Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA237328
`ESTTA Tracking number:
`09/17/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91185411
`Plaintiff
`Bart Enterprises International LTD
`Cristina Arenas-Solis
`Ferraiuoli Torres Marchand & Rovira, PSC
`221 Plaza, Suite 403221 Ponce de Leon
`San Juan, PR 00926
`UNITED STATES
`carenas@ftmrlaw.com, lbelendez@ftmrlaw.com
`Motion to Suspend for Civil Action
`Cristina Arenas-Solis
`carenas@ftmrlaw.com, lbelendez@ftmrlaw.com
`/CristinaArenasSolis/
`09/17/2008
`Motion Requesting Suspension Astrologos.pdf ( 4 pages )(106386 bytes )
`Dkt 1- Complaint.pdf ( 76 pages )(3452482 bytes )
`Dkt 36.pdf ( 55 pages )(793094 bytes )
`Dkt 45_Paintiff Counter Deffandants.pdf ( 20 pages )(1123120 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of App
`Publication in
`the Official Gazette of
`For: LOS ASTROLOGOS D? WALT%R MfiRCADO
`
`lication Serial No.
`
`77/047242
`June 24, 2008
`
`NT%RNAT ONAL LTD.
`%ART +NT%RPR S45
`Opposer
`
`Opposition No. 91185411
`
`v.
`
`ASTROMUNDO INC.
`
`Applicant
`
`Commissioner for Trademarks
`
`Attn: Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`MOTION REQUESTING STAY OF PROCEEDINGS
`PENDING RESOLUTION OF FEDERAL CASE
`
`COMES
`
`NOW,
`
`'%art
`
`‘Enterprises
`
`"nternational,
`
`LTD.
`
`(hereinafter “?art”),
`
`by
`
`its undersigned attorneys,
`
`and
`
`very respectfully states and prays:
`
`1.0n
`
`July
`
`24,
`
`2008 Opposer
`
`filed its Notice
`
`of
`
`Opposition to the above referenced mark, based on the fac-
`
`that it is the rightful owner of said mark by means of an
`
`Agreement executed by Walter Mercado and
`
`3art on June 7,
`
`1995,
`
`and has not authorized Applicant
`
`to use or register
`
`it.
`
`2. Trademark Rule 2. 117 provides:
`
`

`
`“(a) Whenever it sh
`
`all
`
`come
`
`to the attentior
`
`O:
`
`the TTA3
`
`that
`
`case are engaged
`
`a par‘
`:y or‘ parties
`to a pending
`in a civil action or another
`
`3oard proceeding which may have a bearing on
`be fore
`the
`Board
`may
`the civil action
`
`case,
`
`proceedings
`termination o‘
`
`the
`
`be
`
`suspended until
`or the other
`
`3oard proceeding.”
`
`3.0n January 17, 2007,
`
`a Complaint was
`
`filed a Complaint
`
`before the United States
`
`District Court
`
`Southern
`
`Dis
`
`-ric
`
`n
`
`0.
`
`F'orida Miami
`
`Division
`
`by
`
`Walter
`
`"nternationa'
`
`Productions,
`
`Inc.
`
`et al.
`
`v.
`
`Walter Mercado Salinas, et al.,
`
`Civil No.
`
`07-20136.
`
`In this
`
`case,
`
`among other
`
`things,
`
`de
`
`fendants,
`
`which includes
`
`the Applicant
`
`in the case at
`
`bar,
`
`have
`
`alleged that
`
`the
`
`Agreement
`
`whereby Mercado
`
`assigned all
`
`right,
`
`title a
`
`nd
`
`interests
`
`to all
`
`o : his
`
`trademarks to Opposer is null.
`
`.lt is
`
`Opposer’s contention that
`
`the agreement
`
`is valid
`
`and enforceable.
`
`Furthermore, Walter Mercado authorized
`
`and signed a living consent for War.
`
`,o register his name,
`
`and
`
`he
`
`also granted Dart al'
`
`righ-s
`
`of
`
`ownership
`
`and
`
`authority’
`
`to any and all of
`
`-he
`
`trademark names
`
`in the
`
`United States of
`
`America and elsewhere in the world.
`
`5.0pposer respectfully submits
`
`the
`
`following documents,
`
`all pertaining to Walter
`
`"nternationa'
`
`?roductions,
`
`Inc.
`
`et. al. v. Walter Mercado Saliras, et. al., Civil No. 07-
`
`20136
`
`in
`
`the United States District Court
`
`— Southern
`
`

`
`District
`
`O:
`
`Florida,
`
`Miami Divisi
`
`OH
`
`(hereinafter,
`
`“the
`
`Case”):
`
`.Complaint —
`
`Docket Number
`
`1
`
`(Exhibit A);
`
`.Answer,
`
`A
`
`”irmaLive Defens
`
`GS
`
`and. Counterclaim
`
`Docket Number
`
`36 (?xhibit Q
`
`);
`
`'ain
`
`_,'|
`
`"s/Counter—De
`
`fende 1'1
`
`ts’
`
`Answer
`
`and
`
`”irma,ive
`
`De
`
`fenses
`
`to
`
`De
`
`fendants’
`
`Counterclaim
`
`Docket
`
`Number 45 (
`
`Exhibit C);
`
`6.As
`
`the
`
`accompanied
`
`documents
`
`evince
`
`the
`
`“Walter
`
`Mercado”
`
`trademarks,
`
`including LOS ASTROLOGOS
`
`‘-1
`-‘I
`
`WAPT?R
`
`MERCADO,
`
`is a central
`
`issue in the Case.
`
`'1
`The ownership o;
`
`the
`
`“Walter Mercado”
`
`trademark
`
`and
`
`including
`
`LOS
`
`ASTROLOGOS
`
`its
`
`deriva
`
`tives,
`
`‘-1
`-‘I WART
`
`fiR
`
`M fiRCADO, will
`
`be
`
`e "ectively determined
`
`in the Case.
`
`The trial in this case
`
`is currently scheduled
`
`for Jaruary 5,
`
`2009.
`
`7.
`
`We hereby include the
`
`Docket Sheet
`
`for the Case.
`
`In
`
`the
`
`event
`
`that
`
`the
`
`3
`TTAI wishes
`
`to
`
`examine
`
`any
`
`other
`
`pleadirgs
`
`and/or
`
`motions
`
`in
`
`the
`
`case,
`
`Opposer
`
`will
`
`immediately file it acc
`
`ordingly.
`
`WH %R%EOR%,
`
`Opposer
`
`respectfully
`
`requests
`
`that
`
`the
`
`Tradema
`
`rk Trial and Appeal
`
`Board stay this proceeding until
`
`resolution of
`
`the Florida
`
`federal case
`
`i
`
`s
`
`resolved.
`
`The
`
`case is currently in the summary judgment stage.
`
`

`
`H
`
`*'.R '.-%Y C fiRT
`
`BY that
`
`on this same date a true and exact
`
`copy 0
`
`the joregoing
`
`_otion has been sent by e—mail and by
`
`First Class Mail
`
`to:
`
`L, ill Sarno
`
`I
`
`Akerman Seterfitt,
`
`420
`
`S.
`
`Orange
`
`Ave.,
`
`Orla
`
`ndo,
`
`Florida
`
`32801
`
`(jill.riola@akerman.con).
`
`R
`
`fiSP fiCTEUPLY SU %M TT1
`
`In San Juan, Puerto Rico,
`
`this 17th day 0:
`
`September,
`
`2008.
`
`'*'.RRA UOR
`
`TORRflS MARCHAND & ROV:
`
`RA,
`
`PSC
`
`221 Plaza Suite 403
`
`221 Ponce de Leén Avenue
`
`Puerto Rico 00917
`San Juan,
`Tel: 787-766-7000; Fax:
`
`787-766-7001
`
`S/Laura Beléndez—Ferrero
`%
`«IT.
`1-.N3 «'.'.—J:' fiRR %RO
`LAURA
`1belendez@ftmrlaw. C 011":
`
`e—mail:
`
`S/Cristina Arenas—Solis
`CR ST NA ARjNAS-SOL: S
`
`e—mail:
`
`carenas@ftmrlaw.com
`
`

`
`‘Case-ft :O?—cv~2{3t3€;'3—F’AS
`
`Document 1
`
`Entered on FLSD Docket (31./'18/2067 Pae 1 of ?5
`
`
`
`CLARENCE MADDOX
`CLERK U.S. DIST. CT.
`
`s.o. OF FLA. — MIAMI
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF FLORIDA
`
`MIAMI DIVISION
`
`WALTERINTERNATIONAL
`
`CASENO.
`PRODUCTIONS, INC., a Florida Corporation,
`WATERVISION, INC., a Florida Corporation,
`WALTERVISION PRODUCTIONS, INC., a
`Florida Corporation, WALTER MERCADO
`RADIO PRODUCTIONS, INC., a Florida
`
`Corporation, BART ENTERPRISES
`INTERNATIONAL, LTD., a Bahamas
`
`Corporation, and WALTER MERCADO
`ENTERPRISES CORP., a Florida
`Corporation
`
`Plaintiffs,
`
`V.
`
`WALTER MERCADO SALINAS, a natural
`
`person, and ASTROMUNDO, INC., a Puerto
`Rico Corporation
`
`Defendants.
`
`COMPLAINT
`
`*
`
`~
`
`"
`
`M<‘ALlLE}3_
`
`Plaintiffs, Walter International Productions, Inc. (“International Productions”),
`
`Watervision,
`
`Inc.
`
`(“WaterVision”), WalterVision Productions,
`
`Inc.
`
`(“WalterVision”),
`
`Walter Mercado Radio Productions,
`
`Inc.
`
`(“Radio Productions”), Bart Enterprises
`
`International, Ltd. (“Bart Enterprises” or “Bart”) and Walter Mercado Enterprises Corp.
`
`(“Walter Enterprises”) (collectively, “Plaintiffs”), sue the Defendants, Walter Mercado
`
`Salinas
`
`(“Mercado”)
`
`and Astromundo,
`
`Inc.
`
`(“Astromundo”)
`
`(collectively,
`
`the
`
`“Defendants”), and state as follows:
`
`Creéa6QGg7B‘nurig, P.A.
`
`I Attorneys at Law I 1221 Brickell Avenue I Miami, FL 33131 I Tel 305.579.0500 I Fax 305.579.0717 I www.gtlaw.com
`
`

`
`. Cased :O?—ev~2m3€;'3—F’AS
`
`Document 1
`
`Entered on FLSD Docket (31./'18/2007
`
`Page 2 of ?5
`
`PRELIMINARY STATEMENT
`
`1.
`
`This action arises from a breach of contract and tortious interference with
`
`contract by the Defendants.
`
`JURISDICTION AND VENUE
`
`2.
`
`The Court has jurisdiction over the subject matter of this action pursuant
`
`to 28 U.S.C. § 1332, because it involves a dispute between citizens of different states
`
`with an amount in controversy exceeding $75,000. Upon information and belief, the
`
`actual damages to Plaintiffs are estimated to be in excess of $1,000,000 and are
`
`increasing exponentially and on a duly basis.
`
`3.
`
`Venue is proper in this Court because most of the acts underlying this
`
`Complaint occurred within this judicial district.
`
`4.
`
`All conditions precedent to bringing this action, if any, have occurred or
`
`have been excused or waived.
`
`5.
`
`Plaintiffs have been required to retain undersigned counsel to enforce their
`
`rights through this action, and are obligated to pay their counsel a reasonable fee for those
`
`services.
`
`IDENTITY OF THE PARTIES
`
`6.
`
`Plaintiff, Bart Enterprises is a Bahamian corporation with its principal
`
`place of business in Nassau, Bahamas.
`
`7.
`
`Plaintiff,
`
`International Productions is a Florida corporation with its
`
`principal place of business in Miami, Florida.
`
`8.
`
`Plaintiff, Watervision is a Florida corporation with its principal place of
`
`business in Miami, Florida.
`
`Gre@eEQ@g7B‘aurig, P.A.
`
`I Attorneys at Law I 1221 Bricl<ellAvenue I Miami, FL 33131 I Tel 305.579.0500 I Fax 305.579.0717 I www.gtlaw.c0m
`
`

`
`1 Case? :O?—cv~2{3t3€;'3—F’AS
`
`Document 1
`
`Entered on FLSD Docket (31./'18/2%?
`
`Page 3 of ?E3
`
`9.
`
`Plaintiff, WalterVision is a Florida corporation with its principal place of
`
`business in Miami, Florida.
`
`10.
`
`Plaintiff, Radio Productions is a Florida corporation with its principal
`
`place of business in Miami, Florida.
`
`11.
`
`Plaintiff, Walter Enterprises is a Florida corporation with its principal
`
`place of business in Miami, Florida.
`
`12.
`
`Defendant, Mercado is a natural person residing in San Juan, Puerto Rico.
`
`Mercado travels to Florida for business on a regular basis.
`
`13.
`
`Defendant, Astromundo is a Puerto Rico corporation with its principal
`
`place of business in San Juan, Puerto Rico.
`
`CONTRACTS
`
`Agreement Between Bart Enterprises and Mercado
`
`14.
`
`On August 4, 1995, Bart Enterprises entered into an "agreement with
`
`Mercado (the “Agreement”), effective as of June 7, 1995.
`
`(A true and correct copy of the
`
`contract is attached hereto as Exhibit “A”). The Agreement was executed by Guillermo
`
`Bakula (“Mr. Bakula”) - president of Bart Enterprises — and Mercado.
`
`15.
`
`Pursuant to the Agreement, Mercado granted “to Bart the exclusive right
`
`and license
`
`to develop, produce, distribute and copyright
`
`in its own name new
`
`materials, in any language, relating to Mercado’s psychic and astrological services of
`
`whatever nature whatsoever, including but not limited to print, audiotext, audiovisual and
`
`radio programming, computer software, merchandise and advertising and promotion in
`
`connection therewith ..., through the Territory by any and all means and in any and all
`
`media...” (Exh. “A,” Section 1(b))
`
`Cre€aUB1'g7B’aurig, PA.
`
`I Attorneys at Law I 1221 Brickell Avenue I Miami, FL 33131 I Tel 305.579.0500 I Fax 305.579.0717 I www.gtlaw.com
`
`

`
`' Cased :O?—cv~2{3t3€;'3—F’AS
`
`Document 1
`
`Entered on FLSD Docket (31./'18/2&6?
`
`Page 4 of 75
`
`16.
`
`Moreover, Mercado “irrevocably assign[ed] to Bart
`
`all rights, title and
`
`interest in and to the Mark, together with the part of the goodwill of Mercado’s business
`
`connected with and symbolized by said Mark, for use in connection with the Pre-existing
`
`Materials and the New Materials, if any.” (Exh. “A,” Section 2 (b))
`
`17.
`
`Mercado also granted “to Bart the right and license
`
`to use Mercado’s
`
`performance, name, signature, photographs, voice, picture, likeness, or other indicia of
`
`his identity (collectively ‘Name and Likeness’)
`
`in connection with the Preexisting
`
`Materials and New Materials by any means and in any and all
`
`.” (Exh. “A,” Section
`
`3(1)»
`
`18.
`
`Mercado “agree[d] to provide additional psychic and astrological services
`
`to Bart in connection with the creation of the New Materials during the Additional
`
`Services Period... Such Additional Services shall
`
`include but not limited to creating
`
`audiotext recordings for pay per call services, appearing in long fonn commercials
`
`(‘lnfomercials’), creating print, radio and television advertising and making personal
`
`appearances. ...” (Exh. “A,” Section 6 (b)(i))
`
`19.
`
`Mercado admitted that the “services to be performed by Mercado and the
`
`rights granted [pursuant
`
`to the Agreement] are special, unique, extraordinary and
`
`impossible of replacement, giving them a particular value,
`
`the loss of which cannot
`
`reasonably or adequately be compensated in damages in an action at
`
`law and that
`
`Mercado’s failure or refusal to perform his obligations hereunder would cause irreparable
`
`harm or damage. Therefore, should Mercado fail or refuse to perform such obligations,
`
`Bart shall be entitled in addition to any of its other rights and remedies Bart may have, to
`
`seek injunctive or other equitable relief.” (Exh. “A,” Section 15)
`
`4
`
`Greé9m1Tg7B1aurig, P.A.
`
`I Attorneys at Law I 1221 Brickell Avenue I Miami, FL 33131 I Tel 305.579.0500 I Fax 305.579.0717 I www.gtlaw.com
`
`

`
`. Cased :O?—ev~2{3t3€;'3—F’AS
`
`Document 1
`
`Entered on FLSD Docket Qt./'18/EQCE?
`
`Page 5 of ?E3
`
`20.
`
`Mercado agreed to “attend and participate in all rehearsals, filming or
`
`taping and photography sessions required and will render his services [pursuant to the
`
`Agreement]
`
`in accordance with the scripts or other materials Bart shall furnish to
`
`Mercado for such purposes. Mercado agrees to render Bart’s services in a competent and
`
`artistic manner to the best of his ability, and that all Mercado’s services will be subject to
`
`Bart’s approval, direction and reasonable control at all times. Mercado will promptly
`
`comply with whatever reasonable instructions, suggestions, and recommendations Bart
`
`may give Mercado in connection with the rendition of such services.” (Exh. “A,” Section
`
`18)
`
`21.
`
`The Agreement further stated that
`
`it “... shall not be assignable by
`
`Mercado without the prior written consent of Bart. Bart has full and unrestricted right to
`
`assign this Agreement...” (Exh. “A,” Section 20 (e))
`
`22.
`
`From June 1995 through the beginning of November 2006, Mercado
`
`performed his obligations and complied with all
`
`the requirements pursuant
`
`to the
`
`Agreement without interruption.
`
`23.
`
`In mid November 2006, however, Mercado began to breach the
`
`Agreement.
`
`Assignment by Bart Enterprises to International Productions
`
`24.
`
`On February 8, 2002, pursuant to paragraph 20(e) of the Agreement, Bart
`
`Enterprises lawfully assigned the rights set forth below to International Productions
`
`(“International Productions Assignment”).
`
`(A true and correct copy of the International
`
`Productions Assignment is attached hereto as Exhibit “B.”)
`
`(Sic Exh. “A” paragraph
`
`20(e) and ‘J 21 above)
`
`Greea’5mIg7'§-aurig, P.A.
`
`| Attorneys at Law | 1221 Brickell Avenue | Miami, FL 33131 | Tel 305.579.0500 I Fax 305.579.0717 | www.gtlaw.com
`
`

`
`I Case-St :O?—cv~2t3t3€;'3—F’AS
`
`Document 1
`
`Entered on FLSD Docket (31./'18/2%?
`
`Page 6 of ?E3
`
`25.
`
`Mercado had knowledge of the International Productions Assignment and,
`
`in fact, received payments from International Productions.
`
`26.
`
`Pursuant
`
`to the International Productions Assignment,
`
`International
`
`Productions’ rights include, but are not limited to: “(l) the exploitation of the following
`
`business(es) utilizing Walter Mercado’s name, likeness and image in the United States:
`
`(i) televised daily horoscope segments on Univision and its affiliates, including Univision
`
`Puerto Rico; (ii) intemet website;
`
`(2) the exploitation of the following business(es)
`
`utilizing Walter Mercado’s name, likeness and image in Central America: (i) newspaper
`
`publication of horoscope content; (ii) IVR (integrated voice response) daily pre-recorded
`
`horoscope services.” (Exh. “B”)
`
`Assignment by Bart Enterprises to Watervision
`
`27.
`
`On March 1, 2004, pursuant to paragraph 20(e) of the Agreement, Bart
`
`Enterprises lawfully assigned the rights set forth below to Watervision (“Watervision
`
`Assignment”).
`
`(A true and correct copy of the Watervision Assignment is attached
`
`hereto as Exhibit “C.”) (E Exh. “A” paragraph 20(e) and 1] 21 above)
`
`28.
`
`Mercado had knowledge of the Watervision Assignment and,
`
`in fact,
`
`received payments from Watervision.
`
`29.
`
`Pursuant to the Watervision Assignment, Watervision’s rights include, but
`
`are not limited to: “the exploitation of any and all business utilizing Walter Mercado’s
`
`name, likeness and image in Central America, including, but not limited to: (i) Psychic
`
`900 pay-per-call service;
`
`(ii) SMS (Short Messaging Service), which may include
`
`horoscopes, lucky numbers, chat, etc.; (iii) ring tones, logos and wallpapers for mobile
`
`devices;
`
`(iv)
`
`internet websites;
`
`(V)
`
`lottery and sweepstakes;
`
`(vi) DVDS;
`
`(vii) Club
`
`6
`
`creeeszmgynaurig, P.A.
`
`| Attorneys at Law | 1221 Brickell Avenue | Miami, FL 33131 | Tel 305.579.0500 I Fax 305.579.0717 | www.gtlaw.com
`
`

`
`' Cased :O?—cv~2{3t3E3—F’AS
`
`Document 1
`
`Entered on FLSD Docket {Et/'18/2067
`
`Page 7 of 75
`
`Membership Packages; (viii) prepaid Calling Cards; (ix) Televised daily horoscopes
`
`segments; (x) Audio horoscope transmission via radio; [and] (xi) Magazine publication of
`
`horoscope content, excluding newspapers.” (Exh. “C”)
`
`Assignment by Bart Enterprises to Waltervision
`
`30.
`
`On March 4, 2004, pursuant to paragraph 20(e) of the Agreement, Bart
`
`Enterprises lawfully assigned the rights set forth below to Waltervision (“Waltervision
`
`Assignment”).
`
`(A true and correct copy of the Waltervision Assignment is attached
`
`hereto as Exhibit “D.”) (E Exh. “A” paragraph 20(e) and fil 21 above)
`
`31.
`
`Mercado had knowledge of the Waltervision Assignment and,
`
`in fact,
`
`received payments from Waltervision.
`
`32.
`
`Pursuant to the Waltervision Assignment, Waltervision’s rights include,
`
`but are not limited to: “the exploitation of the following business(es) utilizing Walter
`
`Mercado’s name, likeness and image in the United States, both in the Hispanic and Anglo
`
`markets:
`
`(i) SMS (short messaging service), which may include horoscopes,
`
`lucky
`
`numbers, chat, etc; (ii) prepaid calling cards; (iii) lottery and sweepstakes; (iv) Club
`
`membership packages; (v) magazine publication of horoscope content; (vi) representing
`
`products in a capacity of spokesperson (products to be previously approved, in writing,
`
`by Bart).” (Exh. “D”)
`
`Assignment by Bart Enterprises to Radio Productions
`
`33.
`
`On October 14, 2004, pursuant to paragraph 20(e) of the Agreement, Bart
`
`Enterprises lawfully assigned the rights set forth below to Radio Productions (“Radio
`
`Productions Assignment”).
`
`(A true and correct copy of the Radio Productions
`
`Crééfifllfigmhurig, P.A.
`
`I Attorneys at Law I 1221 Brickell Avenue I Miami, FL 33131 I Tel 305.579.0500 I Fax 305.579.0717 I www.gtlaw.Com
`
`

`
`I Cased :O?—cv~20t3€;'3—F’AS
`
`Document 1
`
`Entered on FLSD Docket (31./'18/200?
`
`Page 8 of 76
`
`Assignment is attached hereto as Exhibit “E.”) (E Exh. “A” paragraph 20(e) and II 21
`
`above)
`
`34.
`
`Mercado had knowledge of the Radio Productions Assignment and,
`
`in
`
`fact, received payments from Radio Productions.
`
`35.
`
`Pursuant to the Radio Productions Assignment, Radio Productions’ rights
`
`include, but are not limited to the “transmission of audio horoscopes via radio in the
`
`United States.” (Exh. “E”)
`
`Assignment by Bart Enterprises to Walter Enterprises
`
`36.
`
`On May 4, 2005, pursuant to paragraph 20(e) of the Agreement, Bart
`
`Enterprises lawfully assigned the rights set forth below to Walter Enterprises (“Walter
`
`Enterprises Assignment”).
`
`(A true and correct copy of the Walter Enterprises
`
`Assignment is attached hereto as Exhibit “F .”)
`
`(See Exh. “A” paragraph 20(e) and 11 21
`
`above)
`
`37.
`
`Mercado had knowledge of the Walter Enterprises Assignment and,
`
`in
`
`fact, received payments from Walter Enterprises.
`
`38.
`
`Pursuant to the Walter Enterprises Assignment, Walter Enterprises’ rights
`
`include, but are not limited to “the exploitation of the following business(es) utilizing
`
`Walter Mercado’s name,
`
`likeness and image in the United States: (i) Development,
`
`production and marketing of DVD’s containing Mercado content.” (Exh. “F”)
`
`ADDITIONAL FACTS COMMON TO ALL COUNTS
`
`39.
`
`On November 17 and November 18, 2006, Defendant Astromundo
`
`registered all the trademarks - owned by Bart Enterprises — in its name.
`
`GreéaHmg7B1aurig, P.A.
`
`I Attorneys at Law I 1221 Brickell Avenue I Miami, FL 33131 I Tel 305.579.0500 I Fax 305.579.0717 I www.gtlaw.com
`
`

`
`‘ Cased :O?—cv~2t3t3€;'3—F’AS
`
`Document 1
`
`Entered on FLSD Docket (31./'18/2%?
`
`Page 9: of ?E3
`
`40.
`
`On November 18, 2006, Mercado by a unilateral power of attorney
`
`attempted to revoke all the powers granted to Mr. Bakula. (A true and correct copy of the
`
`attempted revocation is attached hereto as Exhibit “G”). He sent said letter to Mr. Bakula
`
`via certified mail on November 22, 2006 and Mr. Bakula received it on November 27,
`
`2006.
`
`41.
`
`On November 22, 2006, Astromundo sent a letter
`
`to Mr. Bakula
`
`attempting to terminate the business relationship between Mercado and the Plaintiffs.
`
`(A
`
`true and correct copy of the attempted revocation is attached hereto as Exhibit “H”)
`
`42.
`
`On November 28, 2006, Mercado sent a letter to Watervision’s client -
`
`Televisa S.A. de C.V.
`
`- soliciting copies of any contracts or documents executed by
`
`Televisa which involve Mercado’s participation.
`
`(A true and correct copy of the letter is
`
`attached hereto as Exhibit “I”). Televisa S.A. de C.V. (“Televisa”) is a Mexican
`
`corporation with its principal place of business in Mexico City, Mexico.
`
`43.
`
`On November 29, 2006, Mercado sent a letter to Televisa advising it that
`
`Mercado had ceased all business relations with Mr. Bakula and any and all of his
`
`enterprises. Specifically, Mercado informed Televisa that he had officially rescinded Mr.
`
`Bakula’s power of attorney privileges and that he had no rights or title to any of the
`
`following: “(i)
`
`[Mercado’s] name and any associated trademarks;
`
`(ii)
`
`[Mercado’s]
`
`likeness; (iii) [Mercado’s] images and photographs; (iv) [Mercado’s] video or audio
`
`works and presentations and any associated copyrights; (iv) [Mercado’s] astrological
`
`scripts and text(s), including those claimed to be written by [Mercado] or on [Mercado’s]
`
`behalf; (v) books written or co-written by [Mercado] or on [Mercado’s] behalf; (vi) CDs
`
`or DVDS published and/or distributed bearing [Mercado] or [Mercado’s] likeness; (vii)
`
`9
`
`Greé&5119g7B1aurig, PA.
`
`| Attorneys at Law | 1221 Brickell Avenue | Miami, FL 33131 | Tel 305.579.0500 I Fax 305.579.0717 | www.gtlaw.com
`
`

`
`‘Case ‘1:O?’~cv-20136—PAS
`
`Document ‘E
`
`Entered en FLSD Docket G1/'1 8/20{37
`
`Page 10 of “ffi
`
`websites bearing [Mercado] or [Mercado’s] likeness; (viii) text messaging and cell phone
`
`streaming services bearing [Mercado]
`
`or
`
`[Mercado’s]
`
`likeness or
`
`[Mercado’s]
`
`astrological text, including those claimed to be written by [Mercado] or on [Mercado’s]
`
`behalf; (viii) any other uses of [Mercado’s] name and any of the above for the purposes
`
`of transaction business with Mr. Bakula or any of his business enterprises.” (A true and
`
`correct copy of the letter is attached hereto as Exhibit “J”).
`
`44.
`
`Further, Mercado informed Televisa that he had retained a new and
`
`exclusive agent.
`
`(_S_e_e Exh. “J”)
`
`45.
`
`On information and belief,
`
`in late November, 2006, Mercado contacted
`
`International Productions’ client
`
`- Univision - soliciting copies of any contracts or
`
`documents executed by Univision which involve Mercado’s participation and informing
`
`Univision that
`
`International Productions does not have the right
`
`to contract with
`
`Univision regarding Mercado’s name, image and likeness.
`
`46.
`
`On November 29, 2006, Mercado did not appear in Miami for the taping
`
`of the televised horoscope segments to be aired on Univision, Univision Puerto Rico, and
`
`Televisa.
`
`47.
`
`On or about November 29, 2006, Mercado delivered material taped by
`
`someone other than Bart Enterprises to be aired on Univision, Univision Puerto Rico, and
`
`Televisa.
`
`48.
`
`On November 29, 2006, Mercado failed to appear in Miami for the taping
`
`of commercials for 900 business in Mexico,
`
`the US SMS business,
`
`the US Club
`
`Memberships, and the US prepaid calling cards.
`
`10
`
`Greegmygyaurig, PA.
`
`| Attorneys at Law | 1221 Brickell Avenue | Miami, FL 33131 I Tel 305.579.0500 I Fax 305.579.0717 I www.gtlaw.com
`
`

`
`'<3asei1:Q?’~cv-20136—PAS
`
`Document ‘E
`
`Entered on FLSD Docket 01./‘"18/’2007
`
`Page it of 76
`
`49.
`
`Since December 6, 2006, Mercado has failed to deliver the audio
`
`horoscopes for use with the Club Membership Packages, Radio dissemination, SMS
`
`messaging transcription, and the Guatemala IVR horoscope service.
`
`50.
`
`In or about December 2006, Jorge Concepcion, former shareholder and
`
`director of some of Bakula’s corporations, and Mercado contacted Rodrigo Montenegro
`
`(“Montenegro”),
`
`the managing director of Naranya in Colombia. Montenegro had
`
`distributed Mercado’s programs in Colombia from 1997 through 2000. Bakula had been
`
`negotiating with Montenegro a new contract to continue to distribute the programs there.
`
`Concepcion and Mercado contacted Montenegro and solicited information regarding his
`
`dealings with Bakula. As a result, Bakula’s business relationship with Montenegro has
`
`been damaged.
`
`51.
`
`Further, Mercado directly contacted People en Espafiol and submitted his
`
`ad for the February 2007 issues.
`
`The ad promotes a competing SMS horoscope
`
`messaging service. (A true and correct copy of the ad is attached hereto as Exhibit “K”).
`
`52.
`
`Mercado also failed to deliver in Florida the content for People en Espafiol
`
`due on or before December 7, 2006 for the March 2007 issue of the magazine.
`
`53.
`
`Mercado failed to deliver in Florida the audio predictions for 2007 for
`
`radio dissemination.
`
`54.
`
`Mercado failed to deliver in Florida the written 2007 predictions for
`
`magazine and website publication.
`
`55.
`
`On January 1, 2007, Mercado contacted Abraham Askenazi (“Askenazi”).
`
`Askenazi is the President of Megamedia, the service bureau that handles the 1-900 pay
`
`per calls in Mexico. Mercado informed Askenazi that he was no longer represented by
`
`11
`
`Greea£mIg7‘§'aurig, P.A.
`
`I Attorneys at Law I 1221 Brickell Avenue I Miami, FL 33131 I Tel 305.579.0500 I Fax 305.579.0717 I www.gtlaw.com
`
`

`
`i<3ase1:O?—cv-20136—PAS
`
`Document 1
`
`Entered on FLSD Docket CH./'18,"20{37
`
`Page 12 of
`
`Bakula because Bakula was not paying him. Mercado asked Askenazi to send any and all
`
`funds directly to Mercado.
`
`56.
`
`Mercado, by his actions and inactions, has breached and continues to
`
`breach his contractual obligations to Plaintiffs.
`
`Breach of the Agreement between Bart Enterprises and Mercado
`
`COUNT I
`
`57.
`
`Plaintiffs reallege and reincorporate as if fully set
`
`forth herein the
`
`allegations contained in paragraphs 1 through 56, above.
`
`58.
`
`Pursuant to Section 1
`
`(b) of the Agreement, Mercado granted to Bart
`
`Enterprises the exclusive right and license to develop, produce, distribute and copyright
`
`in its own name materials,
`
`in any language,
`
`relating to Mercado’s psychic and
`
`astrological services.
`
`(Exh. “A,” Section 1 (b)) Mercado breached the Agreement by
`
`engaging in the conduct described in paragraphs 39 through 56 above, including, without
`
`limitations, by: (1) registering the trademarks in Astromundo’s name; (2) attempting to
`
`revoke Bart’s power of attorney privileges; and (3) attempting to assign all the rights
`
`granted to Bart Enterprises to a new and independent agent.
`
`59.
`
`Pursuant to Section 2 (b) of the Agreement, Mercado assigned to Bart
`
`Enterprises all rights, title and interest in and to the Mark.
`
`(Exh. “A,” Section 2 (b))
`
`Mercado breached the Agreement by engaging in the conduct described in paragraphs 39
`
`through 56 above, including, without limitations, by: (l) registering the trademarks in
`
`Astromundo’s name; (2) attempting to revoke Bart’s power of attorney privileges; and (3)
`
`attempting to assign all the rights granted to Bart Enterprises to a new and independent
`
`agent.
`
`12
`
`créé%'é99g7fi4aur1g,P.A.
`
`| Attorneys at Law | 1221 Brickell Avenue | Miami, FL 33131 | Tel 305.579.0500 | Fax 305.579.0717 | www.gtlaw.com
`
`

`
`<3ase1:O?~cv-20136—PAS
`
`Document ‘E
`
`Entered on FLSD Docket ()1./'18/’20{37
`
`Page 13 of
`
`60.
`
`Pursuant Section 3(b) of the Agreement, Mercado assigned to Bart
`
`Enterprises the right and license to use Mercado’s Name and Likeness by any means and
`
`in any and all media.
`
`(Exh. “A,” Section 3(b)) Mercado breached the Agreement by
`
`engaging in the conduct described in paragraphs 39 through 56 above, including, without
`
`limitations, by: (1) registering the trademarks in Astromundo’s name; (2) attempting to
`
`revoke Bart’s power of attorney privileges; and (3) attempting to assign all the rights
`
`granted to Bart Enterprises to a new and independent agent.
`
`61.
`
`Pursuant to Section 6 (b)(i) of the Agreement, Mercado agreed to provide
`
`psychic and astrological services to Bart including creating audiotext recordings for pay
`
`per call services, appearing in long form commercials, creating print, radio and television
`
`advertising and making personal appearances.
`
`(Exh. “A,” Section 6 (b)(i)) Mercado
`
`breached the Agreement by engaging in the conduct described in paragraphs 39 through
`
`56 above, including, without limitations, by:
`
`a.
`
`failing to appear for the tapings of the televised horoscope and
`
`commercials on November 29, 2006;
`
`b.
`
`c.
`
`failing to deliver the audio horoscopes since December 6, 2006;
`
`failing to deliver the content for People en Espafzol due on or
`
`before December 7, 2006 for
`
`the March 2007 issue of the
`
`magazine;
`
`d.
`
`failing to deliver
`
`the audio predictions
`
`for 2007 for
`
`radio
`
`dissemination; and
`
`e.
`
`failing to deliver the written 2007 predictions for magazine and
`
`website publication.
`
`13
`
`Gré urig, P.A.
`
`I Attorneys at Law I 1221 Brickell Avenue I Miami, FL 33131 I Tel 305.579.0500 I Fax 305.579.0717 I www.gtlaw.com
`
`

`
`Case.1:Q?~cv—20t36—PAS
`
`Document ‘E
`
`Entered on FLSD Docket ()1./'18/’aO{37
`
`Page 14 of 76
`
`62.
`
`Pursuant to Section 11 (b) of the Agreement, Mercado agreed to take such
`
`steps as Bart reasonably requests to cooperate with any necessary legal action in case any
`
`third party uses or threatens to use Mercado’s name, signature, photograph, voice,
`
`picture,
`
`likeness, or other indicia of his identity or the name, signature, photograph,
`
`voice, picture, likeness.
`
`(Exh. “A,” Section 11 (b)) Mercado breached the Agreement by
`
`engaging in the conduct described in paragraphs 39 through 56 above, including, without
`
`limitations, by: (1) allowing a third party to use his name; (2) retaining a new and
`
`independent agent to act on his behalf; and (3) failing to take reasonable steps requested
`
`by Bart to cure the breach.
`
`63.
`
`Pursuant to Section 18 of the Agreement, Mercado agreed to “attend and
`
`participate in all rehearsals, filming or taping and photography sessions required and will
`
`render his services [provided for in the Agreement] in accordance with the scripts or
`
`other materials Bart shall furnish to Mercado for such purposes. Mercado agrees to
`
`render Bart’s services in a competent and artistic manner to the best of his ability, and
`
`that all Mercado’s services will be subject to Bart’s approval, direction and reasonable
`
`control at all
`
`times. Mercado will promptly comply with whatever
`
`reasonable
`
`instructions, suggestions, and recommendations Bart may give Mercado in connection
`
`with the rendition of such services.”
`
`(Exh. “A,” Section 18) Mercado breached the
`
`Agreement by engaging in the conduct described in paragraphs 39 through 56 above,
`
`including, without limitations, by:
`
`a.
`
`failing to appear for the taping of the televised horoscope and
`
`commercials on November 29, 2006;
`
`b.
`
`failing to deliver the audio horoscopes since December 6, 2006;
`
`14
`
`Greéwmgmaurig, PA.
`
`I Attorneys at Law I 1221 Brickel|Avenue I Miami, FL 33131 I Tel 305.579.0500 I Fax 305.579.0717 I www.gtlaw.com
`
`

`
`Case .1:O?’~cv-20136—PAS
`
`Document ‘E
`
`Entered on FLSD Docket 01/'1 8/4007
`
`Page 15 of 7%
`
`c.
`
`failing to deliver
`
`the audio predictions
`
`for 2007 for
`
`radio
`
`dissemination; and
`
`d.
`
`failing to comply with Bart’s instructions and recommendations in
`
`connection with the rendition of the services listed in paragraph 56
`
`(3) - (C)-
`
`64.
`
`As a direct and proximate result of Mercado’s breach of contract,
`
`Plaintiffs have suffered and continue to suffer injury and substantial monetary damages
`
`for which they are entitled to be compensated.
`
`Action for Tortious Interference with Contract Against Mercado
`
`COUNT II
`
`65.
`
`Plaintiffs reallege and reincorporate as if fully set
`
`forth herein the
`
`allegations contained in paragraphs 1 through 56, above.
`
`66.
`
`Defendant, Mercado
`
`has
`
`tortiously interfered with Watervision’s
`
`contractual relationship with Televisa by, among other things:
`
`a.
`
`contacting Televisa and informing it that Mr. Bakula no longer
`
`represents Mercado;
`
`b.
`
`contacting Televisa and informing it that Mr. Bakula had no rights
`
`or title to any of the following: (i) Mercado’s name, any associated
`
`trademarks, likeness, images and photographs; (ii) video or audio
`
`works
`
`and
`
`presentations
`
`and
`
`any
`
`associated
`
`copyrights,
`
`astrological scripts and text(s); (iii) books written or co-written by
`
`Mercado or on Mercado’s behalf; (iv) CDs or DVDs published
`
`and/or distributed bearing Mercado or Mercado’s likeness;
`
`(V)
`
`websites bearing Mercado or Mercado’s
`15
`
`likeness;
`
`(vi)
`
`text
`
`Greegbtmgzfiaurig, P.A.
`
`I Attorneys at Law I 1221 Brickell Avenue I Miami, FL 33131 I Tel 305.579.0500 I Fax 305.579.0717 I www.gtlaw.com
`
`

`
`'<3ase'1:Q?’~cv-20136—PAS