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Filing # 61511179 E-Filed 09/13/2017 04:30:42 PM
IN THE CIRCUIT COURT, OF THE
NINTH JUDICIAL CIRCUIT, IN AND
FOR ORANGE COUNTY, FLORIDA
CASE NO.: 2016-CA-010923-O
DIVISION: 32
COMPLEX BUSINESS
LITIGATION COURT
HOA HAU PHU NHAN FLORIDA, LLC,
Plaintiff,
vs.
HUNG QUOC NGUYEN, TO ANH NGUYEN,
XUAN TRA NGUYEN, LIEN NHU TON NHU
HUYEN LAI and LIEN NHI VU,
Defendants.
/
PLAINTIFF’S REPLY TO DEFENDANTS’ RESPONSE IN
OPPOSITION TO MOTION FOR CONTEMPT
1. Facts Leading to the Consent Judgment
When Plaintiff filed this case in December of 2016, the matter was already
urgent because Defendants were promoting a beauty pageant that was scheduled to
be held on January 28, 2017, and each Defendant was infringing Plaintiff’s
registered trademarks. Plaintiff then moved for an emergency temporary
injunction, and although three of the five named Defendants had been personally
served, and counsel had appeared on their behalf, they failed to file any response.
Plaintiff was therefore compelled to move for default, which was entered, and thus
all the allegations in the complaint were deemed admitted. The night before the
scheduled hearing, Defendants’ counsel filed an untimely response to the motion
for injunction as well as the answers of the three served Defendants. Based on the
Defendants’ admissions, the Court issued the temporary injunction on January 19,
2017, forbidding Defendants from using Plaintiff’s trademarks, or any colorable
imitation of the marks, without Plaintiff’s consent, or from aiding others to do so1.
Nevertheless, on January 25, 2017 Plaintiff’s counsel was forced to send an
“urgent” letter to Defendants’ attorneys, complaining that “no effort whatsoever
has been made to comply with the injunction,” and listing several instances of non-
compliance: posters containing the infringing marks hanging in local retail outlets,
internet and social media references, etc. The letter continued that “[i]f your
clients do not move swiftly to adhere to the restrictions set forth in the injunction,
we will be forced to bring their non-compliance to the Court’s attention,” and
asked the steps Defendants were taking to comply. There was no response.
Because Defendants’ pageant was imminent, Plaintiff scheduled an
evidentiary hearing on Defendants’ motion to set aside the default and on the
injunction for January 26, 2017, just two days before the pageant. Plaintiff
expended significant time and resources preparing for the hearing, assembling and
1
Plaintiff posted the bond on January 23, 2017, so that is the date the injunction went into effect.
2
preparing multiple witnesses, preparing thirty-four separate exhibits, hiring a
Vietnamese translator and researching all the relevant legal issues.
The night before and the morning of the scheduled hearing, with Plaintiff’s
witnesses and translator present and ready to proceed, the parties agreed on a
settlement of the case. The Settlement Agreement (Ex. 1 to Defendants’
Response) was signed by all five Defendants named in the case, and stipulated to
the entry of a Consent Judgment which was attached (Ex. 2 to Defendants’
Response). In the Settlement Agreement, the Defendants expressly agreed that:
1. Plaintiff owned the three registered trademarks;
2. they were using identical copies of Plaintiff’s marks to promote their
own beauty pageant;
3. the marks were valid, and that they would not challenge their validity
or Plaintiff’s ownership;
4. they would not use Plaintiff’s marks or any marks confusingly similar
thereto;
5. they could proceed with their pageant, but only under a name and
mark that was not confusingly similar to Plaintiff’s, for which they
had to obtain Plaintiff’s advance approval;
3
6. they would not use the same crown as Plaintiff or feature past winners
or contestants of Plaintiff’s pageant in any way that suggested a
connection to Defendants’ pageant;
7. they would immediately remove all references to their pageant that
incorporated the Plaintiff’s marks or any confusingly similar marks;
8. they would notify all third parties connected to their pageant of the
new approved replacement name;
9. they had carefully read and understood the Settlement Agreement; and
10. that a breach would cause irreparable harm, and that the Agreement
could be enforced by specific performance or injunction in addition to
all other available remedies.
On January 26, 2017 the Court entered the Consent Judgment, which
substantially paralleled the terms of the Settlement Agreement. At Defendants’
own lawyers’ suggestion, the Court explained the Consent Judgment in open court,
where all five Defendants were present. Specifically, the Court told those present:
All right. In this case the parties have now entered into a consent
final judgment and a permanent injunction. Under the terms of the
final judgment that the court is entering and has now entered it is now
made very clear that the name of the pageant, the marks of the pageant,
and the designs associated with the pageant and the crown belong to
the plaintiff. Under the terms of the order, the defendants are not
permitted to utilize any of those things, not the name, the marks, or
the design. The defendants are permitted to go forward with a
pageant, but the pageant may not use the plaintiff's marks, design,
or name. This is a court order and will be enforced as such. If
4
there is a violation of the court's order, the court will take
appropriate action on a motion by the parties. A violation of the
court's judgment could result in significant financial penalties as
well as further action by the court to enforce the use of the marks.
Any questions or additional comments from the plaintiff?
Ex. 3 to Defendants’ Response, p. 9.
The entire statement was simultaneously translated into Vietnamese. The
Court then asked if either party had any questions or additional comments, and
both said no.
Thereafter, Defendants ignored the Consent Judgment and proceeded with
their pageant, using an almost identical name that had never even been shown to
Plaintiff and was confusingly similar to Plaintiff’s trademarks. Moreover, they did
not remove any of their existing promotional materials, either on paper or online,
and continued to distribute misleading items such as a large calendar featuring past
winners of Plaintiff’s pageant, showing Plaintiff’s marks and trade dress, all of
which conveyed the false impression that these women and these events were
somehow related to Defendants. Moreover, on January 23, 2017 they filed a new
limited liability company with the Florida Department of State under the name Hoa
Hau Phu Nhan Viet Nam FL, LLC, and despite a written demand from Plaintiff’s
counsel at that time that the entity be re-named or dissolved, it remains active in
the Department of State records as of today.
5
2. Plaintiff’s Contempt Motion
In light of Defendants’ utter disregard for this Court’s (and their own)
Judgment, as well as the Settlement Agreement they each signed, Plaintiff had no
choice but to file a motion for contempt. It did so, supported by sworn testimony, on
May 16, 2017.
After several months, on August 23, 2017 the Defendants finally, through
counsel, responded to Plaintiff’s motion. Because both of Defendants’ lawyers
claimed that they no longer represented the Defendants, Plaintiff had attempted to
personally serve each Defendant with the motion, and after extensive and costly
efforts, was able to serve two of the three Defendants named in the Consent
Judgment. Subsequently, Plaintiff was contacted by an attorney who represented
that although he was not a trademark lawyer and wasn’t being paid, he had been
asked by the Defendants to see if the dispute between the parties could be worked
out. Counsel met to discuss the issues, but the lawyer told Plaintiff’s attorneys he
had no authority to bind the Defendants, nor would he accept service on their behalf.
Eventually in August, the current counsel appeared in the case for the two
Defendants Plaintiff had personally served with the contempt motion.
3. Argument
In defending themselves against Plaintiff’s contempt motion, Defendants,
remarkably, admit Plaintiff’s charges of noncompliance. Their entire explanation
6
for their actions – or, more tellingly, their lack of action – is that (1) their lawyers
said it was OK; and (2) they changed some things, and the rest “slipped through
the cracks.” Response, p. 10. The response spends time arguing that the crown
shown in Plaintiff’s registered trademark wasn’t designed by the Plaintiff, which is
irrelevant to the contempt motion, and to trademarks in general. They also argue
that their new pageant name was good enough, even though, as shown below, the
names are almost identical, and the new name was never approved by Plaintiff as
required, nor would Plaintiff ever have approved it. See Blanco GmbH + Co. KG
v. Vlanco Indus., LLC, Case No. 12-61580, 2014 U.S. Dist. LEXIS 187274, at *23
(M.D. Fla. Dec. 19, 2014) (in a similar trademark case where the defendant
violated a consent judgment, the court noted that “evidence of [defendant’s]
contempt should not be evaluated in a vacuum, devoid of the context of prior post-
judgment motion practice and decisions in this case.”)
Enjoined Names Defendants’ Replacement Names
Hoa Hau Phu Nhan Florida Hao Hau Cong Dong Vietnam Florida
Mrs. Vietnam Florida Mrs. Vietnam Florida
As the Eleventh Circuit in Howard Johnson Co. v. Khimani explained, in
ruling on contempt following a permanent injunction prohibiting the use of the
HOWARD JOHNSON name, “[W]here the appellants have been found guilty of
infringing the trade-mark rights of others, they should thereafter be required to keep
7
a safe distance away from the dividing line between violation of, and compliance
with, the injunction. They must do more than see how close they can come with
safety to that which they are enjoined from doing.” Howard Johnson Co. v. Khimani,
892 F.2d 1512, 1517 (11th Cir. 1990), citing Eskay Drugs v. Smith, Kline & French
Laboratories, 188 F.2d 430, 432 (5th Cir. 1951); see also World's Finest Chocolate,
Inc. v. World Candies, Inc., 409 F. Supp. 840, 844 (N.D.Ill. 1976), aff'd, 559 F.2d
1226 (7th Cir. 1977) ("It is well established that the protection of a trademark
requires that a party once convicted of infringement . . . should keep a safe distance
from the margin line between compliance with the order and a violation.").
Plaintiff’s counsel relied on this rule when she wrote to Defendants’ counsel that
Defendants had “a special obligation to create a distance between our client’s
trademarks and any replacement names you might consider adopting,” (Ex. A, Email
from A. Doppelt, Jan. 25, 2017.)
Defendants argue that Plaintiff failed to show that they were not working
diligently to comply with the Judgment. Yet its entire motion for contempt
demonstrates multiple instances of noncompliance, virtually all of which Defendants
do not dispute. They also argue that several of the violations were not commited by
either of the two represented Defendants2. Yet the Judgment expressly prohibits
2
The third Defendant named in the Consent Judgment, Lien Nhi Vu, has never responded to the
motion for contempt, and should be found in contempt, and sanctions imposed, for that reason
alone.
8
Defendants from “assisting, aiding or abetting another person or business entity in
engaging in or performing any of the” enjoined activities. Ex. 2, ¶k. And the
Settlement Agreement binds not only all five Defendants but any entities with which
they are connected. See Ex. 1 to Response.
Conclusion
Because Defendants’ actions throughout this case demonstrate that they never
took any of the Plaintiff’s allegations seriously, that they consistently ignored the
Court’s numerous express pronouncements, and that they never intended to abide by
the Settlement Agreement or Consent Judgment, they cannot now, under the guise
of new counsel, attempt to assert their good faith. Their many violations of both the
Consent Judgment and the Settlement Agreement prove that they did not exercise
due diligence, nor make good faith efforts, to comply with the Consent Judgment,
but instead, proceeded as if none of these proceedings had ever occurred. For this,
they should be found in contempt of the Consent Judgment, and appropriate
sanctions imposed.
9
Respectfully submitted this 13th day of September 2017.
/s/ Ava K. Doppelt
Ava K. Doppelt
Florida Bar #393738
adoppelt@allendyer.com
Brock A. Hankins
Florida Bar #112531
bhankins@allendyer.com
ALLEN, DYER, DOPPELT + GILCHRIST, PA
255 South Orange Ave., Ste. 1401
Orlando, FL 32801
Telephone: (407) 841-2330
Facsimile: (407) 841-2343
Attorneys for Plaintiff,
HOA HAU PHU NHAN
FLORIDA, LLC
10
CERTIFICATE OF SERVICE
I hereby certify that on September 13, 2017, pursuant to Florida Rules of
Judicial Administration 2.516, a true and correct copy of the foregoing was
electronically filed in the above court and a copy furnished by electronic
transmission to the following counsel of record:
Amber N. Davis, Florida Bar #26628
adavis@bwsmiplaw.com
Kevin W. Wimberly, Florida Bar #57977
kwimberly@bwsmiplaw.com
BEUSSE WOLTER SANKS
& MAIRE, PLLC
390 North Orange Avenue, Suite 2500
Orlando, Florida 32801
/s/ Ava K. Doppelt
11
Exhibit A
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Filing # 61511179 E-Filed 09/13/2017 04:30:42 PM IN THE CIRCUIT COURT, OF THE NINTH JUDICIAL CIRCUIT, IN AND FOR ORANGE COUNTY, FLORIDA CASE NO.: 2016-CA-010923-O DIVISION: 32 COMPLEX BUSINESS LITIGATION COURT HOA HAU PHU NHAN FLORIDA, LLC, Plaintiff, vs. HUNG QUOC NGUYEN, TO ANH NGUYEN, XUAN TRA NGUYEN, LIEN NHU TON NHU HUYEN LAI and LIEN NHI VU, Defendants. / PLAINTIFF’S REPLY TO DEFENDANTS’ RESPONSE IN OPPOSITION TO MOTION FOR CONTEMPT 1. Facts Leading to the Consent Judgment When Plaintiff filed this case in December of 2016, the matter was already urgent because Defendants were promoting a beauty pageant that was scheduled to be held on January 28, 2017, and each Defendant was infringing Plaintiff’s registered trademarks. Plaintiff then moved for an emergency temporary injunction, and although three of the five named Defendants had been personally served, and counsel had appeared on their behalf, they failed to file any response. Plaintiff was therefore compelled to move for default, which was entered, and thus all the allegations in the complaint were deemed admitted. The night before the scheduled hearing, Defendants’ counsel filed an untimely response to the motion for injunction as well as the answers of the three served Defendants. Based on the Defendants’ admissions, the Court issued the temporary injunction on January 19, 2017, forbidding Defendants from using Plaintiff’s trademarks, or any colorable imitation of the marks, without Plaintiff’s consent, or from aiding others to do so1. Nevertheless, on January 25, 2017 Plaintiff’s counsel was forced to send an “urgent” letter to Defendants’ attorneys, complaining that “no effort whatsoever has been made to comply with the injunction,” and listing several instances of non- compliance: posters containing the infringing marks hanging in local retail outlets, internet and social media references, etc. The letter continued that “[i]f your clients do not move swiftly to adhere to the restrictions set forth in the injunction, we will be forced to bring their non-compliance to the Court’s attention,” and asked the steps Defendants were taking to comply. There was no response. Because Defendants’ pageant was imminent, Plaintiff scheduled an evidentiary hearing on Defendants’ motion to set aside the default and on the injunction for January 26, 2017, just two days before the pageant. Plaintiff expended significant time and resources preparing for the hearing, assembling and 1 Plaintiff posted the bond on January 23, 2017, so that is the date the injunction went into effect. 2 preparing multiple witnesses, preparing thirty-four separate exhibits, hiring a Vietnamese translator and researching all the relevant legal issues. The night before and the morning of the scheduled hearing, with Plaintiff’s witnesses and translator present and ready to proceed, the parties agreed on a settlement of the case. The Settlement Agreement (Ex. 1 to Defendants’ Response) was signed by all five Defendants named in the case, and stipulated to the entry of a Consent Judgment which was attached (Ex. 2 to Defendants’ Response). In the Settlement Agreement, the Defendants expressly agreed that: 1. Plaintiff owned the three registered trademarks; 2. they were using identical copies of Plaintiff’s marks to promote their own beauty pageant; 3. the marks were valid, and that they would not challenge their validity or Plaintiff’s ownership; 4. they would not use Plaintiff’s marks or any marks confusingly similar thereto; 5. they could proceed with their pageant, but only under a name and mark that was not confusingly similar to Plaintiff’s, for which they had to obtain Plaintiff’s advance approval; 3 6. they would not use the same crown as Plaintiff or feature past winners or contestants of Plaintiff’s pageant in any way that suggested a connection to Defendants’ pageant; 7. they would immediately remove all references to their pageant that incorporated the Plaintiff’s marks or any confusingly similar marks; 8. they would notify all third parties connected to their pageant of the new approved replacement name; 9. they had carefully read and understood the Settlement Agreement; and 10. that a breach would cause irreparable harm, and that the Agreement could be enforced by specific performance or injunction in addition to all other available remedies. On January 26, 2017 the Court entered the Consent Judgment, which substantially paralleled the terms of the Settlement Agreement. At Defendants’ own lawyers’ suggestion, the Court explained the Consent Judgment in open court, where all five Defendants were present. Specifically, the Court told those present: All right. In this case the parties have now entered into a consent final judgment and a permanent injunction. Under the terms of the final judgment that the court is entering and has now entered it is now made very clear that the name of the pageant, the marks of the pageant, and the designs associated with the pageant and the crown belong to the plaintiff. Under the terms of the order, the defendants are not permitted to utilize any of those things, not the name, the marks, or the design. The defendants are permitted to go forward with a pageant, but the pageant may not use the plaintiff's marks, design, or name. This is a court order and will be enforced as such. If 4 there is a violation of the court's order, the court will take appropriate action on a motion by the parties. A violation of the court's judgment could result in significant financial penalties as well as further action by the court to enforce the use of the marks. Any questions or additional comments from the plaintiff? Ex. 3 to Defendants’ Response, p. 9. The entire statement was simultaneously translated into Vietnamese. The Court then asked if either party had any questions or additional comments, and both said no. Thereafter, Defendants ignored the Consent Judgment and proceeded with their pageant, using an almost identical name that had never even been shown to Plaintiff and was confusingly similar to Plaintiff’s trademarks. Moreover, they did not remove any of their existing promotional materials, either on paper or online, and continued to distribute misleading items such as a large calendar featuring past winners of Plaintiff’s pageant, showing Plaintiff’s marks and trade dress, all of which conveyed the false impression that these women and these events were somehow related to Defendants. Moreover, on January 23, 2017 they filed a new limited liability company with the Florida Department of State under the name Hoa Hau Phu Nhan Viet Nam FL, LLC, and despite a written demand from Plaintiff’s counsel at that time that the entity be re-named or dissolved, it remains active in the Department of State records as of today. 5 2. Plaintiff’s Contempt Motion In light of Defendants’ utter disregard for this Court’s (and their own) Judgment, as well as the Settlement Agreement they each signed, Plaintiff had no choice but to file a motion for contempt. It did so, supported by sworn testimony, on May 16, 2017. After several months, on August 23, 2017 the Defendants finally, through counsel, responded to Plaintiff’s motion. Because both of Defendants’ lawyers claimed that they no longer represented the Defendants, Plaintiff had attempted to personally serve each Defendant with the motion, and after extensive and costly efforts, was able to serve two of the three Defendants named in the Consent Judgment. Subsequently, Plaintiff was contacted by an attorney who represented that although he was not a trademark lawyer and wasn’t being paid, he had been asked by the Defendants to see if the dispute between the parties could be worked out. Counsel met to discuss the issues, but the lawyer told Plaintiff’s attorneys he had no authority to bind the Defendants, nor would he accept service on their behalf. Eventually in August, the current counsel appeared in the case for the two Defendants Plaintiff had personally served with the contempt motion. 3. Argument In defending themselves against Plaintiff’s contempt motion, Defendants, remarkably, admit Plaintiff’s charges of noncompliance. Their entire explanation 6 for their actions – or, more tellingly, their lack of action – is that (1) their lawyers said it was OK; and (2) they changed some things, and the rest “slipped through the cracks.” Response, p. 10. The response spends time arguing that the crown shown in Plaintiff’s registered trademark wasn’t designed by the Plaintiff, which is irrelevant to the contempt motion, and to trademarks in general. They also argue that their new pageant name was good enough, even though, as shown below, the names are almost identical, and the new name was never approved by Plaintiff as required, nor would Plaintiff ever have approved it. See Blanco GmbH + Co. KG v. Vlanco Indus., LLC, Case No. 12-61580, 2014 U.S. Dist. LEXIS 187274, at *23 (M.D. Fla. Dec. 19, 2014) (in a similar trademark case where the defendant violated a consent judgment, the court noted that “evidence of [defendant’s] contempt should not be evaluated in a vacuum, devoid of the context of prior post- judgment motion practice and decisions in this case.”) Enjoined Names Defendants’ Replacement Names Hoa Hau Phu Nhan Florida Hao Hau Cong Dong Vietnam Florida Mrs. Vietnam Florida Mrs. Vietnam Florida As the Eleventh Circuit in Howard Johnson Co. v. Khimani explained, in ruling on contempt following a permanent injunction prohibiting the use of the HOWARD JOHNSON name, “[W]here the appellants have been found guilty of infringing the trade-mark rights of others, they should thereafter be required to keep 7 a safe distance away from the dividing line between violation of, and compliance with, the injunction. They must do more than see how close they can come with safety to that which they are enjoined from doing.” Howard Johnson Co. v. Khimani, 892 F.2d 1512, 1517 (11th Cir. 1990), citing Eskay Drugs v. Smith, Kline & French Laboratories, 188 F.2d 430, 432 (5th Cir. 1951); see also World's Finest Chocolate, Inc. v. World Candies, Inc., 409 F. Supp. 840, 844 (N.D.Ill. 1976), aff'd, 559 F.2d 1226 (7th Cir. 1977) ("It is well established that the protection of a trademark requires that a party once convicted of infringement . . . should keep a safe distance from the margin line between compliance with the order and a violation."). Plaintiff’s counsel relied on this rule when she wrote to Defendants’ counsel that Defendants had “a special obligation to create a distance between our client’s trademarks and any replacement names you might consider adopting,” (Ex. A, Email from A. Doppelt, Jan. 25, 2017.) Defendants argue that Plaintiff failed to show that they were not working diligently to comply with the Judgment. Yet its entire motion for contempt demonstrates multiple instances of noncompliance, virtually all of which Defendants do not dispute. They also argue that several of the violations were not commited by either of the two represented Defendants2. Yet the Judgment expressly prohibits 2 The third Defendant named in the Consent Judgment, Lien Nhi Vu, has never responded to the motion for contempt, and should be found in contempt, and sanctions imposed, for that reason alone. 8 Defendants from “assisting, aiding or abetting another person or business entity in engaging in or performing any of the” enjoined activities. Ex. 2, ¶k. And the Settlement Agreement binds not only all five Defendants but any entities with which they are connected. See Ex. 1 to Response. Conclusion Because Defendants’ actions throughout this case demonstrate that they never took any of the Plaintiff’s allegations seriously, that they consistently ignored the Court’s numerous express pronouncements, and that they never intended to abide by the Settlement Agreement or Consent Judgment, they cannot now, under the guise of new counsel, attempt to assert their good faith. Their many violations of both the Consent Judgment and the Settlement Agreement prove that they did not exercise due diligence, nor make good faith efforts, to comply with the Consent Judgment, but instead, proceeded as if none of these proceedings had ever occurred. For this, they should be found in contempt of the Consent Judgment, and appropriate sanctions imposed. 9 Respectfully submitted this 13th day of September 2017. /s/ Ava K. Doppelt Ava K. Doppelt Florida Bar #393738 adoppelt@allendyer.com Brock A. Hankins Florida Bar #112531 bhankins@allendyer.com ALLEN, DYER, DOPPELT + GILCHRIST, PA 255 South Orange Ave., Ste. 1401 Orlando, FL 32801 Telephone: (407) 841-2330 Facsimile: (407) 841-2343 Attorneys for Plaintiff, HOA HAU PHU NHAN FLORIDA, LLC 10 CERTIFICATE OF SERVICE I hereby certify that on September 13, 2017, pursuant to Florida Rules of Judicial Administration 2.516, a true and correct copy of the foregoing was electronically filed in the above court and a copy furnished by electronic transmission to the following counsel of record: Amber N. Davis, Florida Bar #26628 adavis@bwsmiplaw.com Kevin W. Wimberly, Florida Bar #57977 kwimberly@bwsmiplaw.com BEUSSE WOLTER SANKS & MAIRE, PLLC 390 North Orange Avenue, Suite 2500 Orlando, Florida 32801 /s/ Ava K. Doppelt 11 Exhibit A