Sprint Communications, Inc. v. Calabrese

CourtDistrict Court, S.D. Florida
DecidedFebruary 20, 2025
Docket0:18-cv-60788
StatusUnknown

This text of Sprint Communications, Inc. v. Calabrese (Sprint Communications, Inc. v. Calabrese) is published on Counsel Stack Legal Research, covering District Court, S.D. Florida primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Sprint Communications, Inc. v. Calabrese, (S.D. Fla. 2025).

Opinion

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA

CASE NO. 18-CV-60788-MARTINEZ/VALLE

SPRINT COMMUNICATIONS, LLC,

Plaintiff/Counterclaim Defendant,

v.

STEPHEN CALABRESE, NEXTEL, INC. d/b/a NEXTEL WORLDWIDE, RETROBRANDS USA LLC, JEFFERY KAPLAN, and NEXTEL MOBILE WORLDWIDE, INC.,

Defendants/Counterclaimants. /

REPORT AND RECOMMENDATION TO DISTRICT JUDGE

THIS MATTER is before the Court upon Plaintiff Sprint Telecommunications, Inc.’s (“Sprint’s”): (i) initial Motion for an Award of Nontaxable Costs and Attorneys’ Fees (ECF No. 346); (ii) Renewed Motion for Taxable Costs Pursuant to 28 U.S.C. § 1920 (ECF No. 400) (the “Renewed Motion for Taxable Costs”); and (iii) Amended Motion for an Award of Attorneys’ Fees and Nontaxable Costs (ECF Nos. 401, 405)1 (the “Amended Motion for Attorneys’ Fees and Nontaxable Costs”) (collectively, the “Motions”). United States District Judge Jose E. Martinez has referred the Motions to the undersigned for a Report and Recommendation. (ECF No. 410). Accordingly, having reviewed the Motions, Defendants Retrobrands USA LLC and Jeffrey Kaplans’ Response (ECF No. 407), Sprint’s Reply (ECF No. 409,), and being otherwise duly

1 ECF No. 401 is a redacted version of the motion filed at ECF No. 405-1. Thus, ECF No. 401 should be DENIED as duplicative. Further, for brevity and ease of reference, this Report and Recommendation (“R&R”) will hereinafter cite to ECF No. 405-1. advised in the matter, the undersigned respectfully recommends that Sprint’s: (i) Renewed Motion for Taxable Costs be GRANTED; and (ii) Amended Motion for Attorneys’ Fees and Nontaxable Costs be GRANTED IN PART.2 More specifically, Sprint should be awarded: (i) $2,388,881.40 in attorneys’ fees against all Defendants for the proceedings before the District

Court pursuant to § 1117(b) of the Lanham Act; (ii) $319,667.98 in attorneys’ fees against the Retrobrands Defendants for the appellate proceedings before the Eleventh Circuit also pursuant to § 1117(b); (iii) $18,216.25 in taxable costs against all Defendants pursuant to 28 U.S.C. § 1920; and (iv) $22,381.71 in nontaxable costs against all Defendants pursuant to FDUTPA. I. BACKGROUND

A. The Underlying Trademark Litigation This trademark infringement case stems from Sprint’s effort to enforce its trademark rights in the NEXTEL brand, including the word mark “NEXTEL” and the “chirp” Sound Mark.3 Spanning almost seven years, the case commenced in April 2018, when Sprint filed an initial Complaint against Defendants Stephen Calabrese, Nextel, Inc. (d/b/a Nextel Worldwide), Retrobrands USA LLC, Jeffrey Kaplan, and Nextel Mobile Worldwide Inc. (collectively, “Defendants”). See generally (ECF No. 1). In November 2018, Sprint filed a multi-count First Amended Complaint, alleging claims for counterfeiting (Counts 1 and 8), federal trademark infringement (Counts 2 and 9), federal and state unfair competition and false designation of origin (Counts 3 and 7), federal trademark dilution (Count 4), cybersquatting (Counts 5 and 10), and claims under Florida Deceptive and Unfair Trade Practices Act (“FDUTPA”) (Count 6). See

2 Plaintiff’s initial Motion for an Award of Nontaxable Costs and Attorneys’ Fees (ECF No. 346) should be DENIED AS MOOT because Plaintiff has incorporated its request for fees in the later- filed Amended Motion for Attorneys’ Fees and Nontaxable Costs (ECF No. 405). 3 Capitalized terms not defined in this R&R have the meaning set forth in the Amended Complaint (ECF No 80). generally (ECF No. 80). Sprint’s First Amended Complaint also sought injunctive relief. Id. at 43-45). Defendants filed an Answer and Amended Counterclaims. See generally (ECF No. 83). Defendants’ counterclaims alleged counts for declaratory relief regarding the purported

unenforceability of a trademark due to abandonment (Counterclaim 1), non-infringement (Counterclaim 2), cancellation of the NEXTEL registration and NEXTEL Sound Mark (Counterclaims 3 and 8), fraud on the United States Patent and Trademark Office (“USPTO”) (Counterclaim 4), common law tortious interference with contractual business relationships and advantageous business relationships (Counterclaim 5 and 6), defamation (Counterclaim 7), unfair competition (Counterclaim 9), and reverse domain hijacking (Counterclaim 10). Id. Sprint subsequently filed its Answer to Defendants’ Amended Counterclaims. See generally (ECF No. 84). The case proceeded through protracted litigation, including motion practice regarding injunctive relief, discovery, requests for sanctions, and summary judgment. See, e.g., (ECF No. 6)

(Sprint’s Motion for Preliminary Injunction); (ECF No. 70) (Sprint’s Motion to Compel Discovery); (ECF No. 85) (Sprint’s Motion for Rule 11 Sanctions); (ECF No. 103) (Defendants’ Expedited Motion for Preliminary Injunction); (ECF No. 113) (Status Report on Pending Motions); (ECF Nos. 120, 121, 122) (parties’ cross motions for summary judgment). In January 2022, the District Court granted summary judgment to Sprint on Defendants’ defamation counterclaim. (ECF No. 235 at 8-10). The case was ultimately tried before a jury from April 11 to April 28, 2022. See (ECF Nos. 291, 296, 300, 303, 305-306). Relevant to the Motions, at the close of Defendants’ case, the Court granted judgment as a matter of law in Sprint’s favor on Defendants’: (i) claims and defenses that Sprint had abandoned the chirp Sound Mark;

(ii) counterclaim for reverse domain hijacking; (iii) counterclaim for tortious interference; (iv) counterclaim for unfair competition; and (v) counterclaim alleging that Sprint committed fraud with respect to its registration for the NEXTEL mark. See (Jury Trial 4/14/2022 Tr.) (ECF No. 324 at 2:16-3:15, 3:16-5:22, 5:24-7:4, 7:21-20:19, 20:21-22:10). After the District Court’s rulings, the remaining claims were submitted to the jury. See (ECF No. 306) (minutes of

proceedings, including closing argument and deliberations); (ECF No. 307) (Jury Instructions). After deliberation, the jury returned verdict in favor of Sprint on all remaining claims and counterclaims and the Court entered a Final Judgment in favor of Sprint. See (ECF Nos. 309, 310). Upon Sprint’s motion (ECF No. 313), the Court also entered a permanent injunction against Defendants that, among other things: (i) required Defendants to cease all acts of infringement, dilution, counterfeiting, unfair competition, and deceptive trade practices of Sprint’s NEXTEL and chirp Sound Mark—including their own actions or actions through their connected network of dealers; (ii) prohibited Defendants from applying to register any trademarks that are the same as or are confusingly similar to those marks; (iii) required Defendants to deliver any infringing materials to Sprint; (iv) ordered that Defendants’ infringing domains be transferred to Sprint; and

(v) required Defendants to abandon any trademark applications that they owned with the USPTO for marks confusingly similar to the NEXTEL Mark or the “chirp” Sound Mark. See generally (ECF No. 356). After post-trial motions, in July 2022, the District Court entered an Amended Final Judgment for $4.5 million in favor of Sprint and against Defendants. (ECF No. 353). Subsequently, Defendants Jeffrey Kaplan, Retrobrands USA LLC, and Nextel Mobile Worldwide, Inc. (hereinafter, the “Retrobrands Defendants”) appealed the Amended Final Judgment and related trial orders to the Eleventh Circuit. See (ECF No. 354, 366, 367, 387, 388). In May 2024, the Eleventh Circuit affirmed the Amended Final Judgment. (ECF No. 391).

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Sprint Communications, Inc. v. Calabrese, Counsel Stack Legal Research, https://law.counselstack.com/opinion/sprint-communications-inc-v-calabrese-flsd-2025.