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UNITED STATES DISTRICT COURTSOUTHERN 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.

Case 0:10-cv-61856-AJ Document 37 Entered on FLSD Docket 07/26/2011 Page 1 of 30


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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


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



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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



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In Bonner v. City of Prichard, 661 F.2d 1206, 1209 (11th Cir. 1981) (en banc),1

the Eleventh Circuit adopted as binding precedent all decisions handed down by theformer Fifth Circuit before October 1, 1981.

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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); Citizen Band Potawatomi1

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.



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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



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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


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



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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 co-

owners 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,



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The defendants argument assumes that Fernbrew cannot be joined as an2

involuntary plaintiff under Fed. R. Civ. P. 19(a)(2).

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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

agree to join this case as a plaintiff in order for plaintiff International Importers to2

continue the instant action against the defendants. Id. at 8.



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The plaintiff takes issue with the May 4, 2004 letter relied on by the defendants3

as evidence that the mark was transferred from Maple to Fernbrew upon Maplesinsolvency. 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 glaringerrors. See Exhibit C. First, as of May 4, 2004, [Maple] did not own anyrights in the Mark or the Registration A.V. Imports, Inc. owned the Markat that time and was the applicant seeking to register the Mark with theUSPTO. See Opposition to Motion to Dismiss, Exhibit F. The applicationdid not mature into a Registration until February 28, 2006. Second,Defendants have not produced a written document transferring the Markor Registration along with the goodwill associated with the Mark or theRegistration 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]sassets vested in the trustee when [Maple] was adjudged bankrupt so[Maple] could not have transferred anything to Fernbrew upon theoccurrence of that event. Ward Dec. at 25. This assignment is at bestan assignment on gross, and fails to constitute strong evidence toestablish an actual assignment from [Maple] to Fernbrew, but rather ismore akin to self-serving testimony by these parties to gain ownership ofthe 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 [Mapleand 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 LimitedCorporation ownership. See May 4, 2004 Letter (DE# 35-15 at 2, 5/16/11). The Letteralso notes Fernbrews 25% interest in the Wallaby Creek trademark. Id. The Court doesnot need to determine whether the transfer upon Maples insolvency of Maple interest inthe 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.

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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). The plaintiff further3



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In 2005, the [p]laintiff succeeded to the trademark rights established by A.V.4

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 SubstituteReal Party in Interest Pursuant to FED.R.CIV.P. 17(a) (DE# 23 at 9 n.8, 2/8/11).

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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 andspirits in the United States; it never licensed rights to use the [m]ark fromor 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 ofthe [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



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A service mark is identical to a trademark in all respects except that it is5

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 answered6

the complaint. Mears, 2006 WL 1084347 at *1. It does not appear that the defendantsraised any Rule 12(b)(7) arguments. Terry was dismissed with prejudice approximatelytwo and a half years later for failing to participate in the case. Id.

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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. The mark at issue, The Intruders, had5

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 Terry as joint tenants with6

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:



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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'sidentification 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 TheIntruders for his own band, there was no danger of improperidentification of the owner of the Mark by the public, and Terry hadno reason to take additional steps to use or protect the Mark.

Second, Terry testified that he knew about, and tacitly approved of, theMontgomery Band, and that he was at least aware of and approved [theco-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 frommisuse. Terry had no obligation to take any action against either bandperforming 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 claimof abandonment). . . .

Finally, after [the co-owner]'s death, Terry did take steps to shut down theMears Band, including telling Mears to stop using the name TheIntruders . . . and intervening in this lawsuit. Although Terry ultimatelyelected not to have his rights in the Name adjudicated by participating inthis 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 rightsin 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# 22-

1, 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 non-

use of the mark. See Supplemental Briefing in Opposition to Motion to Dismiss (DE# 35



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The plaintiff states that illegal uses do not result in trademark rights.7

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 forSanctions for Violation of S.D. Fla. L.R. 7.1.A.3; and Motion to Substitute Real Party inInterest Pursuant to FED.R.CIV.P. 17(a) (DE# 23 at 8, 2/8/11) (stating that the recordsof the Alcohol and Tobacco Tax and Trade Bureau (TTB) of the Department of theTreasury . . . show that no entities other than A.V. Imports, Inc. and Plaintiff havelegally used the brand name WALLABY CREEK in connection with wines and spiritsin the United States since 2001.) (emphasis added) (footnote omitted).

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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].). In Mears, discussed supra, the court found that one co-owners use of the7

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



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The schedule of Trademarks, Brands and Formulas attached to the Purchase8

Agreement between Maples receiver and Angostura lists Fernbrew under the columnowner 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 inquestion. Thus, whether Maple transferred its interest in the mark to Angostura duringthe 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 trademarkproperties 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 beconsistent with Maples prior assignment of its interest in the Wallaby Creek mark toFernbrew.

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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



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Fernbrew has either a 25 percent ownership interest or a 50 percent ownership9

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).

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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 interest in the mark, the plaintiff has not shown that it is the sole owner of9

the instant mark.

b. Whether the Co-Owner of the Mark is a Required Party underRule 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 toservice of process and whose joinder will notdeprive the court of subject-matter jurisdictionmust be joined as a party if:

(A) in that person's absence, the courtcannot accord complete relief among



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existing parties; or

(B) that person claims an interest relating tothe subject of the action and is so situated thatdisposing of the action in the person's absence

may:

(i) as a practical matter impair orimpede the person's ability toprotect the interest; or

(ii) leave an existing party subjectto a substantial risk of incurringdouble, multiple, or otherwiseinconsistent obligations becauseof 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



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Fernbrew is part of the DAquino Group of Companies. See Exhibit A,10

Declaration of Rex DAquino (DE# 34-1 at 1, 5/16/11). Thus, it is highly unlikely thatFernbrew would file suit against the other companies referred to under the umbrellaterm DAquino Group. Nonetheless, Angostura or any successors to Angosturasinterest could sue the defendants for infringement.

17

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 successors from suing the defendants for infringement of the10

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-cv-

81036, 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-



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Curiously, Fernbrew may already be a defendant in the instant lawsuit as part11

of defendant DAquino Group of Companies. Mr. DAquinos declaration states thatFernbrew . . . is part of the DAquino Group of Companies. See Exhibit A, Declarationof Rex DAquino (DE# 34-1 at 1, 5/16/11). However, because defendant DAquinoGroup of Companies is not a legal entity with the capacity to be sued, the undersignedwill recommend that it be dismissed from this lawsuit. See discussion, infra.

18

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



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. Fernbrew is an Australian company.11

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



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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



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Generally, the Court would not proceed to a Rule 19(b) inquiry, unless joinder12

of the nonparty is unfeasible. See Focus on the Family v. Pinellas Suncoast TransitAuth., 344 F.3d 1263, 1280 (11th Cir. 2003) (stating that the court need not resolve thequestion of whether [the nonparty] is indispensable or merely necessary under Rule19(b) where the nonparty can be joined in the action) (citations omitted); see alsoTemple v. Synthes Corp., Ltd., 498 U.S. 5, 8 (1990) (per curiam) (no inquiry underRule 19(b) is necessary, because the threshold requirements of Rule 19(a) have notbeen 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 co-owner(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 nowwould save the parties from additional briefing and conserve the Courts limitedresources.

20

given an opportunity to amend its complaint to add Fernbrew and any other co-owners

of the mark as co-plaintiffs or involuntary plaintiffs. SeeFED.R.CIV.P.19(a)(2);

Lisseveld, 173 F.R.D. at 69495, 700; 5CCHARLESALAN WRIGHT,ARTHUR R.MILLER &

EDWARD 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



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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 Co-Owner(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 co-

owner(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



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juncture.

ii. The Extent to Which Any Prejudice Could Be Lessenedor Avoided by ProtectiveProvisions 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.



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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,



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The plaintiffs state law claims and claim for unfair competition under the13

Lanham Act are addressed below.24

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 co-

plaintiffs or involuntary plaintiffs.13

B. Defendants Motion to Dismiss under 12(b)(4) and (b)(5) and PlaintiffsMotion 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



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distinct Australian companies. Defendants, International Spirits & Wines, LLC and



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



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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. 1114but does not provide any basis for dismissing Plaintiffs remaining claimsfor infringement of common law trademark rights and unfair competitionunder the Lanham Act, 15 U.S.C. 1125; trademark infringement andunfair competition under the common law of Florida; and deceptive andunfair 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 jurisdictionover 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 orclaims over which the district court has original jurisdiction,



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(3) the district court has dismissed all claims over whichit has original jurisdiction, or

(4) in exceptional circumstances, there are other compellingreasons 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



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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


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 co-

owner(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



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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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