          Case: 12-13776   Date Filed: 02/13/2013   Page: 1 of 10

                                                         [DO NOT PUBLISH]


           IN THE UNITED STATES COURT OF APPEALS

                    FOR THE ELEVENTH CIRCUIT
                      ________________________

                            No. 12-13776
                        Non-Argument Calendar
                      ________________________

                  D.C. Docket No. 9:11-cv-81156-DMM

THANH NGUYEN,
LUONG NGUYEN,

                                                                   Plaintiffs-
                                                          Counter Defendants-
                                                                   Appellees,


                                 versus

BARRY BIONDO,
TIPSY SPA AND SALON INC.,

                                                                 Defendants-
                                                           Counter Claimants-
                                                                  Appellants.

                      ________________________

               Appeal from the United States District Court
                   for the Southern District of Florida
                     ________________________

                           (February 13, 2013)
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Before WILSON, PRYOR and ANDERSON, Circuit Judges.

PER CURIAM:

      Barry Biondo and his company, Tipsy Spa and Salon Inc., (collectively

“Biondo”) appeal the summary judgment in favor of Thanh and Luong Nguyen on

their complaints of false designation of origin and trademark infringement in

violation of the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), cyberpiracy in violation

of the AntiCybersquatting Consumer Protection Act, id. § 1125(d), trademark

infringement in violation of Florida law, and breach of contract. Biondo

challenges the judgment against his affirmative defenses of abandonment, duress,

and commercial frustration. Biondo also challenges the decision of the district

court to strike his affidavit. We affirm.

                                I. BACKGROUND

      The Nguyens own and operate upscale hair and nail salons that serve alcohol

to patrons. In 2006, Thanh created a mark containing the word “Tipsy” to

advertise the amenities available at the salon, and he incorporated the mark into the

name of a new salon, the Tipsy Nail Spa & Salon at Wellington Reserve

(“Wellington Tipsy”). Later, Thanh registered the Tipsy mark with the United

States Patent and Trademark Office and with the State of Florida.

      Between the time that Thanh applied for and obtained exclusive rights to the

Tipsy mark, the Nguyens agreed orally to sell Biondo a one-half interest in the

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Wellington Tipsy. Soon after Thanh acquired the mark, the business relationship

between the Nguyens and Biondo deteriorated and the Nguyens agreed to sell their

half interest in the salon to Biondo. Because the Nguyens and Biondo “dispute[d]

each other[’s] ownership interest” and had “determined that it [was] not in their

best interest to continue to operate the BUSINESS together,” the Nguyens sold

Biondo the full “rights[,] title and interest” in the Wellington Tipsy. Paragraph 8

of the sales agreement provided that Biondo was allowed until March 11, 2011, “to

continue operating the BUSINESS using the name ‘Tipsy’” and that “the right to

the use of name ‘Tipsy’ or any mark associated with that business name is not

being purchased by [Biondo].”

      Biondo violated the sales agreement. Biondo failed timely to pay weekly

installments to the Nguyens. Biondo also continued to use the word Tipsy in the

name of his salon. On March 21, 2011, Biondo applied for a trademark to protect a

logo comprised of the words “Tipsy Spa * Salon” in conjunction with a martini

glass containing a cherry.

      The Nguyens sued Biondo for violations of the Lanham Act and the

AntiCybersquatting Act, unjust enrichment, and breach of contract. The Nguyens

alleged that, after March 11, 2011, Biondo had continued to use the Tipsy mark or

a mark that was confusingly similar in its business façade, in print and television

advertising, and on the internet. The Nguyens also alleged that Biondo had

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violated the Nguyens’ ownership rights in the Tipsy mark; used the Tipsy mark or

a counterfeit mark in a manner likely to cause confusion about the origin of the

goods and services offered; “registered, traffic[ked] in, and use[d] a domain name,

www.Tipsyspa.com[,] that [was] identical, confusingly similar, or dilutive of the

‘Tipsy’ Mark”; “traded on” and profited from the “value and goodwill” in the

Tipsy mark; and breached the sales agreement by using the “‘Tipsy’ name and

‘Tipsy’ Mark,” failing to make installment payments, and misappropriating the

Tipsy domain name. The Nguyens requested monetary and injunctive relief. The

Nguyens later amended their complaint to include claims for trademark

infringement and dilution under Florida law.

      Biondo filed an answer that asserted several affirmative defenses. Biondo

argued that he had rights to use the Tipsy mark; the Nguyens abandoned through

“naked licensing” their right to the mark; the Nguyens had breached the sales

agreement; and he entered the agreement under duress. Biondo also filed a

counterclaim for fraudulent procurement of a trademark, which he later withdrew.

      Biondo was a contentious litigant. Biondo was sanctioned for failing to

comply with the rules of discovery and refusing to produce documents requested

by the Nguyens. Later, Biondo refused to produce a witness for deposition. And,

two days before the close of discovery, Biondo produced a journal that recorded




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his business dealings with the Nguyens. During a deposition taken soon after,

Biondo testified that he could not recall the events recorded in the journal.

      The Nguyens and Biondo moved for summary judgment. The Nguyens

argued that the obvious similarities in the Tipsy mark and Biondo’s mark and

evidence of actual confusion experienced by their respective customers established

that Biondo had infringed on the “Tipsy” mark. The Nguyens attached to their

motion an affidavit from Catherine Hasson, the manager of Tipsy of Jupiter Spa

and Salon, that patrons of the Jupiter Tipsy often scheduled their appointments

mistakenly at the Wellington Tipsy and tried to pay for services with coupons or

gift cards issued by the Wellington Tipsy.

      Biondo argued for summary judgment on the two affirmative defenses of

abandonment and duress asserted in his answer and based on a defense of

commercial frustration not asserted in his answer. Biondo attached to his motion

an affidavit in which he restated, nearly verbatim, the entries in his journal.

Biondo also attached the affidavit to his response to the Nguyens’ motion for

summary judgment.

      The Nguyens moved to strike Biondo’s affidavit as a sham. The Nguyens

described how Biondo had “disclaimed knowledge or recollection of” specific

entries in his journal and later submitted an affidavit containing a verbatim copy of

those entries. The Nguyens argued that Biondo’s affidavit was not a “case of

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failed memory,” but instead revealed Biondo’s “attempt[] to obfuscate, conceal,

and avoid testimony.”

      The district court granted the Nguyens’ motion to strike Biondo’s affidavit

by default under a local rule allowing a default in the absence of a response to a

pretrial motion, S.D. Fla. L. R. 7.1(c), and alternatively, “on the merits.” The

district court found it inconceivable that Biondo could not during his deposition

recall the events recorded in his journal because he had a “very bad memory,” yet

later prepare an affidavit that included wholesale excerpts from the journal. The

district court refused to consider the affidavit on the grounds that “Biondo either

(1) remembered the events he recorded in his journal and intentionally failed to

answer Plaintiff’s questions during his deposition or (2) copied the entries into his

affidavit even though he did not remember the events he recorded in his journal.”

      The district court entered summary judgment for the Nguyens and against

Biondo. The district court sustained the Nguyens’ complaints of trademark

infringement, violations of the Cybersquatting Act, dilution, and breach of

contract, but rejected the Nguyens’ complaint about unjust enrichment. And the

district court ruled that Biondo’s affirmative defenses of abandonment and duress

failed for lack of evidence and as a matter of law and that his defense of

commercial frustration was untimely. The district court awarded the Nguyens




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monetary damages and injunctive relief that prohibited Biondo from using the

Tipsy mark.



                          II. STANDARDS OF REVIEW

      We apply two standards of review in this appeal. We review de novo the

summary judgment in favor of the Nguyens. Holloman v. Mail-Well Corp., 443

F.3d 832, 836 (11th Cir. 2006). We review the decision to strike Biondo’s

affidavit for abuse of discretion. Croom v. Balkwill, 645 F.3d 1240, 1253 n.18

(11th Cir. 2011).

                                 III. DISCUSSION

      Biondo challenges the summary judgment in favor of the Nguyens and the

striking of his affidavit. Biondo argues that the evidence supports his affirmative

defenses of abandonment, duress, and commercial frustration, and he argues, for

the first time, that the district court should have employed a lesser sanction than

striking his affidavit. We address these arguments in turn.

      The district court did not err in rejecting Biondo’s affirmative defense of

abandonment. An owner of a trademark may “abandon[] [his] mark through

‘naked licensing,’ or the failure to properly supervise [his] licensee’s use of the

mark,” Prof’l Golfers Ass’n of Am. v. Bankers Life & Cas. Co., 514 F.2d 665, 671

(5th Cir. 1975), but a claim of abandonment turns on when the lack of supervision

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occurred. A licensee “is estopped to contest the validity of the licensor’s title

during the course of the licensing arrangement,” but “after [its] expiration,” the

licensee may “challenge the licensor’s title on facts which arose after the contract

has expired.” Id. Biondo argued that Thanh abandoned the Tipsy mark between

2008 and early 2010, but when Biondo later signed the sales agreement on March

11, 2010, he expressly recognized that Thanh owned the mark. See id. (“The

licensee has, by virtue of the agreement, recognized the holder’s ownership.”).

After the agreement expired, Thanh sued Biondo for trademark infringement.

Biondo’s defense of abandonment fails.

      The district court also did not err in rejecting Biondo’s defense of duress.

To prove duress, “[i]t must be shown (a) that the act sought to be set aside was

effected involuntarily and thus not as an exercise of free choice or will and (b) that

this condition of mind was caused by some improper and coercive conduct of the

opposite side.” City of Miami v. Kory, 394 So. 2d 494, 497 (Fla. Dist. Ct. App.

1981). Biondo argued that he entered the sales agreement so that the Nguyens

would dismiss an action seeking to enjoin Biondo from “repeat violence.” The

Nguyens countered Biondo’s defense of duress by establishing that their action

was neither improper nor coercive. See O’Brien v. Federal Trust Bank, F.S.B.,

727 So. 2d 296, 298 (Fla. Dist. Ct. App. 1999). The Nguyens’ petition for an

injunction alleged Biondo had, on one occasion, threatened and then “head butted”

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Thanh and, on a second occasion, “grabbed [Thanh] and pushed him, causing a

bruise on [his] shoulder.” The Nguyens dismissed their action against Biondo

approximately five months before he entered the sales agreement, and Biondo did

not dispute the facts contained in the petition. Under Florida law, an agreement to

dismiss even a criminal action in exchange for execution of a legal document does

not constitute duress if the criminal action was legally justifiable. Tyler v. Hill

Bros., 173 So. 147 (Fla. 1937); Franklin v. Wallack, 576 So. 2d 1371 (Fla. Dist. Ct.

App. 1991); Norris v. Stewart, 350 So. 2d 31 (Fla. Dist. Ct. App. 1977). Biondo

failed to introduce any evidence that the Nguyens’ action was unlawful.

      Biondo also contends that he established the affirmative defense of

commercial frustration, but Biondo waived that defense by raising it for the first

time in his motion for summary judgment. See Latimer v. Roaring Toyz, Inc., 601

F.3d 1224, 1239 (11th Cir. 2010) (citing Fed. R. Civ. P. 8(c)). Biondo further

argues that disputed issues of fact preclude summary judgment in favor of the

Nguyens, but Biondo fails to identify what facts are in dispute or how they are

material.

      The district court also did not abuse its discretion when it struck Biondo’s

affidavit. The district court was entitled, under local rule, to grant the motion to

strike Biondo’s affidavit by default, see S.D. Fla. L. R. 7.1(c), and the district court

was entitled to disregard Biondo’s affidavit as a “transparent sham,” Tippens v.

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Celotex Corp., 805 F.2d 949, 953 (11th Cir. 1986). “An affidavit may . . . be

disregarded as a sham ‘when a party has given clear answers to unambiguous

questions which negate the existence of any genuine issue of material fact ... [and

that party attempts] thereafter [to] create such an issue with an affidavit that merely

contradicts, without explanation, previously given clear testimony.’” Id. at 954

(quoting Van T. Junkins and Assocs. v. U.S. Indus., 736 F.2d 656, 657 (11th Cir.

1984). During his deposition, Biondo refused to verify as “accurate” specific

events he had recorded about his business dealings with the Nguyens, but less than

one month later, Biondo filed an affidavit stating that those events were accurate.

And Biondo provided no explanation for the contradictory statements in his

affidavit. Biondo argues, for the first time, that the discrepancy was attributable to

a cold and that the district court should have imposed some sanction short of

striking his affidavit, but we will not consider arguments that he failed to present to

the district court. See Access Now, Inc. v. Sw. Airlines Co., 385 F.3d 1324, 1331

(11th Cir. 2004).

      We AFFIRM the summary judgment in favor of the Nguyens.




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