Margaritaville Sign. Photo:
Shutterstock.com

There's a chance a much-anticipated Margaritaville-branded resort and entertainment complex in the Bahamas might have to pick a new name and skip the decor evoking Jimmy Buffett's hit song, attorneys say.

The 6-acre Pointe residential, hotel, marina, restaurant and bar development to be finished this year in Nassau is set to include a Margaritaville Beach Resort and One Particular Harbour condominium, named after another Buffett song.

This doesn't sit well with the owner of an existing Margaritaville restaurant, store and bar with live entertainment on Paradise Island, who accused Margaritaville of breaching their 2014 exclusive trademark use agreement by licensing the name to the nearby Nassau complex.

Boss Investments Ltd. is suing Palm Beach-based Margaritaville Holdings LLC as well as Margaritaville Enterprises LLC and Margaritaville of Bahamas LLC. Margaritaville Enterprises licensed the intellectual property to Margaritaville of Bahamas, which turned around and licensed the name to Boss Investments. Boss also sued Margaritaville Development president James Wiseman.

The Pointe and developer China Construction America based in Jersey City, New Jersey, weren't named as defendants, but they could still lose the Margaritaville name and feel, Boss Investments attorneys Todd Levine and Adam Steinberg argue.

Levine, shareholder at Kluger, Kaplan, Silverman, Katzen & Levine in Miami, and Steinberg of The Law Office of Adam J. Steinberg in Fort Lauderdale are seeking an injunction against Margaritaville.

"It is our opinion that if Boss is successful with this claim, Margaritaville may be forced to rescind its licensing agreement with the Margaritaville at the Pointe developer, China Construction of America," Levine and Steinberg said in a joint email.

Leslie Lott, who represents Margaritaville and Wiseman, said she's confident her client will win the case.

"Margaritaville looks forward to the opening of the Margaritaville Beach Resort Nassau and One Particular Harbor condominium tower in 2020," Lott of Lott & Fischer in Coral Gables said in an email.

China Construction America didn't return a request seeking comment by deadline. Its project includes an 800-car garage, offices and an entertainment center that opened in 2016.

Levine and Steinberg want to depose China Construction and filed a notice for a bench trial before Palm Beach Circuit Judge James Nutt.

They filed the lawsuit in October 2018, saying Boss had the right to open a second Bahamas Margaritaville venue within five years after its first venue was open for a year. Margaritaville was not allowed to offer anyone else the opportunity to open a themed venue for a year after Boss opened a second location, according to the suit.

Boss opened a Margaritaville restaurant and bar in 2015. But when the company pursued a second location at the Port of Nassau, Wiseman called Boss telling it to "slow play" its plan as Margaritaville had "something better in that area for Boss," according to the suit.

In reality, Margaritaville had "more devious and deceptive plans" and had granted a Margaritaville license to The Pointe project, the suit alleges.

"Even if the 'signature Margaritaville food and beverage concepts' at Margaritaville at the Pointe are not actually named 'Margaritaville' and ultimately bear other names that are evocative of Jimmy Buffett and/or other Buffett music, the infringement of Boss's sub-license of the intellectual property still exists, as does the confusion to customers," Boss's attorneys argue.

Customers already are "confused" by the Margaritaville IP duplication between Boss's Paradise Island venue and the upcoming Margaritaville at The Pointe with at least 15 callers inquiring about the new Margaritaville hotel.

In a May 2017 filing, Margaritaville denied the claims and said Boss' complaint in places mischaracterized their licensing agreement.

As for the public's confusion between Boss' and China City's Margaritaville venues, the reality is both are licensed to use the Margaritaville name and have a common licensor.

"If the public makes that connection, it is not confused but accurately understands the common source," Lott wrote in the filing.

She maintains Boss bargained for a limited use of the Margaritaville trademark but wants to block any other Margaritaville business in the Bahamas without Boss' approval.

Margaritaville denied any "devious" plan to deceive or misrepresent anything to Boss.

Nutt granted in part and denied in part Boss' motion to strike Margaritaville's affirmative defenses, and Margaritaville filed second amended affirmative defenses.

Boss' lawsuit alleges fraud and negligent representation against the Margaritaville LLCs. The lawsuit also claims breach of the sublicense agreement and breach of implied covenant of good faith and dealing. Wiseman is named in counts alleging fraud and negligent misrepresentation.

A trial date hasn't been scheduled.