Federal Court Finds in Favor of Vivid Over 'Vivid Cabaret'

FORT MYERS, Fla.—In a case filed about 18 months ago, Vivid Entertainment LLC has won its case against Jose Baserva and his company, J&B PB, LLC, over the rights to use the term "Vivid Cabaret" as the name of Baserva's nightclub in Palm Bay, Florida, which was formerly named "Club Goddess," and on various websites. Oh; and Vivid can't be upset that John E. Steele, a federal judge, referred in his opinion to Vivid as "one of the world’s largest producers of high quality adult entertainment"! The problems started back in January of 2011. Baserva had finished six months of renovations on Club Goddess and reopened it as "Vivid Cabaret." Trouble was, Vivid Video had already trademarked its name for internet and nightclub services back in 2000 and 2001. And in 2002, it transferred those rights to its successor corporation Vivid Entertainment LLC (hereafter "Vivid Entertainment")—and that company was none too happy with Baserva poaching its name for his club. "Plaintiff sells and distributes goods bearing the Trademarks, and plaintiff’s products are famous, recognized, and distributed worldwide," Judge Steele wrote. "Plaintiff owns over 350 domain names, which include the Trademarks prominently displayed. The Trademarks are distinctive, and the public associates the Trademarks with the goods and services of plaintiff and high quality erotic and adult entertainment." Beyond that, Vivid had already licensed its name to be used for nightclubs in Las Vegas, New York City, Los Angeles, Charlotte—and perhaps of particular import, in Miami-Dade County, Florida. To complicate matters even more, one Anthony McCarty owns a corporation named "Vivid, LLC," (hereafter "Vivid") and on October 19, 2011, Baserva sold the assets of "Vivid Cabaret" to McCarty, and also turned over his "Vivid Cabaret" "social media page" (we're guessing Facebook) and website to McCarty as part of the deal. On December 4, 2012, Vivid Entertainment sent a cease-and-desist letter to Vivid, and on May 10, 2013, Vivid signed an agreement that it would stop using Vivid Entertainment's trademarks for its own use—an agreement it never put into effect. In an apparent excess of caution, Vivid Entertainment also sent a cease-and-desist to Baserva and his company, J&B, to stop using Vivid Entertainment's trademarks, and to transfer the VividCabaret.com domain to itself. Baserva countered with an offer to sell the rights to "Vivid Cabaret" to Vivid Entertainment—except that Baserva never owned any rights to that name; he filed a trademark application in February of last year, but the U.S. Patent and Trademarks Office turned him down because of its likely confusion with Vivid Entertainment's marks. In any case, Vivid Entertainment filed suit against Baserva and J&B PB on July 15, 2013, alleging trademark infringement, use of false designation of origin, cybersquatting, and state law claims. Shortly afterwards, Baserva and his company filed counterclaims, seeking in part to have Vivid Entertainment's trademarks cancelled on grounds of fraud, abandonment and trademark infringement. Over the next 18 months, both Vivid Entertainment and Baserva amended their lawsuits, while McCarty and his corporation made no appearance at all, and the court subsequently found against McCarty/Vivid. Then, one year after Vivid Entertainment had filed its suit,  Baserva and J&B asked for an extension of time to find new counsel, which was denied, and the court entered a summary judgment against J&B, while it allowed Baserva to proceed without counsel ("pro se"). For most of the latter half of 2014, Baserva filed motions for extensions of time to obtain discovery and to file various papers, but after Baserva blew off court-ordered in-person meetings to prepare and file a Joint Final Pretrial Statement in December of 2014 and as late as January 20 of this year, the court accepted Vivid Entertainment's filing of a Unilateral Final Pretrial Statement, and on January 30, granted Vivid Entertainment's Motion for Summary Judgment against Baserva, and dismissed Baserva's counterclaims with prejudice, meaning that he can't file them again. Depending on whether Baserva appeals this decision, Vivid Entertainment is now in a position to collect damages and attorneys' fees against Baserva—and to have Baserva's nightclub renamed. Requests for comment from Vivid Entertainment and its attorneys were unanswered at press time. For Judge Steele's Opinion and Order in this case, click here.