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Bucky Dent Baseball School - Complaint For Trademark Infringement
Bucky Dent Baseball School - Complaint For Trademark Infringement
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF FLORIDA BUCKY DENT, TWINS 20 ENTERPRISES, LLC, and CCMB ENTERPRISES, LLC, Plaintiffs Case No. v. DONALD S. UDERITZ, TBC ALL-STAR SPORTS, LLC, and HOT CORNER, LLC Defendants. / COMPLAINT FOR TRADEMARK FALSE DESIGNATION OF ORIGIN AND INFRINGEMENT, VIOLATIONS OF PUBLICITY RIGHTS, AND RELATED CLAIMS Plaintiffs, Bucky Dent, Twins 20 Enterprises, LLC, and CCMB Enterprises, LLC, by and through the undersigned counsel, sue Defendants, Donald S. Uderitz, TBC All-Star Sports, LLC, and Hot Corner, LLC and say and allege as follows: Statement of Case 1. The trade name and trademark Bucky Dent Baseball School was first originated
and adopted by Bucky Dent in the mid-1980s and during his highly successful professional baseball career in the major leagues. 2. This Mark has since been used continuously by Bucky Dent and other authorized
users in connection with marketing, promoting, establishing and managing youth baseball clinics in interstate commerce, principally from a location in Delray Beach, FL, but on occasion at other locations selected by Bucky Dent and his experienced staff. 3. The Bucky Dent Baseball School Mark has acquired extensive goodwill and a
strong secondary meaning, and is well known in the public as a mark that identifies and
distinguishes the Bucky Dent Baseball School apart from other similar youth baseball programs. 4. From June 2005 until August, 2011, Bucky Dent authorized the use of the Mark
by TBC All-Star Sports, LLC conditioned on his overseeing the management, control and quality of the baseball school. 5. In August 2011, Donald S. Uderitz and TBC All-Star Sports, LLC dismissed
Bucky Dents tenured staff and effectively terminated Bucky Dents affiliation with the baseball school, and Bucky Dent revoked the authorization to use the Mark. 6. In 2011, Bucky Dent also learned that Donald S. Uderitz, as managing partner,
attempted to unilaterally extinguish Bucky Dents twenty percent (20%) interest in the two companies that comprise the baseball school known as the Bucky Dent Baseball School. 7. Despite demands to cease and desist, Defendants, Donald S. Uderitz and TBC
All-Star Sports, LLC have intentionally and illegally misappropriated and diluted the Bucky Dent Baseball School Mark by using a confusingly and/or deceptively similar mark to wit Bucky Dent Baseball School, in connection with the marketing and operation of a baseball school and academy, all of which has and will continue to confuse the public by incorrectly suggesting an affiliation, connection, or association with Bucky Dent. 8. Bucky Dent has suffered and will continue to suffer, unless Donald S. Uderitz and
TBC All-Star Sports, LLC are restrained and enjoined, irreparable harm by the infringement of the Bucky Dent Baseball School Mark and invasion of Bucky Dents publicity rights, including: (i) the dilution of distinctiveness and erosion of the commercial value of the Mark; (ii) consumer confusion, mistake and deception as to the source of the youth baseball and academy programs promoted and offered by Donald S. Uderitz and TBS All-Star Sports, LLC;
(iii) commercial and personal identity loss caused by the misappropriation of Bucky Dents persona for commercial exploitation; and (iv) loss of control of the Bucky Dent name and image. 9. In addition, Bucky Dent seeks damages and an accounting of his twenty percent
(20%) interest in the two companies that comprise the baseball school: TBC All-Star Sports, LLC and Hot Corner, LLC. Jurisdiction and Venue 10. This Court has subject matter jurisdiction over this civil action for common law
trademark infringement, false designation of origin and infringement, violation of publicity rights, and related causes of action, pursuant: (i) 28 U.S.C. 1331 (federal question) and Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a); and (ii) 28 U.S.C. 1338(b) (unfair competition) for a claim of unfair competition joined with a substantially related claim under the trademark laws; and (iii) 28 U.S.C. 1367 (supplemental jurisdiction) as other claims are so related to federal claims in this action that they form part of the same case or controversy under Article III of the United States Constitution. 11. Venue is proper in the United States District Court for the Southern District of
Florida, pursuant to 28 U.S.C. 1391(b) and (c), as the judicial district wherein all Defendants reside and transact business and a substantial part of the events or omissions giving rise to the claim occurred. 12. All conditions precedent to the commencement and prosecution of this action, if
any, have been performed, satisfied, waived, or excused. The Parties 13. Plaintiff, Bucky Dent (Bucky Dent), is an individual and resident of Palm
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duly formed and organized under the laws of the State of Florida, and maintains its principal address in Palm Beach County, Florida. 15. Plaintiff, CCMB Enterprises, LLC (CCMB), is a limited liability company duly
formed and organized under the laws of the State of Florida and maintains its principal address in Palm Beach County, Florida. 16. Defendant, Donald S. Uderitz (Uderitz), is an individual and resident of Palm
Beach County, Florida. 17. Defendant, TBC All-Star Sports, LLC (TBC), is a Florida limited liability
company which maintains a principal address in Palm Beach County, Florida. 18. Defendant, Hot Corner, LLC (Hot Corner) is a Florida limited liability
company with a principal address in Palm Beach County, Florida. Factual Background 19. Bucky Dents illustrious professional baseball career in the American League
included twelve seasons as a short stop, during which he won two World Series with the New York Yankees in 1977 and 1978, was a three time All Star, and was the MVP in the 1978 World Series. 20. After retiring as a player, he managed in the New York Yankees Minor League
system and for the New York Yankees Big-League Club, and for a Triple A affiliate club of the Kansas City Royals. 21. He also held coaching positions with the St. Louis Cardinals, Cincinnati Reds,
22.
Over the years, through to the present, Bucky Dent has dedicated himself to
ensuring that his name, image, and personal attributes enjoy and maintain a strong, positive and unique status in the public, all of which enhances the commercial value and viability of his name, as demonstrated by the requests he receives for personal appearances and endorsements. 23. Beginning in the early 1980s, Bucky Dent and a business associate, along with
personally selected and supervised staff, developed, managed and operated baseball clinics in South Florida for young athletes to develop fielding, throwing, hitting and base running skills. 24. As these programs became very successful and popular, attracting young baseball
players in Florida and from other states and countries, and in the mid-1980s, Bucky Dent first originated and adopted the trade name and trademark Bucky Dent Baseball School (the Mark), with a school which operated from a location at 490 Dotterel Road, Delray Beach, FL. 25. In 1991, Bucky Dent became an owner with other business associates in BDBBS,
Inc. (BDBBS), a Florida corporation, and he continued overseeing the operation and management of the baseball clinics ensuring the quality of the programs offered to the public. 26. Bucky Dent orally agreed to conditionally authorize the exclusive, non-
transferrable use of the Mark in connection with the baseball programs marketed by BDBBS from the Delray location, and other places specifically approved by Bucky Dent, including New York and St. Louis, so long as he, through his personally selected staff and long time business associate, remained involved in the control of the quality and management of the programs. 27. The conditions under which the use of the Mark was authorized by Bucky Dent
included his overseeing the control of the quality of the youth baseball programs, and that these programs were offered through BDBBS, a company in which he maintained an ownership interest.
28.
Through Bucky Dents unique status in the public and substantial investment of
time and devotion to the youth baseball programs, which he managed and operated in interstate commerce, the Bucky Dent Baseball School and Mark have acquired a secondary meaning and significant impact on the public for the goodwill and outstanding reputation of these programs associated with the Mark. 29. 30. In June 2005, BDBBS sold its assets, including the real estate in Delray, Florida. BDBBS sold the operating company to TBC All-Star Sports, LLC (TBC) and
the real estate to Hot Corner, LLC (Hot Corner), companies owned and controlled by Donald S. Uderitz (Uderitz). 31. In connection with the sale of the assets of BDBBS, Bucky Dent authorized the
exclusive non-transferrable use of the Mark by TBC in exchange for a twenty percent (20%) interest in TBC and in Hot Corner. 32. This exclusive, non-transferrable authorized use of the Mark was conditioned
upon Bucky Dent overseeing through his personally selected staff, and his long time business associate, the control, image, quality, type and location of the youth baseball programs promoted, marketed and offered by TBC to the public. 33. At no time has Bucky Dent authorized, consent to, or granted any other
permission to TBC or anyone else other than the exclusive, non-transferrable use of the Mark in strict compliance with these conditions. 34. In exchange for the conditional authorized, exclusive, non-transferrable use of the
Mark, Uderitz transferred to Bucky Dent a twenty percent (20%) interest in TBC and in Hot Corner.
35.
The transfer of the twenty percent (20%) interest in TBC to Bucky Dent is
memorialized in a letter agreement dated June 8, 2005 and signed by Uderitz, as manager for TBC, a true and accurate copy of which is attached as Exhibit A to this Complaint. 36. The transfer of the twenty percent (20%) interest in Hot Corner to Bucky Dent is
memorialized in a letter agreement dated June 8, 2005, authorized by Uderitz, as manager for Hot Corner, a true and accurate copy of which is attached as Exhibit B to this Complaint. 37. Later, Bucky Dent formed Twins 20 Enterprises, LLC, which held his twenty
percent (20%) ownership interest in TBC, and formed CCMB Enterprises, LLC which held his twenty percent (20%) interest in Hot Corner. 38. From 2005 until the Summer 2011, Bucky Dent, and his staff and long time
business associate, maintained control over the quality, image, type and location of the youth baseball programs marketed by TBC under the Mark Bucky Dent Baseball School. 39. In 2010, Uderitz expressed an interest in changing the type, quality and location
of the youth baseball programs that would be marketed and offered to the public under the Mark. 40. Bucky Dent objected, and refused to these material changes to the programs
marketed and offered to the public by TBC using the Bucky Dent Baseball School. 41. Uderitz and TBC refused to comply with the conditions Bucky Dent placed upon
the use of the Mark, and on August 19, 2011, Uderitz fired Bucky Dents long time business associate of 37 years and his secretary while Bucky Dent was out of town. 42. By terminating his tenured staff, Uderitz and TBC effectively prevented Bucky
Dent from overseeing control of the quality, image, type and location of the youth baseball programs marketed and offered to the public by TBC under the Mark.
43.
The following week, Bucky Dent advised Uderitz and TBC that effective
immediately, he was canceling TBCs conditional permission to use the Mark. 44. Although Uderitz and TBC have since indicated that the use of the Mark would
cease, Uderitz and TBC continued to market and promote the youth baseball programs to the public in connection with the unauthorized use of the Mark and have improperly permitted third parties to use the Mark and Bucky Dents name and image. 45. Furthermore, Uderitz claims to have canceled, effective sometime in 2010, Bucky
Dents twenty percent (20%) interest in TBC and Hot Corner. COUNT I (False Designation of Origin Under Lanham Act 43(a)) 46. Each of the allegations set forth in paragraphs 1 through 45, inclusive, of the
Complaint are incorporated, with the same force and effect as if fully restated. 47. This is a claim by Bucky Dent against TBC for false designation of origin in
violation of 43(a) of the Lanham Act, 15 U.S.C. 1125(a). 48. Mark. 49. TBCs unauthorized and wrongful use of the Bucky Dent Baseball School name Bucky Dent properly canceled the conditional authorization for TBC to use the
in interstate commerce in the market for youth baseball schools and programs that TBCs use thereof is likely to create confusion, or to cause mistake, or to deceive consumers as to the affiliation, connection or association of Bucky Dent, or to deceive consumers as to the origin, sponsorship or approval by Bucky Dent of the youth baseball programs offered by TBC. 50. TBCs unauthorized and wrongful use of the Mark constitutes a false designation
of origin in interstate commerce, which wrongfully and falsely designates, describes and
represents TBCs services and products as originating from, or being in some way connected with Bucky Dent, and is likely to cause confusion in interstate commerce as to TBCs affiliation, connection, or association with Bucky Dent. 51. TBCs infringement has and will continue to cause damage and, unless
preliminarily and permanently enjoined, irreparable harm to Bucky Dent. COUNT II (Infringement of Common Law Trade Name and Trademark) 52. Each of the allegations set forth in paragraphs 1 through 45, inclusive, of the
Complaint are incorporated, with the same force and effect as if fully restated. 53. This is a claim by Bucky Dent against TBC for infringement of common law
trade name and trademark. 54. The use of Bucky Dents personal name in connection with baseball and the
Bucky Dent Baseball School has gained legally protectable status after acquiring such an impact on consumers and the public that his name and Mark have each acquired a secondary meaning. 55. The business conducted by TBC is closely related to Bucky Dents business in
making personal appearances and endorsements, and other commercial activities involving baseball. 56. of the Mark. 57. TBC knew or should have known of a substantial value of Bucky Dents name TBCs infringement dilutes the distinctiveness and erodes the commercial value
and Mark, and that TBCs assimilation of the name and Mark in its business has and will continue to confuse and deceive the public as to the source and origin of TBCs services and
products, and into believing that the business conducted by TBC is actually operated by Bucky Dent, all to the detriment of Bucky Dents good name and economic and business interest. 58. TBCs infringement has and will continue to cause injury and, unless
preliminarily and permanently enjoined, irreparable harm to Bucky Dent. COUNT III (Violation of Floridas Right of Publicity Statute) 59. Each of the allegations set forth in paragraphs 1 through 45, inclusive, of the
Complaint, are incorporated, with the same force and effect as if fully restated. 60. This is a claim by Bucky Dent against TBC for violations of Floridas Right of
Publicity, pursuant to Fla. Stat. 540.08. 61. TBCs public and commercial use of Bucky Dents name for profit, without
permission, to promote, market and offer, for profit, youth baseball programs, constitutes a violation of Fla. Stat. 540.08. 62. TBCs violations of Fla. Stat. 540.08 have and will continue to cause damages
and, unless preliminarily and permanently enjoined, irreparable harm, to Bucky Dent. COUNT IV (Breach of Common Law Right of Publicity) 63. Each of the allegations set forth in paragraphs 1 through 45, inclusive, of the
Complaint, are incorporated, with the same force and effect as if fully restated. 64. This is a claim by Bucky Dent against TBC for violations of the common law
right of publicity.
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65.
Bucky Dents name, image and other personal attributes surrounding him and his
image are valuable and important qualities of his persona, and uniquely identify Bucky Dent in the public. 66. Bucky Dents right of publicity includes controlling and protecting the
commercial exploitation and use of the commercial viability of his name, image and other personal attributes. 67. TBCs unauthorized infringement and exploitation of Bucky Dents name, image
and other attributes constitute a violation of the right of publicity which has and will continue to cause damage and loss of commercial value and, unless preliminarily and permanently enjoined, irreparable harm to Bucky Dent. COUNT V (Breach of the Putative License Agreement) 68. Each of the allegations set forth in paragraphs 1 through 45, inclusive, of the
Complaint are incorporated, with the same force and effect as if fully restated. 69. This is a claim by Bucky Dent against TBC for material breach of a putative
License Agreement. 70. Following Bucky Dent advising Uderitz and TBC that he canceled and withdrew
the conditional permission to use the Mark, Uderitz and TBC provided to Bucky Dent a copy of a putative License Agreement, a copy of which is attached as Exhibit C to this Complaint. 71. enforceable. 72. In the event that the License Agreement is valid and enforceable, TBC has At this time, Bucky Dent is uncertain whether the License Agreement is valid and
breached its express and implied terms by: (i) misusing the Mark outside and beyond the
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Business as that term is defined; (ii) improperly transferring use of the Mark to third parties without permission; and (iii) terminating Bucky Dents staff and effectively preventing him from overseeing control of the quality, image, type and location of the youth baseball programs marketed and offered to the public by TBC under the Mark. 73. TBC has materially breached the License Agreement, as this misconduct is
inconsistent with Bucky Dents ownership of the Mark and did not inure to Bucky Dents benefit and his rights in the Mark. 74. TBCs material breach of the putative License Agreement has caused and will
continue to cause substantial damages to Bucky Dent. COUNT VI (Breach of the Duty of Loyalty and Care - TBC) 75. Each of the allegations set forth in paragraphs 1 through 45, inclusive, of the
Complaint are incorporated, with the same force and effect as if fully restated. 76. This is a claim by Twins 20 against Uderitz for breach of the statutory duty of
loyalty and care to Twins 20 as established under Fla. Stat. 608.4225. 77. Uderitz intentionally, willfully and in bad faith breached the duty of loyalty by
dealing with TBC for himself while maintaining an adverse interest to TBC. 78. Specifically, Uderitz improperly attempted to extinguish Twins 20s twenty
percent (20%) member and ownership interest in TBC in order to increase his membership and ownership interest in TBC, all for his own economic benefit. 79. Consequently, Uderitz breached the duty of care by engaging in grossly negligent
and reckless conduct, and/or intentional conduct by attempting to extinguish Twins 20s ownership and membership interest in TBC.
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80.
As a direct and proximate result of Uderitzs breach of the duty of loyalty and
care, Twins 20 has suffered substantial damages. 81. Uderitzs conduct was intentional, malicious and reckless. COUNT VII (Breach of the Duty of Loyalty and Care Hot Corner) 82. Each of the allegations set forth in paragraphs 1 through 45, inclusive, of the
Complaint are incorporated, with the same force and effect as if fully restated. 83. This is a claim by CCMB against Uderitz for breach of the statutory duty of
loyalty and care to CCMB as established under Fla. Stat. 608.4225. 84. Uderitz intentionally, willfully and in bad faith breached the duty of loyalty by
dealing with Hot Corner for himself while maintaining an adverse interest to Hot Corner. 85. Specifically, Uderitz improperly attempted to extinguish CCMBs twenty percent
(20%) member and ownership interest in Hot Corner in order to increase his membership and ownership interest in Hot Corner, all for his own economic benefit. 86. Consequently, Uderitz breached the duty of care by engaging in grossly negligent
and reckless conduct, and/or intentional conduct by attempting to extinguish CCMBs ownership and membership interest in Hot Corner. 87. As a direct and proximate result of Uderitzs breach of the duty of loyalty and
care, CCMB has suffered substantial damages. 88. Uderitzs conduct was intentional, malicious and reckless.
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COUNT VIII (Declaratory Relief) 89. Each of the allegations set forth in paragraphs 1 through 45, inclusive, of the
Complaint are incorporated, with the same force and effect as if fully restated. 90. This is a claim by Bucky Dent against TBC for declaratory relief, pursuant to 28
U.S.C. 2201(a) involving a dispute within the subject matter jurisdiction of this Court. 91. There is a substantial controversy between the parties having adverse legal
interest of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. 92. There is a case of actual controversy within the jurisdiction of this Court, which
currently exists between Bucky Dent and TBC with respect to the parties rights and obligations under the putative License Agreement, including the validity and enforceability of the License Agreement, and the termination and breach of the License Agreement. 93. Specifically, Bucky Dent seeks a declaration that: (i) the putative License
Agreement is invalid and unenforceable; and (ii) the License Agreement was properly terminated after being materially breached by TBC. 94. A declaration of the rights of the parties with respect to the enforceability and
validity of the putative License Agreement, and the termination and material breach of the License Agreement will serve the interest of justice. PRAYER FOR RELIEF WHEREFORE, Plaintiffs request: A. On Counts I, II, III, IV and V, (i) the issuance of a preliminary and permanent
injunction, pursuant to 15 U.S.C. 1116, Fla. Stat. 540.08 and other law, enjoining and restraining TBC, its agents, employees, representatives, successors, assigns, attorneys and all
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other persons and entities in privity or active concert or participation with them from continued and further infringement of Bucky Dents trade name and trademark, the Bucky Dent Baseball School, and Bucky Dents name, image and other personal attributes; (ii) TBC be ordered, pursuant to 15 U.S.C. 1118, to deliver up for destruction all products, brochures, signs, prints, uniforms and equipment, advertising, and promotional material or the like in TBCs possession, custody or under its control bearing the Mark or Bucky Dents name; (iii) actual damages sustained by Bucky Dent as a result of TBCs infringing conduct, including all profits wrongfully received, and commercial exploitation; (iv) treble damages pursuant to 15 U.S.C. 1117(a), particularly due to the willful and deliberate nature of the infringement; (v) punitive damages; (vi) reasonable attorneys fees pursuant to 15 U.S.C. 1117(a); and (vii) that TBC be ordered to file with the Clerk and serve on Plaintiff, pursuant to 15 U.S.C. 1116, and within thirty (30) days after issuance of the injunction, a report in writing and under oath setting forth in detail the manner and form by which TBC has complied with the injunction. B. On Count VI, an accounting of Twins 20s interest in TBC, and an award of
actual and punitive damages against TBC and Uderitz. C. On Count VII, an accounting of CCMBs interest in Hot Corner, and an award of
actual and punitive damages. D. On Count VIII, a declaration that, (i) the punitive License Agreement is invalid
and unenforceable; and (ii) the License Agreement was properly terminated after being materially breached by TBC. E. F. An award of costs and interest. Such other and further relief and declarations as may be just and appropriate.
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DEMAND FOR JURY TRIAL Pursuant to Fed. R. Civ. P. 38, Plaintiffs demand a jury trial on all issues in this action triable of right by a jury. RESERVATION OF RIGHTS Plaintiffs hereby reserve the right, upon completion of investigation and discovery, to assert such additional claims against defendants and other responsible parties as may be just and appropriate under the circumstances and permitted by the Court. Dated: this 21st day of June, 2012. Respectfully submitted, BUCKINGHAM, DOOLITTLE & BURROUGHS, LLP s/Garry W. ODonnell Garry W. ODonnell, Esq. Florida Bar No: 0478148 5355 Town Center Road, Suite 900 Boca Raton, Florida 33486 Telephone: (561) 241-0414 Facsimile: (561) 241-9766 godonnell@bdblaw.com Attorneys for Plaintiffs, Bucky Dent, Twins 20 Enterprises, LLC, and CCMB Enterprises, LLC
BOCA:290095_v6/74572-0001
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