lawsuit as a plaintiff. For its part, the plaintiff argues that personal jurisdiction over Maple would exist and has filed an affidavit noting that it purchased Maples products in Florida in 2005. See Opposition to Motion to Dismiss; Request for Sanctions for Violation of S.D. Fla. L.R. 7.1.A.3; and Motion to Substitute Real Party in Interest Pursuant to FED . R. CIV. P. 17(a) (DE# 23 at 6, 2/8/11); Declaration of Mark A. Weber in Support of Opposition to Defendants Motion to Dismiss under FED . R. CIV. P. 12(b)(1), 12(b)(4), 12(b)(5) and 12(b)(7) (DE# 23-4 at 9, 2/8/11). Mr. Webers affidavit neglects to mention how many products the plaintiff purchased or how those products reached Florida. Like the defendants, the plaintiff does not address the feasibility of joining Fernbrew or Angostura. As a result, the parties offer little help in determining whether it is feasible to join the other trademark owner(s). It is clear that Fernbrew and any other co-owner(s) of the mark are required parties in this litigation. However, there is insufficient evidence on this record to determine the feasibility of joining the co-owner(s) of the mark in the instant action. In Lisseveld, the defendants established that the possible owner of a trademark was a necessary party for a trademark infringement action. Lisseveld, 173 F.R.D. at 695. However, there [wa]s insufficient evidence to determine the feasibility of joinder. Id. In that case, the district court denied the motion to dismiss but required the plaintiff to amend the complaint within 60 days to include the necessary party. Id. at 701. The undersigned recommends this course of action in the instant case. The defendants motion should be GRANTED in part and DENIED in part and the plaintiff should be 19

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given an opportunity to amend its complaint to add Fernbrew and any other co-owners of the mark as co-plaintiffs or involuntary plaintiffs. See FED . R. CIV. P. 19(a)(2); Lisseveld, 173 F.R.D. at 69495, 700; 5C CHARLES ALAN W RIGHT , ARTHUR R. MILLER & EDW ARD H. COOPER , FEDERAL PRACTICE AND PROCEDURE 1359 (3d ed. 1998) (stating that in some contexts, the court may make the grant of a motion to dismiss conditional on the nonmoving partys failure to cure the defect by joining certain interested outsiders as parties.). Because it is possible that the plaintiff may not be able to join the co-owner(s) of the mark within the time allotted by the Court, the undersigned will now undertake the second part of the Rule 19 analysis in the interest of judicial economy.12 d. Whether in Equity and Good Conscience the Instant Action Should Proceed among the Existing Parties or Be Dismissed

Having determined that Fernbrew is a required party and assuming, arguendo that Fernbrews joinder in the instant action is not feasible, the undersigned will now determine whether in equity and good conscience, the action should proceed among the existing parties or should be dismissed. FED . R. CIV. P. 19(b). Rule 19(b) provides a list of factors the Court should consider in making this inquiry. The factors are: (1) the Generally, the Court would not proceed to a Rule 19(b) inquiry, unless joinder of the nonparty is unfeasible. See Focus on the Family v. Pinellas Suncoast Transit Auth., 344 F.3d 1263, 1280 (11th Cir. 2003) (stating that the court need not resolve the question of whether [the nonparty] is indispensable or merely necessary under Rule 19(b) where the nonparty can be joined in the action) (citations omitted); see also Temple v. Synthes Corp., Ltd., 498 U.S. 5, 8 (1990) (per curiam) (no inquiry under Rule 19(b) is necessary, because the threshold requirements of Rule 19(a) have not been satisfied.). However, in the instant case, it cannot be determined whether the joinder of the co-owner(s) of the mark is feasible. If the plaintiff is unable to join the coowner(s), the defendants would likely renew their motion to dismiss under Rule 12(b)(7) and the Court would have to revisit the issue. Conducting the Rule 19(b) inquiry now would save the parties from additional briefing and conserve the Courts limited resources. 20
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extent to which a judgment rendered in the person's absence might prejudice that person or the existing parties; (2) the extent to which any prejudice could be lessened or avoided by protective provisions in the judgment, shaping the relief, or other measures; (3) whether a judgment rendered in the person's absence would be adequate and (4) whether the plaintiff would have an adequate remedy if the action were dismissed for non-joinder. FED . R. CIV. P. 19(b). These four factors are not exclusive. Republic of Philippines v. Pimentel, 553 U.S. 851, 862 (2008). Rule 19 allows courts to weigh pragmatic considerations as well. See Molinos Valle del Cibao, 633 F.3d at 1344. i. The Extent to Which a Judgment Rendered in the CoOwner(s) Absence Might Prejudice the Co-Owner(s) or the Existing Parties

The first factor looks to whether any party would be exposed to a new action by the required party, whether a judgment might harm a required partys interest and the likelihood of either occurrence. See Molinos Valle del Cibao, 633 F.3d at 1344. As noted above, a verdict in favor of the defendants would not necessarily prevent another lawsuit by a co-owner of the trademark. Additionally, trial may result in the invalidation of the registered trademark. The ease with which the plaintiff seeks to divest its coowner(s) of their interests in the mark suggests to the undersigned that the co-owner(s) interests would not be adequately protected in the instant case. See Brown v. Reed Elsevier, Inc., No. 08-81574-CIV, 2009 WL 3064751, at *3 (S.D. Fla. Sept. 22, 2009) ([corporation w]as not a necessary party if its interests could be adequately protected by the existing parties.). These possibilities could constitute substantial prejudice to the co-owner(s) or the defendants. The likelihood of either scenario is unknown at this early 21

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juncture. ii. The Extent to Which Any Prejudice Could Be Lessened or Avoided by Protective Provisions in the Judgment, Shaping the Relief, or Other Measures

The second factor is the extent to which any prejudice could be lessened or avoided by protective provisions in the judgment, shaping the relief, or other measures. Few practical ways exist to lessen the prejudice to the co-owner(s) and to the defendants. The Court could limit the plaintiff to monetary relief, thus protecting the defendants from the threat of multiple injunctions with (possibly) different conditions. This option would not protect the defendants from the threat of multiple lawsuits. Similarly, if the Wallaby Creek mark is invalidated, it will have been done so without the co-owner(s) participation. iii. Whether a Judgment Rendered in the Co-owner(s) Absence Would Be Adequate

The third factor is inapplicable to the instant case. This provision[] come[s] into play when . . . litigants seek specific relief such as an injunction. Molinos Valle, 633 F.3d at 1344. Although the plaintiff seeks injunctive relief in the instant case, this provision concerns a situation where a court cannot direct a party responsible for the plaintiffs woes because it is not present. Id. That is not the situation here. If the defendants are infringing on the plaintiffs mark, the Court could enjoin the defendants. iv. Whether the Plaintiff Would Have an Adequate Remedy If the Action Were Dismissed for Non-joinder

As to the fourth factor, the plaintiff argues, without citing any Canadian law, that Canadian courts will refuse to hear a dispute over an American trademark. See Opposition to Motion to Dismiss; Request for Sanctions for Violation of S.D. Fla. L.R. 22

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7.1.A.3; and Motion to Substitute Real Party in Interest Pursuant to FED . R. CIV. P. 17(a) (DE# 23 at 13, 2/8/11). The plaintiff thus concludes that it has no other adequate forum in which to seek relief. Id. The plaintiffs argument assumes that it cannot sue, alone, for common-lawtrademark infringement. The defendants do not fare any better. They offer only a conclusory statement: [the p]laintiff would have an adequate remedy by brin[g]ing [an] action in an appropriate forum along with . . . any successors in interest, but it cannot simply ignore the fact that, at most, it can allege only an incomplete partial interest in the trademark it seeks to enforce. See Defendants, International Spirits & Wines, LLC and DAquino Group of Companies, Motion to Dismiss Under Rules 12(b)(1), 12(b)(4), 12(b)(5) and 12 (b)(7) and Incorporated Memorandum of Law (DE# 22 at 8, 1/25/11). The burden falls squarely on the defendants to demonstrate the applicability of the Rule 19(b) factors. See Molinos Valle, 633 F.3d at 1347 (the movant carries the burden to demonstrate which Rule 19(b) factors required dismissal in equity and good conscience.). The undersigned concludes that it is unclear whether the plaintiff has no other avenues of redress. The considerations set forth in subdivision (b) are nonexclusive, as made clear by the introductory statement that [t]he factors for the court to consider include. Republic of Philippines v. Pimentel, 553 U.S. 851, 862 (2008) (citing Fed. Rule Civ. Proc. 19(b)). One important pragmatic consideration is the court systems interest in having this dispute settled once, with all interested parties involved. There is no prescribed formula for determining in every case whether a person is an indispensable party since that matter can be determined only in the context of particular litigation. Barow v. OM Fin. Life Ins. Co., No. 8:11cv00159T33TBM, 23

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2011 WL 2649987, at *2 (M.D. Fla. July 6, 2011) (citing Provident Tradesmens Bank & Trust Co. v. Patterson, 390 U.S. 102, 11819 (1968)). When considering all of these factors, the undersigned concludes that, if the trademark co-owner(s) do not join as plaintiffs, this case should be dismissed. See, e.g., Jaguar Cars Ltd. v. Mfrs. Des Montres Jaguar, S.A., 196 F.R.D. 306, 308 (E.D. Mich. 2000) (Courts that have faced the issue have treated trademark owners as indispensable for Rule 19 purposes in infringement actions.) (citations omitted). In sum, the plaintiff is not the sole owner of the mark at issue. The co-owner(s) of the mark are required parties. The co-owner(s) have a strong interest in participating in adjudications that may affect their ownership rights over the mark. The defendants also have an interest in avoiding multiple lawsuits over the instant mark. Lastly, the Court has an interest in promoting complete, consistent and efficient relief. Because the record does not allow the Court to determine whether joinder of the co-owner(s) is feasible, the undersigned recommends that the plaintiff be provided with an opportunity to amend the complaint to add Fernbrew and any other co-owner(s) of the mark as coplaintiffs or involuntary plaintiffs.13 B. Defendants Motion to Dismiss under 12(b)(4) and (b)(5) and Plaintiffs Motion to Substitute Real Party in Interest The defendants further argue that the complaint should be dismissed as to defendant DAquino pursuant to FED . R. CIV. P. 12(b)(4) and (b)(5) because the summons is faulty and the plaintiff delivered the process to the wrong entity. According to the defendants, DAquino is an umbrella term used to refer to several separate and

The plaintiffs state law claims and claim for unfair competition under the Lanham Act are addressed below. 24

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distinct Australian companies. Defendants, International Spirits & Wines, LLC and DAquino Group of Companies, Motion to Dismiss Under Rules 12(b)(1), 12(b)(4), 12(b)(5) and 12 (b)(7) and Incorporated Memorandum of Law (DE# 22 at 8, 1/25/11). The plaintiff responds that it had a good faith basis to believe that Mr. DAquino was conducting business in Florida as DAquino Group of Companies. Opposition to Motion to Dismiss; Request for Sanctions for Violation of S.D. Fla. L.R. 7.1.A.3; and Motion to Substitute Real Party in Interest Pursuant to FED . R. CIV. P. 17(a) (DE# 23 at 4, 2/8/11). The plaintiff further seeks leave to substitute the real party in interest for Defendant DAquino Group of Companies, once Plaintiff can establish which legal entity should be named. Id. at 6 (footnote omitted). The defendants correctly note that Rule 17 is not the proper vehicle for substituting a party defendant. See Defendants Memorandum in Opposition to Plaintiffs Motion to Substitute Real Party in Interest Pursuant to FED . R. CIV. P. 17(a) (DE# 30 at 2, 2/24/11). Rule 17 allows courts to substitute the proper party to prosecute a case. This rule applies to plaintiffs, not defendants. See Salazar v. Allstate Tex. Lloyds, Inc., 455 F.3d 571, 573 (5th Cir. 2006) (stating that [b]y its terms . . . rule 17(a) applies only to plaintiffs). DAquino is not prosecuting the instant case. Having failed to substantively challenge DAquinos motion to dismiss under Rule 12(b)(4) and (b)(5), the plaintiff has failed to show that service of process on DAquino was appropriate. Accordingly, the undersigned recommends that the complaint be DISMISSED as to DAquino and that the plaintiffs request for leave under FED . R. CIV. P. 17(a) be DENIED. C. Plaintiffs State Law Claims and Claim for Unfair Competition under the Lanham Act The plaintiff argues that the complaint should not be dismissed in its entirety 25

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because the plaintiff can still maintain its state law claims and its claim of unfair competition under the Lanham Act against the defendants: Defendants motion addresses only Plaintiffs claim for infringement of a Federally registered trademark under the Lanham Act, 15 U.S.C. 1114 but does not provide any basis for dismissing Plaintiffs remaining claims for infringement of common law trademark rights and unfair competition under the Lanham Act, 15 U.S.C. 1125; trademark infringement and unfair competition under the common law of Florida; and deceptive and unfair trade practices under Fla. Stat. 501.201 et. seq. Opposition to Motion to Dismiss; Request for Sanctions for Violation of S.D. Fla. L.R. 7.1.A.3; and Motion to Substitute Real Party in Interest Pursuant to FED . R. CIV. P. 17(a) (DE# 23 at 6, 2/8/11). The plaintiffs claim of unfair competition under the Lanham Act suffers from the same infirmity as the plaintiffs other federal claims: the plaintiff is not the sole owner of the mark. A review of the complaint shows that the plaintiffs claim of unfair competition under the Lanham Act does not allege separate facts from the plaintiffs federal trademark claims. The plaintiffs state law claims should also be dismissed for lack of subject matter jurisdiction. The complaint alleges federal question jurisdiction and supplemental jurisdiction. See Complaint (DE# 1 at 8-9, 10/5/10). The complaint does not assert diversity jurisdiction. Thus, the Court would have to exercise supplemental jurisdiction over the plaintiffs state law claims. Section 1367(c), United States Code, Title 28 states as follows: (c) The district courts may decline to exercise supplemental jurisdiction over a claim under subsection (a) if-(1) the claim raises a novel or complex issue of State law, (2) the claim substantially predominates over the claim or claims over which the district court has original jurisdiction, 26

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(3) the district court has dismissed all claims over which it has original jurisdiction, or (4) in exceptional circumstances, there are other compelling reasons for declining jurisdiction. 28 U.S.C. 1367(c) (emphasis added). The exercise of supplemental jurisdiction is discretionary. Once all federal claims have been dismissed, a district court may choose not to exercise its supplemental jurisdiction over state law claims. 28 U.S.C. 1367(c). In determining whether to retain jurisdiction or decline jurisdiction, the Court must weigh the considerations of economy, convenience, fairness, and comity. CarnegieMellon Univ. v. Cohill, 484 U.S. 343, 350 (1988). The plaintiff has failed to address these factors and state why the Court should exercise supplemental jurisdiction over the remaining state law claims. Declining to exercise supplemental jurisdiction is particularly appropriate in the instant case where the litigation is still in its early stages and the Court has not set this matter for trial. As the Supreme Court noted: [w]hen the single federal law claim in the action [is] eliminated at an early stage of the litigation, the district court [has] a powerful reason to choose not to continue to exercise jurisdiction. Id. at 351. Additionally, the Court has an interest in having this dispute settled once, with all interested parties involved. For these reasons, the undersigned recommends that the Court provide the plaintiff with an opportunity to join all co-owner(s) of the mark. If the plaintiff is unable to join the co-owner(s), the Court should dismiss the complaint in its entirety pursuant to Fed. R. Civ. P. 12(b)(7). D. Plaintiffs Request for Sanctions The plaintiff seeks sanctions against the defendants for failure to confer with the plaintiff prior to filing the instant motion to dismiss pursuant to Local Rule 7.1(a)(3). See 27

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Opposition to Motion to Dismiss; Request for Sanctions for Violation of S.D. Fla. L.R. 7.1.A.3; and Motion to Substitute Real Party in Interest Pursuant to FED . R. CIV. P. 17(a) (DE# 23 at 2-3, 2/8/11). The plaintiff argues that: Counsel for Defendants did contact counsel for Plaintiff to state that the incorrect party had been named for the DAquino Group of Companies, but conceded (to Plaintiffs counsel understanding) that Plaintiff would likely be successful in getting the correct party substituted. Counsel for Defendants also noted in conversation and email that they would be filing a Motion to Dismiss, but did not detail the grounds that would be raised. Clearly, there is no Certification of Counsel in the Motion to Dismiss of any attempt to resolve the issues raised therein. Id. at 3 (footnote omitted) (emphasis added). Local Rule 7.1(a)(3) provides that: (3) Pre-filing Conferences Required of Counsel. Prior to filing any motion in a civil case, except a motion for injunctive relief, for judgment on the pleadings, for summary judgment, to dismiss or to permit maintenance of a class action, to dismiss for failure to state a claim upon which relief can be granted, or to involuntarily dismiss an action, counsel for the movant shall confer (orally or in writing), or make reasonable effort to confer (orally or in writing), with all parties or non-parties who may be affected by the relief sought in the motion in a good faith effort to resolve by agreement the issues to be raised in the motion. Counsel conferring with movants counsel shall cooperate and act in good faith in attempting to resolve the dispute. . . . S.D. Fla. L.R. 7.1(a)(3) (emphasis added). The defendants were not required to confer with the plaintiff prior to filing the instant motion to dismiss. Accordingly, the undersigned recommends that the plaintiffs request for sanctions based on Local Rule 7.1(a)(3) be DENIED. CONCLUSION In conclusion, the plaintiff is not the sole owner of the mark. The co-owner(s) are required parties to this litigation. The plaintiff should be provided with an opportunity to join the co-owner(s). If the plaintiff is unable to join the co-owner(s), the complaint 28

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should be dismissed in its entirety. Defendant DAquino must be dismissed because it is not a legal entity under Australian law. Rather, it is a umbrella name used to describe a group of separate and distinct Australian companies. The plaintiff has not shown entitlement to sanctions and its request for leave to substitute the real party in interest should be denied. Based on the foregoing, the undersigned respectfully recommends that the Defendants, International Spirits & Wines, LLC and DAquino Group of Companies, Motion to Dismiss Under Rules 12(b)(1), 12(b)(4), 12(b)(5) and 12 (b)(7) and Incorporated Memorandum of Law (DE# 22, 1/25/11) be GRANTED in part and DENIED in part. The plaintiffs Opposition to Motion to Dismiss; Request for Sanctions for Violation of S.D. Fla. L.R. 7.1.A.3; and Motion to Substitute Real Party in Interest Pursuant to FED . R. CIV. P. 17(a) (DE# 23, 2/8/11) should be DENIED. RECOMMENDATION In accordance with the foregoing, the undersigned respectfully recommends that the Defendants, International Spirits & Wines, LLC and DAquino Group of Companies, Motion to Dismiss Under Rules 12(b)(1), 12(b)(4), 12(b)(5) and 12 (b)(7) and Incorporated Memorandum of Law (DE# 22, 1/25/11) be GRANTED in part and DENIED in part and that the plaintiffs Opposition to Motion to Dismiss; Request for Sanctions for Violation of S.D. Fla. L.R. 7.1.A.3; and Motion to Substitute Real Party in Interest Pursuant to FED . R. CIV. P. 17(a) (DE# 23, 2/8/11) be DENIED. The Court should dismiss defendant DAquino Group of Companies and provide the plaintiff with an opportunity to join the co-owner(s) of the mark. If the plaintiff is unable to join the coowner(s) of the mark, the Court should dismiss the complaint in its entirety. The parties have fourteen (14) days from the date of receipt of this Report and 29

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Recommendation within which to serve and file written objections, if any, with the Honorable Adalberto Jordan, United States District Court Judge. Failure to file timely objections shall bar the parties from attacking on appeal the factual findings contained herein. See LoConte v. Dugger, 847 F.2d 745 (11th Cir. 1988); RTC v. Hallmark Builders, Inc., 996 F.2d 1144, 1149 (11th Cir. 1993). RESPECTFULLY SUBMITTED at the United States Courthouse, Miami, Florida this 26th day of July, 2011.

JOHN J. OSULLIVAN UNITED STATES MAGISTRATE JUDGE Copies furnished to: United States District Judge Jordan All Counsel of Record

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