07 0486 joint appendix

8/14/2019 07 0486 Joint Appendix

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07-0486________________________________________________________________________

IN THE

FOR THE SECOND CIRCUIT

HAMPTONS LOCATIONS, INC., and

NANCY GRIGOR,

Plaintiff-Appellee

-against-

RICHARD RUBENS, BARBARA RUBENS, and

DARRELL RUBENS, each individually and doing

business as HAMPTON LOCATIONS,

Defendants-Appellants,

____________

ON APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF NEW YORK

JOINT APPENDIX ______________________________________________________________________________

RONEMUS & VILLENSKY

112 MADISON Avenue, 2nd

Floor

New York, New York 10016

(212) 779-7070

Attorneys for Defendant-Appellant



TABLE OF CONTENTS OF APPENDIX

DOCKET ENTRIES …………………………………………………………………….......A - 1

COMPLAINT ……………………………………………………………………….............A -26

ANSWER & COUNTERCLAIMS………………………………………………………….A -39

DECISION OF JUDGE HURLEY ON DISMISSAL OF DEFENDANTS’

COUNTERCLAIMS

Dated February 17, 2004……………………………………………………………..A-44

DECISION OF JUDGE HURLEY ON DEFENDANT’S MOTION FOR

SUMMARY JUDGMENT

Dated September 30, 2005 …………………………………………………..............A-51,

DEFENDANTS’ MOTION FOR RECONSIDERATION OF DENIALOF SUMMARY JUDGMENT AS TO DARRELL RUBENS

Dated October 11, 2005 ……………………………………………………………..A-76

DECISION OF JUDGE HURLEY ON PLAINTIFF’S MOTION FORRECONSIDERATION

Dated May 25, 2006……… …………………………………………………………A-88

DOCKET ENTRY 132

July 20, 2004 Order of Judge Wall to Sanction Grigor & Deny Plaintiff toDepose Darrell………………………………………………………………………..A-94

DOCKET ENTRY 174

March 23, 2005 Letter of Michael Ronemus to Judge Hurley with Exhibits………...A-96

DOCKET ENTRY 179

April 6, 2005 Letter of Michael Ronemus to Judge Hurley with Exhibits…………..A-101

DOCKET ENTRY 187

May 15, 2006, Letter of Michael Ronemus to Judge Hurley which includes

March 28, 2006 Letter Motion with Exhibits ……………………………………….A-112

JURY CHARGE …………………………………………………………………………….A-137

VERDICT SHEET …………………………………………………………………………..A-167

ENTRY OF JUDGMENT …………………………………………………………………..A-171

i



50B MOTION ……………………………………………………………………………….A-172

TRIAL TRANSCRIPT OF DARRELL RUBENS

Page # 555,556, 557,558,559,561,562,563 ………………………………………….A-194

TRIAL TRANSCRIPT OF DARRELL RUBENSPage # 706,707,708…………………………………………………………………..A-202

TRIAL TRANSCRIPT OF NANCY GRIGOR

Page # 528,529………………………………………………………………………A-205

TRIAL TRANSCRIPT OF RICHARD RUBENS

Page # 871,935,936,951,952…………………………………………………………A-207


Page # 572,573,574,717,718…………………………………………………………A-212


Page # 564, 565, 566,567,568,709, 710………………………………………...........A-217

TRIAL TRANSCRIPT OF ROBERT ROOMIANPage # 473-474………………………….…………………………………………...A-224

TRIAL TRANSCRIPT OF DARRELL RUBENSPage # 719,720……………………………………………………………………….A-226


Page # 888,889………………………………………………………………………..A228

TRIAL TRANSCRIPT OF MICHAEL GRIFFITH

Page # 1065…………………………………………………………………………..A-230


Page # 953,54,55,56 …………………………………………………………………A-231

TRIAL TRANSCRIPT OF RICHARD RUBENSPage # 958…………………………………………………………………………...A-235

TRIAL TRANSCRIPT OF JUDGE HURLEYPage # 730……………………………………………………………………………A-236

TRIAL TRANSCRIPT OF NANCY GRIGORPage # 311,312,313,314,395…………………………………………………………A-237

TRIAL TRANSCRIPT OF JUDGE HURLEYPage # 1082…………………………………………………………………………..A-241

ii



TRIAL TRANSCRIPT OF NANCY GRIGOR AND DARRELL RUBENS

Page # 215,216,217,518,519,520,521,522,712,713,714…………………………….A-242


Page # 487,488,489,490………………………………………………………..........A-253

TRIAL TRANSCRIPT OF ROBERT ROOMIAN

Page # 382 …………………………………………………………………………..A-257

TRIAL TRANSCRIPT OF NANCY GRIGORPage # 509,510………………………………………………………………………A-258

TRIAL TRANSCRIPT MICHAEL GRIFFITHPage # 1012, 1013, 1014, 1015, 1016 ………………………………………………A-260

TRIAL TRANSCRIPT OF MICHAEL GRIFFITHPage #:975,976………………………………………………………………………A-265

TRIAL TRANSCRIPT OF ROBERT ROOMAIN AND NANCY GRIGOR

Page # 308,500, 429 - 434, 469 …… ……………………………………………….A-267

TRIAL TRANSCRIPT GRIGOR

Page #327-331, 503,504………………………………………………………..........A-276

TRIAL TRANSCRIPT OF MICHAEL GRIFFITHPage # 1025…………………………………………………………………………..A-283

TRIAL TRANSCRIPT OF JUDGE HURLEYPage # 260,279,1098 -1104………………………………………………………….A-284

TRIAL TRANSCRIPT OF NANCY GRIGORPage # 280, 283-300…………………………………………………………………A-292


Page # 493……………………………………………………………………………A-311

iii



APPEAL

U.S. District CourtEastern District of New York (Central Islip)

CIVIL DOCKET FOR CASE #: 2:01−cv−05477−DRH−WDW

Hamptons Locations, et al v. Rubens, et alAssigned to: Senior−Judge Denis R. HurleyReferred to: Magistrate William D. WallDemand: $0Cause: 15:1125 Trademark Infringement (Lanham Act)

Date Filed: 08/14/2001Date Terminated: 01/30/2007Jury Demand: Plaintiff Nature of Suit: 840 Trademark Jurisdiction: Federal Question

Plaintiff

Hamptons Locations, Inc. represented by Patricia A. WeissP.O. Box 751Sag Harbor, NY 11963−0019631−725−4486Fax: 631−725−0295Email: [email protected]

LEAD ATTORNEY ATTORNEY TO BE NOTICED

Plaintiff Nancy Grigor represented by Patricia A. Weiss

(See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED

V.

Defendant

Richard Rubens represented by Sam P. Israel1 Liberty Plaza, Office 2330New York, NY 10006

212−201−5345Fax: 212−201−5343Email: [email protected]: 10/22/2004


Michael B. RonemusRonemus &Vilensky112 Madison AvenueNew York, NY 10016212−779−7070Fax: 212−686−2490Email: [email protected]

ATTORNEY TO BE NOTICED

Defendant

Barbara RubensTERMINATED: 09/30/2005

represented by Sam P. Israel(See above for address)TERMINATED: 10/22/2004


Michael B. Ronemus(See above for address)


Defendant

Case: 2:01-cv-05477-DRH-WDW As of: 07/12/2009 08:25 PM EDT 1 of 25A-1

mailto:[email protected]











Darrell Rubenseach individually and doing business as

Hampton Locations

represented by Darrell Rubens284 Mott StreetNew York, NY 10012PRO SE

Sam P. Israel(See above for address)TERMINATED: 10/22/2004

LEAD ATTORNEY


Michael B. Ronemus(See above for address)


Counter Claimant

Richard Rubens represented by Richard Rubens4439 Douglas AvenueBronx, NY 10471917−733−4200PRO SE

Sam P. Israel(See above for address)TERMINATED: 10/22/2004


Counter Claimant

Barbara RubensTERMINATED: 09/30/2005

represented by Barbara Rubens4439 Douglas AvenueBronx, NY 01047PRO SE

Sam P. Israel

(See above for address)TERMINATED: 10/22/2004 LEAD ATTORNEY ATTORNEY TO BE NOTICED

Counter Claimant

Darrell Rubens represented by Sam P. Israel(See above for address)TERMINATED: 10/22/2004


V.Counter Defendant

Hamptons Locations, Inc. represented by Patricia A. Weiss(See above for address)


Counter Defendant

Nancy Grigor represented by Patricia A. Weiss(See above for address)





Date Filed # Docket Text

06/29/2009 Electronic Index to Record on Appeal sent to US Court of Appeals. For docketentries without a hyperlink, contact the court and we'll arrange for the document(s)to be made available to you. 147 Order on Motion f or Discovery,,,,, 246 Motion toSet Aside Verdict, 94 Order, 260 Notice of Appeal, 161 Motion for SummaryJudgment, 148 Pretrial Conference − Interim, 237 Affidavit, 99 Scheduling Order,233 Motion for Attorney Fees, 251 Letter, 158 Motion for Reconsideration, 257Order on Motion to Set Aside Verdict, 243 Response in Opposition to Motion, 201

Trial Brief, 167 Reply to Response to Motion, 153 Pretrial Order, 175 Letter, 213Proposed Jury Instructions, 198 Proposed Jury Instructions, 166 Response inOpposition to Motion, 152 USCA Mandate,, 229 Notice of Appeal, 183 Responsein Opposition to Motion,, 194 Letter, 184 Notice (Other), Notice (Other), 232Motion for Attorney Fees, 173 Letter, 157 Letter, 165 Affidavit in Opposition toMotion, 245 Response in Support of Motion,,, 168 Reply to Response to Motion,231 Motion to Set Aside Verdict, 185 Reply to Response to Motion, 176 Affidavitin Opposition to Motion, 239 Affidavit in Opposition to Motion,, 191 Motion forExtension of Time to File, 250 Letter,, 225 Order, 216 Exhibit, 212 Jury Trial −Held, 259 Exhibit, 226 Jury Verdict, 202 Trial Brief, 154 Letter, 155 Letter, 208Letter, 236 Motion for Taxation of Costs, 172 Letter, 206 Settlement Conference,159 Response to Motion, 127 Order on Motion to Compel, 200 Proposed JuryInstructions, 256 Letter, 204 Jury Trial − Held, 196 Motion for Hearing, 174Letter, 217 Exhibit, 149 Order, 235 Motion for Taxation of Costs, 242 Response in

Opposition to Motion, 238 Motion for Taxation of Costs, 252 Status Report, 156Order, 160 Reply to Response to Motion, 109 Order, 189 Pretrial Conference −Final, 182 Motion for Reconsideration,, 179 Letter, 187 Letter, 203 Jury Trial −Begun, 205 Motion in Limine, 129 Order on Motion for Reconsideration, 215 JuryTrial − Completed, 234 Motion for Attorney Fees,,, 164 Affidavit in Opposition toMotion, 195 Motion for Extension of Time to File, 247 Motion for Attorney Fees,254 Exhibit, 258 Status Report, 210 Jury Trial − Held, 224 Clerk's Judgment, 132Order, 177 Letter, 193 Proposed Pretrial Order, 211 Proposed Jury Instructions,197 Trial Brief, 207 Jury Trial − Held, 169 Notice (Other), Notice (Other), 178Letter, 181 Motion for Reconsideration, 151 Exhibit List, 248 Motion for Taxationof Costs, 170 Notice (Other), Notice (Other), Notice (Other), 209 Jury Trial −Held, 227 Motion for Attorney Fees, 107 Order, 150 Letter, 255 Status Report, 139Order on Motion to Compel, 119 Motion Hearing, Terminate Motions,,,,,,,, 214

Proposed Jury Instructions, 253 Letter, 163 Response in Opposition to Motion, 230Order, 186 Reply to Response to Motion, 249 USCA Order, 228 Motion toDismiss Case as Frivolous, 180 Order on Motion for Summary Judgment, 162Letter, 188 Order on Motion for Reconsideration,,,,, 244 Response in Opposition toMotion, 192 Motion for Extension of Time to File, 199 Proposed Voir Dire, 171Letter, 126 Order on Motion to Compel, 240 Affidavit in Opposition to Motion,,190 Motion for Extension of Time to File (Romano, Daniel) (Entered: 06/29/2009)

06/23/2009 260 NOTICE OF APPEAL by Barbara Rubens. Appeal Record due by 7/2/2009.(Ronemus, Michael) (Entered: 06/23/2009)

06/10/2009 259 EXHIBIT to the 258 Status Report filed by Darrell Rubens (Michael Ronemus)(Fagan, Linda) (Entered: 06/11/2009)

06/10/2009 Incorrect Case/Document/Entry Information. Document 260 APPEAL OF

MAGISTRATE'S DECISION, filed on 6/10/09 has been deleted. (The documentwas an exhibit to the 259 STATUS REPORT, wich was subsequently deleted fromthe docket. The Court will re−file document 260 as an EXHIBIT to the 258STATUS REPORT, and the document will be re−numbered to 259 . Allcorrections have been made.) (Fagan, Linda) Modified on 6/12/2009 (Fagan,Linda). (Entered: 06/11/2009)

06/10/2009 Incorrect Case/Document/Entry Information. Document 259 STATUS REPORT,filed on 6/10/09 has been deleted. (The document was a duplicate to the 258STATUS REPORT. (All corrections have been made.) (Fagan, Linda) (Entered:06/11/2009)

06/05/2009 258 STATUS REPORT by Darrell Rubens (Ronemus, Michael) (Entered: 06/05/2009)


https://ecf.nyed.uscourts.gov/doc1/1231529426?caseid=188878&de_seq_num=4369321&pdf_header=1&pdf_toggle_possible=1

























































































































































































































































































































































































06/04/2009 ORDER REFERRING MOTION: 235 MOTION for Taxation of Costs Pursuant toFed.R.Civ.P. 54 and Local Rule 54.1 (NOTICE OF MOTION) filed by HamptonsLocations, Inc., Nancy Grigor, 238 First MOTION for Taxation of Costs filed byDarrell Rubens, Richard Rubens, Barbara Rubens, 233 Second MOTION forAttorney Fees filed by Darrell Rubens, Richard Rubens, Barbara Rubens, 234 FirstMOTION for Attorney Fees Pursuant to Fed.R.Civ.P. 54(d)(2)(B) (pursuant to 15U.S.C. 1117(a), the Lanham Act)First MOTION for Attorney Fees Pursuant toFed.R.Civ.P. 54(d)(2)(B) (pursuant to 15 U.S.C. 1117(a), the Lanham Act)FirstMOTION for Attorney Fees Pursuant to Fed.R.Civ.P. 54(d)(2)(B) (pursuant to 15U.S.C. 1117(a), the Lanham Act)First MOTION for Attorney Fees Pursuant toFed.R.Civ.P. 54(d)(2)(B) (pursuant to 15 U.S.C. 1117(a), the Lanham Act) filed byHamptons Locations, Inc., Nancy Grigor, 232 First MOTION f or Attorney Feesfiled by Darrell Rubens, Richard Rubens, Barbara Rubens. (See 257 Order.) (Ordered by Senior Judge Denis R. Hurley on 6/4/2009.) Motions referred toWilliam D. Wall. (Fagan, Linda) (Entered: 06/05/2009)

06/04/2009 257 ORDER: Defendant Darrell Ruben's motion to set aside the jury verdict 231pursuant to Rule 50(b) is DENIED. See attached Memorandum and Order. Theparties' motions for attorneys fees and costs are respectfully referred to MagistrateJudge Wall. Ordered by Senior Judge Denis R. Hurley on 6/4/2009. (Entered:06/04/2009)

05/14/2009 256 Letter Exhibits to Defendant post trial motion by Richard Rubens (Ronemus,Michael) (Entered: 05/14/2009)

05/13/2009 255 STATUS REPORT by Darrell Rubens (Ronemus, Michael) (Entered: 05/13/2009)

05/13/2009 254 EXHIBIT of Plaintiff's Post Trial Motion by Darrell Rubens. Related document:253 Letter filed by Nancy Grigor. (Ronemus, Michael) (Entered: 05/13/2009)

05/13/2009 253 Letter to Judge Hurley dated May 13th, attaching letter dated May 12th,concerning response to May 7th docket order requesting that courtesy copies of certain cited exhibits be sent directly to Chambers by Nancy Grigor (Weiss,Patricia) (Entered: 05/13/2009)

05/07/2009 ORDER: The parties are hereby directed to submit courtesy copies to Chambers of any trial exhibits cited in their briefs in support of their post−trial motions on orbefore May 13, 2009. Ordered by Senior Judge Denis R. Hurley on 5/7/2009.

(Hurley, Denis) (Entered: 05/07/2009)04/13/2009 252 STATUS REPORT by Richard Rubens (Ronemus, Michael) (Entered: 04/13/2009)

05/15/2008 251 Letter by Richard Rubens (Ronemus, Michael) (Entered: 05/15/2008)

05/12/2008 250 Letter to Judge Hurley regarding Plaintiffs' pending motions for attorneys fees and costs following the January 2007 Clerk's Judgment by Hamptons Locations, Inc.(Attachments: # 1 Exhibit Judge Irizarry's April 10, 2008 decision in#07−CV−1473, "Protection One Alarm Monitoring, Inc." case, 2008 WL 1795321,which is recently decided precedent regarding calculation of 15 USC 1117(a)attorneys fees in an EDNY federal trademarl cyberpiracy case) (Weiss, Patricia)(Entered: 05/12/2008)

04/02/2007 249 ORDER of USCA as to 229 Notice of Appeal filed by Darrell Rubens; A motion or

motions of the type specified by Rule 4(a)4 of the Federal Rules of AppellateProcedure having been filed in this matter, and now pending before the districtcourt, the above numbered and entitled appeal is hereby stayed to await finaldisposition of said motion(s). (Carine, Sandra) (Entered: 04/09/2007)

03/26/2007 Motions terminated, docketed incorrectly: 248 First MOTION for Taxation of Costs Reply filed by Darrell Rubens, Richard Rubens, Barbara Rubens.(Thedocument should have beenfiled as a Reply, and the Court will address thedocument as such. All corrections have been made.) (Fagan, Linda) (Entered:03/27/2007)

03/26/2007 Motions terminated, docketed incorrectly: 247 First MOTION for Attorney Fees Reply filed by Darrell Rubens, Richard Rubens, Barbara Rubens.(The documentshould have been filed as a Reply, and the Court will address the document as

such. All corrections have been made.) (Fagan, Linda) (Entered: 03/27/2007)





















































03/26/2007 Motions terminated, docketed incorrectly: 246 First MOTION to Set Aside Verdict Reply filed by Darrell Rubens, Richard Rubens, Barbara Rubens. (The documentshould have been filed as a Reply, and the Court will address the document assuch. All corrections have been made.) (Fagan, Linda) (Entered: 03/27/2007)

03/26/2007 248 REPLY to pltffs' Objections to Tax Costs by all defendants. (Ronemus, Michael)Modified on 3/27/2007 (Fagan, Linda). (Entered: 03/26/2007)

03/26/2007 247 REPLY to pltffs' Opposition to Defts' Motion for Attny Fees /I> by all defendants.(Ronemus, Michael) Modified on 3/27/2007 (Fagan, Linda). (Entered: 03/26/2007)

03/26/2007 246 REPLY in further Support to Deft's Motion Non Obstante Verdicto by alldefendants. (Ronemus, Michael) Modified on 3/27/2007 (Fagan, Linda). (Entered:03/26/2007)

03/12/2007 245 RESPONSE in Support re 234 First MOTION for Attorney Fees Pursuant toFed.R.Civ.P. 54(d)(2)(B) (pursuant to 15 U.S.C. 1117(a), the Lanham Act)FirstMOTION for Attorney Fees Pursuant to Fed.R.Civ.P. 54(d)(2)(B) (pursuant to 15U.S.C. 1117(a), the Lanham Act)First MOTION for Attorney Fees Pursuant toFed.R.Civ.P. 54(d)(2)(B) (pursuant to 15 U.S.C. 1117(a), the Lanham Act)FirstMOTION for Attorney Fees Pursuant to Fed.R.Civ.P. 54(d)(2)(B) (pursuant to 15U.S.C. 1117(a), the Lanham Act) entitled "Plaintiffs' Reply To Defendant Darrell

Rubens' 'Opposition to Plaintiffs' Motion For Attorney Fees and Costs' Pursuant to15 U.S.C. 1117(a)" filed by all plaintiffs. (Weiss, Patricia) (Entered: 03/12/2007)

03/10/2007 244 RESPONSE in Opposition re 238 First MOTION for Taxation of Costs entitled "Plaintiffs' Objections To Defendants' Requests To Tax Costs Pursuant ToFed.R.Civ.P. 54 &Local Rule 54.1" filed by all plaintiffs. (Weiss, Patricia)(Entered: 03/10/2007)

03/09/2007 243 RESPONSE in Opposition re 231 First MOTION to Set Aside Verdict entitled "Plaintiffs' Memorandum of Law in Opposition to Defendant Darrell Rubens'

Motion for Judgment Non Obstante Verdicto" filed by all plaintiffs. (Weiss,Patricia) (Entered: 03/09/2007)

03/09/2007 242 RESPONSE in Opposition re 233 Second MOTION for Attorney Fees, 232 FirstMOTION for Attorney Fees entitled "Plaintiffs' Memorandum of Law inOpposition to Defendants' Motion for Attorneys Fees and Costs" filed by allplaintiffs. (Weiss, Patricia) (Entered: 03/09/2007)

03/05/2007 240 AFFIDAVIT in Opposition re 234 First MOTION for Attorney Fees Pursuant toFed.R.Civ.P. 54(d)(2)(B) (pursuant to 15 U.S.C. 1117(a), the Lanham Act)FirstMOTION for Attorney Fees Pursuant to Fed.R.Civ.P. 54(d)(2)(B) (pursuant to 15U.S.C. 1117(a), the Lanham Act)First MOTION for Attorney Fees Pursuant toFed.R.Civ.P. 54(d)(2)(B) (pursuant to 15 U.S.C. 1117(a), the Lanham Act)FirstMOTION for Attorney Fees Pursuant to Fed.R.Civ.P. 54(d)(2)(B) (pursuant to 15U.S.C. 1117(a), the Lanham Act) filed by all defendants. (Ronemus, Michael)(Entered: 03/05/2007)

03/05/2007 239 AFFIDAVIT in Opposition re 235 MOTION for Taxation of Costs Pursuant toFed.R.Civ.P. 54 and Local Rule 54.1 (NOTICE OF MOTION), 236 SecondMOTION for Taxation of Costs −− Plaintiffs' Bill of Costs In Support of Plaintiffs'

Request To Tax Costs Pursuant to Fed.R.Civ.P. 54 and Local Rule 54.1 [NB: Thisis the Bill of Costs in support of Docket #235]Second MOTION for Taxation of Costs −− Plaintiffs' Bill of Costs In Support of Plaintiffs' Request To Tax CostsPursuant to Fed.R.Civ.P. 54 and Local Rule 54.1 [NB: This is the Bill of Costs insupport of Docket #235] filed by all defendants. (Ronemus, Michael) (Entered:03/05/2007)

03/05/2007 238 First MOTION for Taxation of Costs by all defendants. (Ronemus, Michael)(Entered: 03/05/2007)

03/02/2007 241 TRANSCRIPT of Trial held on 1/29/07 before The Honorable Denis R. Hurley,United States District Judge. Court Reporter: Perry Auerbach 100 Federal PlazaCenral Islip, New York 11722 (631) 712−6103. (Fagan, Linda) (Entered:03/06/2007)












































03/01/2007 237 AFFIDAVIT/AFFIRMATION re 235 MOTION for Taxation of Costs Pursuant toFed.R.Civ.P. 54 and Local Rule 54.1 (NOTICE OF MOTION) Patricia Weiss,

Esq.'s Affidavit in Support (with exhibits) &Certificate of Mailing by HamptonsLocations, Inc. (Weiss, Patricia) (Entered: 03/01/2007)

03/01/2007 Incorrect Document Text Information. The event (motion) selected when filingdocument # 236 was incorrect. The docket text for doc. # 236 has been modified tospecify that the document is plaintiffs' bill of costs in support of the # 235 motion.(Mahon, Cinthia) (Entered: 03/01/2007)

03/01/2007 Motions terminated, docketed incorrectly: 236 Second MOTION for Taxation of Costs . This document is not a motion it is Plaintiffs' Bill of Costs In Support of Plaintiffs' Request To Tax Costs Pursuant to Fed.R.Civ.P. 54 and Local Rule 54.1(NB: This is in support of Docket #235) filed by Hamptons Locations, Inc. andNancy Grigor. (Mahon, Cinthia) (Entered: 03/01/2007)

02/28/2007 236 Plaintiffs' Bill of Costs In Support of Plaintiffs' Request To Tax Costs Pursuant toFed.R.Civ.P. 54 and Local Rule 54.1 [NB: This is the Bill of Costs in support of Docket #235] by all plaintiffs. (Weiss, Patricia) Modified on 3/1/2007 (Mahon,Cinthia). (Entered: 02/28/2007)

02/28/2007 235 MOTION for Taxation of Costs Pursuant to Fed.R.Civ.P. 54 and Local Rule 54.1(NOTICE OF MOTION) by all plaintiffs. (Weiss, Patricia) (Entered: 02/28/2007)

02/13/2007 234 First MOTION for Attorney Fees Pursuant to Fed.R.Civ.P. 54(d)(2)(B) (pursuant to 15 U.S.C. 1117(a), the Lanham Act) by all plaintiffs. (Attachments: # 1 Affidavitof Patricia Weiss, Esq. In Support of Plaintiffs' Morion For Attorneys Fees andRelated Costs Pursuant to FedRCivP 54(d)(2)(B)# 2 Exhibit Exhibits "RetainerInvoice" through Invoice #7 (which runs throughs August 10, 2003)# 3 ExhibitInvoices #8 to #10A (which runs through December 11, 2004)# 4 Exhibit Invoice#11 to Invoice #15 (which runs through February 12, 2007)# 5 Exhibit CompositeExhibit re Trademark attorney Robert G. Roomian, Esq.'s attorneys fees andcharges related to this matter# 6 Exhibit Invoice of PJL Reporting for trialtranscript charges ($6,848.19)) (Weiss, Patricia) (Entered: 02/13/2007)

02/12/2007 Electronic Index to Record on Appeal sent to US Court of Appeals. For docketentries without a hyperlink, contact the court and we'll arrange for the document(s)to be made available to you. 147 Order on Motion for Discovery, 94 Order, 161

Motion for Summary Judgment, 148 Pretrial Conference − Interim, 99 SchedulingOrder, 233 Motion for Attorney Fees, 158 Motion for Reconsideration, 201 TrialBrief, 167 Reply to Response to Motion, 153 Pretrial Order, 175 Letter, 213Proposed Jury Instructions, 198 Proposed Jury Instructions, 166 Response inOpposition to Motion, 152 USCA Mandate, 229 Notice of Appeal, 183 Responsein Opposition to Motion, 194 Letter, 184 Notice (Other), Notice (Other), 232Motion for Attorney Fees, 173 Letter, 157 Letter, 165 Affidavit in Opposition toMotion, 168 Reply to Response to Motion, 231 Motion to Set Aside Verdict, 185Reply to Response to Motion, 176 Affidavit in Opposition to Motion, 191 Motionfor Extension of Time to File, 225 Order, 216 Exhibit, 212 Jury Trial − Held, 226Jury Verdict, 202 Trial Brief, 154 Letter, 155 Letter, 208 Letter, 172 Letter, 206Settlement Conference, 159 Response to Motion, 127 Order on Motion to Compel,200 Proposed Jury Instructions, 204 Jury Trial − Held, 196 Motion for Hearing,174 Letter, 217 Exhibit, 149 Order, 156 Order, 160 Reply to Response to Motion,

109 Order, 189 Pretrial Conference − Final, 182 Motion for Reconsideration, 179Letter, 187 Letter, 203 Jury Trial − Begun, 205 Motion in Limine, 129 Order onMotion for Reconsideration, 215 Jury Trial − Completed, 234 Motion for AttorneyFees, 164 Affidavit in Opposition to Motion, 195 Motion for Extension of Time toFile, 210 Jury Trial − Held, 224 Clerk's Judgment, 132 Order, 177 Letter, 193Proposed Pretrial Order, 211 Proposed Jury Instructions, 197 Trial Brief, 207 JuryTrial − Held, 169 Notice (Other), Notice (Other), 178 Letter, 181 Motion forReconsideration, 151 Exhibit List, 170 Notice (Other), Notice (Other), Notice(Other), 209 Jury Trial − Held, 227 Motion f or Attorney Fees, 107 Order, 150Letter, 139 Order on Motion to Compel, 119 Motion Hearing, Terminate Motions,214 Proposed Jury Instructions, 163 Response in Opposition to Motion, 230 Order,186 Reply to Response to Motion, 228 Motion to Dismiss Case as Frivolous, 180Order on Motion for Summary Judgment, 162 Letter, 188 Order on Motion for

Reconsideration, 192 Motion for Extension of Time to File, 199 Proposed Voir



































































































































































































































































































Dire, 171 Letter, 126 Order on Motion to Compel, 190 Motion for Extension of Time to File (Duong, Susan) (Entered: 02/14/2007)

02/12/2007 233 Second MOTION for Attorney Fees by all defendants. (Ronemus, Michael)(Entered: 02/12/2007)

02/12/2007 232 First MOTION for Attorney Fees by all defendants. (Ronemus, Michael) (Entered:02/12/2007)

02/12/2007 231 First MOTION to Set Aside Verdict by Darrell Rubens. (Ronemus, Michael)

(Entered: 02/12/2007)

02/12/2007 230 ORDER re 228 (Request for Pre−motion Conference): Briefing Schedule set;request to hold motions for attorneys' fees denied. See attached Order for details.Ordered by Judge Denis R. Hurley on 02/12/07. (Hurley, Denis) (Entered:02/12/2007)

02/12/2007 229 NOTICE OF APPEAL by Darrell Rubens. Filing fee $ 455, receipt number2230335.Appeal Record due by 2/22/2007. (Ronemus, Michael) (Entered:02/12/2007)

02/09/2007 Motions terminated, docketed incorrectly: 228 Proposed MOTION to Dismiss Caseas Frivolous filed by Darrell Rubens. (Entered: 05/20/2008)

02/08/2007 ORDER terminating 227 Motion for Attorney Fees &request to tax costs,requesting that the Court dispense with pre−motion conference so that Plaintiffscan file such motions/requests within the time periods established by FedRCivP 54filed by Hamptons Locations, Inc., Nancy Grigor. (See 2/8/07 Order.) (Fagan,Linda) (Entered: 05/14/2009)

02/08/2007 Motions terminated, docketed incorrectly: 228 Proposed MOTION to Dismiss Caseas Frivolous filed by Darrell Rubens. (The document should have been filed as aLetter request, and the Court will address the document as such. All correctionshave been made.) (Fagan, Linda) (Entered: 02/09/2007)

02/08/2007 228 LETTER re: Request that motions for attorney's fees, both by counsel for pltffs anddefts be held until there is a determination on defts' motion to vacate the one causeof action which the jury found for pltff. (Ronemus, Michael) Modified on 2/9/2007(Fagan, Linda). (Entered: 02/08/2007)

02/08/2007 ORDER re 227 : The Court hereby waives its pre−motion conference requirementwith regard to Plaintiffs' proposed motion for attorneys' fees. Plaintiffs shall filetheir motion in compliance with Federal Rule of Civil Procedure 54(d)(2)(B) andshall include detailed contemporaneous time records. Defendants shall fileopposition papers within 20 days of receipt of Plaintiffs' moving papers; Plaintiffsmay file reply papers within 10 days of receipt of Defendants' opposition papers.Plaintiffs are hereby advised that any request to tax costs shall be directed to theClerk of the Court. Ordered by Judge Denis R. Hurley on 2−8−07. (Hurley, Denis)(Entered: 02/08/2007)

02/07/2007 227 Proposed MOTION for Attorney Fees &request to tax costs, requesting that theCourt dispense with pre−motion conference so that Plaintiffs can file suchmotions/requests within the time periods established by FedRCivP 54 by all

plaintiffs. (Weiss, Patricia) (Entered: 02/07/2007)

01/30/2007 226 VERDICT SHEET. (Fagan, Linda) (Entered: 01/30/2007)

01/30/2007 225 SUSTENANCE ORDER for 1/29/2007 jury lunches.. Ordered by Judge Denis R.Hurley on 1/30/2007. (Best, Patricia) (Entered: 01/30/2007)

01/30/2007 224 CLERK'S JUDGMENT in favor of Hamptons Locations, Inc. and Nancy Grigoragainst Darrell Rubens. Ordered by Judge Clerk of Court on 1/30/2007. (Best,Patricia) (Entered: 01/30/2007)

01/30/2007 223 TRANSCRIPT of Trial held on 1/26/07 before Judge The Honorable Denis R.Hurley, United States District Court Judge, and a jury. Court Reporter: Paul J.Lombardi, RMR, CRR 100 Federal Plaza − Suite 1180 Central Islip, New York 11722. (Fagan, Linda) (Entered: 01/30/2007)








































01/30/2007 222 TRANSCRIPT of Proceedings held on 1/24/07 before Judge The Honorable DenisR. Hurley, United States District Court Judge, and a jury. Court Reporter: Paul J.Lombardi, RMR, CRR 100 Federal Plaza − Suite 1180 Central Islip. (Fagan,Linda) (Entered: 01/30/2007)



01/30/2007 219 TRANSCRIPT of Trial held on 1/17/97 before The Honorable Denis R. Hurley,United States District Court Judge, and a jury. Court Reporter: Paul J. Lombardi,RMR, CRR 100 Federal Plaza − Suite 1180 Central Islip, New York 11722.(Fagan, Linda) (Entered: 01/30/2007)

01/30/2007 218 TRANSCRIPT of Trial held on 1/16/07 before The Honorable Denis R. Hurley,United States District Judge, and a jury. Court Reporter: Paul J. Lombardi, RMR,CRR 100 Federal Plaza − Suite 1180 Central Islip, New York 11722. (Fagan,Linda) (Entered: 01/30/2007)

01/30/2007 217 COURT EXHIBIT II. (Fagan, Linda) (Entered: 01/30/2007)

01/30/2007 216 COURT EXHIBIT I. (Fagan, Linda) (Entered: 01/30/2007)

01/30/2007 215 Minute Entry for proceedings held before Denis R. Hurley : Jury Trial completedon 1/29/2007 (Court Reporter Perry Auerbach.) (Best, Patricia) (Entered:01/30/2007)

01/28/2007 214 Proposed Jury Instructions by Darrell Rubens (Ronemus, Michael) (Entered:01/28/2007)

01/27/2007 213 Proposed Jury Instructions by Hamptons Locations, Inc. (Weiss, Patricia) (Entered:01/27/2007)

01/26/2007 212 Minute Entry for proceedings held before Denis R. Hurley : Jury Trial − chargeconference held on 1/26/2007 (Court Reporter Paul Lombardi.) (Best, Patricia)(Entered: 01/26/2007)

01/25/2007 211 Proposed Jury Instructions by Hamptons Locations, Inc. (Weiss, Patricia) (Entered:01/25/2007)

01/24/2007 210 Minute Entry for proceedings held before Denis R. Hurley : Jury Trial held on1/24/2007 (Court Reporter Paul Lombardi.) (Best, Patricia) (Entered: 01/24/2007)


01/23/2007 208 Letter from Patricia Weiss to United States District Judge Hurley, dated 1/21/07 re:To state that "What Mr. Griffith communicated in his May 2002 telephon

coversation, should be inadmissible under Rule 408." (Fagan, Linda) (Entered:01/23/2007)


01/21/2007 Motions terminated, docketed incorrectly: 205 First MOTION in Limine (3 page Letter Motion concerning Defendants' "audiotape excerpts" of May 2002telephonic communications by Hamptons Locations, Inc.'s counsel MichaelGriffith, Esq.)First MOTION in Limine (3 page Letter Motion concerning

Defendants' "audiotape excerpts" of May 2002 telephonic communications by Hamptons Locations, Inc.'s counsel Michael Griffith, Esq.) filed by HamptonsLocations, Inc., Nancy Grigor. (Mahon, Cinthia) (Entered: 05/20/2008)




























01/21/2007 Motions terminated, docketed incorrectly: 205 First MOTION in Limine (3 page Letter Motion concerning Defendants' "audiotape excerpts" of May 2002telephonic communications by Hamptons Locations, Inc.'s counsel MichaelGriffith, Esq.)First MOTION in Limine (3 page Letter Motion concerning

Defendants' "audiotape excerpts" of May 2002 telephonic communications by Hamptons Locations, Inc.'s counsel Michael Griffith, Esq.) filed by HamptonsLocations, Inc., Nancy Grigor. (The document should have been filed as a Letterrequest, and the Court will address the document as such. All corrections have beenmade.) (Fagan, Linda) Modified on 5/19/2008 to modify the term date to a dateafter the motion was filed. (Mahon, Cinthia). (Entered: 01/22/2007)

01/21/2007 205 Letter re: motion in limine (3 page Letter Motion concerning Defendants'"audiotape excerpts" of May 2002 telephonic communications by HamptonsLocations, Inc.'s counsel Michael Griffith, Esq.) by all plaintiffs. (Weiss, Patricia)Modified on 1/22/2007 (Fagan, Linda). Modified on 1/22/2007 (Fagan, Linda).(Entered: 01/21/2007)



01/11/2007 206 Minute Entry for proceedings held before William D. Wall : Settlement Conference

held on 1/11/2007 (Talbott, Thomas) (Entered: 01/22/2007)01/05/2007 202 TRIAL BRIEF Plaintiffs' Statement with Regard to Damages by Hamptons

Locations, Inc., Nancy Grigor (Weiss, Patricia) (Entered: 01/05/2007)

01/05/2007 201 TRIAL BRIEF Plaintiffs' Pretrial Memorandum by Hamptons Locations, Inc.,Nancy Grigor (Weiss, Patricia) (Entered: 01/05/2007)

01/05/2007 200 Proposed Jury Instructions by Hamptons Locations, Inc., Nancy Grigor (Weiss,Patricia) (Entered: 01/05/2007)

01/05/2007 199 Proposed Voir Dire by Hamptons Locations, Inc., Nancy Grigor (Weiss, Patricia)(Entered: 01/05/2007)

01/05/2007 198 Proposed Jury Instructions by Darrell Rubens (Ronemus, Michael) (Entered:

01/05/2007)01/05/2007 197 TRIAL BRIEF by Darrell Rubens (Ronemus, Michael) (Entered: 01/05/2007)

01/05/2007 ELECTRONIC ORDER: The settlement conference scheduled for 1/12/07 isre−scheduled to 1/11/07 at 3:00. Ex parte settlement statements must be faxed by1/10/07. Ordered by Judge William D. Wall on 1/5/07. (Disbrow, Sandra)(Entered: 01/05/2007)

01/05/2007 ELECTRONIC ORDER granting 196 Motion for settlement conference. Theconference has been scheduled for January 12, 2007 at 10:00 a.m. in courtroom820 of the federal courthouse in Central Islip. Parties shall fax a written statementof their respective settlement positions ex parte, to chambers at (631)712−5725, byJanuary 11th. Ordered by Judge William D. Wall on 1/5/07. (Disbrow, Sandra)(Entered: 01/05/2007)

01/04/2007 196 Letter MOTION for Hearing (actually, a joint motion for a pre−trial settlement conference with Magistrate Judge Wall, as directed by Judge Hurley, requesting

January 12th conference) by all plaintiffs. (Weiss, Patricia) Modified on 5/16/2008(Fagan, Linda). Modified on 6/29/2009 (Romano, Daniel). Modified on 6/29/2009(Romano, Daniel). (Entered: 01/04/2007)

12/22/2006 ORDER granting 195 : The parties are hereby given an extension to January 5,2006 to submit proposed requests to charge, voir dire requests, and trialmemoranda. The trial will proceed as scheduled for January 16, 2007. Ordered byJudge Denis R. Hurley on 12−22−06. (Hurley, Denis) (Entered: 12/22/2006)

12/21/2006 195 First MOTION for Extension of Time to File jury instructions and memo of law ondamages and in response to Defendants' December 19, 2006 letter motion (#194)

to adjourn the trial date by all plaintiffs. (Weiss, Patricia) Modified on 5/16/2008


































(Fagan, Linda). (Entered: 12/21/2006)

12/20/2006 194 Letter requesting adjournment of Trial by Richard Rubens. (Ronemus, Michael)(Entered: 12/20/2006)

09/19/2006 ENDORSED ORDER re 192 Letter MOTION for trial adjournment. Theapplicaton is GRANTED and the trial is rescheduled for January 8, 2007 at 9:30am.Proposed requests to charge and voir dire are to be filed by December 22, 2006.. Ordered by Judge Denis R. Hurley on 9/19/2006. (Best, Patricia) (Entered:09/19/2006)

09/15/2006 193 Proposed Pretrial Order by Darrell Rubens. (Ronemus, Michael) (Entered:09/15/2006)

09/13/2006 Motions terminated, docketed incorrectly: 192 Letter MOTION for Extension of Time to File filed by Darrell Rubens, Richard Rubens, Barbara Rubens. (Mahon,Cinthia) (Entered: 05/20/2008)

09/13/2006 Motions terminated, docketed incorrectly 192 Letter MOTION for Extension of Time to File trial filed by Richard Rubens, Barbara Rubens, Darrell Rubens. (Thedocument should have been filed as a Letter request, and the Court will address thedocument as such. All corrections have been made.) (Fagan, Linda) (Entered:09/14/2006)

09/13/2006 192 Letter re: Request for Extension of Time to File trial by all defendants. (Ronemus,Michael) Modified on 9/14/2006 (Fagan, Linda). (Entered: 09/13/2006)

09/06/2006 Motions terminated: 191 First MOTION for Extension of Time to File pre trialorder filed by Richard Rubens, Barbara Rubens, Darrell Rubens. (See 9/6/06Order.)( Ordered by Judge Denis R. Hurley on 9/6/06.) (Fagan, Linda) (Entered:09/11/2006)

09/06/2006 ORDER re 191 (Letter Request for Extension of Time to File Pre−Trial Order):Upon consideration of Defendant's request, said request is granted; the deadline forfiling the joint pre−trial order is extended until Sept. 15, 2006. No furtherextensions shall be granted absent good cause shown. SO ORDERED by JudgeDenis R. Hurley on 09/06/06. (Hurley, Denis) (Entered: 09/06/2006)

09/01/2006 191 First MOTION for Extension of Time to File pre trial order by all defendants.

(Ronemus, Michael) Modified on 5/16/2008 (Fagan, Linda). (Entered: 09/01/2006)

08/04/2006 ORDER re 190 : the parties' request for an extension is granted. The updatedpre−trial order shall be filed on or before September 1, 2006. Ordered by JudgeDenis R. Hurley on 8−4−06. (Hurley, Denis) (Entered: 08/04/2006)

08/01/2006 Motions terminated, docketed incorrectly: 190 MOTION for Extension of Time toFile an updated pretrial order, because Defendants' counsel has been ill and unavailable filed by Hamptons Locations, Inc., Nancy Grigor. (The documentshould have been filed as a Letter request, and the Court will address the documentas such. All corrections have been made.) (Fagan, Linda) (Entered: 05/16/2008)

08/01/2006 Incorrect Case/Document/Entry Information. Document 190 Mtion, filed on 8/1/06has been modified. (The document should have been filed as a LETTER, and the

Court will address the document as such. All corrections have been made.) (Fagan,Linda) (Entered: 08/02/2006)

08/01/2006 Motions terminated, docketed incorrectly 190 MOTION for Extension of Time toFile an updated pretrial order, because Defendants' counsel has been ill and unavailable filed by Hamptons Locations, Inc., Nancy Grigor. (Fagan, Linda)(Entered: 08/02/2006)

08/01/2006 190 LETTER re: Request for Extension of Time to File an updated pretrial order,because Defendants' counsel has been ill and unavailable by all plaintiffs. (Weiss,Patricia) Modified on 8/2/2006 (Fagan, Linda). (Entered: 08/01/2006)

06/23/2006 189 Minute Entry for proceedings held before Denis R. Hurley : Final PretrialConference held on 6/23/2006. Jury selection set for October 10, 2006 at 9:30 am.(Court Reporter Stephanie Drexler.) (Best, Patricia) (Entered: 06/23/2006)


































05/26/2006 ORDER re 187 : The Court is in receipt of Defendants' letter requesting that theCourt issue an order preventing Mr. Griffith from harassing or intimidating LeeDavis. The Court is unaware of any authority that would permit the relief requested. Accordingly, as framed, the current request is DENIED. Ordered byJudge Denis R. Hurley on 5−26−06. (Hurley, Denis) (Entered: 05/26/2006)

05/25/2006 188 ORDER DENYING 181 Darrell Ruben's Motion for Reconsideration andGRANTING 182 Plaintiffs' motion for reconsideration −− see attached decision.Upon reconsideration, Richard Rubens' motion for summary judgment is DENIED;Barbara Rubens' motion for summary judgment remains granted. The Clerk of the

Court is directed to reinstate Richard Rubens as a defendant. The parties aredirected to appear before the Court on June 23, 2006 at 2:00 p.m in Courtroom 930for a final status conference. At that time, the Court will schedule a date for trial.Ordered by Judge Denis R. Hurley on 5−25−06. (Hurley, Denis) (Entered:05/25/2006)

05/19/2006 187 Letter to Judge Hurley by Darrell Rubens. (Ronemus, Michael) (Entered:05/19/2006)

11/14/2005 186 REPLY to Response to Motion re 182 First MOTION for Reconsideration re 180Order on Motion for Summary Judgment dated September 30, 2005 filed by allplaintiffs. (Weiss, Patricia) (Entered: 11/14/2005)

11/07/2005 185 REPLY to Response to Motion re 182 First MOTION for Reconsideration re 180

Order on Motion for Summary Judgment dated September 30, 2005, 181 FirstMOTION for Reconsideration of Defendant's Motion for Summary Judgment filedby Richard Rubens, Barbara Rubens, Darrell Rubens. (Ronemus, Michael)(Entered: 11/07/2005)

10/25/2005 ORDER: Defendant is hereby granted an extension on his reply papers toNovember 7, 2005 so that he may address any new issues raised in Plaintiffs'motion for reconsideration, recently filed with the Court. Plaintiffs may submitreply papers on their motion for reconsideration or before November 14, 2005. Theconference scheduled for November 4, 2005 is hereby adjourned to December 2,2005 at 3:30 p.m. Ordered by Judge Denis R. Hurley on 10−25−05. (Hurley,Denis) (Entered: 10/25/2005)

10/24/2005 184 NOTICE by Nancy Grigor re 183 Response in Opposition to Motion,,, 182 First

MOTION for Reconsideration re 180 Order on Motion for Summary Judgmentdated September 30, 2005 Notice of Filing Color Photograph Exhibits In Paper Form In Connection with the pending motion(s) for reconsideration of the Court'sSeptember 30, 2005 Order on Defendants' Rule 56(b) motion for summary

judgment (Weiss, Patricia) (Entered: 10/24/2005)

10/24/2005 183 RESPONSE in Opposition re 181 First MOTION for Reconsideration of Defendant's Motion for Summary Judgment and the Sepetmber 30, 2005 Memorandum of Decision and Or der (Docket #180, at tached hereto as Ex.1) filedby all plaintiffs. (Attachments: # 1 Exhibit Exhibit #1# 2 Exhibit Exhibit 2# 3Exhibit Exhibit 3# 4 Exhibit Exhibit 4# 5 Exhibit Exhibit 5# 6 Exhibit Exhibit 6# 7Exhibit Exhibit 7# 8 Exhibit Exhibit 8# 9 Exhibit Exhibit 9−part 1 (Defendants'Exs. M &N)# 10 Exhibit Exhibit 9−part 2 (Defendants' Ex. T)# 11 Exhibit Exhibits10 &11# 12 Exhibit Exhibits 12)(Weiss, Patricia) (Entered: 10/24/2005)

10/17/2005 182 First MOTION for Reconsideration re 180 Order on Motion for SummaryJudgment dated September 30, 2005 by all plaintiffs. (Attachments: # 1 ExhibitMemorandum of Decision and Order# 2 Exhibit Exhibit 2# 3 Exhibit Exhibit 3# 4Exhibit Exhibit 4# 5 Exhibit Exhibit 5# 6 Exhibit Exhibit 6# 7 Exhibit Exhibit 7# 8Exhibit Exhibit 8# 9 Exhibit Exhibit 9 (Defendants' Exhibits M &N)# 10 ExhibitExhibit 9 (Defendants' Exhibit T)# 11 Plaintiffs' Notice of Motion For PartialReconsideration)(Weiss, Patricia) Modified on 5/16/2008 (Fagan, Linda). (Entered:10/17/2005)

10/12/2005 ORDER re 181 First MOTION for Reconsideration: Plaintiffs shall serve and fileopposition papers on or before October 24, 2005; Defendant shall serve and filereply papers, if any, on or before October 31, 2005. Ordered by Judge Denis R.Hurley on 10−12−05. (Hurley, Denis) (Entered: 10/12/2005)


















































































































10/11/2005 181 First MOTION for Reconsideration of Defendant's Motion for Summary Judgment by Darrell Rubens. (Ronemus, Michael) Modified on 5/16/2008 (Fagan, Linda).(Entered: 10/11/2005)

09/30/2005 180 ORDER granting in part and denying in part 161 Motion for Summary Judgment−− see attached. Ordered by Judge Denis R. Hurley on 9−30−05.(Hurley, Denis)(Entered: 09/30/2005)

04/06/2005 179 Letter from Michael B. Ronemus to Judge Denis R. Hurley Regarding harassmentmatter. (Ronemus, Michael) (Entered: 04/06/2005)

04/04/2005 178 Letter from Patricia Weiss, Esq. to Judge Denis R. Hurley Regarding Plaintiffs'response in opposition to the March 25, 2005 (pre−motion) letter of Defendants'counsel Mr. Ronemus which requested an order directed to (non−party) MichaelGriffith, Esq.. (Weiss, Patricia) (Entered: 04/04/2005)

03/29/2005 177 Letter from Michael B. Ronemus to Judge Denis R. Hurley Regarding defamationaction. (Ronemus, Michael) (Entered: 03/29/2005)

03/24/2005 176 AFFIDAVIT in Opposition re 161 MOTION for Summary Judgment [NancyGrigor's Notice of Correction of Nancy Grigor's Affidavit In Opposition To

Defendants' Rule 56(b) Motion For Summary Judgment (which was #165),correcting one sentence with attached 2/13/05 letter from Ms. Weiss to Mr.

Ronemus alerting him of the correction which will be formalized] filed by Nancy

Grigor. (Weiss, Patricia) (Entered: 03/24/2005)03/24/2005 175 Letter from Patricia Weiss to U.S.D.J. Denis R. Hurley Regarding response to two

letters from Defendants' counsel Mr. Ronemus, explaining that her first and onlyexperience with ECF has been with this EDNY case when it became mandatory inAugust 2004 and Mr. Ronemus suffered no prejudice by the delay in e−filing theexhibits because his copy was timely sent to him Express Mail, etc.. (Weiss,Patricia) (Entered: 03/24/2005)

03/24/2005 174 Letter from Michael B. Ronemus to Judge Denis R. Hurley Regarding Defamationsuit. (Ronemus, Michael) (Entered: 03/24/2005)

03/23/2005 173 Letter from Michael B. Ronemus to Judge Denis R. Hurley Regarding Plaintiff'sOpposition to Defendant's Motion for Summary Judgment. (Ronemus, Michael)(Entered: 03/23/2005)

03/22/2005 172 Letter from Michael B. Ronemus to Judge Denis R. Hurley Regarding SchedulingOrder &Later Filings of Patricia Weiss. (Ronemus, Michael) (Entered: 03/22/2005)

03/07/2005 171 Letter from Patricia Weiss to USDJ Denis R. Hurley Regarding explanation as tothe reason for the delay in ECF "filing" of 9 exhibits to Nancy Grigor's Affidavitand a request that the Court accept them as "timely e−filed" nunc pro tunc to2/11/05 because they were "timely served" and have now been accepted by theECF system which previously did not accept them as a single "attachment" (toolarge). (Weiss, Patricia) (Entered: 03/07/2005)

03/06/2005 170 EXHIBITS To Nancy Grigor's Affidavit in Opposition re 161 MOTION forSummary Judgment, 165 Affidavit in Opposition to Motion Exhibits #2 through #9to Nancy Grigor's Affid avit (Attachments: # 1 Exhibit #2 (part 1)# 2 Exhibit #2

(part 2)# 3 Exhibit #3# 4 Exhibit #4# 5 Exhibit #5# 6 Exhibit #6 (part 1)# 7 Exhibit#6 (part 2)# 8 Exhibit #6 (part 3)# 9 Exhibit #7 (part 1)# 10 Exhibit #7 (part 2)# 11Exhibit #8 (part 1)# 12 Exhibit #8 (part 2)# 13 Exhibit #9 (part 1)# 14 Exhibit #9(part 2)# 15 Exhibit #9 (part 3)# 16 Exhibit #9 (part 4))(Weiss, Patricia), byHamptons Locations, Inc. Modified on 3/7/2005 (Fagan, Linda). (Entered:03/06/2005)

03/06/2005 169 EXHIBITS to Nancy Grigor's Affidavit in opposition re 161 MOTION forSummary Judgment, 166 Response in Opposition to Motion, 163 Response inOpposition to Motion, Exhibit #1 to Nancy Grigor's Affidavit , by Nancy Grigor(Weiss, Patricia) Modified on 3/7/2005 (Fagan, Linda). (Entered: 03/06/2005)

03/04/2005 168 REPLY to Response to Motion re 161 MOTION for Summary Judgment PART 2filed by all defendants. (Ronemus, Michael) (Entered: 03/04/2005)



































































































03/04/2005 167 REPLY to Response to Motion re 161 MOTION for Summary Judgment filed byall defendants. (Ronemus, Michael) (Entered: 03/04/2005)

02/11/2005 166 RESPONSE in Opposition re 161 MOTION for Summary Judgment Plaintiffs' Memorandum of Law In Opposition To Defendants' Rule 56(b) Motion For Summary Judgment filed by all plaintiffs. (Weiss, Patricia) (Entered: 02/11/2005)

02/11/2005 165 AFFIDAVIT in Opposition re 161 MOTION for Summary Judgment NancyGrigor's Affidavit In Opposition To Defendants' Rule 56(b) Motion For Summary

Judgment filed by all plaintiffs. (Weiss, Patricia) (Entered: 02/11/2005)

02/11/2005 164 AFFIDAVIT in Opposition re 161 MOTION for Summary Judgment Michael J.Griffith, Esq.'s Affidavit In Opposition To Defendants' Motion For Summary

Judgment filed by all plaintiffs. (Weiss, Patricia) (Entered: 02/11/2005)

02/11/2005 163 RESPONSE in Opposition re 161 MOTION for Summary Judgment Plaintiffs' Response To Defendants'Local Rule 56.1 Statement of Material and Undisputed Facts AND Plaintiffs' Local Rule 56.1 Statement of Additional Disputed Facts That Preclude Granting of Defendants' Rule 56(b) Motion For Summary Judgment filedby all plaintiffs. (Weiss, Patricia) (Entered: 02/11/2005)

01/10/2005 162 LETTER dtd January 5, 2005 from Natasha Monellto Judge Hurley re: EnclosedNotice of Motion, which the paralegal inadvertently did not attach to the Rule 56(b) Motion for Summary Judgment. (Mierzejewski, Elizabeth) (Entered:

01/11/2005)01/05/2005 Incorrect Case−Document Information filed. Docket entry 162 filed on 1/5/05 has

been deleted. (Docket entry 162 should have been attached as part of docket entry#161, and not filed as a separate motion. All corrections have been made. ) (Fagan,Linda) (Entered: 01/06/2005)

01/05/2005 161 MOTION for Summary Judgment by all defendants. Responses due by 1/6/2005(Attachments: # 1 DEFENDANTS' MOTION FOR SUMMARY JUDGMENT −Part I# 2 DEFENDANTS' MOTION FOR SUMMARY JUDGMENT − Part II# 3DEFENDANTS' MOTION FOR SUMMARY JUDGMENT − Part III)(Ronemus,Michael) Additional attachment(s) added on 1/6/2005 (Fagan, Linda). Modified on5/16/2008 (Fagan, Linda). (Entered: 01/05/2005)

12/01/2004 ORDER re 158 First MOTION for Reconsideration filed by Richard Rubens,,

Barbara Rubens,, Darrell Rubens,, 159 Response to Motion filed by HamptonsLocations, Inc.,, Nancy Grigor,, 160 Reply to Response to Motion filed by RichardRubens,, Barbara Rubens,, Darrell Rubens, − Application granted. The Court willpermit Defendants, through counsel, to file a second motion for summary judgmentand sets the following briefing schedule: Defendants shall serve their movingpapers on or before January 7, 2005; Plaintiffs shall serve and file their oppositionpapers on or before February 11, 2005; Defendants shall serve their reply papers if any, and file all papers with the Court, pursuant to the Court's individual rules, onor before March 11, 2005. Signed by Judge Denis R. Hurley on 12/01/04. (Entered:12/01/2004)

11/22/2004 160 REPLY to Response to Motion re 158 First MOTION for Reconsideration filed byall defendants. (Ronemus, Michael) (Entered: 11/22/2004)

11/17/2004 159 RESPONSE to Motion re 158 First MOTION for Reconsideration filed by allplaintiffs. (Weiss, Patricia) (Entered: 11/17/2004)

11/16/2004 158 First MOTION for Reconsideration by all defendants. (Ronemus, Michael)Modified on 5/16/2008 (Fagan, Linda). (Entered: 11/16/2004)

10/26/2004 Endorsed ORDER on 157 Letter. Application denied. The Court has previouslyentertained and denied Defts' summary judgment motion. Based on the informatonprovided, the Court denies Defts' request to file a second summary judgmentmotion. ( Signed by Judge Denis R. Hurley on 10/26/04.) c/m (Fagan, Linda)(Entered: 10/27/2004)

10/26/2004 157 Letter from Barbara Rubens to United States District Judge Hurley, dated 10/25/04re: To request the Court's permission to make a summary judgment motion and to

further ask this Court to ignore Ms. Weiss's baseless request to have this Court



























































order Darrell to answer any interrogatories since it would give her the right of deposing Darrell through written questions. (Fagan, Linda) (Entered: 10/27/2004)

10/26/2004 156 ORDER re 154 Letter, 155 Letter − see attached order granting Mr. Israel's requestto withdraw as counsel. Mr. Israel is directed to serve a copy of this order on allparties. Signed by Judge Denis R. Hurley on 10/25/04. (Entered: 10/26/2004)

10/22/2004 Incorrect Case−Document Information filed.docket entry Letters filed on 10/22/04numbered 156 and 157 have been deleted. Aforementioned documents wereduplicate documents of document #155. (Fagan, Linda) (Entered: 10/25/2004)

10/22/2004 155 Letter from Patricia Weiss, Esq. to U.S.D.J. Hurley Regarding Plaintiffs' responseto Mr. Israel's pre−motion letter regarding his motion to withdraw as Defendants'counsel and Plaintiffs' two related concerns. (Weiss, Patricia) (Entered:10/22/2004)

10/12/2004 154 Letter from Sam P. Israel to Judge Hurley Regarding pre−motion request. (Israel,Sam) (Entered: 10/12/2004)

09/10/2004 152 MANDATE of USCA: It is hereby ORDERED that the appellees' motion todismiss the appellants' pro se appeal is granted and the appellants' motion for leaveto file an interlocutory appeal is denied. Because the District Court's order did notfinally dispose of all claims in the case, it is interlocutory and not immediatelyappealable. It is further ordered that the appellees' motion to stay the entry of a

scheduling order and appellant Richard Rubens' motion to stay the District Courtproceedings are denied as moot as to 98 Notice of Interlocutory Appeal, filed byRichard Rubens, Barbara Rubens, Darrell Rubens. Copy of mandate sent toChambers. USCA# 04−1279−cv. (Duong, Susan) (Entered: 09/13/2004)

09/08/2004 151 Exhibit List , joint pre−trial order by Barbara Rubens.. (Israel, Sam) (Entered:09/08/2004)

09/08/2004 150 Letter from Sam P. Israel to Judge Denis R. Hurley Regarding requestedconference to discuss defendants' proposed motion for summary judgment. (Israel,Sam) (Entered: 09/08/2004)

09/08/2004 Original record returned from USCA. USCA# 04−1279−cv. (Duong, Susan)(Entered: 09/08/2004)

09/03/2004 153 (Proposed) JOINT PRETRIAL ORDER (Attachments: # 1) (Not signed byChambers, on 9/3/04)(Fagan, Linda) (Entered: 09/21/2004)

08/31/2004 Judge William D. Wall no longer assigned to case. (Fagan, Linda) (Entered:09/01/2004)

08/31/2004 149 ORDER The joint pretrial order is accepted for filing and the action is deemedready for trial. The action will be tried in accordance with the discretion and trialcalendar of the District Judge. Signed by Judge William D. Wall on 8/31/04.c/g(Disbrow, Sandra) (Entered: 08/31/2004)

08/31/2004 148 Minute Entry for proceedings held before William D. Wall : Pretrial Conferenceheld on 8/31/2004. (Disbrow, Sandra) (Entered: 08/31/2004)

07/27/2004 147 ORDER denying without prejudice to renewal 141 Motion for Discovery; denyingas premature in part and moot in part 142 Motion for Discovery; and denying inpart and finding moot in part 144 Motion for Discovery. Signed by JudgeWilliamD. Wall on 07/27/04. (Hepworth, F.) (Entered: 07/27/2004)

07/27/2004 146 Letter from Barbara Rubens to Judge Wall Regarding Ms. Rubens' July 19th lettermotion. (Hepworth, F.) (Entered: 07/27/2004)

07/27/2004 145 RESPONSE to Motion re 144 Letter MOTION for Discovery to compel PMI deposition and document disclosure dated July 21, 2004 Letter from counsel fornon−party PMI listing deposition dates and document disclosures, dated July 22,2004 . (Hepworth, F.) (Entered: 07/27/2004)

07/27/2004 144 Letter MOTION for Discovery to compel PMI deposition and document disclosuredated July 21, 2004 by Barbara Rubens. (Hepworth, F.) (Entered: 07/27/2004)






























07/27/2004 143 RESPONSE in Opposition re 142 Letter MOTION for Discovery sanctions for depositions of J. Winick and D. Rubens dated July 20, 2004 filed by Nancy Grigor,Hamptons Locations, Inc. dated July 22, 2004. (Hepworth, F.) (Entered:07/27/2004)

07/27/2004 142 Letter MOTION for Discovery sanctions for depositions of J. Winick and D. Rubens dated July 20, 2004 by Darrell Rubens. (Hepworth, F.) (Entered:07/27/2004)

07/27/2004 141 Letter MOTION for Discovery to compel document disclosure and for sanctions

dated July 19, 2004 by Barbara Rubens. (Hepworth, F.) (Entered: 07/27/2004)07/22/2004 134 NOTICE of Appearance by Sam P. Israel on behalf of Barbara Rubens, Darrell

Rubens, Richard Rubens (Talbott, Thomas) (Entered: 07/23/2004)

07/20/2004 132 ORDER pursuant to Rule 16(g) and 37, the court orders plaintiffs be precludedfrom taking the deposition of defendant Darrell Rubens. Signed by Judge WilliamD. Wall on 7/20/04. cf(Talbott, Thomas) Additional attachment(s) added on7/22/2004 (Talbott, Thomas). (Entered: 07/22/2004)

07/15/2004 Endorsed ORDER on 140 Letter. Application denied. To repeat, all discoverymatters are respectfully referred to Judge Wall. Because, in the Court's perception,defts have abused their communication privilege (specfically with regard totelephoning chambers), the Court will no longer permit defts to call chambers.

Should defts violate this order, the Court may impose appropriate sanctions.(Signed by Judge Denis R. Hurley on 7/15/04. ) c/m(Fagan, Linda) (Entered:07/26/2004)

07/15/2004 140 Letter from Darrell Rubens to United States District Judge Hurley, dated 7/14/04re: To request that this Court call a conference with respect to discovery matters.(Fagan, Linda) (Entered: 07/26/2004)

07/15/2004 139 ORDER granting 135 Motion to Compel to the extent that dft may depose Ms.Gosein no later than 8/4/04. Mr. Coate shall provide a written statement of thefacts, PMI a formal response to document request. Both served two days prior todeposition. Signed by JudgeWilliam D. Wall on 7/15/04.cf (Talbott, Thomas)(Entered: 07/23/2004)

07/14/2004 136 RESPONSE in Support re 135 Letter MOTION to Compel deposition of a

non−party witness filed by Darrell Rubens. (Talbott, Thomas) (Entered:07/23/2004)

07/13/2004 138 Letter dated 7/12/04 from Mitchell Troyetsky to Magistrate Wall. Re: This officerepresents Photographic Management Inc.and William Coate. The subpoena forMr. Coate. (Talbott, Thomas) (Entered: 07/23/2004)

07/13/2004 133 Letter from Patricia Weiss to United States District Judge Denis R. Hurley, dated7/12/04 re: To respond to Deft Barbara Rubens' 7/8/04 facsimile to the Court; andto oppose Mrs. Rubins' letter motion to postpone her 7/12/04 deposition and tohold a conference for the purpose of discussing a sua sponte dismissal of this case.(Fagan, Linda) (Entered: 07/23/2004)

07/12/2004 137 RESPONSE to Motion re 135 Letter MOTION to Compel deposition of a

non−party witness filed by Nancy Grigor, Hamptons Locations, Inc.. (Talbott,Thomas) (Entered: 07/23/2004)

07/09/2004 135 Letter MOTION to Compel deposition of a non−party witness by Barbara Rubens.(Talbott, Thomas) (Entered: 07/23/2004)

07/09/2004 Endorsed ORDER on 131 Letter. Application denied. all discovery matters arerespectfuly referred to Judge Wall. Additionally, Defts are not permitted tocircumvent the rules of this Court by faxing documents to the Clerk's office withinstructions to deliver the documents to chambers. The Court will not acceptservice of documents in that manner, and if defts violate this order, the Court mayimpose appropriate sanctions. ( Signed by Judge Denis R. Hurley on 7/9/04. )c/m(Fagan, Linda) (Entered: 07/20/2004)








07/09/2004 131 Letter from Barbara Rubens to Clerk's Office, dated 7/8/04 re: To request that theCourt postpone Barbara Rubens deposition scheduled for 7/12/04; and that theCourt schedule a conference with all parties. (Fagan, Linda) (Entered: 07/20/2004)

07/09/2004 Endorsed ORDER on 130 Letter. Application denied. Defts have not shown thatreconsideration is warranted, see Local Rule 6.3.( Signed by Judge Denis R. Hurleyon 7/9/04. ) c/m eod #130(Fagan, Linda) (Entered: 07/20/2004)

07/09/2004 130 Letter from Barbara Rubens to Clerk's Office, dated 7/8/04 re: To request that theCourt reconsider or allow defts to reargue their motion for summary judgment.

(Fagan, Linda) (Entered: 07/20/2004)07/09/2004 129 ORDER denying 128 Motion for Reconsideration of 6/21/04 order. Denying

motion to rescind 126 Order of 7/2/04. Deposition of Barbara Rubens shall takeplace on July 12, 2004 at 10:00 a.m. as previously ordered by the court. Signed byJudge William D. Wall on 7/9/04. c/f (Disbrow, Sandra) (Entered: 07/09/2004)

07/09/2004 128 Letter MOTION for Reconsideration re 119 order stated in court by MagistrateJudge Wall, and to rescind order allowing Mr. Griffith to attend depositions byBarbara Rubens. (Disbrow, Sandra) Modified on 7/9/2004 (Talbott, Thomas).(Entered: 07/09/2004)

07/08/2004 127 ORDER denying 123 Motion to Compel without prejudice to renewal uponcompliance with the service provisions of Rule 45. Signed by JudgeWilliam D.

Wall on 7/8/04. c/f (Disbrow, Sandra) (Entered: 07/08/2004)07/02/2004 126 ORDER denying 124 Motion to exclude nonparty witness Michael Griffith from

defendants' depositions, without prejudice to renewal should Mr. Griffith proveunable or unwilling to abide by conditions of attendance. Signed by JudgeWilliamD. Wall on 7/2/04. c/f (Disbrow, Sandra) (Entered: 07/02/2004)

07/02/2004 125 Letter dated 7/2/04 from Richard Rubens to Magistrate Wall. RE: in support of Barbara Rubens letter motion of 6/29/04 (doc # 124). (Talbott, Thomas) (Entered:07/02/2004)

06/30/2004 123 Letter MOTION to Compel deposition and production of documents of Mr Coateby Barbara Rubens. (Talbott, Thomas) (Entered: 07/02/2004)

06/30/2004 122 Letter dated 6/30/04 from Barbara Rubens to Magistrate Wall. RE: response to

plaintiffs counsel not apearing at deposition. (Talbott, Thomas) (Entered:07/02/2004)

06/30/2004 121 Letter dated 6/28/04 from Patricia Weiss to Magistrate Wall. RE: Apologize for notappearing at deposition. (Talbott, Thomas) (Entered: 07/02/2004)

06/29/2004 124 Letter MOTION to Compel Mr. Griffith to not appear at depositions other than hisown by Barbara Rubens. (Talbott, Thomas) (Entered: 07/02/2004)

06/23/2004 120 Letter dated 6/23/04 from Darrell Rubens to Magistrate Wall. RE: enclosed istranscript of Jeff Winick's deposition. (Talbott, Thomas) (Entered: 07/02/2004)

06/21/2004 119 Minute Entry for proceedings held before William D. Wall : Motion Hearing heldon 6/21/2004 re 115 Letter MOTION to Compel the defendants to appear at thecourthouse for their depositions filed by Hamptons Locations, Inc., Nancy Grigor,

117 Letter MOTION to Compel discovery filed by Richard Rubens, Motionsterminated: 115 Letter MOTION to Compel the defendants to appear at thecourthouse for thei depositions filed by Hamptons Locations, Inc., Nancy Grigor,117 Letter MOTION to Compel discovery filed by Richard Rubens. Thedefendants' motion of 6/12/04 is granted as follows. The parties will be deposed atthe Courthouse: Darrell Rubens 6/28/04;Richard Ruben 7/6/04;Barbara Rubens7/12/04;Nancy Grigor 7/23/04. The defendants motion on 6/14/04 is granted. Theplaintiffs shall serve responses to all pending discovery demands no later than7/16/04. All factual discovery due 8/20/04. The next pretrial conference 8/31/04 at10:00 as previously scheduled. The joint pretrial order due at conference. (Talbott,Thomas) (Entered: 07/02/2004)

06/21/2004 114 ORDER re 112 Letter, 113 Letter. On 2/17/04, the Court issued an order denyngDefts' motion for summary judgment and granting Pltffs' motion to dismiss Defts'counterclaims. On 3/10/04, Defts filed a document entitled "Petition for Permission

















to Appeal" ("petition") in the district court Clerk's office. Although Defts filed thepetition in the district court Clerk's office, they addressed it to the United StatesCourt of Appeals for the Second Circuit. The Clerk's office then forwarded thepetition and the case file to the Second Circuit. This Court was not aware of thepetition until it received a copy of same on 5/13/04. By letter dated 6/7/04, Deftsinquired about the status of the petition, stating that "[i]t seems as if this Petitionhas only sat in the box of your Court's clerk's office for several months and has notbeen sent to chambers for your permission and or decision>." Apparently, Deftsseek permission from this Court to appeal this Court's decision to the Second

Circuit. Because the Court's 2/17/04 order was not a final order, in order to appealthat decision this Court must certify the issue to the Second Circuit. To the extentthat the petition is addressed to this Court to certify an appeal to the SecondCircuit, Defts' request is denied because they have not stated adequate grounds forappeal. Additionally, Defts' request to stay discovery is denied. The Court is also inreceipt of Defts' letter dated 6/14/04, regarding several discovery−related matters.The Court respectfully refers all discovery matters to Magistrate Judge Wall. (Signed by Judge Denis R. Hurley on 6/21/04. ) c/m (Fagan, Linda) (Entered:07/01/2004)

06/16/2004 118 Letter dated 6/14/04 from Richard Rubens to Patricia Weiss. RE: Discoverydemands that were sent on 6/7/04 (Talbott, Thomas) (Entered: 07/02/2004)

06/16/2004 117 Letter MOTION to Compel discovery by Richard Rubens. (Talbott, Thomas)

(Entered: 07/02/2004)06/16/2004 116 RESPONSE to Motion re 115 Letter MOTION to Compel the defendants to appear

at the courthouse for their depositions filed by Richard Rubens. (Talbott, Thomas)(Entered: 07/02/2004)

06/16/2004 113 Letter from Richard Rubens to Judge Hurley, dated 6/14/04 re: To advise the Courtof the submission of the enclosed copy of the letter written to Magistrate JudgeWall along with the documentation provided him in response to Partricia Weiss'sletter to Judge Wall (copy enclosed dated 6/12/04); To request that defts be able tomake a Motion to this Court to compel discovery or in the alternative strike anyreference to any of the documents, evidence or testimony relating to theseunresponsive requests at trial. (Fagan, Linda) (Entered: 07/01/2004)

06/16/2004 112 Letter from Richard Rubins to Judge Hurley, dated 6/7/04 re: To request that allproceedings be stayed until the hearing and determination of their Petition forPermissin to Appeal from the Court's decision of 2/17/04. (Fagan, Linda) (Entered:07/01/2004) (Fagan, Linda) (Entered: 07/01/2004)

06/16/2004 109 ORDER adjourning conference from 6/18/04 to 6/21/04 at 4:00 p.m. Signed byJudge William D. Wall on 6/16/04. c/f(Disbrow, Sandra) (Entered: 06/16/2004)

06/15/2004 115 Letter MOTION to Compel the defendants to appear at the courthouse for theidepositions by Nancy Grigor, Hamptons Locations, Inc.. (Talbott, Thomas)(Entered: 07/02/2004)

06/15/2004 107 ORDER scheduling conference for 6/18/04 at 1:30 p.m. Signed by Judge WilliamD. Wall on 6/15/04. c/f(Disbrow, Sandra) (Entered: 06/15/2004)

06/14/2004 108 Letter from Patricia Weiss, Esq. to Hon. William D. Wall dated 6/12/04 re:requesting the Court's assistance in connection with discovery which is to becompleted by 6/30/04. More specifically, I request that the Court order the pro sedefendants to appear at the Courthouse for their depositions as follows: DarrellRubens − 6/21/04 at 10 a.m.; Barbara Rubens − 6/22/04 at 10 a.m.; and RichardRubens − 6/23/04 at 10 a.m. (Mahon, Cinthia) (Entered: 06/15/2004)

06/08/2004 111 CERTIFICATE OF SERVICE for Subpoena In A Civil Case, filed by NancyGrigor, Hamptons Locations, Inc. Jeffrey Winick, 655 Third Avenue, 8th Fl.,N.Y.C. 10017−5617 (212) 792−2600 served on Jeffrey Winick on 6/1/04. (Fagan,Linda) (Entered: 06/29/2004)

06/08/2004 110 Letter from Richard Rubens to Patricia Weiss, Esq., dated 6/2/04 re: To advisepltff's counsel that unless she complies with defts discovery requests, defts will be

forced to make a Motion to Comply and ask the court for appropriate sanctions.








10/24/2003 96 Letter dtd 10/22/03 from Richard Rubens to USDJ Hurley re: Dfts pray this courtto accept their rule 56.1 statement and grant summary judgment in favor of dfts..(Lopez, Adriana) (Entered: 03/02/2004)

10/15/2003 95 Letter dtd 10/14/03 from Patricia Weiss to USDJ Hurley re: This is a letter motionto strike dfts' purported Local Rule 56.1 statement. (Lopez, Adriana) (Entered:03/02/2004)

10/10/2003 93 Letter from Pro se defendants dtd. 10/7/03 to Mag/Judge Wall, in response toplaintiff's letter dtd. 9/29/03 in reply to plaintiff's letter in opposition to defts'

cross−motion. (Montero, Edher) (Entered: 11/26/2003)10/10/2003 86 Letter dtd. 10/7/03 from dfts to Mag. J. Wall pertaining to a Protective Order which

would "protect" dfts from their fear of physical harm for themselves and theirproperty based on the threats made to them by plfs. (Barhome, Sydelle) (Entered:11/06/2003)

10/08/2003 84 REPLY TO PLAINTIFFS OPPOSITION to defendants motion for summary judgment by Barbara Rubens, Darrell Rubens, Richard Rubens Opposition(Mierzejewski, Elizabeth) (Entered: 10/15/2003)

10/02/2003 83 RULE 56.1 STATEMENT re 75 MOTION for Summary Judgment by BarbaraRubens, Darrell Rubens, Richard Rubens. (Mierzejewski, Elizabeth) (Entered:10/15/2003)

10/02/2003 82 LETTER dtd 9/26/03 from Richard Rubens to Ms Weiss Regarding The enclosed56.1 statement that is now being added to the motion. (Mierzejewski, Elizabeth)(Entered: 10/15/2003)

10/01/2003 85 Letter dtd. 9/30/03 from Patricia Weiss to Hon. J. Hurley noting enclosure of copies of Plfs' papers in opposition to Dfts' Rule 56(b) motion for summary

judgment. (Barhome, Sydelle) (Entered: 10/17/2003)

10/01/2003 79 MEMORANDUM in Support re 75 MOTION for Summary Judgment by RichardRubens. (Mierzejewski, Elizabeth) (Entered: 10/03/2003)

10/01/2003 78 MEMORANDUM in Opposition re 75 MOTION for Summary Judgment byHamptons Locations, Inc.. (Mierzejewski, Elizabeth) (Entered: 10/03/2003)

09/29/2003 92 CERTIFICATION UNDER RULE 26 filed by Barbara Rubens, Darrell Rubens,Richard Rubens (Montero, Edher) (Entered: 11/26/2003)

09/29/2003 91 Letter from Patricia Weiss dtd. 9/29/03 to Mag/Judge Wall, in opposition to thedefts' cross−motion for a protective order. (Montero, Edher) (Entered: 11/26/2003)

09/29/2003 90 Letter from pro se defendants dtd. 9/26/03 to Mag/Judge Wall Regardingrequesting that court amend their order to include that deft had the right tocross−motion for protective order. (Montero, Edher) (Entered: 11/26/2003)

09/29/2003 89 Letter from Barbara and Richard Rubens dtd. 9/26/03 to Mag/Judge Wall inresponse to plaintiffs' letter motion seeking a protective order and making across−motion. (Montero, Edher) (Entered: 11/26/2003)

09/25/2003 88 Letter MOTION for Sanctions for deft's failure to provide a copy of a videotape of

5/9/03 tele conversation between Darrell Rubens and Michael J. Griffith, Esq., filed by Nancy Grigor, Hamptons Locations, Inc.. (Montero, Edher) (Entered:11/26/2003)

09/23/2003 81 Minute Entry Case called. for proceedings held before William D. Wall : ForPlaintiff: Patricia Weiss, For Defendant: Richard Rubens, Darrell Rubens, BarbaraRubens. Status Conference held on 9/23/2003. The status conference is adjournedwithout a date, pending Judge Hurley's Decision on the Rule 56 Motion. Ms. Weissshall contact this Court upon receipt of the decision. Plaintiff may move forsanctions to this court for defendant's refusal to comply with this Court's orders.The pretrial conference scheduled for 2/10/03 is also adjourned without a date. SoOrdered cm (Mierzejewski, Elizabeth) (Entered: 10/09/2003)

09/09/2003 80 ORDER vacating the defendant's motion for summary judgment dtd 6/27/03..

Signed by Judge Denis R. Hurley on 9/9/03. cm(Mierzejewski, Elizabeth)




(Entered: 10/03/2003)

09/08/2003 76 AFFIDAVIT in Support re 75 MOTION for Summary Judgment by BarbaraRubens, Darrell Rubens, Richard Rubens. (Mierzejewski, Elizabeth) (Entered:09/17/2003)

09/08/2003 75 MOTION for Summary Judgment by Barbara Rubens, Darrell Rubens, RichardRubens. (Mierzejewski, Elizabeth) (Entered: 09/17/2003)

08/19/2003 73 LETTER dtd 8/18/03 from Counsel for Plaintiffs to Judge Hurley Regarding

Request for clarification of the two orders which set two different briefingschedules for defendants' anticipated Rule 56(b) motion(s).. (Mierzejewski,Elizabeth) (Entered: 09/04/2003)

08/14/2003 Appeal Record Returned from USCA. USCA# 03−7333. (Duong, Susan) (Entered:08/20/2003)

08/14/2003 72 MANDATE of USCA as to 40 Appeal − Miscellaneous, filed by Darrell RubensRe: It is ORDERED that Appellees' motion to dismiss the appeal is granted and theappeal is dismissed. The Appellees' motion for costs is denied because they havefailed to show bad faith or vexatious tactics on the part of Appellant. Copy of mandate sent to Chambers. USCA# 03−7333.(Duong, Susan) (Entered:08/20/2003)

08/13/2003 ORDER denying the 74 Letter motion that the Court rescind Magistrate JudgeWall's order. Plaintiff, Richard Rubens, has failed to meet his burden of proof byshowing that Judge Wall's ruling was clearly erroneous or contrary to law.Plaintiffs application for a protective order is denied as well, with leave to renewthe application before Magistrate Judge Wall.. Signed by Judge Denis R. Hurley on8/13/03. cm(Mierzejewski, Elizabeth) (Entered: 09/05/2003)

08/13/2003 74 LETTER MOTION dtd 8/12/03 from Richard Rubens to Judge Hurley RegardingRequest that the Court rescind the order of Magistrate Judge Wall to allowdefendants to make a motion for a Protective Order.. (Mierzejewski, Elizabeth)(Entered: 09/05/2003)

08/05/2003 77 Letter dtd. 8/4/03 from Patricia Weiss to Hon. J. Hurley opposing Richard Rubens'7/28/03 letter asking the court "to rescind the order of Mag. J. Wall dated 7/17/03,and if not, allow Richard Rubens and the other two defendants to make a motionfor a protective order. (Barhome, Sydelle) (Entered: 09/30/2003)

08/04/2003 71 LETTER dtd 7/31/03 from Richard Rubens to Judge Hurley Regarding The orderdtd 7/28/03 was previously received on 6/27/03. Based on the first Order of 6/27/03, the defendants, made a motion for summary Judgment and made itreturnable by 9/12/03 as per the instructions.. (Mierzejewski, Elizabeth) (Entered:08/20/2003)

07/29/2003 70 LETTER dtd 7/28/03 from Richard Rubens to Judge Hurley Regarding Requestthat the court rescind the order of Magistrate Judge Wall dated 7/17/03, and if not,allow a motion to be made for a protective order.. (Mierzejewski, Elizabeth)(Entered: 08/20/2003)

07/29/2003 69 LETTER dtd 7/28/03 from Richard Rubens to Judge Hurley Regarding Request

that the Court rescind the order of Magistrate Judge Wall dtd 7/17/03, and if not,allow a motion to be made for a protective order.. (Mierzejewski, Elizabeth)(Entered: 08/19/2003)

07/28/2003 68 ORDER that the Court sets the following briefing schedule with respect toDefendants' motion for summary judgment: Defendants shall serve their oppositionpapers on or before 9/5/03; Plaintiff shall serve their opposition on or before10/6/03; Defendants shall serve their reply papers, if any, and file all papers withthe Court on or before 10/20/03. (Signed by Judge Denis R Hurley on 7/28/03) cm(Mierzejewski, Elizabeth) (Entered: 08/14/2003)

07/01/2003 67 Letter dtd 7/1/03 from Richard Rubens to Judge Wall Regarding The tape that wasmade of the Griffith conversation will not be used as evidence and therefore shouldnot be part of disclosure. As the Court knows, anything that may be used solely for

impeacchment is in no way part of disclosure.. (Mierzejewski, Elizabeth) (Entered:




08/11/2003)

06/27/2003 65 ORDER that the Court hereby waives the requirement of a pre−motion conferenceand sets the following briefing schedule with respect to the Defendants' motion forSummary Judgment: Defendants shall serve their moving papers on or before7/31/03; Plaintiffs shall serve their opposition papers on or before 8/29/03;Defendant shall serve their reply papers, if any, and file all papers with the Courton or before 9/12/03.. Signed by Judge Denis R. Hurley on 6/27/03. (Mierzejewski,Elizabeth) (Entered: 07/18/2003)

06/26/2003 66 Letter from Patricia Weiss to Judge Wall Regarding: When Ms. Weiss appearedbefore the Court today, she stated that Plaintiffs had filed a motion to dismiss bothof Defendants' counterclaims and mistakenly described them as (1) "abuse of process" and (2) "defamation". She meant to describe the second counterclaim asone based upon "extortion" rather than describing it as "defamation."(Mierzejewski, Elizabeth) (Entered: 07/28/2003)

06/24/2003 64 SCHEDULING ORDER: Final Pretrial Conference set for 2/10/2004 at 11:00 AMbefore Magistrate−Judge William D. Wall. Telephone Status Conference set for9/23/2003 at 02:00 PM before Magistrate−Judge William D. Wall. Discovery of factual matters due by 12/23/2003. See Order for details as to expert discovery.Dispositive motions due by 1/20/2004. Motions to join new parties or to amend thepleadings must be made by 11/18/03. This case should be ready for trial by2/24/04. Signed by Judge William D. Wall on 6/24/03. c/g.(D'Achille, Patty)(Entered: 07/09/2003)

06/24/2003 63 Minute Entry for proceedings held before William D. Wall : Initial ConferenceHearing held on 6/24/2003 at 10:00 a.m. Counsel for all sides present. (D'Achille,Patty) (Entered: 07/09/2003)

06/17/2003 62 Letter from Defendants to Judge Hurley Regarding It is absurd for plaintiffs toclaim they need a transcript of the prior action and that plaintiffs need to conductdiscovery to obtain this transcript. They have had more than one year to obtain thistranscript if they wanted it.. (Mierzejewski, Elizabeth) (Entered: 06/26/2003)

06/11/2003 60 Letter from Patricia Weiss to the Clerk of Court Regarding Enclosed motion todismiss with supporting papers of Plaintiff. (Mierzejewski, Elizabeth) (Entered:06/24/2003)

06/11/2003 56 REPLY in Support re 54 MOTION to Dismiss the Counterclaims by NancyGrigor, Hamptons Locations, Inc.. (Mierzejewski, Elizabeth) (Entered: 06/18/2003)

06/11/2003 55 MEMORANDUM OF LAW in support or opposition to Plaintiff's motion todismiss counterclaim by , Barbara Rubens, Darrell Rubens, Richard Rubens(Mierzejewski, Elizabeth) Modified on 6/24/2003 (Mierzejewski, Elizabeth).(Entered: 06/18/2003)

06/11/2003 54 MOTION to Dismiss the Counterclaims by Nancy Grigor, Hamptons Locations,Inc.. (Mierzejewski, Elizabeth) (Entered: 06/18/2003)

06/10/2003 61 REPLY MEMORANDUM OF LAW in Further Support of Plfs' Motion to DismissCounterclaims pursuant to Fed. R.Civ.P. 12 &8 by Nancy Grigor, HamptonsLocations, Inc., to attorneys in this action cc to Hon.J. Hurley (Barhome, Sydelle)(Entered: 06/25/2003)

06/03/2003 57 Letter dtd. 6/2/03 from Patricia Weiss, Esq. to Hon. J. Hurley stating that for theforegoing reasons outlined in this letter, Dfts' request to move for summary

judgment should be denied, without prejudice to move for summary judgment atthe completion of all discovery. (Barhome, Sydelle) (Entered: 06/19/2003)

05/21/2003 53 MEMORANDUM in Support of opposition to Plaintiff's motion to dismisscounterclaim by Nancy Grigor, Barbara Rubens, Darrell Rubens, Richard Rubens.(Mierzejewski, Elizabeth) (Entered: 06/05/2003)

05/13/2003 ORDER signed by Judge Denis R. Hurley on 5/19/03 re: Application deniedw/leave to renew on the following schedule: Pltfs shall submit a letter brief, w/nomore than five (5) pages, stating why, pursuant to Fed. R. Civ. P. 56(f) and

applicable caselaw, they cannot adequately respond to a motion for summary




judgment on or before 6/3/03. Defts shall respond on or before 6/17/03. If theCourt does not receive a submission from pltfs on or before 6/3/03, the Court willwaive any pre−motion conference and issue an order requesting the submission of a motion for summary judgment. c/m. EOD #51.(D'Achille, Patty) (Entered:05/28/2003)

05/06/2003 50 LETTER dated 5/5/03 from Defendant to Judge Hurley (Mierzewski, Liz)(Entered: 05/08/2003)

04/29/2003 51 Letter dtd 4/28/03 from counsel for plaintiffs to Judge Hurley re: Request to move

for summary judgment should be denied, without prejudice to move for summary judgment at the completion of all discovery. (Mierzejewski, Elizabeth) (Entered:05/13/2003)

04/28/2003 59 Letter from Counsel for Plaintiffs to Judge Hurley Regarding Request to move forSummary Judgment at the completion of discovery. (Mierzejewski, Elizabeth)(Entered: 06/23/2003)

04/28/2003 52 Letter dtd 4/28/03 from Counsel for plaintiffs to Judge Hurley re: Request to movefor summary judgment at the completion of all discovery. (Mierzejewski,Elizabeth) (Entered: 05/15/2003)

04/23/2003 45 Acknowledgment from USCA received re: Index to the record on appeal andoriginal record [40−1] appeal. USCA# 03−7333. (Duong, Susan) (Entered:

04/23/2003)04/18/2003 58 Letter dtd 4/18/03 from Counsel for Defendants to Judge Hurley Regarding

Request that the Court adjourn the 5/2/03 scheduling conference until the decisionof the defendant's Rule 56 Summary Judgment Motion is made. (Mierzejewski,Elizabeth) (Entered: 06/23/2003)

04/16/2003 49 LETTER dated 4/15/03 from Patricia Weiss to Defendants re: Enclosed copies of Plaintiffs' Notice of motion with supporting papers to dismiss the counterclaimspursuant to Fed.R.Civ.P. 12 &8. (Mierzewski, Liz) (Entered: 04/29/2003)

04/16/2003 Endorsed order granting [48−1] motion to extend time for the initial conference,status conference for 10:00 6/24/03 before Magistrate William D. Wall Ms. Weissshall serve a copy of this order on all parties( Signed by Magistrate William D.Wall , on 4/16/03) cm (Mierzewski, Liz) (Entered: 04/28/2003)

04/14/2003 48 Letter MOTION by Hamptons Locations, Nancy Grigor to extend time for theinitial conference , No Motion hearing (Mierzewski, Liz) (Entered: 04/28/2003)

04/03/2003 Certified and transmitted original record on appeal to U.S. Court of Appeals:including original and 3 copies of the index to the record on appeal, clerk certificate and certified copy of docket sheet [40−1] appeal . Acknowledgmentrequested. (Duong, Susan) (Entered: 04/03/2003)

04/02/2003 46 MEMORANDUM and ORDER, that the Court waives the requirement of apre−motion conference and sets forth the following schedule with respect toPlaintiffs' motion to dismiss: Plaintiffs serve their moving papers on or before5/5/03. Defendants shall serve their opposition papers on or before 6/6/03.Plaintiffs shall file their reply, if any by 6/20/03. Failure by any Defendant to

respond to this motion may result in a dismissal of the Counterclaims ( signed byJudge Denis Hurley , on 4/2/03) cm (Mierzewski, Liz) (Entered: 04/24/2003)

04/02/2003 Endorsed order granting motion for an extension of time to file a notice of appeal (Signed by Judge Denis Hurley , on 4/02/03) (Duong, Susan) (Entered: 04/03/2003)

03/14/2003 47 NOTICE of Automatic Dislosures pursuant to Fed.R.Civ.P. 26(a)(l)by HamptonsLocations, Nancy Grigor (Mierzewski, Liz) (Entered: 04/28/2003)

03/14/2003 39 ORDER, set status conference for 10:30 5/2/03 before Magistrate William D. Wall( signed by Magistrate William D. Wall , on 3/14/03) cm (Mierzewski, Liz)(Entered: 04/01/2003)

03/13/2003 41 MOTION by Darrell Rubens to extend time to file a notice of appeal , Motionhearing Motion file stamped: 3/13/03. (Duong, Susan) (Entered: 04/03/2003)




03/13/2003 40 NOTICE OF INTERLOCUTORY APPEAL of [26−1] order extending time forRichard And Barbara Rubens to file and serve a motion for reconsideration to2/10/03. Defendants are to file and serve an answer to the complaint by 2/10/03.Darrell Rubens has failed to respond to this Court's order dtd 12/17/02 to answerthe complaint and has not requested an enlargement of time to file a motion forreconsideration. With respect to defendant Darrell Rubens, Plaintffs have leave of the Court to file a motion seeking a default judgment against him. by DarrellRubens Fee Paid $ 105.00 Receipt # 9081. Copy of notice of appeal, copy of order,court receipt and certified copy of docket sheet forwarded to USCA. Copy of notice of appeal sent to Chambers. Service made by Appellant. (Duong, Susan)(Entered: 04/03/2003)

03/11/2003 37 LETTER dated 3/5/03 from Pro se Staff Attorney to Barbara Rubens advising thatthe Chief Judge does not oversee cases that are assigned to other district judges andadvising that she should pursue an appeal. (Noh, Kenneth) (Entered: 03/11/2003)

03/11/2003 36 LETTER dated 2/17/03 from Barbara Rubens to USDJ Edward R. Korman re:missing documents. (Noh, Kenneth) (Entered: 03/11/2003)

02/20/2003 38 LETTER dated 2/17/03 from Darrell Rubens to Judge Hurley re: Request that thecourt reconsider the Memorandum and Order and not grant the Plaintiffs requestfor default or in the alternative give permission to make a motion to reargue.(Mierzewski, Liz) (Entered: 03/17/2003)

02/20/2003 35 ORDER, denying motion for reconsideration of the Court's 12/17/02 order ( signedby Judge Denis Hurley , on 2/20/03) cm (Mierzewski, Liz) Modified on04/03/2003 (Entered: 02/27/2003)

02/20/2003 34 MEMORANDUM by Hamptons Locations in opposition to the motion forreconsideration. (Mierzewski, Liz) (Entered: 02/25/2003)

02/10/2003 Endorsed order denying [27−1] motion to extend time to reargue this Court'sDecision/Order of December 2002. Defendant has not file a timely request forreconsideration or met his burden of establishing good cause for an extension of the ten day time limit. ( Signed by Judge Denis Hurley , on 2/10/03) cm(Mierzewski, Liz) (Entered: 02/12/2003)

02/08/2003 31 MOTION by Richard Rubens, Barbara Rubens, Darrell Rubens to reconsider theMotion to dismiss , No Motion hearing Motion file stamped: 2/10/03 andmailed/served: 2/7/03 (Mierzewski, Liz) Modified on 6/24/2003 (Mierzejewski,Elizabeth). (Entered: 02/19/2003)

02/07/2003 32 MEMORANDUM by Richard Rubens, Barbara Rubens, Darrell Rubens in supportof [31−1] motion to dismiss (Mierzewski, Liz) (Entered: 02/19/2003)

02/05/2003 33 LETTER dated 2/4/03 from Counsel for plaintiffs to Judge Hurley re: Request for apre−motion conference on Plaintiffs' Rule 12(b) motion to dismiss the twocounterclaims which are likely intended to be state torts. (Mierzewski, Liz)(Entered: 02/24/2003)

02/05/2003 27 Letter MOTION by Darrell Rubens to extend time to reargue this Court'sDecision/Order of December 2002 . Also, request that this Court accept the answerand counterclaim that has been filed on 12/29/02. No Motion hearing (Mierzewski,

Liz) (Entered: 02/12/2003)

02/03/2003 30 LETTER dated 2/3/03 from Barbara Rubens to Judge Wall re: Ms. Rubens iscopying all papers to Judge Hurley and Judge Wall as is Counsel for plaintiff..(Mierzewski, Liz) (Entered: 02/19/2003)

02/03/2003 29 LETTER dated 1/29/03 from Richard Rubens to Judge Hurley re: Request that thisCourt reconsider their decision not to dismiss the complaint in its entirety so thatthis Court can entertain all the papers and motions and documents that should beconsidered in their decision. Request that the Court accept the defendant's answerand counterclaim as timely and to hold a conference to resolve all issues.(Mierzewski, Liz) Modified on 6/24/2003 (Mierzejewski, Elizabeth). (Entered:02/19/2003)




02/03/2003 28 ANSWER to Complaint and COUNTERCLAIM by Richard Rubens, BarbaraRubens, Darrell Rubens against Hamptons Locations, Nancy Grigor (Mierzewski,Liz) (Entered: 02/19/2003)

01/29/2003 26 ORDER, extending time for Richard And Barbara Rubens to file and serve amotion for reconsideration to 2/10/03. Defendants are to file and serve an answer tothe complaint by 2/10/03. Darrell Rubens has failed to respond to this Court's orderdtd 12/17/02 to answer the complaint and has not requested an enlargement of timeto file a motion for reconsideration. With respect to defendant Darrell Rubens,Plaintffs have leave of the Court to file a motion seeking a default judgment against

him. ( signed by Judge Denis Hurley , on 12/29/03) cm (Mierzewski, Liz) (Entered:01/30/2003)

01/22/2003 25 LETTER dated 1/21/03 from Counsel for plaintiffs to Judge Hurley re: Requestthat the Court deny any motion for reconsideration and any motion for anenlargement of time to file a motion for reconsideration. (Mierzewski, Liz)(Entered: 01/30/2003)

01/21/2003 24 LETTER dated 1/17/03 from Richard Rubens to Judge Hurley re: Request for anenlargement of time to reargue since this Court overlooked certain exhibits andmotions in reaching a decision. (Mierzewski, Liz) (Entered: 01/30/2003)

12/17/2002 23 DECISION &ORDER, 12/17/02 granting in part, denying in part [8−1] motion todismiss and for sanctions Dfts' motiom to dismiss Counts l, 2 and 5 is denied as to

Counts 3 and 4. Dfts' applicstaion for Rull sanctions is denied.. Plfs may, file anamended cmplaint on or before 1/24/03 with respect to the dismissed counts. Plf shall respond to any such amended complaint consistent with the requirement of Rule 12 of the Federal Rules of Civil Procedure. (signed by Judge Denis Hurley ,on 12/17/02) (Barhome, Sydelle) (Entered: 12/20/2002)

10/24/2002 21 LETTER dated 10/21/02 from Barbara Rubens to Judge Hurley re: Request that theCourt dismiss this case as frivolous and sanction the Plaintiff and their attorneyPatricia Weiss. (Mierzewski, Liz) (Entered: 11/05/2002)

10/15/2002 22 LETTER dated 10/17/02 from Counsel for Plaintiff to Judge Hurley re: Request fora conference. (Mierzewski, Liz) (Entered: 11/05/2002)

10/15/2002 20 LETTER dated 10/17/02 from Counsel for plaintiff to Judge Hurley re: Request fora conference. (Mierzewski, Liz) (Entered: 10/29/2002)

10/09/2002 19 NOTICE of Notice of Cerificate of Registration (Principal Register)by HamptonsLocations, Nancy Grigor (Mierzewski, Liz) (Entered: 10/15/2002)

06/06/2002 43 NOTICE of Motion by Barbara Rubens for sanctions. (Mierzewski, Liz) (Entered:04/03/2003)

06/06/2002 17 LETTER dated 6/6/02 from Barbara Rubens to Judge Hurley re: Encloseddefendants' reply to plaintiff's opposition to defendant's Amended Enlarged Motionto Dismiss along with a motion for sanctions. (Mierzewski, Liz) (Entered:06/27/2002)

06/06/2002 16 AFFIDAVIT by Barbara Rubens in opposition to the [15−1] oppositionmemorandum and in support of her reply (Mierzewski, Liz) Modified on

06/27/2002 (Entered: 06/25/2002)05/30/2002 15 MEMORANDUM by Hamptons Locations, Nancy Grigor in opposition to [8−1]

motion to dismiss and for sanctions (Mierzewski, Liz) (Entered: 06/11/2002)

05/23/2002 14 LETTER dated 5/20/02 from Richard Rubens to Judge Hurley re: Request that theCourt dispose of this matter and impose appropriate sanctions against the plaintiffsand their attorney, Patricia Weiss who are in complete violation of the FederalRules, by bringing a claim which is being presented for improper use since thisclaim is solely to harass, abuse and be malicious towards the defendants, is totallyfrivolous, and has absolutely no evidentiary support. (Mierzewski, Liz) (Entered:06/05/2002)

05/20/2002 13 LETTER dated 5/17/02 from Richard Rubens to Judge Hurley re: The enclosedsubpoena should be quashed and this action should be dismissed with maximumsanctions awarded to defendants and Mr. Griffith "the experienced lawyer" should




be disbarred. (Mierzewski, Liz) (Entered: 06/04/2002)

05/17/2002 18 MEMORANDUM by Hamptons Locations, Nancy Grigor in opposition to [8−1]motion to dismiss and for sanctions (Mierzewski, Liz) (Entered: 07/11/2002)

05/17/2002 11 DECLARATION by Barbara Rubens in support of the [8−1] motion to dismiss andfor sanctions (Branciforte, Ralph) (Entered: 05/24/2002)

05/17/2002 10 DECLARATION by Darrell Rubens in support of the [8−1] motion to dismiss andfor sanctions (Branciforte, Ralph) (Entered: 05/24/2002)

05/17/2002 9 DECLARATION by Richard Rubens in support of the [8−1] motion to dismiss andfor sanctions (Branciforte, Ralph) (Entered: 05/24/2002)

05/17/2002 8 MOTION by Richard Rubens, Barbara Rubens, Darrell Rubens to dismiss and forsanctions , Motion hearing (Branciforte, Ralph) (Entered: 05/24/2002)

05/15/2002 12 LETTER dated 5/15/02 from Richard Rubens to USDJ Hurley RE: Enclosing acopy of Defendants' motion to dismiss. (Branciforte, Ralph) (Entered: 05/24/2002)

11/15/2001 7 NOTICE of Case reassignment from Mishler to Judge Hurley. (Mierzewski, Liz)(Entered: 11/19/2001)

11/02/2001 CASE reassigned to Judge Denis Hurley from Judge Jacob M. Mishler. Partiesnotified. (Bowens, Priscilla) (Entered: 11/15/2001)

11/02/2001 6 INTER−OFFICE MEMO from Keith A. Jones, Case Manager &CourtroomDeputy to The Honorable Jacob Mishler to Edward R. Korman, United StatesDistrict Judge dated 11/2/01 Re: Reassignment of: Case No.: Cv−01−05477 (JM);Case Title: Hamptons Locations, Inc. −v− Nancy Grigor; Reassigned by randomselection: Judge Mishler asserts disqualification in the above matter and requestsreassignment of this case. c/m to Stats. &Judge Korman on 11/2/01 (Fagan, Linda)(Entered: 11/08/2001)

10/12/2001 44 LETTER dated 10/12/01 from Counsel for defendant to Judge Mishler re:Response to Plaintiff's memorandum in opposition to Defendant's motion.(Mierzewski, Liz) (Entered: 04/03/2003)

10/04/2001 4 MEMORANDUM by Hamptons Locations, Nancy Grigor in opposition to Defts'

Combined Rule 12, Rule 11, And Rule 56 (b) Motion(s) (Fagan, Linda) (Entered:10/05/2001)

09/20/2001 101 LETTER dtd 9/20/01 from Richard Rubens to Judge Wexler Regarding Themotion to dismiss and impose sanctions should go forward as scheduled.(Mierzejewski, Elizabeth) Modified on 9/10/2004 (Mahon, Cinthia). (Entered:04/21/2004)

09/18/2001 5 NOTIFICATION OF CASE REASSIGNMENT by P. Bowens, Statistical Clerk;That in accordance with the Local Rules, this case has been reassigned by randomto Judge Jacob Mishler for all purposes. That this assignment has been made withChief Judge Korman's approval. (Fagan, Linda) (Entered: 10/09/2001)

09/13/2001 42 LETTER dated 9/13/01 from Counsel for plaintiffs to Judge Wexler re: enclosedbriefing scheduled which extends the 10/10/01 return date selected by defendants..

(Mierzewski, Liz) (Entered: 04/03/2003)

09/13/2001 CASE reassigned to Senior Judge Jacob Mishler from Judge Leonard D. Wexler.Parties notified. (Bowens, Priscilla) (Entered: 09/18/2001)

08/17/2001 3 RETURN OF SERVICE executed as to Richard Rubens, Barbara Rubens, DarrellRubens 8/17/01 Answer due on 9/6/01 for Darrell Rubens, for Barbara Rubens, forRichard Rubens (Montero, Edher) (Entered: 08/27/2001)

08/14/2001 2 NOTICE of filing an action regarding a trademark (Duong, Susan) (Entered:08/15/2001)

08/14/2001 1 COMPLAINT filed and summons(es) issued for Richard Rubens, Barbara Rubens,Darrell Rubens FILING FEE $ 150.00 RECEIPT # 3771 (Duong, Susan) (Entered:

08/15/2001)




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UNITED STATES DISTRICT COURTEASTERN DISTRICT OF NEW YORK---------------------------------------------------------------XHAMPTONS LOCATIONS, INC. and NANCYGRIGOR,

Plaintiffs, MEMORANDUM OF DECISIONAND ORDER

-against- 01-CV-5477 (DRH)(WDW)

RICHARD RUBENS, BARBARA RUBENS, andDARRELL RUBENS, each individually anddoing business as HAMPTON LOCATIONS,

Defendants.----------------------------------------------------------------XAPPEARANCES:

PATRICIA WEISS, ESQ.

Attorney for PlaintiffsP.O. Box 751Sag Harbor Shopping CoveMain Street - Suite 12Sag Harbor, New York 11963-0019

MICHAEL B. RONEMUS, ESQ.

Ronemus & VilenskyAttorney for Defendants

112 Madison AvenueNew York, New York 10016

HURLEY, District Judge:

Plaintiffs Hamptons Locations, Inc. and Nancy Grigor (“Grigor”) (collectively,

“Plaintiffs”) filed the present action against defendants Richard Rubens (“Richard”), Barbara

Rubens (“Barbara”), and Darrell Rubens (“Darrell”) (collectively, “Defendants”) claiming

damages arising out of Defendants’ use of an allegedly infringing website. Defendants have

moved for summary judgment pursuant to Federal Rule of Civil Procedure 56. For the reasons

that follow, Defendants’ motion is granted in part and denied in part.

Case 2:01-cv-05477-DRH-WDW Document 180 Filed 09/30/05 Page 1 of 25A-51



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BACKGROUND

The material facts, drawn from the Complaint and the parties’ Local 56.1

Statements, are undisputed unless otherwise noted. Grigor is the owner, President, and sole

employee of plaintiff Hamptons Locations, Inc., a New York corporation. Since 1994,

Hamptons Locations, Inc. has used the service mark and business name “Hamptons Locations”

and the domain name “www.hamptonslocations.com.”

Hamptons Locations provides and scouts locations for photo shoots, film and

television commercials, videos, and corporate meetings. Essentially, Hamptons Locations is a

“location finder.” (Dep. of Nancy Grigor, dated July 23, 2004 (“Grigor Dep.”), at 4.) After two

failed attempts at registration, the United States Patent and Trademark Office finally accepted

Plaintiffs’ mark for registration on August 20, 2002. Hamptons Locations was granted service

mark protection for “SCOUTING FOR LOCATIONS FOR TELEVISION COMMERCIALS,

CATALOGUES, AND CORPORATE MEETINGS; PRODUCTION OF TELEVISION

COMMERCIALS, IN CLASS 35”; and for “ENTERTAINMENT BASED LOCATION

SCOUTING, NAMELY, SCOUTING FOR LOCATIONS FOR PHOTOSHOOTS, MOTION

PICTURE FILMS, MAGAZINES, PARTIES, AND VIDEOS; MOTION PICTURE FILM

PRODUCTION; VIDEO PRODUCTION, IN CLASS 41.” (Defs.’ Mot. For Summary

Judgment, Ex. Q.) The certificate of registration further states “NO CLAIM IS MADE TO THE

EXCLUSIVE RIGHT TO USE ‘LOCATIONS’, APART FROM THE MARK AS SHOWN.”

( Id.)

Barbara and Richard are husband and wife. Darrell is their son. Barbara and

Richard work for Design Quest, Ltd., an architectural and interior design firm located in New




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York City. They own a home in the Hamptons which they designed and built in 1983 and use

their home as an example of their architectural talents. With the help of their son Darrell, they

developed a website – www.dqny.com – to showcase their services. This website displays

pictures of their Hamptons home and offers the home as a rental for photo shoots.

At this point, the parties’ submission are replete with factual disputes. According

to Grigor, in the winter of 1998-99, she left her business card at the Rubens’ Hamptons home,

requesting that she be contacted about adding their home to her inventory of houses. (Aff. of

Nancy Grigor, dated Feb. 9, 2005 (“Grigor Aff.”) ¶ 13.) She allegedly followed up in the

“Spring of 1999” by leaving a second business card taped to the door. ( Id.) Grigor further

claims that “[i]n or around July 1999,” she met with Richard and Barbara and that the Rubens

“acknowledged receipt of Plaintiffs’ business cards left at the house and they said that they had

heard of Plaintiffs’ business.” ( Id. ¶ 14.) “To the best of [her] recollection,” this meeting was

“sometime over July 4th weekend,” (id.), or might have “actually occurred a few days later.” ( Id.

¶ 15.) That same day, she photographed their Hamptons home with hopes of marketing it for

future photo shoots. ( Id. ¶ 14.) Defendants deny meeting Grigor at this time and also deny

receipt of Plaintiffs’ business cards.

Plaintiffs claim that “despite Defendants’ awareness of Plaintiffs’ mark through

business cards left at the house, Defendants caused the registration of the domain name

‘HamptonLocations.com,’ on or about July 8, 1999.” ( Id. at ¶ 15.) The only difference between

the domain name and Plaintiffs’ business name, i.e., Hamptons Locations, was the absence of the

letter “s” between the words “Hampton” and “Location.”

According to Defendants, Darrell, together with his friends and without his




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parents’ knowledge, “decided to explore offering Hamptons summer rentals on the internet, at

discount fees.” (Aff. of Richard Rubens, dated Jan. 5, 2005, ¶ 10.) Darrell and his friends used a

company called Network Services to see what domain names were available. (Aff. of Darrell

Rubens, dated Jan. 5, 2005 (“Darrell Aff.”), ¶ 7.) They “decided that the domain name that best

suited [their] venture was www.hamptonlocations.com and one of [Darrell’s] friends purchased

this name through DSNY at Network Solutions” on July 8, 1999. ( Id. ¶ 8.) This domain name

remained dormant until April 2000 while Darrel and his friends researched the proposed real

estate business. Eventually, they decided not to pursue this venture.

On April 18, 2000, Darrell decided that the domain name was a good way to

describe his parents’ Hamptons home and allegedly “took it upon himself” to use the domain

name in connection with their house. Because he often helped his parents update their Design

Quest website and because he knew his parents’ home was displayed on that site, he “linked” the

www.hamptonlocations.com website with his parents’ Design Quest Website, www.dqny.com.

In other words, if a person typed in www.hamptonlocations.com, a “link” would re-route that

person to the Design Quest website. He allegedly created this link without telling his parents.

Thereafter, on April 18, 2000, Darrell alleges that he researched location scouting

companies on the internet. He sent e-mails to some of these companies, including one to

Plaintiffs, offering his parents’ home for location shoots. ( Id. ¶ 11.) These e-mails directed the

location companies, through the link of www.hamptonlocations.com, to the website of Design

Quest. His e-mail to Plaintiffs stated as follows: “we rent our house out for photo, film and

commercial shoots. How can we list with you? Please look at our house at

www.hamptonlocations.com.” Darrell claims that he had never heard of Plaintiffs prior to




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sending this e-mail. ( Id. ¶ 12.)

Grigor admits that she opened Darrell’s email that day but claims that she merely

glanced at it before putting it aside in a pile of other messages. She claims she did not realize at

that time that Darrell’s e-mail referred to the allegedly infringing website. (Grigor Aff. ¶ 47.)

On June 13, 2000, Grigor conducted a photo shoot at the Rubens’ house. (Grigor

Dep. at 37.) She alleges that she arranged for this shoot based on the information she had

already assembled about Richard and Barbara in July 1999. ( Id.) Defendants maintain,

however, that she arranged the photo shoot in response to Darrell’s e-mail.

Barbara and Richard contend that they first became aware of the alleged dispute

over the domain name when they pursued Plaintiffs for overtime charges of $937.50, allegedly

due them as a result of the June 13, 2000 photo shoot, which led to a heated dispute between the

parties. On June 25, 2000, Plaintiff’s then counsel wrote a letter to Darrel demanding that he

“cease and desist from the use of the domain name www.HamptonLocations.com” and that he

“arrange for the transfer of its ownership to” Plaintiffs. By letter dated June 27, 2000, Darrell

responded, inter alia, that he was not the owner of the domain name and that the domain name

did not infringe upon Plaintiffs’ mark as it merely contained a portfolio of the Hamptons house

and did not offer location scouting services.

On July 27, 2000, plaintiff Hamptons Locations, Inc. initiated an action in the

Southampton Justice Court, Suffolk County, New York, against Richard, Darrell, and “Hampton

Locations.” Plaintiff withdrew this action with prejudice on May 10, 2002. In the interim,

Plaintiffs filed the instant action on August 13, 2001. Essentially, Plaintiffs allege that

Defendants used the allegedly infringing domain name “www.hamptonlocations.com” for the




-6-

purpose of diverting web browsers to the Design Quest website which resulted in consumer

confusion and a disruption to Plaintiffs’ business. Defendants counter that there was never any

business set up as “Hampton Locations” and that they never received any referrals in the few

months www.hamptonlocations.com was linked to the Design Quest website except from Grigor

for the photo shoot of June 13, 2000. (Richard Rubens Aff. ¶ 21.) In fact, shortly after

Defendants learned of this dispute, they removed the link from the Design Quest website and let

the registry of the domain name expire, which it did on July 8, 2001. Thereafter, on May 12,

2002, plaintiff Hamptons Locations purchased the www.hamptonlocations.com domain name

and remains its owner today.

By Decision and Order dated December 17, 2002, the Court granted in part and

denied in part Defendants’ motion to dismiss the Complaint pursuant to Federal Rule of Civil

Procedure 12(b)(6). The causes of action which survived that motion are alleged violations of

the Lanham Act and a claim for unfair competition.

By Memorandum of Decision and Order dated February 17, 2004, the Court

denied Defendants’ motion for summary judgment and granted Plaintiffs’ motion to dismiss the

counterclaims against them. Defendants, who were proceeding pro se at that time, later retained

present counsel and requested permission to file another motion for summary judgment at the

end of discovery. The Court granted Defendants’ request. Presently before the Court is

Defendants’ second motion for summary judgment.

DISCUSSION

I. Standards for Summary Judgment

Summary judgment pursuant to Federal Rule of Civil Procedure 56 is only




-7-

appropriate where admissible evidence in the form of affidavits, deposition transcripts, or other

documentation demonstrates the absence of a genuine issue of material fact, and one party’s

entitlement to judgment as a matter of law. See Viola v. Philips Med. Sys. of N. Am., 42 F.3d

712, 716 (2d Cir. 1994). The relevant governing law in each case determines which facts are

material; “only disputes over facts that might affect the outcome of the suit under the governing

law will properly preclude the entry of summary judgment.” Anderson v. Liberty Lobby, Inc.,

477 U.S. 242, 248 (1986). No genuinely triable factual issue exists when the moving party

demonstrates, on the basis of the pleadings and submitted evidence, and after drawing all

inferences and resolving all ambiguities in favor of the non-movant, that no rational jury could

find in the non-movant’s favor. Chertkova v. Conn. Gen’l Life Ins. Co., 92 F.3d 81, 86 (2d Cir.

1996) (citing Fed. R. Civ. P.56(c))).

To defeat a summary judgment motion properly supported by affidavits,

depositions, or other documentation, the non-movant must offer similar materials setting forth

specific facts that show that there is a genuine issue of material fact to be tried. Rule v. Brine,

Inc., 85 F.3d 1002, 1011 (2d Cir. 1996). The non-movant must present more than a “scintilla of

evidence,” Delaware & Hudson Ry. Co. v. Consolidated Rail Corp., 902 F.2d 174, 178 (2d Cir.

1990) (quoting Anderson, 477 U.S. at 252), or “some metaphysical doubt as to the material

facts,” Aslanidis v. U.S. Lines, Inc., 7 F.3d 1067, 1072 (2d Cir. 1993) (quoting Matsushita Elec.

Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986)), and cannot rely on the

allegations in his or her pleadings, conclusory statements, or on “mere assertions that affidavits

supporting the motion are not credible.” Gottlieb v. County of Orange, 84 F.3d 511, 518 (2d Cir.

1996) (internal citations omitted).




-8-

The district court considering a summary judgment motion must also be “mindful

of the underlying standards and burdens of proof,” Pickett v. RTS Helicopter , 128 F.3d 925, 928

(5th Cir. 1997) (citing Anderson, 477 U.S. at 252), because the evidentiary burdens that the

respective parties will bear at trial guide district courts in their determination of summary

judgment motions. Brady v. Town of Colchester , 863 F.2d 205, 211 (2d Cir. 1988). Where the

non-moving party will bear the ultimate burden of proof on an issue at trial, the moving party’s

burden under Rule 56 will be satisfied if he can point to an absence of evidence to support an

essential element of the non-movant’s claim. Id. at 210-11. Where a movant without the

underlying burden of proof offers evidence that the non-movant has failed to establish her claim,

the burden shifts to the non-movant to offer “persuasive evidence that [her] claim is not

‘implausible.’ ” Brady, 863 F.2d at 211 (citing Matsushita, 475 U.S. at 587).

II. The Instant Action is not Barred by Res Judicata

Citing no authority, Defendants argue that the instant action is barred under the

doctrines of res judicata and collateral estoppel based upon Plaintiffs’ withdrawal of the

Southampton Justice court action with prejudice. This argument is rejected for the reasons

indicated below.

A. The State Court Proceeding

On July 27, 2000, plaintiff Hamptons Locations, Inc. filed an action in the

Southampton Justice Court against Richard, Darrell, and Hampton Locations, asserting claims

for deceptive acts and practices in violation of New York State Business Law and “violation of

state common law and/or trademark law.” (Defs.’ Mot. For Summary Judgment, Ex. F.) On

May 10, 2002, and while the instant action was pending, the parties appeared on the record




1 The instant action was initially assigned to Judge Leonard D. Wexler. On September18, 2001, the case was reassigned to Judge Jacob Mishler and on November 2, 2001, the casewas reassigned to the undersigned.

-9-

before the state court judge and plaintiffs withdrew all of their claims with prejudice. (Defs.’

Reply, Ex. 6 at 24.) Thereafter, the state court entered an order stating in pertinent part: “On

May 10, 2002 the parties in the above entitled action appeared before this Court ready for trial

and it was stipulated that plaintiff, Hamptons Locations, Inc., by their attorney Michael Griffith

withdraw its entire complaint with prejudice.” (Defs.’ Mot. For Summary Judgment, Ex. I

(emphasis in original).)

During the May 10, 2002 proceeding, counsel for plaintiff Hamptons Locations,

Inc. indicated that with regard to its trademark claims:

[W]e are presently in federal court represented by Patricia Weiss,local counsel, federal counsel, and we’re assuming that the courthas taken jurisdiction over the federal trademark and the statetrademark claims. In the event that they don’t, we reserve ourright to come back here at a later time to address the statetrademark claims. We assume – we assume that the federal courtwill handle, not only the federal claims, but also the state pendantclaims.

(Defs.’ Reply, Ex. 6 at 5.) He further stated that because of the pending federal case, plaintiff

was requesting that the state action be adjourned or stayed “pending jurisdiction being taken by

the federal court.” ( Id. at 6.) In that regard, he indicated that he “would have no objection to

withdrawing [the trademark claims], but federal counsel said to just adjourn it here.” ( Id. at 21.)

He further explained that federal counsel was informed by the Clerk of the Court in the Eastern

District of New York that the federal case file had been misplaced because his case had been

“bounced around to a couple of different judges,”1 (id. at 7-8), so he was unsure whether the




-10-

federal court would exercise jurisdiction, (id. at 9). Thus, he was “just keeping it pending in the

event that the federal court doesn’t pick it up, which I assume they will.” ( Id. at 19-20.) Later in

the proceeding, however, when the judge noted that plaintiff had opposed defendants’ request for

an adjournment and was now itself requesting an adjournment, plaintiff’s counsel indicated that

he would dismiss the trademark claim as well:

THE COURT: So you are withdrawing your action?

[PLAINTIFFS’ COUNSEL]: I withdraw my action.

THE COURT: It’s withdrawn.

[DEFENDANT]: With prejudice, your Honor?

[PLAINTIFFS’ COUNSEL]: I am happy to withdraw it. If there isa state trademark claim, I can always bring it in Supreme Court

THE COURT: Very good. The action is withdrawn.

[DEFENDANT]: Your Honor, can you rule withdrawn withprejudice?

THE COURT: Yes.

( Id. at 24.)

B. The Preclusive Effect of the State Court Proceeding

In opposing Defendants’ motion, Plaintiff relies on the Second Circuit’s decision

in Israel v. Carpenter , 120 F.3d 361, 365 (2d Cir. 1997). In that case, plaintiff Donald M. Israel

(“Israel”) sued Daniel E. Carpenter (“Carpenter”) and three corporate defendants for breach of

contract in Massachusetts state court in February 1993. Id. at 363. The next month, Carpenter

caused a corporation wholly owned by him to sue plaintiff and two other corporate defendants,

asserting, inter alia, federal trademark claims, in the Southern District of New York. Id. Israel




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then filed a third-party complaint against Carpenter in the federal action alleging essentially the

same breach of contract claims he had asserted in Massachusetts. Id.

On August 10, 1993, Israel filed a voluntary stipulation of dismissal in the

Massachusetts action that dismissed his claims against Carpenter with prejudice and his claims

against the three corporate defendants without prejudice. Id. Twenty months later, the federal

action was concluded when the district court granted Israel’s motion for summary judgment

dismissing the trademark claims and declined to exercise pendent jurisdiction over Israel’s state-

law claims, thereby dismissing those claims without prejudice. Id.

The lawsuit underlying the appeal was filed in New York State Supreme Court on

March 29, 1995, the day after the first federal action was dismissed. In this third action, Israel

sued Carpenter and another corporate defendant, alleging the same breach of contract claims he

had asserted against Carpenter twice before. Id. After Carpenter removed the case to federal

court, he moved to dismiss Israel’s claims arguing that they were barred by res judicata and

collateral estoppel based upon the with-prejudice dismissal of those claims in the Massachusetts

action. Id.

In reversing the district court’s granting of summary judgment dismissing Israel’s

complaint, the Second Circuit began with a recitation of the general rule that “[o]rdinarily, a

stipulation of dismissal ‘with prejudice’ as to a pending action is unambiguous; like any such

dismissal, it is ‘deemed a final adjudication on the merits for res judicata purposes on the claims

asserted or which could have been asserted in the suit.’” Id. at 365 (quoting NBN Broad., Inc. v.

Sheridan Broad. Networks, Inc., 105 F.3d 72, 78 (2d Cir. 1997)). Thus, “[s]uch a stipulation will

(almost invariably) have preclusive effect notwithstanding a litigant’s post hoc assertion that he




2 See also Marvel Characters, Inc. v. Simon, 310 F.3d 280, 286 (2d Cir. 2002) (“NewYork law [applies] in determining the preclusive effect of a New York State court judgment.”).

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intended to preserve certain claims.” Id.

Notwithstanding this rule, the court concluded that this “broad principle” did not

apply to the facts of that case. Citing the well-settled rule that state law applies in determining

the preclusive effect of a stipulation of dismissal filed in state court,2 id. at 366, the court found

that Massachusetts law “require[d] inquiry into the intended scope and effect of such a

stipulation,” id. at 366, and thus, the court should “direct its interpretation to the meaning of the

terms of the writing or writings in the light of the circumstances of the transaction.” Id. at 367

(emphasis in original) (citation and internal quotation marks omitted). The court then held that

the circumstance of this case, i.e., “the litigation of two nearly identical lawsuits simultaneously

in two jurisdictions, the stipulated dismissal of one of them with prejudice, and the continued

litigation of the other,” raised a material issue of fact as to the meaning of the stipulation of

dismissal. Id.

Applying Israel to the present action, the Court must determine what effect New

York courts would give the stipulation of dismissal filed by Plaintiffs in the Southampton Justice

Court. The general rule in New York is that a stipulation of discontinuance with prejudice is

afforded res judicata effect and will bar litigation of the discontinued causes of action. See

Dolitsky’s Dry Cleaners, Inc. v. Y L Jericho Dry Cleaners, Inc., 610 N.Y.S.2d 302, 303 (2d

Dep’t 1994). “However, the language ‘with prejudice’ is narrowly interpreted when the interests

of justice, or the particular equities involved, warrant such an approach.” Id.; see also Troy v.

Goord , 752 N.Y.S.2d 460, 461 (4th Dep’t 2002) (“The order of dismissal in the federal action is




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entitled to res judicata effect where, as here, the circumstances evince that it is on the merits or

with prejudice to relitigation of the discontinued claim, or where the parties otherwise have

indicated that the settlement and discontinuance would have such preclusive effect.”) (emphasis

added); Karniol v. Good Move Trucking, Inc., 722 N.Y.S.2d 143, 143 (1st Dep’t 2001) (“Under

these circumstances, where the inclusion of the words ‘with prejudice’ in the order discontinuing

the prior action may well have been attributable to a unilateral mistake by plaintiffs’ counsel and

contrary to the previously reached understanding of the parties and the court as to the effect of

the discontinuance, the motion court, pending the conduct of discovery respecting the

understanding upon which the discontinuance had been agreed to, properly declined to accord

the discontinuance res judicata effect.”); Singleton Mgmt., Inc. v. Compere, 673 N.Y.S.2d 381,

384 n.1 (1st Dep’t 1998) (“It may be noted that even where the use of such terms as ‘with

prejudice’ or ‘on the merits’ raises a presumption that the stipulation is to be given res judicata

effect in a subsequent action on the same cause of action . . . , a court may always consider

evidence that the parties intended otherwise.”).

Here, the circumstances under which plaintiff Hamptons Locations, Inc withdrew

its state court action compel the conclusion that plaintiff’s withdrawal was not intended to

foreclose prosecution of its claims in this forum. To the contrary, the transcript of these

proceedings clearly indicates that the only reason plaintiff agreed to withdraw its trademark

claims in the state court action was because it intended to pursue these claims in this action,

which was pending at the time plaintiff withdrew its state court case. Any other finding would

work an injustice as it would clearly be contrary to the parties’ intent. See Vega v. State Univ. of

N.Y. Bd. Of Trustees, 67 F. Supp. 2d 324, 335 (S.D.N.Y. 1999) (finding that circumstances and




3 Unlike the Israel case, the Defendants here did not litigate this case for “twentymonths” before raising the defense of res judicata; rather, they raised it in their first motion todismiss, filed on May17, 2002, just one week after Plaintiff withdrew the state court action.Because Defendants had not sufficiently developed their argument, however, Defendants’motion was denied. (See Dec. 17, 2002 Decision and Order at 12.) Nonetheless, given thatplaintiff’s intent in withdrawing its state claims is clearly discernable from the state courttranscript, summary judgment dismissing Plaintiffs’ claims based on the stipulation would beinappropriate.

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plain language of stipulation discontinuing state court action with prejudice indicated that parties

did not intend such stipulation to preclude then-pending federal court action); D’Angelo v. City

of New York , 929 F. Supp. 129, 135 (S.D.N.Y. 1996) (“In light of the fact that the Kings County

action was untenable due to plaintiff’s failure to file a timely notice of claim, the parties, fully

aware that the § 1983 claims were being prosecuted in federal court, stipulated to the dismissal

of the action ‘with prejudice.’ To hold that plaintiff’s § 1983 claims are barred merely because

the phrase ‘with prejudice’ is often equated with ‘on the merits would frustrate the intent of the

parties as well as the purpose of the rules of preclusion as defined under New York law.”).

Thus, the Court finds that plaintiff Hamptons Locations, Inc.’s withdrawal of the state court case

with prejudice does not bar the present action and, accordingly, Defendants’ motion for summary

judgment on this ground is denied.3

III. Plaintiffs’ Anticybersquatting Claim

Plaintiff’s first cause of action alleges that Defendants violated section 1125(d) of

the Lanham Act, also known as the Anticybersquatting Consumer Protection Act (“ACPA”).

“Cybersquatting involves the registration as domain names of well-known trademarks by non-

trademark holders who then try to sell the names back to the trademark owners.” Sporty’s Farm

L.L.C. v. Sportsman’s Mkt, Inc., 202 F.3d 489, 493 (2d Cir. 2000). The ACPA was passed to




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protect consumers from this conduct. Id. at 495.

The elements of a claim brought under the ACPA are as follows: (1) Defendants

registered, trafficked in or used a domain name; (2) that was identical or confusingly similar to

Plaintiffs’ mark; (3) Plaintiffs’ mark, at the time Defendants registered their domain name, was

distinctive; and (4) Defendants committed these acts with a bad faith intent to profit from

Plaintiffs’ mark. See 15 U.S.C. § 1125(d)(1)(A). Defendants argue that Plaintiffs cannot raise a

triable issue of fact as to the first and fourth elements. The Court will address Defendants’

arguments in turn.

A. Use of Domain Name

Defendants contend that there is no proof that they “used” the domain name

within the meaning of the statute and that “DSNY,” the apparent registrant of the domain name

www.hamptonlocations.com, is an indispensable party to this action. In response, Plaintiffs

claim there is a question of fact as to “who was the de facto ‘registrant’ of” the domain name.

Section 1125 (d)(1)(A) provides that liability under the ACPA is limited to a

person who “registers, traffics in, or uses a domain name.” 15 U.S.C. § 1125 (d)(1)(A). The

conjunctive “or” clearly indicates that liability can arise from any one of the three listed

activities. See Omega S.A. v. Omega Engineering, Inc., 228 F. Supp.2d 112, 138 (D. Conn.

2002). However, Section 1125(d)(1)(D) expressly provides that a person may not be held liable

for “using” a domain name unless that person “is the domain name registrant or that registrant’s

authorized licensee.” 15 U.S.C. § 1125(d)(1)(D). Section 1125(d)(1)(E) expressly provides that

“the term ‘traffics in’ refers to transactions that include, but are not limited to, sales, purchases,

loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or




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receipt in exchange for consideration.” Id. § 1125(d)(1)(D). Thus, “traffics in” contemplates “a

direct transfer or receipt of ownership interest in a domain name to or from the defendant.” Ford

Motor Co. v. Greatdomains.com, Inc., 177 F. Supp. 2d 635, 645 (E.D. Mich. 2001). Finally,

although the term “registers” as used in this section is not specifically defined,

it has been interpreted to mean a person who presents a domain name for registration, as opposed

to the actual registrar, i.e., the entity which grants and maintains the domain names. See

Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp. 2d 648, 655 (N.D. Tex. 2001).

Here, there is no evidence that Barbara and Richard engaged in transactions of

any of these kind with regard to the disputed domain name at issue and, thus, there is no proof

that they “register[ed], traffic[ked] in, or use[d]” the domain name. The only evidence before the

Court is that Darrell and his friends developed the idea for this website and that “one of

[Darrell’s] friends purchased this name through DSNY,” DSNY being the name listed as the

domain registrant, with an address at 575 Madison Avenue, New York, NY 10022. (Darrell Aff.

¶ 8; see also Aff. of James Whang, dated Feb. 28, 2005; Defs.’ Mot. For Summary Judgment,

Ex. E.) Thus, there is no evidence that Barbara and Richard participated in the registration or

purchase of the domain name or that either of them qualify as DSNY’s “authorized licensee[s].”

For these reasons, the Court is compelled to conclude that Plaintiffs’ ACPA claim as against

Barbara and Richard must fail.

The same cannot be said of Darrell, however. Although the evidence linking

Darrell to DSNY is marginal at best, the Court cannot state as a matter of law that no reasonable

trier of fact could conclude that Darrell was sufficiently linked to DSNY so as subject him to

liability under the ACPA. He was clearly involved in the development, launching, and operation




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of the website and he himself testified that he went to “Network Solutions” with his friends to

see what domain names were available. (Darrell Aff. ¶ 7.) Thereafter, Darrell and his friends

chose www.hamptonlocations.com and “one of [his] friends” purchased the domain name

through DSNY. ( Id. ¶ 8.) Although the Court is dismayed, to say the least, at Plaintiffs’ failure

to elicit evidence as to the identity of DSNY and Darrell’s relationship therewith, based on the

evidence the Court does have, the Court is constrained to conclude that a reasonable trier of fact

could circumstantially infer that Darrell was DSNY’s “authorized licensee.” Accordingly, to the

extent Defendants seek summary judgment as to Darrell on this ground, their motion is denied.

B. Bad Faith Intent to Profit From Mark

Defendants argue that there is no evidence to show that any of the Defendants

acted “with a bad faith intent to profit from Plaintiffs’ mark.” See 15 U.S.C. § 1125(d)(1)(A).

The ACPA lists nine factors courts may consider in determining whether a person has acted in

bad faith:

(I) the trademark or other intellectual property rights of the person,

if any, in the domain name;(II) the extent to which the domain name consists of the legal nameof the person or a name that is otherwise commonly used toidentify that person;(III) the person's prior use, if any, of the domain name inconnection with the bona fide offering of any goods or services;(IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;(V) the person's intent to divert consumers from the mark owner'sonline location to a site accessible under the domain name thatcould harm the goodwill represented by the mark, either for

commercial gain or with the intent to tarnish or disparage themark, by creating a likelihood of confusion as to the source,sponsorship, affiliation, or endorsement of the site;(VI) the person's offer to transfer, sell, or otherwise assign thedomain name to the mark owner or any third party for financialgain without having used, or having an intent to use, the domain




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name in the bona fide offering of any goods or services, or theperson's prior conduct indicating a pattern of such conduct;(VII) the person's provision of material and misleading falsecontact information when applying for the registration of thedomain name, the person's intentional failure to maintain accurate

contact information, or the person's prior conduct indicating apattern of such conduct;(VIII) the person's registration or acquisition of multiple domainnames which the person knows are identical or confusingly similarto marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that arefamous at the time of registration of such domain names, withoutregard to the goods or services of the parties; and

(IX) the extent to which the mark incorporated in the person's domain name registration is or isnot distinctive and famous within the meaning of subsection (c)(1) of this section.

Id. § 1125(d)(1)(B)(I). The statute also provides that “[b]ad faith intent described under

subparagraph (A) shall not be found in any case in which the court determines that the person

believed and had reasonable grounds to believe that the use of the domain name was a fair use or

otherwise lawful. Id. § 1125(d)(1)(B)(ii).

Defendants offer evidence in the form of affidavits by Darrell and two of his

attorney-friends that the domain name www.hamptonlocation.com was registered with the intent

to offer summer rentals in the Hamptons at discounted prices. Because Darrell works full time

for a real estate company and his two friends are attorneys, they figured that with their combined

expertise, this might be a profitable venture. After some research, however, they determined that

the larger and more established real estate companies were already providing this service and

that it would not be economically profitable to pursue it. Darrell argues that this evidence

demonstrates that he acted in good faith. Although the Court agrees that this evidence is

probative of his intent, it certainly does not conclusively determine that he acted in good faith.

In fact, because Darrell never actually pursued the alleged real estate venture, a reasonable trier




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of fact could infer that it was never his intent to do so.

In addition, Darrell further argues that the fact that he sent Grigor the e-mail in

April 2000 alerting her to the allegedly infringing website conclusively demonstrates his lack of

bad faith. The Court disagrees. Here, there is evidence, although it is hotly disputed, that

Darrell refused to surrender the website to Plaintiffs without receiving payment for the transfer.

Given that the ACPA was created to prevent the registration of a domain name of the mark of an

established company by a person who later demands money in exchange for relinquishing that

domain name, a reasonable trier of fact could infer that Darrell sent Grigor the e-mail precisely

for that purpose, i.e., to alert her of its existence, so that he could later demand payment for the

name.

Moreover, although Darrell claims that he was unaware of Plaintiffs at the time

www.hamptonlocations.com was registered, a reasonable trier of fact could believe Grigor’s

claims that she met with Darrell’s parents in early July 1999 and that at that time, they

acknowledged receipt of her business cards. This information, coupled with the timing of the

domain name registration which occurred on July 8, 1999, just days after Grigor allegedly met

with Darrell’s parents, could suggest that Darrell had knowledge of Plaintiffs’ mark prior to the

registration of www.hamptonlocations.com. Although prior knowledge of Plaintiffs’ mark does

not, standing alone, constitute bad faith, combined with other factors, Darrell’s prior knowledge

is probative to some degree. In that regard, several of the factors listed in the ACPA weigh in

favor of a conclusion that Darrell had the requisite statutory bad faith. For example, it is clear

that Darrell did not have any intellectual property rights in www.hamptonlocation.com at the

time the domain name was registered; the domain name did not include Darrell’s name or a name




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requires a plaintiff to show: (1) the false or misleading use of any word, name symbol or device

in connection with goods or service; (2) in interstate commerce; (3) in a manner that is likely to

cause confusion or deception as to, inter alia, affiliation. 15 U.S.C. § 1125(a)(1)(A); see also

Lipton v. Nature Co., 71 F.3d 464, 473 (2d Cir. 1995) (stating § 1125(a)(1)(A) “prohibits any

misrepresentation likely to cause confusion as to the source or the manufacturer of a product);

Champagne, 134 F. Supp. 2d at 314 (setting forth elements of unfair competition claim). In

order to sustain a common-law cause of action for unfair competition through the use of a trade

name, Plaintiffs must establish that the Defendant’s acts “‘constituted an unfair appropriation or

exploitation of any special quality attached to [P]laintiff[s’] name.’” Telford Home Assistance,

621 N.Y.S.2d at 636.

As an initial matter, the Court finds that based upon the present record, there is no

evidence that Barbara or Richard were in any way involved in any use of the

www.hamptonlocation.com site. In that regard, there is no evidence that they participated in its

purchase, its development or its operation. Accordingly, Plaintiffs’ claims of unfair competition

are dismissed as to Richard and Barbara.

As to Darrell, the record demonstrates that he linked the

www.hamptonlocation.com website to the Design Quest website so that a person opening up the

former site would be re-directed to the latter. Although Defendants argue that Plaintiffs have no

evidence that any consumers were actually confused by the website or that as a result thereof,

they were unable to locate Plaintiffs’ website, there is no requirement in the statute that Plaintiff

prove actual confusion. Rather, the standard is whether Defendants’ use of Plaintiffs’ mark is

“likely to cause confusion.” 15 U.S.C. § 1125(a)(1)(A). In that regard, a reasonable consumer




4 These factors are: “(1) the strength of plaintiff’s mark; (2) the similarity of the parties’marks; (3) the proximity of the parties’ products in the marketplace; (4) the likelihood that theplaintiff will “bridge the gap” between the products; (5) actual consumer confusion between thetwo marks; (6) the defendant’s intent in adopting its mark; (7) the quality of the defendant’sproduct; and (8) the sophistication of the relevant consumer group.” Polaroid , 287 F.2d at 495.

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seeking to use Plaintiffs’ services could have inadvertently typed in Darrell’s domain name and

after being re-directed to the Design Quest site, could have believed that the Rubens’ Hamptons

home was a location being offered by Plaintiffs. Thus, a reasonable consumer could have been

confused as to the source of this location, see Lipton, 71 F.3d at 473, particularly in light of the

fact that the sole purpose of Plaintiffs’ business is to scout such locations.

In addition, to the extent Defendants argue that Plaintiffs’ mark is not entitled to

protection because it is weak or non-distinctive as allegedly demonstrated by the limited

protection it received when it was finally approved by the United States Patent and Trademark

Office for registration, the Court notes that the strength of the mark is just one factor used by

Courts in determining the likelihood of confusion under the Lanham Act. See Polaroid Corp. v.

Polaroid Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961) (listing eight factors to be used in

determining whether or not there is likelihood of confusion).4 Moreover, the fact that Plaintiffs’

mark was accepted for registration by the Trademark Office entitles Plaintiffs to a presumption

that its registered mark is inherently distinctive. See Sporty’s Farm, 202 F.3d at 497. Absent

evidence or argument on any of the other Polaroid factors, and given the presumption of

distinctiveness afforded to Plaintiffs’ mark, Defendants’ motion for summary judgment on this

ground is denied.

Finally, Defendants have not established as a matter of law that they are entitled




5 To the extent Plaintiffs argue that Defendants waived the affirmative defense of fair usebecause it was not raised in their answer, the Court finds that given Defendants’ pro se status atthe time, any failure on their behalf was excused.

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to the affirmative defense of “fair use.”5 To come within the fair use defense, Darrell must have

made use of Plaintiffs’ mark “(1) other than as a mark, (2) in a descriptive sense, and (3) in good

faith.” EMI Catalogue, 228 F.3d at 64 (citing 11 U.S.C. § 1115(b)(4)). “The fair use doctrine

permits use of a protected mark by others to describe certain aspects of the user’s own goods.”

Id. The rationale behind the fair use doctrine centers on “the undesirability of allowing anyone

to obtain a complete monopoly on use of a descriptive term simply by grabbing it first.” KP

Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 125 S. Ct. 542, 550 (2004).

Defendants contend that the purchase of www.hamptonlocations.com was a fair

use because it was merely descriptive of the real estate business that was being pursued.

However, Darrell never actually used the domain name for this purpose; therefore, he cannot

claim fair use based merely on an idea.

Next, Defendants assert that insofar as the domain name was used to link internet

users to the Design Quest site, the domain name was merely descriptive of Darrell’s parents’

home which, after all, is located in the Hamptons. Citing no authority, Defendants further

contend that the website was used “other than as a mark” because it merely re-routed an internet

user to the Design Quest website. Thus, Defendants argue, the website merely served as a web

address to “identify the user’s location” and had no content of its own. Absent any authority

adopting this theory, the Court declines to hold as a matter of law that the link set up by Darrell

did not constitute use “as a mark.” See Venetianaire Corp. of Am. v. A & P Import Co., 429 F.2d

1079, 1081 (2d Cir. 1970) (fair use defense unavailable if the name is used as a trade or service




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mark.). Moreover, at the very least there is a question of fact as to whether Darrell’s use was

merely descriptive, in a generic sense, of the location of his parents’ home or whether a

trademark use was both effected and intended. This is especially true given that once linked to

the Design Quest website, a consumer would see not just pictures of the house but an offer to

rent the house for photo shoots, which is the primary focus of Plaintiffs’ business.

In sum, Plaintiffs’ claims of unfair competition are dismissed as to Barbara and

Richard. However, because based on the papers submitted, Defendants have not convinced the

Court that Darrell is entitled to judgment as a matter of law, the unfair competition claims are

sustained as to Darrell.

V. Plaintiffs’ Claim for Injunctive Relief

Count 2 of the Complaint seeks injunctive relief pursuant to the Lanham Act “to

prevent a further violation of Plaintiffs’ rights.” (Compl. ¶ 31.) It is undisputed that Plaintiffs

now own the domain name in controversy and have done so since May 12, 2002. Accordingly,

Plaintiffs’ claim for injunctive relief is dismissed as moot. See Bihari v. Gross, 119 F. Supp. 2d

309, 316 (S.D.N.Y. 2000) (finding no basis for injunctive relief where party voluntarily

relinquished domain name).

CONCLUSION

For the foregoing reasons, Defendants’ motion for summary judgment is

GRANTED as to Richard and Barbara Rubens and DENIED as to Darrell Rubens. In addition,

Count 2 of the Complaint, which seeks injunctive relief, is dismissed. The parties are directed to

appear before the Court on November 4, 2005 at 3:00 p.m at Courtroom 930 for a final status




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conference. At that time, the Court will schedule a date for trial.

SO ORDERED.

Dated: Central Islip, N.Y.

September 30, 2005

/sDenis R. Hurley, U.S.D.J.




UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NEW YORK

---------------------------------------------------------------X

HAMPTONS LOCATIONS, INC. and NANCY

GRIGOR,

Plaintiffs, MEMORANDUM OF DECISIONAND ORDER

-against- 01-CV-5477 (DRH)(WDW)

RICHARD RUBENS, BARBARA RUBENS, and

DARRELL RUBENS, each individually and

doing business as HAMPTON LOCATIONS,

Defendants.

----------------------------------------------------------------X

APPEARANCES:

PATRICIA WEISS, ESQ.

Attorney for Plaintiffs

P.O. Box 751

Sag Harbor Shopping Cove

Main Street - Suite 12

Sag Harbor, New York 11963-0019

MICHAEL B. RONEMUS, ESQ.

Ronemus & Vilensky

Attorney for Defendants

112 Madison AvenueNew York, New York 10016

HURLEY, District Judge:

Plaintiffs Hamptons Locations, Inc. and Nancy Grigor (“Grigor”) (collectively,

“Plaintiffs”) filed the present action against defendants Richard Rubens (“Richard”), Barbara

Rubens (“Barbara”), and Darrell Rubens (“Darrell”) (collectively, “Defendants”) claiming

damages arising out of Defendants’ use of an allegedly infringing website. By Memorandum of

Decision and Order dated September 30, 2005 (the “September 30, 2005 Order”), the Court

granted Barbara’s and Richard’s motion for summary judgment and denied Darrell’s motion for

summary judgment. Both Plaintiffs and Darrell have moved for reargument. For the reasons




-2-

that follow, Darrell’s motion for reargument is denied; Plaintiff’s motion for reargument is

granted. Upon reconsideration, the Court adheres to its original ruling regarding Barbara and

thus, summary judgment as to Barbara is granted. With respect to Richard, however, upon

reconsideration, summary judgment is denied.

BACKGROUND

The background of this case is set forth in the September 30, 2005 Order,

familiarity with which is assumed. Thus, the Court will only state the facts necessary for

disposition of the instant motion.

Grigor is the owner, President, and sole employee of plaintiff Hamptons

Locations, Inc., a New York corporation. Since 1994, Hamptons Locations, Inc. has used the

service mark and business name “Hamptons Locations” and the domain name

“www.hamptonslocations.com.”

On July 8, 1999, a company called “DSNY” registered the domain name

“HamptonLocations.com.” The only difference between this domain name and Plaintiffs’

business name, i.e., Hamptons Locations, is the absence of the letter “s” between the words

“Hampton” and “Location.” Plaintiffs alleged that Defendants, through the name DSNY, caused

the registration of this mark and then tried to sell the domain name back to Plaintiffs in violation

of section 1125(d) of the Lanham Act, also known as the Anticybersquatting Consumer

Protection Act (“ACPA”). Plaintiffs also charged Defendants with unfair competition.

In the September 30, 2005 Order, the Court found that there was no evidence in

the record linking Barbara and Richard to DSNY and therefore dismissed Plaintiffs’ ACPA

claim against them. (Sept. 30, 2005 Order at 16.) As for Darrell, the Court found that




-3-

“[a]lthough the evidence linking Darrell to DSNY is marginal at best, the Court cannot state as a

matter of law that no reasonable trier of fact could conclude that Darrell was sufficiently linked

to DSNY so as subject him to liability under the ACPA.” ( Id.) Thus, Darrell’s motion for

summary judgment was denied as to Plaintiffs’ ACPA claim.

With respect to Plaintiffs’ claim for unfair competition, the Court found that

there was no evidence that “Barbara or Richard were in any way involved in any use of the

www.hamptonlocation.com site” and therefore dismissed Plaintiffs’ claims of unfair competition

as against Richard and Barbara. The unfair competition claim was sustained as to Darrell,

however, based, inter alia, on evidence that he used this site.

DISCUSSION

I. Applicable Legal Standard for Reargument

The standard for a motion for reconsideration “is strict, and reconsideration will

generally be denied unless the moving party can point to controlling decisions or [factual] data

that the court overlooked – matters, in other words, that might reasonably be expected to alter the

conclusion reached by the court.” Shrader v. CSX Transp., Inc., 70 F.3d 255, 257 (2d Cir.

1995); see also Arum v. Miller , 304 F. Supp. 2d 344, 347 (E.D.N.Y. 2003) (“To grant such a

motion the Court must find that it overlooked matters or controlling decisions which, if

considered by the Court, would have mandated a different result.”) (citation and internal

quotation marks omitted). “The major grounds justifying reconsideration are ‘an intervening

change of controlling law, the availability of new evidence, or the need to correct a clear error or

prevent manifest injustice.’” Virgin Atl. Airways, Ltd. v. National Mediation Bd., 956 F.2d 1245,

1255 (2d Cir. 1992) (quoting 18 C. Wright, A. Miller & E. Cooper, Federal Practice &




-4-

Procedure § 4478 at 790). Thus, a “party may not advance new facts, issues, or arguments not

previously presented to the Court.” National Union Fire Ins. Co. v. Stroh Cos., 265 F.3d 97,

115 (2d Cir. 2001) (quoting Polsby v. St. Martin’s Press, No. 97 Civ. 690, 2000 WL 98057, at *1

(S.D.N.Y. Jan. 18, 2000)).

II. Darrell’s Motion for Reconsideration is Denied

Essentially, Darrell argues that the Court misapplied the law and the facts by

according too much weight to Plaintiffs’ evidence and either disregarding or not sufficiently

considering Defendants’ evidence. The Court disagrees.

Contrary to Darrell’s contentions, the Court did not “rely” on the evidence

submitted by Plaintiffs; it merely found that based on the record before it, a reasonable trier of

fact could infer that Darrell used the allegedly infringing website and was involved in its

registration. After reviewing Darrell’s arguments made in support of the instant motion, the

Court finds that they are a mere rehashing of the same arguments he made unsuccessfully in

support of his motion for summary judgment. Having failed to show that the Court overlooked

something, made a clear error or committed a manifest injustice, Darrell’s motion for reargument

is denied.

III. Plaintiffs’ Motion for Reargument is Granted

Plaintiffs argue that the Court overlooked evidence that defeats Defendants’

summary judgment motion. Specifically, Plaintiffs point to a letter written by Richard to Grigor

and her husband, dated July 21, 2000, in which Richard states:

I own the internet site Hampton Locations, this site is used for my

Hampton Location, which, as you or anybody else knows, features

only my home and my architectural and interior design service.

My home has been referred to by countless people as a Hampton




1 In support of their motion for reconsideration, Plaintiffs also submitted several new

documents which may imply that Richard was the real registrant and that DSNY was merely a

code name used by Richard to conceal his involvement. It is well-established, however, that a

motion for reconsideration may not be used as a vehicle to introduce new evidence that could

have been presented to the Court in the first instance. See, e.g., National Union Fire Ins., 265

F.3d at 115. Moreover, contrary to Plaintiffs’ contentions, Defendants first raised the issue of

DSNY’s registration of the website in their moving papers on the summary judgment motion.

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Location since 1983 and I will not capitulate to extortion or other

threats to make me give up the site. Furthermore, I withdraw my

offer to sell you the site.

(Pls.’ Mem. in Supp. of Recons., Ex. 5 (emphasis in original).) Although this letter was attached

to Defendants’ motion for summary judgment as Exhibit D, Plaintiffs made no mention of it in

their opposition papers. The Court is not required to scour the record or the parties’ various

submissions to piece together appropriate arguments. Cf. Waldridge v. American Hoechst Corp.,

24 F.3d 918, 921-22 (7th Cir. 1994) (noting that party contesting summary judgment has duty “to

highlight which factual averments are in conflict as well as what record evidence there is to

confirm the dispute”). Nonetheless, given that this letter was part of the record on Defendants’

motion for summary judgment, this letter was arguably overlooked by the Court in making its

prior determination. Accordingly, to prevent manifest injustice, the Court grants reargument to

consider it. Upon reconsideration, the Court finds that given Richard’s admission that he owns

the website at issue and uses it for his home, the Court’s prior finding that there is no evidence

linking Richard to the use of this site was in error. Moreover, based upon Richard’s statement

that he owns the website, a reasonable trier of fact could certainly infer that Richard was

DSNY’s “authorized licensee” so as to subject him to liability under the ACPA. Accordingly,

the Court holds that upon reconsideration, Richard’s motion for summary judgment as to

Plaintiffs’ ACPA and unfair competition claims is denied.1




Although this issue was further supplemented by Defendants in their reply papers, it is

disingenuous for Plaintiffs to imply that it was first raised therein. In any event, to the extent

Defendants presented supplemental affidavits on this issue in their reply papers, it was within

the Court’s discretion to consider it. See Bayway Refining Co. v. Oxygenated Mktg. and Trading

A.G., 215 F.3d 219, 226-27 (2d Cir. 2000). Accordingly, the Court’s granting of reargument is

based solely upon the July 21, 2000 letter referenced above.

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With respect to Barbara, Plaintiffs argue that because Barbara actually owned the

home referenced in the July 21, 2000 letter, Richard’s reference to use of the allegedly infringing

website for that Southhampton location was impliedly also a use by Barbara, who resided there

with Richard. (Pls.’ Mem. in Supp. of Recons. at 7.) The Court finds Richard’s statement in this

regard insufficient to create a genuine issue of material fact as to Barbara’s use of the domain

name and her involvement with DSNY. Accordingly, upon reconsideration, the Court adheres to

its original ruling and summary judgment is granted as to Barbara.

CONCLUSION

For the foregoing reasons, Darrell Rubens’ motion for reargument is DENIED

and Plaintiffs’ motion for reargument is GRANTED. Upon reconsideration, Richard Rubens’

motion for summary judgment is DENIED; Barbara Rubens’ motion for summary judgment

remains granted. The parties are directed to appear before the Court on June 23, 2006 at 2:00

p.m in Courtroom 930 for a final status conference. At that time, the Court will schedule a date

for trial.

SO ORDERED.

Dated: Central Islip, N.Y.

May 25, 2006

/s

Denis R. Hurley, U.S.D.J.




UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NEW YORK

-------------------------------------------------------------X

HAMPTONS LOCATIONS, INC., et al.,

Plaintiff(s), ORDER CV 01-5477 (DRH) (WDW)

-against-

RICHARD RUBENS, et al.,

Defendant(s).

-------------------------------------------------------------X

WALL, Magistrate Judge:

By letter application dated June 12, 2004, plaintiffs sought an order setting dates certain

for defendants’ depositions. Plaintiffs’ counsel indicated that such action was warranted due todefendants’ “evasive and obstructionist conduct, stonewalling, and stall tactics.” The parties

appeared before the court on June 21, 2004 in an attempt to resolve several issues, including this

one. At that conference, the parties were directed to work out deposition dates. After

consultation, the parties proposed four dates for depositions and the court established those dates

by order dated June 21, 2004.

On the first of those dates, June 28, 2004, defendants appeared in the courtroom ready for

the deposition of defendant Darrell Rubens. Plaintiffs’ counsel, Patricia Weiss, was not in the

courtroom at the ordered time and defendants waited for over an hour, to no avail. At that point,

the undersigned entered the courtroom and indicated an intention to bar the taking of defendant

Darrell Rubens’ deposition as an appropriate sanction.

On the afternoon of June 28th, the court received a letter from Ms. Weiss apologizing for

“inadvertently failing to appear” and citing “law office failure of a serious magnitude” and

improper calendaring as her excuse for violating the court’s directive. As defendant Barbara

Rubens notes in her letter of June 30, 2004, Ms. Weiss, a solo practitioner, is the law office. Just

a week before, Ms. Weiss selected the deposition date in the courtroom with her calendar in

hand, and the court, in direct response to her motion seeking dates certain, granted that motion

and ordered the depositions on the dates selected by the parties.

The parties have been amply warned that their conduct could result in the imposition of

sanctions. While precluding a deposition may seem a harsh result, the court finds that it is

warranted after the repeated warnings given to the parties in this contentious litigation, and the

circumstances surrounding Darrell Rubens’ deposition. Accordingly, pursuant to Fed. R. Civ. P.




16 (g) and 37, the court orders that plaintiffs be precluded from taking the deposition of

defendant Darrell Rubens.

Dated: Central Islip, New York SO ORDERED:

July 20, 2004

______________________________

WILLIAM D. WALL

United States Magistrate Judge




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JURY CHARGE – The Court 1-29-07

THE COURT: If you'd all be seated. Ladies and18 gentlemen, you will notice that I've provided you with a19 copy of the charge. In a moment I'm going to read the20 charge to you. As I do that, you can read along21 yourselves, you can just listen to me, there's various22 options.

23 One thing that I would suggest at some point is24 to put your initials or some other identifying mark on25 your copy of the charge. And the reason for that is you12421 may want to mark it up, there may be things that you want2 to highlight, whatever.3 Also, when you go back to the jury room you'll4 take your copy of the charge, but when you leave the room,5 your copy will stay there, it will be back in the jury6 room.7 So the point is, if you leave the room and then8 you go back, we want to make sure you pick up your own9 copy. That's why it's a good idea to put your initials on

10 it.11 You have now heard all the evidence in the case,12 as well as the final arguments of the lawyers for the13 parties. I am now going to instruct you on the law. My14 instructions will be in three parts.15 First, I will give you instructions regarding16 the general rules that define and govern the duties of a17 jury in a civil case such as this. Second, I will18 instruct you as to the legal elements of the claims in19 this case. And third, I will give you some general rules20 regarding your deliberations.21 Part one, role of the court and the jury. Let22 us start by defining our respective roles as judge and23 jury. Your duty, as I mentioned in my opening24 instructions is to find the facts from all the evidence in25 this case. You are the sole judges of the facts and it is12431 for you and you alone to determine what weight to give to2 the evidence, to resolve such conflicts as may have3 appeared in the evidence, and to draw such inferences as4 you deem to be reasonable and warranted from the evidence.5 Therefore, with respect to any question6 concerning the facts, it is your recollection of the7 facts -- not counsels' recollections, as expressed in8 opening or closing statements, or my recollections if I9 made any reference to the testimony that controls. My job10 is to instruct you on the law. You must apply the law in

11 accordance with my instructions to the facts as you find12 them. If either of the lawyers has stated a legal13 principals which differs from what I state to you, you14 must guided solely by my instructions on the law.15 You must follow all the rules as I explain them16 to you. You may not follow some and ignore others. Even17 if you disagree or don't understand the reasons for some18 of the rules, you are bound to follow them.19 Since it is your job, not mine, to find the

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20 facts, I have neither expressed nor attempted to intimate21 an opinion about how you should decide the facts of the22 case. You should not interpret anything that I have said23 or done as expression an opinion about the facts.24 Two, definition of evidence. You must determine25 the facts in this case based solely on the evidence or12441 those inferences which can reasonably be drawn from the2 evidence. I will now instruct you on what the evidence is

3 and how you should consider it. Evidence has been4 presented to you in the following forms.5 First, testimony in court. Sworn testimony from6 the witnesses in the courtroom on direct examination or7 cross-examination, et cetera. I emphasize that it is the8 witness' answers that are evidence; the questions asked by9 the lawyers or myself are not evidence.10 At times, lawyers may have incorporated into11 questions a statement which assumed certain facts to be12 true and then asked the witness if the statement was true.13 If the witness denied the truth of the statement, and if 14 there was no other evidence introduced to prove the15 assumed fact was true, then you may not consider it to be

16 true simply because it was contained in a lawyer's17 question.18 Exhibits. Exhibits that have been received in19 evidence by the court are evidence, in that regard you20 have the right to review any or all of the exhibits during21 your deliberations.22 Third, stipulation of facts. A stipulation of 23 facts is an agreement between the parties that certain24 facts are true. You must regard such agreed facts as25 true.12451 Certain other things are not evidence and are to2 be disregarded by you in deciding what the facts are.3 First, arguments, statements, or questions by4 the lawyers or myself. Second, objections to the5 questions or to the offered exhibits.6 Speaking of objections, you should also7 recognize that attorneys have a duty to object when they8 believe evidence should not be received and therefore you9 should not hold the fact that an attorney has made10 objections or anything else the attorneys may have said or11 done against the attorney's client.12 Third, do not consider testimony that has been13 excluded, stricken or that you have been instructed during14 the course of the trial to disregard.15 Fourth, anything that I may have said or done is16 not evidence.

17 Fifth, obviously anything that you have seen or18 heard outside the courtroom is not evidence.19 Three; direct and circumstantial evidence. Now20 that you know what evidence is and is not, you know that,21 generally speaking, there are two types of evidence;22 direct and circumstantial. You may use both types of 23 evidence in reaching your verdict in this case. There is24 no distinction between the two types of evidence. Equal25 weight may be given to each type.

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6 A witness is an interested witness if the7 witness has an interest in the outcome of the case. A8 party to this action is an interested witness, as would be9 any other witness may find has a financial or other10 personal stake in the outcome of the case. An interested11 witness is not necessarily less credible than a12 disinterested witness. It is for you to determine whether13 or not his or her testimony has been colored intentionally14 or unintentionally by his or her interest. You are at

15 liberty, if you deem it proper under all the circumstances16 to do so to disbelieve the testimony of such a witness17 even though it is not otherwise impeached or contradicted.18 However, you are not required to disbelieve such19 a witness and may accept all or such part of his or her20 testimony as you deem reliable and reject such as part as21 you deem unworthy of acceptance.22 Seventh: Whether a witness witness' testimony23 was contradicted by his or her other testimony during the24 trial or by what the witness said or did on a prior25 occasion, including what the witness may have indicated at12491 a deposition before trial or by the testimony of other

2 witnesses or by some other evidence in the record.3 However, in deciding whether or not to believe a4 witness bear in mind that people sometimes forget things5 or become nervous while testifying. An inconsistency or6 contradiction may be due to an innocent mistake or due to7 an intentional falsehood. Consider, therefore, whether it8 has to do with an important fact or a small detail.9 Also bear in mind that two people witnessing a10 single event may observe it differently and remember it11 differently.12 With respect to a prior inconsistent statement13 of a trial witness you are instructed that an14 inconsistency may be utilized by you solely for the15 purpose of determining the credibility of that witness,16 subject to the following exception; if the inconsistency17 appears in a pre-trial deposition then such inconsistent18 statement may also be considered to the extent you deem19 appropriate as substantive evidence; in other words, for20 the truth of the matter asserted in the earlier statement.21 Eighth: A witness is biased. In deciding22 whether to believe a witness, you should specifically note23 any evidence of hostility or affection which the witness24 may have towards one of the parties. Likewise, you should25 consider evidence of any other interest or motive that a12501 witness may have in cooperating with a particular party.2 It is your duty to consider whether the witness

3 has permitted any bias or interest to color his or her4 testimony. In short, if you find that a witness is5 biased, you should view his or her testimony with caution,6 weigh it with care and subject it to close and searching7 scrutiny.8 Ninth: If you find that any witness, including9 a party, has willfully testified falsely as to any10 material fact in whole or in part, you may disregard not11 only that particular statement, but you may also, if you

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12 find it appropriate, disregard all of his or her testimony13 as not being worthy of belief.14 Burden of proof: In a civil case such as this,15 plaintiff has the burden of proving the essential elements16 of its claims against the defendant you are considering by17 a fair preponderance of the credible evidence.18 To establish a claim by a fair preponderance of 19 the credible evidence simply means to prove that something20 is more likely so than not. So a preponderance of the

21 evidence means the greater weight of the evidence. It22 does not mean the greater number of witnesses or the23 greater length of time taken by either side. It means the24 quality and persuasiveness of the evidence, the weight and25 effect it has on your minds.12511 The law requires that, in order for a party who2 bears the burden of proof as to a particular issue or3 claim to prevail, the evidence that supports the party's4 claim must appeal to you as more nearly representing what5 took place than that evidence opposed to the party's claim6 if it does not or if it weighs so evenly that you are7 unable to say that there is a preponderance on either

8 side, then you must resolve the question in favor of the9 party which does not have the burden of proof.10 To recapitulate briefly, a preponderance of the11 evidence means such evidence as when considered and12 compared with that opposed to it, prowls about your mind a13 belief that what's sought to be proved is more likely the14 case than not the case.15 Six: No sympathy or bias. In determining the16 issues of fact and rendering a verdict in this case, you17 should perform your duty with complete impartiality and18 without bias, sympathy or prejudice as to any party.19 In reaching your verdict, you are not to be20 affected by what the reaction of the parties or of the21 public to your verdict may be, whether it will please or22 displease anyone, be popular or unpopular or indeed any23 consideration outside the case as it has been presented to24 you in this courtroom. The parties expect that you will25 carefully and impartially consider all the evidence12521 following the law as it is now being given to you and2 reach a just verdict regardless of the consequences.3 Part 2. In this part of the charge you will be4 instructed on the causes of action contained in5 plaintiff's complaint. You must consider each cause of 6 action separately and each defendant separately as well.7 However, for the sake of simplicity I will often use the8 plural "defendants" in this part of the charge, but

9 remember to consider the question of liability and10 damages, if you reach that issue, separately as to each11 defendant as to each cause of action.12 One: The nature of plaintiffs' claims.13 Plaintiffs allege in their complaint that defendants have14 infringed their service mark, Hamptons Locations, in15 violation of Title 15 United States Code Section 112516 subdivision A and D, "by causing confusion, causing17 mistake, and deceiving as to the affiliations, connection

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18 and association of their services pertinent to 49 East19 Beach Drive" and by designing and using the internet20 advertising -- I misread that. Let me try that again.21 "And by designing and using internet advertising22 and a registration of a domain for the purpose of 23 attracting plaintiff's customers to its domain, which24 cyber piracy by defendants violates the Anticybersquatting25 Consumer Protection Act, ACPA, because defendants1253

1 registered a domain name containing a known mark with the2 intention of diverting traffic to the registrant's site or3 otherwise achieving financial gain."4 In addition to the above federal claims, also5 called Lanham Act claims, defendants are accused of unfair6 competition under the law of the State of New York. Each7 of these claims will be discussed beginning with the claim8 under 15 United States Code Section 1125(a).9 Two: Service mark infringement claim under 1510 United States Code section 1125(a). A: Statutory11 provision. Section 1125(a) provides in pertinent part12 that: Any person who, on or in connection with any goods13 or services, or any container for goods, use in commerce

14 any word, term, name, symbol or device, or any combination15 thereof, or any false designation of origin, false or16 misleading description of fact or false or misleading17 representation of fact, which A; is likely to cause18 confusion, or to cause mistake, or to deceive as to the19 affiliation, connection or association of such person with20 another person, or as to the origin, sponsorship or21 approval of his or her goods, services or commercial22 activities by another person, shall be liable in a civil23 action;24 B, elements of plaintiff's section 1125(a) claim25 and definitions of a service mark.12541 For plaintiffs to prevail on a claim for service2 mark infringement under section 1125(a), they must3 establish each of the following elements by a4 preponderance of the evidence. First, plaintiffs have5 established Hamptons Locations as a service mark for the6 services they provide. Second, defendants used Hampton7 location in commerce. Third, plaintiffs established the8 service mark before defendants used the name Hampton9 Locations to offer the Rubens' home for photo shoots10 and/or for other services provided by plaintiffs and11 fourth, defendants used Hampton Locations in a manner12 likely to cause confusion about the source of the services13 among a significant number purchasers.14 Before explaining each of the four

15 aforementioned elements in detail, I will provide you with16 the definition of a service mark.17 The term service mark includes any word, name,18 symbol or guys or any combination thereof, adopted and19 used by a service provider to identify and distinguish its20 services, including a unique service, from those provided21 by others and to indicate the source of the services, even22 if that source is generally unknown.23 The main function of a service mark is to

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24 identify and distinguish services as a product of a25 particular service provider and to protect its goodwill12551 against the sale of another's service as its own.2 A service mark is also a merchandising symbol3 that helps a prospective purchaser to select the services4 the purchaser wants. Service mark signifies that all5 services bearing the mark derive from a single source and6 are equivalent in quality.

7 There is, therefore, a public interest in the8 use of service marks.9 C -- what I've given to you now is very quickly,10 the elements that the plaintiff must prove with respect to11 this 1125(a) and then I've given you the definition12 explanation concerning the service mark. Now I'm going to13 review each of the elements in detail. And we'll start14 under paragraph C which reads first element of section15 1125(a) claim, protectable mark.16 The pivotal question for you to decide with17 respect to the first element of plaintiffs' section18 1125(a) claim is whether plaintiffs have a legally19 protectable mark.

20 I instruct you as a matter of law that Hamptons21 Locations is what is known as a descriptive mark. As22 such, it is protectable only if, as plaintiffs maintain,23 the term has acquired distinctiveness in the marketplace24 as a source indicator for plaintiffs' services, that is,25 if it has acquired secondary meaning.12561 If, on the other hand, Hamptons Locations has2 not acquired secondary meaning, as defendants contend,3 then it is not protectable and this cause of action of 4 plaintiffs necessarily fails.5 By the term "secondary meaning," the law means6 that a term that is not inherently distinctive has been so7 used that its primary significance in the minds of the8 consuming public is not the service itself, but instead9 the identification of it with a single source10 This does not mean the consuming public must11 know the exact identity of that single source in the sense12 that it knows the name of the individual or entity13 providing the service. All that is necessary to establish14 secondary meaning is that the ordinary consumer associates15 the term with a single source, regardless of whether the16 consumer knows with who or what that source is.17 You must find, therefore, from a preponderance18 of the evidence that a significant number of the consuming19 public for such services in the market area involved20 associates Hamptons Locations with a single source. It is

21 for you to decide how many constitute a significant22 number, keeping mind that the plaintiff need not prove23 that all or even a majority of the consuming public24 understands this secondary meaning.25 Plaintiffs have a burden of proving secondary12571 meaning. The mere fact that the plaintiffs are using2 Hamptons Locations or that the plaintiffs began to use it3 before the defendants used Hampton Location, does not

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4 establish secondary meaning, nor is mere popularity of 5 service sufficient to show secondary meaning.6 In determining whether Hamptons Locations has7 acquired secondary meaning, it is appropriate for you to8 consider any evidence relating to A, the length and manner9 of its use; B, the nature and extent of advertising and10 promotion; C, sales volume; D, unsolicited media coverage11 of the service; E, consumer studies linking the mark to a12 source; F, attempts to plagiarize the mark; and, G, other

13 efforts made by plaintiffs to promote the connection14 between Hamptons Locations and plaintiffs.15 The above listing is not meant to be exhaustive16 nor is any one factor dispositive. Instead, you should17 consider the above factors and any others you deem to be18 appropriate and then, given the totality of the19 circumstances as you find them to be, determine whether20 the plaintiffs have proven their first element of their21 section 1125(a) claim.22 D, second element of section 1125(a) claim:23 Defendants use of mark occurred in commerce. Section 112724 of Title 15 of the United States Code provides in25 pertinent part that the term "use in commerce" means the

12581 bona fide use of a mark in the ordinary course of trade2 and not merely to reserve a right in a mark.3 For purposes of this chapter, a mark shall be4 deemed to be in use in commerce with respect to services5 when it is used or displayed in the sale or advertising of 6 services and the services are rendered in commerce.7 The word "commerce" means, in essence,8 activities in the marketplace that are subject to9 regulation by Congress. Alleged incidence of service mark 10 infringement fall within that category.11 E, third element of section 1125(a) claim.12 First use by plaintiff: If plaintiffs have established13 the first element, namely, that Hamptons Locations14 acquired secondary meaning, and is thus protectable, and15 the second element namely that the defendants' use of the16 mark occurred in commerce, then to satisfy the third17 element, plaintiff must prove that the secondary meaning18 was in existence before defendants utilized the term19 Hampton Locations in the marketplace. Otherwise this20 third element has not been established.21 Fourth element of section 1125(a) claim.22 Likelihood of confusion: With respect to this element,23 you must consider whether defendants's use of Hampton24 Locations was likely to cause an appreciable number of 25 ordinarily prudent purchasers to be misled or indeed1259

1 simply confused as to the source of the services in2 question.3 I will suggest some factors that you should4 consider in making this determination.5 The presence or absence of any particular factor6 that I suggest should not necessarily resolve whether7 there was a likelihood of confusion. Because you must8 consider all relevant evidence in making this9 determination. As you consider the likelihood of

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10 confusion, you should examine such factors as the11 following:12 One: Strength or weakness of the mark. The13 more the consuming public recognizes plaintiff's mark as14 an indication of origin of plaintiff's services, the more15 likely it is consumers would be confused about the16 defendants' service if defendants used a similar mark.17 Two: Proximity of the parties' services in the18 marketplace. If defendants and plaintiffs use their mark

19 with respect to the same or similar services in the same20 general geographical area there will be a greater21 likelihood of confusion about the source of the services22 than otherwise.23 Three: Similarity of plaintiffs' and24 defendants' marks, if the overall impression created by25 the plaintiff's mark is similar to that created by12601 defendants' mark in appearance, sound or meaning, there is2 a greater chance of likelihood of confusion than3 otherwise.4 Fourth: Actual confusion. If defendants' use5 of their mark has led to actual confusion this strongly

6 suggests a likelihood of confusion. But actual confusion7 is not required. Even if actual confusion did not occur,8 defendants' use of the mark still be likely to cause9 confusion. However, a mere possibility of confusion would10 be insufficient.11 Five: Defendants' intent about adopting their12 mark. If defendants adopted their mark with the intention13 of capitalizing on plaintiff's reputation and goodwill and14 resulting confusion in the marketplace, that intention may15 strongly show a likelihood of confusion.16 Sixth: Sophistication of the relevant consumer17 group. Generally the more sophisticated a consumer, the18 more attention and care will be given to selecting a19 service; thus, unsophisticated buyers are more likely to20 be confused and sophisticated buyers are less likely to be21 so.22 Seventh: Quality of defendants' services.23 Under this factor you should look to, one, whether the24 defendants' services were inferior to plaintiffs', thereby25 tarnishing plaintiffs' reputation if consumers confuse the12611 two, or, two, whether defendants' service are of equal2 quality, thus creating a confusion as to the source3 because of that similarity.4 Eight: Product lines. If you find that the5 parties' services differ, you should then consider how6 likely it is that plaintiffs will begin providing the

7 service for which defendants allegedly were using a8 confusingly similar mark to plaintiffs. If plaintiffs9 have an interest in reserving the option to use the mark 10 on services similar to defendants in the future, there is11 a greater likelihood of confusion. This factor is also12 called the likelihood that plaintiff will bridge the gap13 between the services. In addition to the above factors,14 you should consider any factors you deem appropriate in15 determining this third element of plaintiffs' section

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16 1125(a) claim, that is, the likelihood of confusion17 factor.18 F: Plaintiffs' registration of Hamptons19 Locations with the United States Patent and Trademark 20 Office. Title 15 of the United States Code section21 1057(b) provides as follows:22 B: Certificate as prima facie evidence. A23 certificate of registration of a mark upon the principal24 register provided by this chapter shall be prima facie

25 evidence of the validity of the registered mark and of the12621 registration of the mark, of the registrant's ownership of 2 the mark and of the registrant's exclusive right to use3 the registered mark in commerce on or in connection with4 the goods or services specified in the certificate,5 subject to any condition or conditions or limitations6 stated in the certificate.7 The term "prima facie evidence" means evidence8 which if unexplained or uncontradicted is sufficient to9 satisfy a registrant's burden of proof with respect to the10 subjects involved; here, subject to the caveat to be11 provided momentarily, that the term Hamptons Locations has

12 secondary meaning, that plaintiffs are the owner of the13 mark, and, as such, they have the exclusive right to use14 the mark in commerce in connection with the services15 specified in the certificate, hereinafter referred to16 collectively as the prima facie -- that should read, it17 reads care, but it should read case. So it would be prima18 facie case benefits.19 In this case, however, the certificate for20 registration for Hamptons Locations was not issued by the21 patent and trademark office until August 20th, 2002. As a22 result, the prima facie evidence benefits referenced above23 have no applicability to any alleged infringing conduct24 that predates the August 20th, 2002 registration date.25 However, the prima facie evidence benefits would be12631 applicable to infringing conduct by defendants, if any,2 that you find occurred after August 20th, 2002; as to such3 conduct, it would be defendants' burden to rebut or4 otherwise overcome the prima facie case benefit.5 So the key idea of that is that if you register6 a mark with the patent and trademark office, there are7 certain benefits that flow to the registrant, and among8 other things, it would indicate that you're the owner of 9 the a mark and you have the exclusive right to the mark 10 within the geographical area designated in the certificate11 and so forth.12 That benefit or those benefits here are not

13 applicable to any conduct that occurred prior to the14 August 20th, 2002 registration date. But after that date,15 if you find there's any infringing conduct, then those16 benefits that I've mentioned would be applicable.17 So what does that mean? That means basically as18 to those benefits, the burden would be on the defendant to19 rebut or overcome those. It's the one exception to the20 idea of the burden of proof. It doesn't shift the burden21 of proof on the whole cause of action. It just shifts the

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22 burden of proof as to activities that occur after23 August 20th, 2002 as to the benefits that result from the24 trademark registration, again, with the patent and25 trademark office.12641 But that's what that's about.2 Now we'll go to number G, which is conclusion as3 to plaintiffs' section 1125(a) claim. If plaintiffs have4 proven each of the above three elements by a preponderance

5 of the evidence as against the defendant you are6 considering, your verdict will be for the plaintiffs as to7 their first cause of action as against that defendant.8 Otherwise, you must find for that defendant as to that9 claim.10 I just want to check one thing. So just bear11 with me for a second.12 As you'll see in that sentence, this is on page13 35, it's about a third of the way down the page after G,14 it reads plaintiff, it shouldn't have an apostrophe there,15 but it reads if plaintiffs have proven each one of the16 three elements, that's a scrivener's error, it would be17 four, so it would dovetail with what I said previously

18 about the four elements.19 So at this point we'll shift gears and go to the20 second federal claim that's been asserted by plaintiffs21 and that is called cyber piracy prevention claim under22 Section 1125(d). Firstly we'll discuss the statutory23 provision, that being what the statute, to wit, Section24 1125(d) provides at least in pertinent part, and it reads25 as follows:12651 1-A, a person shall be liable in a civil action2 by the owner of a mark if without regard to the services3 of the parties, that person one, small I, has a bad faith4 intent to profit from that mark; and two, registers,5 traffics in or uses a domain name that in the case of a6 mark that is distinctive at the time of the registration7 of the domain name is identical or confusingly similar to8 that mark.9 So that's the relevant statutory language in10 part. I'll continue. There's more.11 Under B-I, it reads: In determining whether a12 person has a bad faith intent, described under13 subparagraph A, a jury may consider factors such as, but14 not limited to: One, the trademark or other intellectual15 property rights of the person, if any, in the domain name;16 two, the extent to which the domain name consists of the17 legal name of the person or a name that is otherwise18 commonly used to identify that person; three, the person's

19 prior use, if any, of the domain name in connection with20 the bona fide offering of any goods or services; four, the21 person's bona fide noncommercial or fair use of the mark 22 in a site accessible under the domain name; five, the23 person's intent to divert consumers from the mark owner's24 online location to a site accessible under the domain name25 that could harm the goodwill represented by the mark 12661 either for commercial gain or with the intent to tarnish

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2 or disparage a mark by creating a likelihood of confusion3 as to the source, sponsorship, affiliation, or endorsement4 of the site; sixth, the person's offer to transfer, sell5 or otherwise assign the domain name to the mark owner or6 any third-party for financial gain without having used or7 having an intent to use a domain name in the offering of 8 any goods or services or the person's prior conduct9 indicating a pattern of such conduct; seven, the person's10 provision of material and misleading false contact

11 information when applying for the registration of the12 domain name, the person's intentional failure to13 maintained accurate contact information, or the person's14 prior conduct indicating a pattern of such conduct; eight,15 the person's registration or acquisition of multiple16 domain names which the person knows are identical or17 confusingly similar to marks of others that are18 distinctive at the time of the registration of such domain19 names, or dilutive of famous marks of others that are20 famous at the time of registration of such domain names,21 without regard to the goods or services of the parties;22 and ninth, the extent to which the mark incorporated in23 the person's domain name registration is or is not

24 distinctive and famous within the meaning of subsection25 (C) (1) of this section.12671 Bad faith -- we're reading from the statute.2 This is the statute that the Congress passed and these are3 the factors that the Congress has indicated are relevant,4 we'll go to the next portion of the statute.5 Two small I's: Bad faith intent described under6 subparagraph A shall not be found in any case in which the7 jury understands that the person believed and had8 reasonable grounds to believe that the use of the domain9 name was a fair use or otherwise lawful. D: A person10 shall be liable for using a domain name under subparagraph11 A only if that person is the domain name registrant or12 that registrant's authorized licensee. E: As used in13 this paragraph the term "traffics in" refers to14 transactions that include, but are not limited to, sales,15 purchases, loans, pledges, licenses, exchanges of 16 currency, and any other transfer for consideration or17 receipt in exchange for consideration. So that concludes18 the language of the statute.19 With respect to paragraph 1-A(i) of Section20 1125(d), you will note that a person cannot violate the21 statute unless the mark owned by the intended victim is22 distinctive. Here, as previously explained, the term23 Hamptons Locations is descriptive and it is not24 protectable under the law unless plaintiffs establish that

25 the term had at the time acquired distinctiveness in the12681 marketplace, that is, it acquired a secondary meaning as2 previously explained.3 Before listing the elements of plaintiffs'4 Section 1125(d) claim, some preliminary instructions are5 required. Firstly, you are advised that Section 1125(d)6 was enacted on November 29, 1999, and is not retroactive.7 Therefore, since the domain name www.hamptonlocations.com

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8 was registered with Networks Solutions prior to that date,9 plaintiffs may not rely on the registration in claiming10 that the defendants violated the statute.11 However, if plaintiffs have established that the12 defendant you are considering used the domain name after13 that date, and the other elements of the statute are14 satisfied, that defendant may be held liable for damages.15 You should also take particular note of 16 subparagraph 1-D which provides that "a person shall be

17 liable for using a domain name under subparagraph A only18 if that person is the domain name registrant or that19 registrant's authorized licensee."20 Here, the registrant for www.hamptonlocation.com21 was DSNY with the address of 575 Madison Avenue, New York,22 New York. Accordingly, neither of the two defendants may23 be found to have violated the statute unless plaintiffs24 have proven that the defendant that you are considering25 was an authorized licensee of the registrant, i.e., a12691 person authorized by the registrant to perform a2 particular act or series of acts.3 And finally, remember that with respect to bad

4 faith that such an intent may not be ascribed to an5 individual who believed and had reasonable grounds to6 believe that the use of the domain name was a fair use or7 otherwise lawful.8 All right. So at this point we're going to9 address the elements that the plaintiff must establish10 with respect to their 1125(d) claim. And each of these11 elements must be established by a preponderance of the12 evidence.13 The elements are: One, the defendant you are14 considering, used or trafficked in the domain name15 www.hamptonlocations.com with a bad faith intent to profit16 from plaintiff's mark; two, at the time that the domain17 name was acquired, the plaintiffs' mark, Hamptons18 Locations had acquired secondary meaning as that term was19 previously defined with respect to plaintiffs' claim under20 1125(a); and. Three, that the domain name used or21 trafficked in by the defendant you are considering is22 confusingly similar to plaintiffs' mark.23 If the plaintiffs have proven each of the above24 elements against the defendant that you are considering25 you must find for plaintiffs against that defendant as to12701 this claim. Otherwise your verdict must be for that2 defendant as to that claim.3 Attention will now be turned to plaintiffs'4 final claim, that being the one based on unfair

5 competition under the law of the State of New York.6 Plaintiffs claim for unfair competition under7 New York State common law. Plaintiffs third claim is a8 claim for unfair competition under New York common law.9 In order for plaintiffs to prevail on this claim,10 plaintiffs must establish the following by a preponderance11 of the evidence:12 First, that defendants misappropriated the13 labors and expenditures of plaintiffs in developing their

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14 business. Second, that defendants acted in bad faith,15 that is, with a specific intent to get a free ride in the16 marketplace based upon plaintiffs' efforts. And third,17 the acts of defendants caused purchasers to be confused or18 deceived as to the origin of subject services.19 If plaintiffs have proven each element of their20 claim for unfair competition, then you must find for21 plaintiffs as to this claim as to the defendant you are22 considering. If not, you must find for that defendant.

23 Damages. Having completed my instructions to24 you on the issue of liability, I now turn to the issue of 25 damages.12711 Introduction: If you find that plaintiffs are2 entitled to recover against one or both of the defendants3 on either or any of their claims, then you will have to4 address the issue of damages which is the subject of this5 portion of the charge.6 The fact that I am giving you instructions on7 damages should not be considered by you as an indication8 that I believe you should find in favor of the plaintiffs9 on any of their claims. That's entirely up to you. I

10 have to charge you on the law of damages in the event that11 you find liability.12 It is for you to decide on the evidence and the13 law as I have instructed you whether plaintiffs are14 entitled to recover on any of the claims. If you decide15 that plaintiffs are not entitled to recover, you should go16 no further. However, if you decide that plaintiffs are17 entitled to a recovery, you will then consider the issue18 of damages.19 So first, one, damages under 1125(a). Section20 1117 entitled recovery for violation of rights, provides21 that a plaintiff who proves an a claim under section22 1125(a) is entitled to recover one, defendants' profits23 and any damages sustained by plaintiff hereinafter24 referred to simply as damages. In those instances where a25 violation of section 1125(a) has been established, the12721 injured party is not required to prove damages with2 mathematical precision. Rather, damages can be3 approximated, assuming there is evidence in the record4 which provides a reasonable basis for an award. This is5 particularly true when the uncertainty or difficulty in6 measuring damages is attributable to the defendant.7 Nonetheless, a jury is not permitted to8 determine damages via speculation and surmise. To9 partially reiterate, there must be sufficient evidence in10 the record to permit a reasonable estimate. Here, such

11 evidence is lacking. As a result, even if you have found12 that plaintiffs have established each and every element of 13 their section 1125(a) claim against one or both of the14 defendants, you are not being asked to consider an award15 based upon defendants' profits or any damages sustained by16 plaintiffs, including a diminution in goodwill.17 Notwithstanding the foregoing, if you find that18 plaintiffs are entitled to a verdict in accordance with my19 prior instructions on liability as to this claim, you may

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20 return a verdict for plaintiffs on their section 1125(a)21 claim and fix the amount of damages in the nominal sum of 22 $1. That's the idea of nominal damages that I believe23 were referred to during closing arguments.24 Two, damages with respect to 1125(d). Section25 1117(d) entitled statutory damages for violation of 12731 Section 1125(d) provides that a successful plaintiff may2 recover either actual damages for profits as previously

3 explained with respect to section 1125(a), or an award of 4 statutory damages in the amount of not less than $1,0005 and not more than $100,000 per domain name.6 Here, there is one domain name in issue, to wit,7 www.hamptonlocations.com. Among the factors that triers8 of fact have considered in other cases in determining the9 amount of statutory damages to award are, one, revenues10 lost by the plaintiff; two, value of the service mark;11 three, the potential of discouraging a defendant from12 committing like acts in the future; four, the deterrent13 effect on others besides the defendant; and, five, the14 extent of bad faith involved in defendants' conduct.15 You should consider the above factors in

16 conjunction with any other factors that you deem17 appropriate in determining the amount of statutory damages18 to award plaintiffs should you have found that plaintiffs19 have established their Section 1125(d) claim against20 either of the defendants.21 Now, the next sentence reads: Remember to22 consider each defendant separately, both as to the issue23 of liability and, if liability is established, as to24 damages. There's an element of confusion in that portion25 of the charge. I'm going to read to you the actual12741 statute on 1117(d). At least the relevant portion. It is2 relatively brief as compared to what I've read to you3 previously concerning some of these statutes. It reads as4 follows:5 If a case involving a violation of Section6 1125(d) one of this title, the plaintiff may elect and so7 forth. At any time before final judgment is rendered by8 the trial court to recover instead of actual damages and9 profits an award of statutory damages in the amount of not10 less than $1,000 and not more than $100,000 per domain11 name.12 So now the question here is, and I'm going to13 work this out with the attorneys, but you can start your14 deliberations, but if and when you get to the question of 15 statutory damages and you will get to the question of 16 statutory damages if you find that the plaintiffs have

17 established each and every element for liability, if you18 reach that point, you're going to have to stop because we19 have to resolve this, because there's two ways to look at20 the statute.21 One way would be if there's one domain name22 involved, the maximum statutory damages regardless of how23 many damages there are would be $100,000. And what would24 happen under that interpretation if you have two25 defendants, make it ten defendants, say there's ten

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12751 defendants, you find all of them responsible, all of them2 liable. Basically they'd each be known as jointly and3 severally liable for any such you would award. That would4 mean if I one of them would be called upon to answer for5 the full amount or for some portion of the amount. But we6 haven't worked that out. I don't want to hold you up7 while we're doing that. So you'll get a further8 instruction on that.

9 Then the other interpretation, I think that I've10 explained it, but maybe I haven't, 1,000 and $100,000, is11 that the total amount that could be awarded should a jury12 elect to do so consistent with the Court's charge and the13 law, regardless of the defendants, or could it be a14 hundred thousand dollar or $1,000 per defendant. We15 should get that resolved in relatively short order, I16 hope. My law clerks are working on it as we speak, in any17 event, that particular item we haven't resolved as yet.18 When you do retire to deliberate I am going to19 give you a verdict sheet and I'm going to put on the20 verdict sheet -- I'm going to knock out that one portion21 because we don't have it resolved. So if you get to that

22 question of statutory damages, the question that is on the23 sheet is in dispute. We're not all in agreement, the24 attorneys and myself, as to what it means. But by doing25 it this way you can start your deliberations.12761 We're going to go now to the damages based upon2 plaintiff's unfair competition claim under New York law.3 Here again, you are not being asked to award actual4 damages to plaintiff given the lack of factual predicate5 for such an award. However, as an explained previously,6 if you find that plaintiffs have established each element7 of this claim as to the defendant you are considering, you8 may then award nominal damages in the amount of $1 against9 that defendant.10 Punitive damages as to the New York based unfair11 competition claim. In a moment I will instruct you on the12 law of punitive damages. Before doing so, however, you13 are advised that punitive damages may not be awarded --14 punitive damages only pertain, I'll explain in a moment15 what they are, they are the type of damages that a jury in16 their discretion may award certain -- if certain type of 17 conduct has been established. It's typically egregious18 conduct, it's very troubling, it's shocking conduct.19 Now if you get to damages and everything else,20 if you are considering an award of punitive damages which21 is addressed to your discretion, you can only consider it22 as to the New York based claim. You don't have punitive

23 damages for what they call a Lanham Act claim, so as to24 1125(a) and 1125(d), punitive damages is irrelevant. But25 should you elect to do so and consistent with the Court's12771 charge, you may consider punitive damages.2 Therefore, as to this New York State based claim3 and therefore I will instruct you on the law of punitive4 damages. First thing that's noted is what I've just said5 to you, you will consider the question of punitive damages

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6 only in connection with plaintiff's claim of unfair7 competition under New York State common law.8 In addition to nominal damages, the law permits9 the jury under certain circumstances to award plaintiffs10 punitive damages. You may award punitive damages if 11 plaintiffs prove that defendants' conduct was wanton and12 reckless, not merely unreasonable.13 An act is wanton and reckless if it is done in14 such a manner and under such circumstances as to reflect

15 the utter disregard of the potential consequences of the16 act on the rights of others. The purpose of the punitive17 damages is to punish the defendant for shocking conduct18 and to set an example in order to deter others from19 committing similar acts in the future. Punitive damages20 are intended to be an expression of the jury's indignation21 at that conduct.22 The awarding of punitive damages is within your23 discretion -- you are not required to award them.24 Punitive damages are appropriate only for especially25 shocking and offensive misconduct. If you decide to12781 award, you must use sound reason in setting the amount, it

2 must not reflect bias or prejudice or sympathy towards any3 party. But the amount can be as large or small as you4 believe necessary to fulfill the purpose of punitive5 damages. In this regard you may consider the financial6 resources of the defendant when you are considering the7 amount of punitive damages and you may impose punitive8 damages against either one of the defendants or against9 both defendants in the same or different amounts.10 Five: Avoid double recovery. Should you find11 for plaintiffs against either or both of the defendant on12 more than one claim, be careful not to award a double13 recovery. By way of hypothetical example. If a person14 was damaged to the extent of $1 but prevailed on five15 legal theories as to why he was entitled to that $1, the16 jury would award $1 rather than $5, otherwise the17 aggrieved party would recover more than he lost.18 We'll now proceed to the third part of the19 charge, much of what's in the third part we've already20 reviewed in preliminary instructions and elsewhere,21 including earlier in this charge. Keep in mind that22 nothing that I have said in these instructions is intended23 to suggest to you in any way what I think your verdict24 should be. That is obviously entirely up to you.25 As you know, your obligation is to determine the12791 facts in this case and then to apply the law as I have2 given it to you based upon the facts as you find them to

3 be. Remember that your verdict must be based solely on4 the evidence in the case and the law as the Court has5 given it to you, not on anything else.6 You will have to select a foreperson. Any one7 of you can be the foreperson. Obviously the foreperson's8 vote carries no greater weight than that of any of the9 other secures. Basically the foreperson's job will be to10 pen any notes that you may have, we'll go into that in a11 moment, and then also when you've reached a verdict,

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12 you'll have a verdict sheet and it has a series of 13 questions, and as you'll see they call for yes or no14 answers, you will complete the verdict sheet consistent15 with the jury's verdict.16 Ms. Best will have the same sheet without the17 answers. Ms. Best will have the uncompleted form before18 her, she'll ask the questions and the foreperson will19 answer consistent with how you answer the question. Yes,20 no, or however it is. That's basically the idea.

21 On the idea of notes, just a couple of things.22 If you have any question about the law, and that's true of 23 any of you, having the charge before you may help you24 because it has the listing of the various elements and it25 has definitions and so forth, but if any of you has a12801 question as to what the law means, what you should do then2 is you write a note and the foreperson will write it out3 finally and it will say whatever the question is. Try to4 be as specific as you can on the question so we don't5 overkill on the question, but that's not a limit by saying6 that. I don't mean to limit in any way what you can ask 7 for, you can ask anything if you're unclear on the law.

8 Also, as you know, there's a complete transcript9 of everything that's been said in the courtroom.10 Therefore, if you need any portion of the testimony to be11 reread, that is your right. I know that many of you have12 taken notes. That's fine. If you are looking at your13 notes and you can understand your notes, that's fine, but14 if there's a question you can't read your writing or15 they're not as complete as you want, if you as a note16 taker have any questions as to what was testified to, let17 us know and we'll locate the material in the transcript18 that will be reread to you as a jury.19 Also it's important that non-note takers20 remember that as well because if any non-note taker has21 any question about what was said, let us know and we'll22 have it read back. There again, it should be as specific23 as possible. Otherwise you get more information than what24 you need.25 If this was an automobile accident case, by way12811 of example, and one of the jurors wanted to know where2 Ms. Jones said she was standing when she saw the traffic3 control change colors, that's basically what you would4 ask, you would not ask for Ms. Jones' testimony because5 that would give you more than you want.6 But having said that, you can have any portion7 of any witness' reread or you can have all of it reread,8 any witness' testimony. So again, I don't mean to limit

9 you in any way, I just want to tell you, give you some10 guidance on how you may want to paper your notes in that11 regard.12 As you know, when you have completed a note13 there's a buzzer inside the jury room, it activates a14 buzzer inside my office and Ms. Best's office. Ms. Best15 will come in and get the note, we make copies of the notes16 and I distribute them to the attorneys and as soon as we17 have worked out what I believe to be a satisfactory

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18 response to your inquiry we'll call you out and give you19 the information that you have asked for.20 As far as the verdict sheet, you all have to21 agree on each entry on the sheet, in other words, your22 verdict must be unanimous.23 Your duty is to reach a fair conclusion from the24 law and the evidence. When you are in the jury room25 listen to each other and discuss the evidence and issues1282

1 in the chase among yourselves. It is the duty of each of 2 you as jurors to consult with one another and to3 deliberate with a view towards reaching an agreement on a4 verdict, if you can do so without violating your5 individual judgment and conscience. While you should not6 surrender conscientious convictions of what the truth is7 and as to the weight and effect of the evidence, and while8 each of you must decide the case for yourself and not9 merely acquiesce in the conclusion of your fellow jurors,10 you should examine the issues and the evidence before you11 with candor and frankness, and with proper deference to12 and regard for the opinions of each other.13 You should not hesitate to reconsider your

14 opinions from time to time and to change them if you are15 convinced after a discussion they are wrong. However, do16 not surrender an honest conviction as to the weight and17 the effect of the evidence simply to arrive at a verdict.18 As noted, the decision you reach must be unanimous; you19 must all agree on every entry in the verdict sheet.20 When you have reached a verdict send me a note21 signed by your foreperson indicating that you have reached22 a verdict. Don't tell us what the verdict is. Do not23 indicate what the verdict is and in any of your notes to24 the Court, don't tell us where you stand; in other words,25 don't say we have a vote and this is what happened. When12831 you finally have reached a verdict that's when you will2 let us know.3 At this the point I have to check with the4 attorneys at sidebar to see if there's anything that I5 overlooked. So just bear with us.6 (Continued on next page.)7891011121314

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242512841 (Whereupon, the following occurred at sidebar.)2 THE COURT: Ms. Weiss, other than what we've3 discussed on the charge at the charge conference and after4 the charge conference, are there any other exceptions to5 the charge?6 MS. WEISS: No, your Honor. And I apologize if

7 I was having the Court do all the work or as you said --8 THE COURT: This case is not, factually I don't9 think this is complicated. Factually, I think this is a10 very difficult part of the law. When I read that statute11 to the jury --12 MR. RONEMUS: I think you read it correctly and13 I have no objections to the charge as you gave it.14 THE COURT: The verdict sheet, I am going to15 provide it to the two of you. My thought is, we'll work 16 on that one remaining item, but I think we should send the17 verdict sheet in because they may or may not get to that18 point.19 MS. WEISS: Right.

20 THE COURT: And at least they can do some work.21 MR RONEMUS: Right.22 MS. WEISS: Good.23 (Continued on next page.)242512851 (Whereupon, the following occurred in open2 court.)3 THE COURT: At this point the jury will start4 their deliberations. You have a copy of the charge5 obviously. We're going to send in some copies of a6 verdict sheet which is largely self-explanatory. The only7 thing that's up in the air, if you reach that question of 8 the statutory damages under section 1117(d), that has to9 do with the anticybersquatting statute, at that point10 you're going to have to let us know, send us a note and11 say we've hit an impasse just on this one item. We're12 going to be working on that aspect and we'll get it to you13 as soon as we can.14 The point is you can start your deliberations15 and you may or may not reach that point. We'll see what16 happens. In any event, you can start your deliberations17 at this point. It's now 4:15. It's been a long day, plus18 you had to wait when you first got here today. If you19 decide 5:00, 5:30, 6 o'clock, whatever, we've had enough,20 we'll come back tomorrow, that's fine, too, let us know.

21 From now on you sort of control the timing and so forth22 within limits.23 At this point the jury will retire to24 deliberate. Thank you.25 (Whereupon, the jury retired from the courtroom12861 at 4:15 p.m. to commence its deliberations.)2 THE COURT: At this point we'll be in recess for3 a couple of minutes. If counsel could approach I can give

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4 you copies of this proposed verdict sheet and again we5 have that one loose end concerning the statutory damages.6 But this way you can look it over and obviously I'm7 amenable to any suggestions, et cetera. But I'll be out8 in about five minutes on that and then we'll work on that9 other part.10 (Recess taken at this point.)11 (After recess.)12 THE COURT: Have both sides had a chance to go

13 over the verdict sheet?14 MS. WEISS: I have, your Honor.15 THE COURT: Is there a problem other than the16 one area that we have to discuss?17 MS. WEISS: Well, maybe a little problem. I've18 used the word $1 because that's what I thought I was19 supposed to say. And you used the word nominal.20 THE COURT: Right.21 MS. WEISS: And I mention that because the22 United States Supreme Court has ruled in a case called23 Goore, G-O-O-R-E versus BMW, which is a case of Dr. Goore24 in Alabama on scratches to his BMW, blah-blah, that25 punitive damages have to have some kind of a ratio.

12871 THE COURT: I know that. But you know, I can2 address that. I don't know. The question is the most3 recent one is Allstate, but there has to be some4 relationship between any punitive damages and compensatory5 damages and in Allstate I think they suggested anything6 above a single multiple, in other words, in double digits,7 a multiple in double digits might be suspect.8 Now, if you have nominal damages, that would9 take me a week to figure out how to charge that, so I10 thought what I would do is let it go to the jury and I can11 always adjust it.12 MS. WEISS: That's fine. But in some cases I13 read you can award nominal damages like $1 or $10.14 THE COURT: That's true.15 MS. WEISS: And 10 would be nominal.16 THE COURT: That's true. I see what you're17 thinking about. So that would affect the amount of the18 punitive damages.19 MS. WEISS: I think that we've had enough hard20 issues to tackle in what may be one of the very first21 Anticybersquatting Consumer Protection Act cases that went22 to trial here in the Eastern District. With the other23 issue that we're grappling with now, because sometimes24 it's one corporation just suing another corporation so you25 never get beyond the hundred thousand. Here we have two1288

1 defendants who are individual living people. So we're2 facing that problem. That's my thought.3 THE COURT: All right. What are you asking me4 to do on the verdict sheet? I did say during the charge,5 I don't know if that helps, but I said $1. I think I said6 nominal damages in the amount of $1 and I said that's what7 counsel was referring to, I think, during the summation.8 MS. WEISS: This is fine except for that one9 problem that we've discussed, the problem in number seven.

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10 THE COURT: We can't just go over the problem.11 What do you suggest we do with it, if anything?12 MS. WEISS: I think that we should change number13 C -- I think that we should make number seven look more14 like number nine, if yes, in what amount, and if it turns15 out in the unlikely probability that this is going to go16 over a hundred thousand total and, which I doubt, and if 17 it turns out that the law is such that that can't be done,18 then the Court can just address it in a post-trial motion

19 for remitter, that one.20 THE COURT: All right. Let me check with the21 defense. What do you think we should do on this thing?22 MR. RONEMUS: I think you should leave it as it23 is since it is consistent with the statute, one domain24 name, one damages.25 Also I just want to place on the record, I12891 should have done this before, but with respect to punitive2 damages, I can't see any evidence that it could ever be3 considered for punitive damages, but with respect to that4 claim, I think you have to leave it as you have it,5 your Honor.

6 THE COURT: All right. We have a note from the7 jury that says "May we see all documented evidence." So8 it sounds to me like they want the exhibits and if there's9 no objection, they'll be sent in.10 MS. WEISS: No objection.11 THE CLERK: Is this evidence?12 MS. WEISS: Yes.13 MR. RONEMUS: Yes.14 THE COURT: On the question of nominal damages,15 my thought at this point is to leave it the way it is.16 The verdict sheet's sole purpose is to assist the jury to17 report its verdict. It should dovetail with the charge.18 It should never be inconsistent with the charge.19 In the charge, there was no objection to this20 portion of it, I basically indicated that nominal damages21 is $1. I've seen charges where they say an amount not to22 exceed $7, there's different ways to do it. But that's23 not the way I elected to do it and there was no objection.24 Now, let's assume that the jury awards nominal25 damages and they award punitive damages under the state12901 based claim. Under that circumstance, I would think that2 the matter could be appropriately addressed in a3 post-verdict motion in the sense I don't believe that, for4 instance, in the Supreme Court decision of Goore and5 Allstate and so forth that this would be any magical6 significance to the multiplier, if it's $1 or $7, that's

7 nominal damages and that's one factor that the Court would8 have to consider in determining whether the punitive9 damage award was excessive.10 So I think that we ought to just leave that the11 way it is.12 Did you want to say something on this?13 MS. WEISS: No.14 THE COURT: That's what I'm going to do with15 that.

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16 MS. WEISS: I just wanted to -- I mean, I17 thought this was the right time to at least give that some18 thought and the Court has.19 THE COURT: Yes. I just want to place on the20 record because it's been raised, and it has to do with the21 cybersquatting, anticybersquatting statute, and it was an22 interesting question. It had to do with 1125(d). The23 issue is whether the Court should charge use in commerce24 with respect to that particular count; in other words,

25 that would be one of the elements that the plaintiff would12911 be -- plaintiffs would be required to establish. And I2 indicated that I didn't think that should be done and I3 didn't change the charge.4 I'd like to go over some of the rationale behind5 that approach. Firstly, there's no question for the6 statute to pass muster, that would be 1125(d), that there7 has to be some nexus between interstate commerce, I would8 think, and the activity which has been prohibited by the9 Congress. Thus, we know, for instance, in, I don't know10 if I have the text out here or I do, the definition of 11 commerce, which is in 1127 of Title 15 of the United

12 States Code defines commerce as meaning, in essence, that13 which the Congress has authorized to regulate by way of 14 activity in the marketplace.15 So I think that you do need interstate commerce.16 But we had speculated on this. Should that be charged to17 the jury. Plaintiff voiced the opinion that basically the18 Congress has spoken and the Congress believes they have19 the authority -- they have the authority, for instance,20 just to make registration in and of itself a violation of 21 the act.22 However, we do know that the Court has an23 obligation to make sure that it has subject matter24 jurisdiction to entertain a particular action. I imagine25 an argument could be made, this pertains to subject matter12921 jurisdiction. Until it does, then obviously the Court2 would have an obligation to address the issue anytime it3 is raised, which could be post verdict.4 But let's assume it doesn't go to subject matter5 jurisdiction. Still it would seem to me we ought to try6 to get it right the first time. It seems to me, I'll7 mention why, if you take the facts in this case which are8 uncontroverted and that would be the acquisition of the9 domain name Hampton Location, what was subsequently done10 with that name, that the activity involved as a matter of 11 law necessarily involves commerce. So what I'm saying is12 there's no reason to charge use in commerce to this jury

13 as to 1125(d) because it seems to me, as a matter of law,14 that element has clearly been established.15 There are two cases I'd just like to place on16 the record in that regard. Again, this is not written in17 stone because I haven't had a chance to review it today.18 I think we should leave the charge the way it is because I19 feel comfortable with it, but the two cases are the20 Planned Parenthood Federation of America against Bucci,21 which is B-U-C-C-I, 1997 WL 133313, that's the Southern

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22 District of New York case decided by Judge Wood, it was23 decided in 1997. And I should also note that that opinion24 or that decision was affirmed by the Second Circuit in25 1998, with the citation being 152 F. 3d 920. And in that12931 decision under the -- it's actually on page 3 of the2 decision, and it's under the caption "Whether the Lanham3 Act is Applicable," she has a lengthy discussion4 concerning the necessary interrelationship between the

5 internet and interstate commerce.6 And her decision is cited in a later case by one7 of her fellow judges in the Southern District of New York,8 in a case of Spotlight -- OBH, Inc. against Spotlight9 Magazine, 86 F. Supp. 2d 176, and in that case decision10 under the portion labeled "use in commerce," there's a11 similar discussion about the internet and how the internet12 by its very nature involves use in commerce and for that13 proposition the judge in the second case, the Spotlight14 case, cites Judge Wood's decision earlier mentioned.15 So I think by way of synopsis, and we can16 revisit this if any timely motion which is not17 procedurally flawed is presented to the Court, should

18 there be a plaintiffs' verdict, but it seems to me at19 least at this juncture that what we did is the appropriate20 thing, what I did is the appropriate thing, and so we'll21 leave it at that at this point.22 Again, this is not meant to foreclose any future23 argument that may be raised. I feel very comfortable with24 that. The basic idea being as a matter of law the25 evidence we have here says interstate commerce is12941 sufficiently sufficient to oppose the statute. The2 Court's recognizing in this area that the interstate3 commerce clause has not been interpreted as strictly as4 some may feel it should be.5 I think what we ought to do, I'll send in this6 verdict sheet to the jury.7 MR. RONEMUS: Before you do that, I'd just like8 to make a statement for the record.9 THE COURT: Yes, sir.10 MR RONEMUS: I was reading the case that you11 cited, Monday January 22nd, discussing use in commerce,12 and that's the --13 THE COURT: Judge Swaine's decision?14 MR. RONEMUS: Yes. Which states the right to a15 particular mark grows out of its use, not for its16 adoption, rights to a service mark arise from quote, "use17 in commerce of the mark in connection with services and18 use in commerce is determined on a case-by-case basis

19 considering the totality of circumstances surrounding the20 alleged use of the mark." It cited cases, and finally it21 says the Lanham defines use in commerce as the bona fide22 use of a mark in the ordinary course of trade and not made23 merely to deserve a right in mark.24 And one more sentence, the talisman stick test25 is whether the mark was used in a manner sufficiently12951 public to identify or distinguish the marked goods in an

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2 appropriate segment in the public mind as those of the3 adopter of the mark.4 To me that seems to state that there has to be5 use in commerce and it seems to be a question made for the6 jury on a case-by-case basis. So I submit it should be7 submitted to the jury.8 THE COURT: That's fine. The reason that I put9 the use in commerce in and you raised the point was10 because in part of the fine explanation provided in Judge

11 Swaine's decision which addresses, I believe, section12 1125(a). I don't think she specifically addresses the13 internet. There's no question that you have to have use14 in commerce. I agree in that. I agree that interstate15 commerce has to be involved. But it seems to me on the16 undisputed facts we have here what we have about the17 internet and the link and so forth, that's all undisputed18 and that constitutes use in commerce. In my humble19 judgment. Again, not written stone. We'll see what20 happens.21 Here is the question from the jury: "We would22 like to see the newspaper articles Re: Nancy Grigor, one,23 the New York Post, two, Dan's Papers, three, Hampton's

24 Gazette."25 Some of those, like Dan's Papers may not be in12961 evidence, I'm not sure any of them are, but the2 application that was sent down by the trademark attorney3 to the patent and trademark office, that would be the4 second one, I think, maybe the third. That has some of 5 these, I think, doesn't it or does it?6 The question is: Are these in evidence and if 7 so, where are they?8 MS. WEISS: I believe, your Honor, I believe I9 moved them into evidence. I believe I did and I gave the10 Court a copy. I believe they're like 94, 95 and 96, but11 can we take the Court's copies?12 THE COURT: Usually -- the Court's copies are13 all marked up. What did we send into the jury? If 14 they're in there, we can just tell them where they are.15 Or if we don't remember where they are, we'll get them16 back and we'll take a look. But I don't keep the17 exhibits, though. I don't have anything that you can send18 into the jury.19 MS. WEISS: I didn't bring by copies up here.20 THE COURT: No. It isn't even that. Didn't we21 send everything into the jury? That's the evidentiary22 base. If everything that was sent into the jury, all the23 documentary evidence, that's the universe and then we have24 to just indicate where it is. And if we need to, we can

25 get those back. It's unusual, but we can do it.12971 You think it's in evidence, right?2 MS. WEISS: I do.3 THE COURT: Okay. But you just don't remember4 which the exhibit number is.5 MS. WEISS: I think they're 94, 95 and 96. So6 I'm concerned maybe, Mr. Ronemus, did you hold them up to7 the jury?

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8 MR. RONEMUS: They were on the table when I came9 in this morning.10 THE COURT: I will take a look. But as I say, I11 don't keep an official record. I'll see if I have 94, 9512 and 96.13 MS. WEISS: I think they're in that area.14 THE COURT: There's one that went in on Dan's15 Papers, I'm just going through this as I'm sitting here.16 Dan's Papers, there's one that went in as Plaintiff's

17 Exhibit 78, it's entitled "How to Find the Perfect18 Location for Insiders in the Know." I don't know if 19 that's the one they're talking about? I'll show you what20 I have. As I say, we can get the ones from the jury.21 Do you want me to do that?22 MS. WEISS: That's one. 78 is one, yes. The23 East Hampton Star it should be, not the Hampton Gazette.24 It's the East Hampton Star, and it has her picture on it.25 THE COURT: That's 69.12981 MS. WEISS: So I apologize for saying the wrong2 numbers in the 90 series.3 THE COURT: But as far as those two are

4 concerned, we'll go over the other one in a moment, New5 York Post, but those are before the jury now, they were in6 the stack that counsel agreed were exhibits?7 MS. WEISS: We believe that they were. But I8 didn't put them in order just now, your courtroom deputy9 with.10 THE COURT: We can do that. The last one is the11 New York Post, that's the one about Cindy Adams.12 MS. WEISS: Yes.13 THE COURT: That's 74. What I can do on that, I14 have those three, I'll tell them that -- let me check, but15 it is my understanding these were received in evidence.16 Is that agreed?17 MS. WEISS: Yes.18 MR. RONEMUS: Yes.19 THE COURT: I'll tell them that these three20 articles, and here are the numbers and they should be21 included among the ones that were sent in.22 MR. RONEMUS: They should be.23 THE COURT: If they're not, let us know. That's24 the first thing.25 Then the other thing is I'm going to have to12991 tell the jury on the charge about that one line where I2 say, which is a little confusing, where it says consider3 each defendant separately both as to liability and4 damages. That's an accurate statement of the law but it's

5 not accurate where I put it under the statutory damage6 section, because that's confusing.7 MR. RONEMUS: I'm sorry, I'm not sure what8 you're intending to do there.9 THE COURT: I need a copy of the charge, which10 is what plaintiff's counsel I think raised, is that one11 portion of the charge is confusing because I asked12 plaintiffs' counsel what's the basis for your belief that13 under 1117(d) that there could be an award of, within the

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14 statutory range, as to each of the two, totally,15 defendants, and under that portion of the charge I say16 they consider each defendant and each one separately. I17 want to explain to them that's fine, you should do that.18 But on the damages, you can't award more than the19 statutory amount or less should you find liability.20 MS. WEISS: Your Honor, assuming the award comes21 back and let's just say $10,000 the way that you have it.22 THE COURT: Right.

23 MS. WEISS: Would that be then a joint and24 several judgment?25 THE COURT: It depends on how they check off the13001 verdict sheet. I asked them has the plaintiff established2 that cause of action, 1125(d), as to Richard Rubens, as to3 Darrell Rubens, so if they checked off yes as to both, it4 would be joint and several against the two of them. If it5 was only as to one of them, they would so indicate and6 that person would be liable. The other would not be in7 damages.8 MS. WEISS: I'm thinking perhaps, going back to9 your example of ten defendants in the case.

10 THE COURT: Right.11 MS. WEISS: It might not be fair to force them12 to combine 1,000 and 9,000.13 THE COURT: No. They don't apportion it.14 That's why I originally hesitated on this apportionment.15 Because let's assume they found both were responsible and16 one was a minor participant and the other one was a major17 participant, should there be some kind of apportionment,18 the Second Circuit said there shouldn't be. It is a19 copyright case, the name of the case is Fitzgerald20 Publishing against Bailer Publishing, 807 F. 2d 1110.21 This is under the copyright, this is a copyright case. As22 we know there's some parallels between the trademark and23 patent, and in this case it talks about there must some24 apportionment, first they mention the arguments of the25 party who was raising the argument that there should be13011 apportionment, they said you have to set aside the2 verdict, there is no apportionment and yet one of the3 factors you told them is deterrence. Different4 individuals may need a different level of deterrence. In5 any event, the circuit said no, there's no problem. So6 that's the basis for it.7 MS. WEISS: I see.8 THE COURT: I don't know if I placed the site on9 the record. It's 807 F. 2d 1110. That's a Second Circuit10 decision of 1986. And the discussion is labeled Award of

11 Statutory Damages. That's in quotes, Award of Statutory12 Damages, and that discussion begins at page 1116 of the13 decision.14 MR RONEMUS: I think it seems to me you have15 spent quite a bit of time talking about statutory damages16 and punitive damages which, to me, seems like you're17 hinting the jury should reach those, even though you said18 they should not. I think any further discussion of that19 is going to muddy the waters rather than clarify. So I

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20 would object to any further instruction on the issues.21 THE COURT: Yes, sir. I am going to instruct22 them though concerning the last sentence that appears23 under the caption "damages with respect to Section24 1125(d)" because as it's presently configured, I think it25 is misleading and it would cause a problem for the jury.13021 That's done over the objection of the defense.2 MR RONEMUS: What page is that?

3 THE COURT: It's on page 49.4 MS. WEISS: Has the jury been given their5 verdict sheet?6 THE COURT: Yes. We crossed out that one, I'll7 check with Ms. Best but that's what I asked be done.8 MR. RONEMUS: I just request that you state to9 them again that because I'm discussing this doesn't mean10 you should reach that.11 THE COURT: I will do that.12 MR RONEMUS: Thank you.13 (Whereupon, the jury entered the courtroom at14 5 o'clock p.m.)15 THE COURT: If you'd all be seated, please.

16 Firstly, ladies and gentlemen, with respect to17 the verdict sheet, the verdict sheet will not be modified.18 It is what it is. So you can use this verdict sheet.19 Now, in the charge, there is one portion that I20 want to clarify and I will tell you where it is. It's21 firstly under the caption "damages with respect to Section22 1125(d)," that's on page 48. That's where it begins. So23 it will be on page 48. Then if you go to the end of that24 section, the damages with respect to Section 1125(d), the25 end of that or that section is concluded on page 49, right13031 before the number three, you'll see that. The last2 sentence reads: Remember to consider each defendant3 separately, both as to the issue of liability and, if 4 liability is established, as to damages. And we had a5 preliminary discussion about that before. As you know, if 6 plaintiff has established each and every element of the7 1125(d) claim, that's that anticybersquatting claim, then8 you would go to the question of damages and then the item9 of damages that's before you is the so-called statutory10 damages.11 So first you have to find the liability. Let's12 assume you've done that. Now you're into the damages13 area. The statute provides that the maximum amount of 14 damages that can be awarded is $100,000, if you find a15 violation, and the minimum is $1,000, if you find a16 violation. But here is what's important. The way that

17 I've worded that last sentence it sounds like assuming18 you've found, again, this is purely a hypothetical, I19 don't know if you'll find that way, I don't know if you'll20 get to that in the verdict sheet or the charge, or the21 verdict sheet, let's assume you found hypothetically that22 the -- found that the plaintiff found by a fair23 preponderance of the evidence, the 1125(d), the24 anticybersquatting statute, and assume you found that25 against both defendants. Then the question is would you

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13041 say should I award a thousand dollars against each, so2 that would be $2,000 or at the end of the spectrum3 $100,000 against each for a total of $200,000. The way4 that I've worded that sentence where I tell you to5 consider each defendant separately as to damages, it might6 suggest that you can total them. You can't.7 If you get the statutory damages, if you find8 one individual responsible, that the plaintiff has

9 proven -- plaintiffs have proven their case against one10 defendant, let's assume that happens, then you would11 determine what would be the appropriate item of statutory12 damages, it can be anywhere from one to $100,000.13 Let's assume you found, hypothetically that you14 found both of them, that plaintiff had proven a case15 against both of them and now you're into this statutory16 damages, you would still just come up with one number. It17 would be a thousand dollars, it could be $100,000. But18 you wouldn't total them. You wouldn't say well, there's19 two defendants, just as you wouldn't say if there were ten20 defendants you found $1,000 or the amount of statutory21 damage and you say there's ten defendants, we'll just

22 multiply it by ten, you can't do that.23 Congress has said that the maximum damages, not24 per defendant, it says per domain name, it's agreed in the25 case that there's one domain name. That language I have13051 there is sort of stock language and it's certainly true2 you have to consider each defendant separately on the3 issue of liability.4 And on the verdict sheet you'll see, you'll be5 asked individually as to each of the defendants under6 1125(d), it will say with respect to 1125(d) has the7 plaintiff proven their case and then it says A, as against8 Richard Rubens, yes, no. As against Darrell Rubens, yes,9 no. So you're checking off there who you find liable, if 10 anyone. So it will work out. I think when you read the11 verdict sheet you'll understand it better.12 The point is, we're not changing the verdict13 sheet but that one line could have caused a situation14 where in my hypothetical you said, all right, I find a15 thousand dollars and now I'm multiplying it by ten, for16 10,000, that's why I wanted to bring you out. That's my17 fault. Not the attorneys. That's mine.18 If you have any questions on that obviously or19 anything else in the charge let me know and we'll do our20 best to answer it.21 One other thing I am required to mention that's22 very important. We've just spent quite a bit of time

23 going over statutory damages. I did that because there24 was an ambiguity in the charge that I provided to you.25 But you have to remember that that doesn't mean that this13061 portion of the charge is any more important than any other2 part. You may not even get to that point. You may or may3 not, I have no idea, that's up to you. But the fact that4 I brought you out here and I've gone through statutory5 damages, I'm doing that just to try to eliminate the

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6 ambiguity that I created. It's not because it's any more7 important or any less important than that part of the8 charge, it's just that I needed to clarify it. That's9 what I've endeavored to give to you. There's nothing10 special about this part of the charge at all.11 In sum, the verdict sheet stands as it is,12 again, it's just an aid to you in reporting your verdict13 and then on page 49, that last line that appears right14 above the number three on page, you have to view that

15 consistent with what I've said. You really don't -- I16 don't want to belabor it too much. I think I've made the17 point. But if you have any questions on that or anything18 else, let me know.19 Is there any need for counsel to approach the20 bench?21 MR RONEMUS: No.22 THE COURT: Thank you. You can continue your23 deliberations.

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(Page # 555,556, 557,558,559,561,562,563)

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D. Rubens - Direct/Ms. Weiss

555

1 Do you know when that Web site was registered?

2 A. By Nancy or --

3 Q. No.

4 Hamptonlocations.com with the registrar listed

5 as DSNY, do you know when that was first registered?

6 A. Back in I believe June 1999, pre-summer of 1999. But

7 I'd have to check my notes for the correct date.

8 THE COURT: Provide him with his notes.

9 (Document handed to the witness.)

10 A. 7/8, 1999.

11 MR. RONEMUS: Is there a problem if he just

12 keeps the notes there?

13 THE COURT: No. It isn't. When you're asked a

14 question, Mr. Rubens, what I'd like you to do is if you

15 can answer the question without looking at the notes,

16 fine, just answer it. If you can't, just indicate I have

17 to look at the notes and pick up the notes right in front

18 of you and then answer.

19 MR. RONEMUS: They're not in front of him,

20 that's the problem.

21 THE COURT: We're going to put them in front of

22 him. Otherwise we're going to spend an hour with people

23 marching back and forth. That's a waste of time.

24 (Document handed to the witness.)

25 Q. Okay.

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556

1 So earlier you gave the date as June 1999 and

2 now you realize it's July, '99; is that correct?

3 A. Correct.

4 Q. Okay.

5 And were you involved in any way in the

6 registration of the domain hamptonlocations.com in July of

7 '99?

8 A. Which version? Repeat the question, please.

9 Q. Were you involved in any way in the registration of

10 the domain name hamptonlocations.com in 1999?

11 A. I did not purchase it, no.

12 Q. Were you involved in any way?

13 A. Was I involved? I was part of the discussion,

14 correct, yes.

15 Q. What discussion and with whom?

16 A. Basically a year before it was purchased, my friends

17 and I, we were discussing different business ventures and

18 we were discussing a possibility of starting a long-term

19 summer rental Web site on the internet, the internet just

20 started and we figured we'd rent houses in the summer for

21 your own personal use in the summertime and we know a lot

22 of people didn't do that so we wanted to create a virtual

23 Hamptons Web site where people anywhere around the world

24 can go to look at summer homes, not for photo shoots, but

25 for summer or to buy a house or something like that. So

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557

1 that was the beginning of the conversation on why it was

2 purchased.

3 Q. And who are these friends that you were speaking to

4 in 1998, you're saying?

5 A. It was, I think the idea probably came up a good year

6 before that. I remember a couple of friends were there.

7 Good friend of mine Chris Spuches, S-P-U-C-H-E-S; friend

8 Jimmy Wang or James Wang, and his brother Eddie Wang. And

9 I think at that time there could have been some other

10 people there but I don't remember, but I remember all of

11 our girlfriends at that time were there. They were kind

12 of helping us out with some of the stuff.

13 Q. Actually, you said a moment ago a year before, and I

14 thought that I had asked you about 1998, which is a year

15 before 1999, so I don't know if you're referring to 1997

16 or 1998 or 1999.

17 So, can you clarify that and I'll say that you

18 did tell us that July 8, 1999 is the registration date?

19 A. That was the date, correct.

20 Q. So when you say a year before, you mean that you were

21 having conversations with your friends Chris and James

22 in --

23 A. I don't remember the date when we were having the

24 discussions but I know it was a long time before then. It

25 was probably, I don't know, six months, a year before.

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558

1 Q. And what prompted the registration of

2 hamptonlocations.com on July 8, 1999?

3 A. After we had a couple of meetings to try to figure

4 out how we were going to do this business, one, we

5 realized the internet was just starting, Web sites were

6 just being formed, there were very few Web sites at that

7 time. This was pre-Google, Google wasn't around at that

8 time. There were only a couple of ways to get to it. And

9 we figured we needed some kind of descriptive name to

10 describe the houses that we will be renting and showcasing

11 for summer rentals in the Hamptons.

12 I remember one of the names was the virtual

13 Hamptons or virtual Hamptons. Some kind of variation of

14 that. One was the hamptonlocations.com before this.

15 Q. What is Chris' profession?

16 A. He's an attorney.

17 Q. At that time how long had he been practicing law?

18 A. Practice? I don't know.

19 Q. Is he admitted to the bar?

20 A. Yes, he is.

21 Q. And how about James, what is his profession?

22 A. He's a -- he's a banker. But an attorney who passed

23 the bar.

24 Q. And what's your profession?

25 A. I am a real estate agent in New York City. I lease

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559

1 buildings, I lease retail space in New York City,

2 long-term lease; 10 years, 20 years, 30 years.

3 Q. So what exactly happened to get the name registered?

4 Did someone e-mail or contact Network Solutions?

5 A. I don't know if they contacted Network Solutions, but

6 I believe one of our girlfriends at that time was given

7 the task to purchase the domain names that we agreed upon.

8 Q. Do you know which girlfriend?

9 A. No.

10 Q. And how did this girlfriend decide to put DSNY, just

11 those four letters, as the name of the registrant for

12 something that you say that you and Chris and James were

13 doing together?

14 A. The way I remember it, at that time the only way to

15 register through Network Solutions is you needed to fill

16 out a corporate name, as well as a mailing address and

17 location and we were talking about forming a corporation

18 specifically for this purpose.

19 And at that time I believe it was -- we had a

20 couple of attorneys in the room and they were saying

21 there's no need to file for a corporation right now, let's

22 just use -- it kind up came up we were thinking about what

23 corporation to put under, we didn't want to go through the

24 expense of setting up a corporation because we didn't know

25 if this idea would take off and I think sometime during

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561

1 was DSNY, why not put all the information down so if

2 anyone wants to contact us they know where to get in touch

3 with us.

4 Q. Did you take any steps to see the actual corporate

5 address for Decorators Services of New York, Inc.?

6 A. Can you repeat the question?

7 Q. Did you look into -- did you look into seeing what

8 the actual corporate address was for Decorators Services

9 of New York --

10 A. No, I did not.

11 Q. (Continuing.) -- Inc., I will say.

12 And did you check to see if Decorators Services

13 of New York, Inc. was still a viable corporation?

14 A. All I know is somebody said we need a corporate name

15 to put on, we put in there, we didn't do any checking

16 whatsoever.

17 Q. And your partners in there were Chris and James, two

18 attorneys; is that correct, at the time?

19 A. Repeat the question?

20 Q. And at the time had you made that decision without

21 checking, your two partners were both attorneys; is that

22 correct?

23 A. Are you asking if I checked with DSNY or checked with

24 my partners who were attorneys?

25 Q. At the time -- let me make this question easier

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562

1 because it's late for all of us.

2 At this time when the domain name was purchased,

3 with the registrant listed as DSNY, just those four

4 letters, do you know if either Chris or James checked to

5 see if this corporate entity you spoke of, Decorators

6 Services of New York, Inc. was still a viable, functioning

7 corporation in New York?

8 A. I think that you asked that question, no, we didn't

9 do any research into the corporation.

10 Q. Now, you were here for Mr. Ronemus' opening

11 statement; is that correct?

12 A. Yes.

13 Q. And Mr. Ronemus referred to Decorator Services of New

14 York as a shell corporation, did you hear that?

15 A. I did not hear him say shell corporation. I'm very

16 familiar with corporations because I do real estate and I

17 know every corporations --

18 Q. Okay.

19 Do you know if there was ever any stock issued,

20 any stock issued for the corporation Decorator Services of

21 New York, Inc.?

22 A. No.

23 Q. And do you know if there was an agent for service of

24 process for Decorator Services of New York, Inc.?

25 A. Other than knowing DSNY, Inc. or Corp. or anything, I

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563

1 knew nothing about it. Just know it was a vacant name,

2 that's it.

3 Q. And did you discuss anything to do with the corporate

4 entity with James Wang, an attorney?

5 A. Repeat that?

6 Q. Did you discuss the formation of a corporate entity

7 with James Wang, who is an attorney?

8 A. Yeah, they advised not to start a new corporation

9 until we realized our idea would actually work and maybe

10 one day in hopes to make money.

11 Q. And did your idea or your -- so it was just an idea;

12 is that correct?

13 A. Correct.

14 Q. And did you and James and Chris have any written

15 agreement as between yourselves what would happen?

16 A. I don't remember. I tried looking for records,

17 couldn't find any of them.

18 Q. Did the three of you have or have any -- do you

19 recall any written agreement?

20 A. I don't recall a written agreement.

21 Q. And was there ever an e-mail address for --

22 associated with this domain name?

23 A. No, there was not.

24 Q. And did you ever ask or tell your father about the

25 use of what you say is the corporation DSNY as the

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(Page # 706,707,708)

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D. Rubens - Cross/Mr. Ronemus

706

1 THE COURT: You already answered his question.

2 Next question.

3 BY MR. RONEMUS:

4 Q. Is there text surrounding where she put that arrow on

5 that page?

6 A. Yes, just basically the HTML code telling it that

7 it's all capitals, that it's in an Ariel font and the size

8 and that's it.

9 Q. So you never used the metatag to try to highlight

10 Hampton Locations or Hamptons Locations in your parents'

11 web page?

12 A. Never. It just has these words inside the web site.

13 Q. I'll ask you to explain exhibit 122 which is your

14 parents' interior design web page?

15 THE COURT: I'm not going to have him just

16 explain an exhibit. You'll have to ask questions.

17 BY MR. RONEMUS:

18 Q. Tell us what that is, first of all?

19 A. This is a printout of my parents' web site DQNY.com.

20 This was printed out 7/5/04, but it's pretty much the same

21 as what it's always been.

22 Q. When you say a printout, what do you mean a printout

23 of a web site?

24 A. Somebody, I guess the plaintiffs, went from page to

25 page of the web site and every page they clicked and

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707

1 printed out a page.

2 Q. So how many pages, at that time, were there in your

3 parents' web site?

4 A. They didn't print out all the portfolios of their

5 design work. Without counting them, it's about 30 pages

6 in here.

7 Q. Can you refer to that exhibit and show us what one

8 would find when they went to your parents' interior design

9 web site?

10 A. The first page would be the home page and then

11 there's a bar that's been cut off a little but it has

12 home, portfolio, designers location and contact us.

13 On the top, this is like where the page name is

14 DQNY. On the bottom it shows the files that the pages

15 were kept at.

16 So the first page is www.DQNY and then as you go

17 further the file names get a little bit longer, more

18 complicated. I don't know how to make them more condense.

19 Q. What are the different tabs or locations that someone

20 can go to in that web site?

21 A. There's one location tab which would basically bring

22 you to the location page. Give me a second to find it.

23 It would bring you to the location page that

24 had -- actually I realized today that has an S on this

25 version that was printed.

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708

1 Q. When you say a location page, what is the location

2 page at that time in your parents' web site, what was the

3 purpose of that?

4 A. If you go to this page 1, it leads to another sub

5 page that has more information on the house they built in

6 the Hamptons. It has tabs on it such as sunsets,

7 interior, exterior, location, tear sheets and I believe

8 it's cut off here. It would either say availability or

9 contact list.

10 Q. Other than the location page, what other pages were

11 contained within the web site?

12 A. The other pages that were contained in the web site,

13 as I said, the home page that talks about their interior

14 design talents, a portfolio which at that time probably

15 had a couple if I had to guess 10 pages with maybe 50

16 photos on each house they designed, and a designer page.

17 It's in here. It has a picture of my mother and father

18 and it just gives a background when they started their

19 interior design business 20 years ago and the location

20 page and then a contact list.

21 MR. RONEMUS: Thank you.

22 (The witness resumes the stand.)

23 BY MR. RONEMUS:

24 Q. At any time, Darrell, have you been involved as a

25 locations scout or involved in a locations scouting

A-204




(Page # 528,529)A-205



Grigor - Cross/Mr. Ronemus528

1 bill is, but it looks like I billed $900.

2 Q. So you billed $900 for overtime. You don't have a

3 copy of the bill that you sent to that company?

4 A. It was around. I don't know where it is now.

5 Q. Do you have a file that pertains to this rental on

6 that day that contains anything other than that manila

7 folder?

8 A. That's it.

9 Q. That's your entire file and the bill you sent for the

10 overtime was with that manila folder, but now you don't

11 know where you put it?

12 A. It was here. It was in here. I don't know where it

13 is now.

14 Q. Other than the bill for overtime, was there anything

15 else that you kept with that file that you don't have now?

16 A. What I usually do is I keep the FedEx. If I FedEx, I

17 keep the receipt for the FedEx. That will go in the

18 envelope. Any kind of receipts or anything, it would just

19 go into the envelope and I write down the numbers and

20 everything.

21 Q. You don't have any FedEx receipts or any other type

22 of receipts?

23 A. Yes. I had one. It was here. I don't know where it

24 is now. It was here.

25 Q. So after Mr. Rubens indicated that you owed him for

A-205



Grigor - Cross/Mr. Ronemus529

1 the overtime, and you sent a bill to the company and they

2 paid you for the overtime, did they pay you what you

3 billed them?

4 A. I shot at another house so they paid me monies for

5 that, too.

6 What was the question?

7 Q. Did they pay you the money that you billed them for

8 the overtime?

9 A. Yeah, I believe they did.

10 Q. And you kept that money, correct?

11 A. Yes, I did.

12 Q. Now, at some point, did you have a second

13 conversation with Mr. Rubens, Richard Rubens?

14 A. I can't remember.

15 Q. You don't remember any other conversations you had

16 with him following that conversation about the overtime

17 you just told us about?

18 A. It's been so many years ago, I don't really remember.

19 Q. Didn't you testify on direct that you were on the

20 telephone with him and your husband got on the telephone?

21 Do you remember when you told us that last week?

22 A. Yes, we were on the phone, but that was after I

23 realized that he was part -- I had all the Rubens' names

24 together and I called him to see if he had anything to do

25 with this site. But I don't know if I talked with him in

A-206



TRIAL TRANSCRIPT OF RICHARD RUBENS(Page # 871,935,936,951,952)

A-207



R. Rubens/Direct-Weiss

871

1 A. I never saw a business card of Hamptons Locations,

2 Mrs. Nancy Grigor Griffith.

3 Q. At no time?

4 A. At no time.

5 Q. Do you see one there on Exhibit 18, sir?

6 A. I'm not sure if this is a business card.

7 Q. Would you please take a look at that orange and black

8 card that we have marked as Exhibit 171.

9 I'm holding up a copy.

10 A. Oh, this?

11 Q. Right.

12 Did you ever see anything that looked like that

13 prior to court today?

14 A. No.

15 Q. Now, sir -- I'm sorry.

16 Did you have something to add?

17 A. No.

18 Q. Yesterday we were talking about the Black Book, and

19 your listing in the Black Book for a magnificent house,

20 and home.

21 And I wanted to ask you a couple of questions

22 about that. We have marked that for identification as

23 Plaintiff Exhibit 90.

24 MS. WEISS: I don't think it has been admitted

25 yet into evidence, your Honor.

A-207



R. Rubens/Cross-Ronemus

935

1 Q. Could you say approximately how frequently you have

2 done that over those years?

3 A. In total?

4 Q. Just an average per year.

5 Whatever your best estimate is, how often you

6 have done it --

7 A. Well, sometimes we do, like, two shoots a season.

8 It's mostly seasonal.

9 It's a seasonal house. We close the house as

10 soon as it gets cold, and we open it as soon as it gets

11 warm.

12 And some seasons we do a couple shots, and some

13 seasons we do six or more shoots.

14 Q. Did you hear Ms. Grigor testify that she taped a card

15 to your home sometime, I believe, in 1998?

16 A. No.

17 Q. Did you ever find a card of --

18 A. Excuse me.

19 There was a day when Ms. Griffith was on the

20 stand and I wasn't here.

21 I was having car problems.

22 Q. Okay.

23 Are you aware that Ms. Grigor has given evidence

24 in this case that she went to your Southampton home and

25 taped a card to your home at some point in time?

A-208




936

1 A. I'm aware that they were alleging something like

2 that.

3 Q. Have you ever seen a card of Ms. Grigor's taped to

4 your home?

5 A. Absolutely not.

6 Q. Since the time your home was built, have people taken

7 photographs of your home?

8 A. Yes.

9 Q. And approximately how frequently would you say people

10 photograph your home?

11 A. Very frequently.

12 Q. And for what purposes is that done?

13 A. Sometimes people come over by boat and they just take

14 pictures of the house.

15 We are very flattered. It's a unique house, and

16 we have a lot of people coming over taking photographs.

17 Q. Have you had other location scouts come to your home

18 and take photographs?

19 A. Yes.

20 Q. Have you filmed documentaries at your home, or have

21 documentaries been filmed at your home?

22 A. No.

23 Q. And television commercials, if you know?

24 A. I believe so.

25 Yes.

A-209




951

1 2000, when you first learned about it, that Darrell had

2 used the name DSNY for that domain name?

3 A. No, I didn't.

4 Q. At any time between July of 1999, when Ms. Grigor

5 claims she was at your house and took photographs, and

6 June 12th of 2000, when she called and said she had a

7 shoot for the next day, did you ever speak to Nancy Grigor

8 at any time between those two dates?

9 A. No.

10 Q. Is that right, June 12th was the phone call when you

11 were on your way driving back to the city, June 12th of

12 2000?

13 A. Yes, you are right.

14 Q. And the shoot was the next day?

15 A. The 13th.

16 Q. Okay.

17 Had you ever met her before her phone call to

18 you on June 12th?

19 A. No.

20 Q. Had she ever arranged any shoots at your home at any

21 time before June 13th of 2000?

22 A. No.

23 Q. Had anyone ever called you and said that they were

24 looking at your house based upon a book that was provided

25 to them by Ms. Grigor at any time before the date of that

A-210




952

1 shoot?

2 A. No.

3 Q. Has anyone ever told you that they saw the book

4 that's in evidence here that Ms. Grigor claims she made?

5 Has anybody ever told you that they saw that

6 book?

7 A. No.

8 Q. Let's talk about your letter you wrote to

9 Mr. Griffith and the plaintiff on July 21st.

10 Do you have that letter in front of you?

11 A. Yes.

12 MR. RONEMUS: Your Honor, may I just show it to

13 the jury as he reads it?

14 THE COURT: Yes.

15 What exhibit is this?

16 MR. RONEMUS: Exhibit 39.

17 BY MR. RONEMUS:

18 Q. Could you read that letter to the jury.

19 A. Sure.

20 First of all, it's on my letterhead, Richard

A-211




(Page # 572,573,574,717,718)A-212



. Rubens - Direct/Ms. Weiss

572

1 say two days before I decided to hook up Hampton Locations

2 to go directly to DQNY.com.

3 Q. Why did you do that?

4 A. Why? Because I always try helping my parents out

5 with their Web site. They designed a beautiful house in

6 Southampton in 1982. I was looking always to help them,

7 and I figured, you know, what Hampton locations describes

8 their house in the Hamptons so it would be a lot easier

9 sending that link to a location company to say hey, look

10 at our house in the Hamptons, it's a location in the

11 Hamptons that you can use in your portfolio. That's what

12 my thinking was behind that.

13 Q. Did you ever create a full Web site, an actual Web

14 site for www.hamptonlocations.com?

15 A. No, I did not. It was merely a link.

16 THE COURT: I didn't hear the last part.

17 THE WITNESS: It was just merely a link, it was

18 a link set up.

19 Q. So is your testimony that you began using it as a

20 link just a day or -- on or about April 18th?

21 A. The day or two before I sent Nancy the e-mail how can

22 we list with you, yes.

23 Q. Would you please look at that exhibit?

24 A. I got it all up here.

25 Q. You do?

A-212




573

1 A. I've seen it 101 times.

2 Q. Okay.

3 Calling your attention to Exhibit 20, at that

4 time you knew that there was a company called Hamptons

5 locations, didn't you?

6 A. No, I did not.

7 Q. Did you know that there was a Web site called

8 www.hamptonslocations.com?

9 A. I saw it after the fact, when I did a Yahoo search I

10 was searching for -- I think I first started searching for

11 scouting agencies and there was so many of them so I

12 narrowed it down to Hampton scouting agencies or

13 Hampton -- even locations scouting agencies. I think at

14 that time by doing all the focus in the Yahoo search

15 before Google, it narrowed down to like four, five sites

16 that came up as doing location shoots in the Hamptons or

17 scouting agencies in the Hamptons.

18 From there I quickly navigated from the link to

19 the e-mail and that's how I got the e-mail address.

20 Did I realize that when I sent it in to info at

21 hamptonslocations.com, I don't even think that I was

22 looking for that. Because I was just looking for

23 locations.

24 Q. On the day you e-mailed it you knew that there was a

25 Web site called hamptonslocations.com?

A-213




574

1 A. I really didn't look at her Web site. You basically

2 click on the link when you do a Yahoo search, the links at

3 that time were very long, I saw many exhibits, even on the

4 bottom of this there's a lot of links. It was HDP dot

5 portfolio. It went on for a long time. Her page was like

6 a four-page Web site. I saw "please list your location,"

7 "what is your contact," it was info at

8 hamptonslocations.com.

9 Q. Well, I notice -- so what you're saying, I'm sorry,

10 let me --

11 A. I can explain.

12 When I went to Jenny Lang's Web site and her Web

13 site says Hamptons locations and has a portfolio of

14 Hamptons locations do I look up in the URL and look to

15 check to see what their domain name is no, I go and see

16 the Web site, I don't look at what the domain name is, not

17 many people type in www dot. I click on a link, I got to

18 the web sites, and I did not check on the link on the top.

19 Q. So how do you explain that that e-mail says CC

20 DQNY.com?

21 A. Whenever I send out stuff relating to my parents'

22 business I will always do a blind CC or a CC.

23 Q. Let me show this to the jury as well, if I may.

24 And how did you know to send it to the blind

25 copy to H-A-M-P-T-O-N-L-O-C?

A-214




717

1 that indicate to you?

2 A. That indicates the day it was printed. It could have

3 been opened before, but it was definitely printed on

4 4/21/00.

5 Q. Tell us how you first discovered Nancy Grigor and

6 decided to send her that e-mail on April 18?

7 A. I'm sorry, repeat the question.

8 Q. How did you first discover the existence of

9 Ms. Grigor or her company and decided to send her that

10 e-mail on April 18?

11 A. I figured I would try to help out my parents a

12 little.

13 Their web site was DQNY which stands for Design

14 Quest, New York, which a lot of people know about.

15 They don't relate Design Quest to a location in

16 the Hamptons.

17 So one day a light bulb went off. I was at

18 work. I said, you know what, I might as well link the

19 hamptonlocation.com to the DQNY web site and let me -- at

20 that time, as I said, I don't think there was Yahoo. I

21 don't think there was Google. I did an internet search

22 maybe through Yahoo. I typed in scouting agencies and

23 came up with thousands of them, narrowed it down to

24 scouting agencies in the Hamptons, came up with a couple

25 of matches and I found the e-mail address and sent it to

A-215




718

1 the contact e-mail address and basically sent an e-mail

2 how can we list with you.

3 Q. When you sent that e-mail to Ms. Grigor, was it your

4 intention to steal her business as a location scout?

5 A. My intent was to send her the e-mail so she could see

6 my parents' house, as it clearly states in the e-mail how

7 can we list with you. Look at our house. How can we list

8 with you.

9 Q. When you were involved with your colleagues in

10 obtaining the domain name hamptonlocations.com, was it

11 your intent at that time to try to take business from

12 Ms. Grigor?

13 A. I didn't even know she was alive or existed.

14 Q. Have you ever at any time involved in this lawsuit

15 before up until today intended to take any business as a

16 locations scout or as a production company from the

17 plaintiff Nancy Grigor?

18 A. Never once.

19 Q. Have your parents ever intended to take any business

20 as a locations scout or a production company from the

21 plaintiff Nancy Grigor at any point in time?

22 THE COURT: Sustained.

23 BY MR. RONEMUS:

24 Q. Now, the hamptonlocations.com was purchased in July

25 of '99, I believe?

A-216



TRIAL TRANSCRIPT OF DARRELL RUBENS(Page # 564, 565, 566,567,568,709, 710)

A-217




564

1 registered owner of the domain name?

2 A. Well, I did finally tell him after the plaintiff's

3 husband called them up threatening him, he called me to

4 find out what was going on. I didn't even realize this

5 was happening.

6 Q. So is it your testimony that you did not tell your

7 father until after Mr. Griffith, Michael Griffith spoke to

8 your father?

9 A. To the best of my knowledge, yes.

10 Q. Did there come a time when you received a letter from

11 Robert Roomian, the trademark attorney?

12 A. Yes.

13 I saw the letter, I replied to the letter.

14 Q. Okay.

15 And that's what we already have in evidence

16 today; is that correct?

17 A. I got that.

18 Q. How did you get it?

19 A. Fax.

20 Q. I'd like to you take a look at those two documents

21 and identify them.

22 A. The big one or the small one?

23 Q. The small one.

24 A. I have them both here.

25 Q. And which letters are you looking at? Can you tell

A-217




565

1 the Court what the exhibit numbers are?

2 A. Exhibit -- there's a lot of exhibits that are up

3 here. The yellow one?

4 Q. Yes. The yellow tags.

5 A. The yellow one is Exhibit 30 and my letter that I

6 responded to her attorney was on the 31st.

7 MR. RONEMUS: Exhibit Number 31?

8 A. Yeah. Sorry, Exhibit Number 30 and Exhibit Number

9 31.

10 Q. Thank you.

11 Now, before writing that letter that you wrote,

12 did you consult with an attorney?

13 A. I consulted with three attorneys.

14 Q. So, you testified that you received the letter from

15 Mr. Roomian, you responded the same day, and during that

16 day you consulted with three attorneys?

17 A. My best friends who I was partners, who we thought of

18 this idea, they're my best friends, I see them every

19 single day and at that time I don't know if I faxed it

20 over to them or e-mailed, I don't know what the technology

21 was that I faxed them.

22 Q. Who was those three best friends?

23 A. I believe Chris Spuches saw a copy, James Wang saw a

24 copy and Eddie Wang saw a copy.

25 Q. Did you write this letter yourself or did you ask for

A-218




566

1 their input?

2 A. I think that I started to write it myself and then I

3 asked them for some input.

4 Q. And where were they at the time that you asked them?

5 A. I don't remember if it was over the phone. I think

6 actually -- I don't know if it was over the phone or if we

7 saw each other in person.

8 Q. Did you fax it to each of them?

9 A. As I said, I don't remember if I faxed it, e-mailed

10 it. We all live close to each other, so I could have

11 possibly sat down and discussed it.

12 Q. And was Chris working at a law firm at the time?

13 A. No, he was not.

14 Q. Was James working at a law firm at the time?

15 A. No, he was not.

16 Q. Is Eddie Wang a lawyer?

17 A. I believe that he did pass his bar but he's not a

18 lawyer, he's not practicing law.

19 Q. And did -- had you ever been -- let me strike that.

20 Were you familiar with the Anticybersquatting

21 Act of 1999 at the time that you received this letter from

22 Mr. Roomian?

23 A. Not whatsoever.

24 Q. And do you have any reason to believe that Chris or

25 James or Eddie were familiar with that act?

A-219




567

1 A. I don't know what they were taught in law school.

2 Q. And do you know if any of them looked up that act? I

3 mean, looked it up or did any legal research to see what

4 that was all about?

5 MR. RONEMUS: Objection.


7 Q. Do you remember having any meeting with either Chris

8 or James or Eddie personally on this day?

9 A. On the day that I received the letter, I am looking

10 at the dates now, I received the letter it says the 25th,

11 it looks like I wrote the 25th.

12 Did I meet with any of them? I'm sure I know I

13 met with Chris one of the days to go over it.

14 Q. You did one of the days?

15 A. As I said, we lived two blocks from each other.

16 Q. But would you take a look at the dates again, because

17 earlier I thought you testified that you replied the same

18 day?

19 A. No. I said I wrote it the same day.

20 Q. You wrote it the same day?

21 A. Yes.

22 Q. Did you send it out the same day?

23 A. No, I didn't.

24 Q. So you wrote it and then you spoke to Chris after; is

25 that correct?

A-220




709

1 business?

2 A. Never in my life.

3 Q. Have your parents ever been involved as a locations

4 scout or in the locations scouting business?

5 A. They have never been involved in locations and

6 scouting.

7 Q. Have you ever been involved in productions such as

8 producing commercials or shoots at any different

9 locations?

10 A. No, I have never.

11 Q. Have your parents ever been involved in productions

12 and producing shoots at any locations?

13 A. They're not producers, no.

14 Q. Now, you were asked a question by Ms. Weiss yesterday

15 about the response you gave to Mr. Roomian's letter?

16 A. Yes.

17 Q. And I believe you stated that you spoke to three

18 different attorneys before you sent that letter back to

19 him?

20 A. My three best friends, yes.

21 Q. These are three people there were involved in the

22 venture you explained yesterday?

23 A. Yes, they were.

24 Q. Did you discuss your response to Mr. Roomian's letter

25 with these three attorneys?

A-222




710

1 A. As soon as I got the letter, as I mentioned

2 yesterday, I think it was that day or the following day I

3 consulted with them and they basically said this was total

4 BS.

5 Q. Did they look at the letter that you sent back to

6 Mr. Roomian before you sent it?

7 A. Yes, they did.

8 Q. It's your testimony that after you sent that letter

9 back to Mr. Roomian, you never received any response from

10 him?

11 A. Correct.

12 I even said please feel free to call me and all

13 my contact information was on there.

14 Q. Do you know when your parents first started doing

15 shoots at their home?

16 A. I know they started building in '82 and definitely by

17 the time it was finished in '83 they started having

18 fashion shoots at the house.

19 Q. Have you been present at any of those fashion shoots?

20 A. A couple, yes.

21 Q. Do you know how many shoots they do per year?

22 A. I never really keep track of it. I know there's been

23 some years where they do none, and a couple of years where

24 it's four, five, something like that.

25 Q. What do your parents do for a living?

A-223



TRIAL TRANSCRIPT OF ROBERT ROOMIAN

(Page # 473-474)

A-224



Roomian - Cross/Mr. Ronemus

473

1 owned nor had a Web site promoting her business.

2 It was not until after Darrell J. Rubens sent

3 e-mails on April 18, 2000, to scouting agencies.

4 Do you see where Mr. Rubens wrote that?

5 A. Yes, I do see it.

6 Q. Do you have any information?

7 A. I have no knowledge of what the homeowners knew or

8 didn't know.

9 Q. Okay.

10 You never spoke to Darrell Rubens, by the way,

11 did you?

12 A. I did not.

13 Q. Or Richard or Barbara Rubens?

14 A. I did not.

15 Q. No. 11, the e-mails attached dated April 18, 2000,

16 clearly stated, quote, we rent our house out for photo,

17 film and commercial shoots. How can we list with you?

18 Please look at our house at www.hamptonlocations.com.

19 That essentially states what he wrote in the

20 e-mail to Ms. Grigor on April 18, 2000.

21 Is that true?

22 A. Yes, it is.

23 Q. Okay.

24 And No. 12, after the e-mail was sent to

25 Ms. Grigor --

A-224




474

1 MR. RONEMUS: Withdrawn.

2 BY MR. RONEMUS:

3 Q. After this e-mail on April 18, 2000, your client

4 called the owners of the house featured in

5 hamptonlocations.com on June 12th and booked a male

6 underwear photo shoot for June 13, 2000.

7 Do you see where he wrote that?

8 A. Yes.

9 Q. And you understand that that's true?

10 A. I understand the circumstances under which that

11 happened, as my client has sprained them to you.

12 Q. And you understand that your client arranged for a

13 shooting to be done at their house on June 13, 2000, as

14 stated in Mr. Rubens' letter.

15 Correct?

16 A. I don't know the exact date.

17 But I know that a shooting did take place there.

18 Q. Okay.

19 Then Mr. Rubens says if you have any further

20 questions, please feel free to call me, sincerely, Darrell

21 Rubens.

22 And you never called him after that, right?

23 A. That's correct.

24 Q. Has your client told you that she started a separate

25 lawsuit in the Southampton justice court against my

A-225




(Page # 719,720)

A-226




719

1 A. Correct.

2 Q. And is it your testimony that it expired two years

3 after that?

4 A. It was a standard two year registration.

5 Q. And you disconnected that address from your parents'

6 web site when?

7 A. It was on or about July 24th.

8 Q. Of?

9 A. 2000.

10 Q. About a year after the web site, the domain name was

11 purchased?

12 A. A year after, approximately, yes.

13 Q. About a little less than three months or so -- a

14 little more than three months after you linked it to your

15 parents' web site?

16 A. Yes. The first link was April and then it was

17 disconnected in July.

18 Q. After it was disconnected in July 2000 -- by the way,

19 why did you disconnect that?

20 A. Why? This. We were being brought into court. We

21 were getting calls threatening us.

22 MS. WEISS: Objection, your Honor.

23 THE COURT: He's already testified to it in

24 part. I'll permit it.

25 He was asked why he disconnected it and he said


A-226



720

1 he was getting calls -- leave it at that -- about the use

2 of the mark. You can develop it.

3 Threat, number one, is a conclusion. And,

4 number two, I don't know how many conversations he had.

5 The objection is sustained as to the term

6 threats and the jury will disregard that.

7 BY MR. RONEMUS:

8 Q. Did you receive -- can you tell us why you

9 disconnected the link from your parents' web site in July

10 without using the word threats?

11 A. My parents told me that Nancy and her husband were

12 absolutely crazy and to get it off now.

13 Q. So your parents asked you to take it off?

14 A. Yes, they did ask me.

15 Q. When they asked you to take it off in July, did you

16 disconnect that link when they asked you to take the off?

17 A. Yeah.

18 I just removed the link. The page was back to

19 its original location page not found.

20 Q. Did you monitor what happened to that link from that

21 time when you disconnected it until the time that the

22 registration with DSNY expired?

23 A. Everything.

24 Q. What did you notice during that approximately one

25 year until that expired in July of 2001?

A-227




(Page # 888,889)

A228




888

1 2000?

2 MR. RONEMUS: I object to what Judith Robbins

3 knew.


5 BY MS. WEISS:

6 Q. Had you communicated to Judith Robbins that there was

7 a Web site www.dqny.com prior to July of 2000?

8 A. Yes.

9 Q. How did you communicate that to Judith Robbins?

10 A. By phone.

11 Q. When did you communicate that to --

12 A. Oh, I'm not sure of the date.

13 Q. Was it shortly after you put up the Web site?

14 A. I'm not sure.

15 Q. Do you know when the Web site www.dqny.com was up and

16 running with photographs?

17 A. I'm not sure.

18 Q. Yesterday, I believe it came up that at a certain

19 point in time you instructed Darrell to disconnect the

20 link that went from the domain name with the -- the domain

21 name Hampton Locations, the one without the S, the domain

22 name that linked over to www.dqny.com.

23 At some point you instructed your son

24 Darrell Rubens to disconnect to link. Is that correct?

25 A. Yes.

A-228




889

1 Q. And when, to the best of your recollection, do you

2 think you gave him those directions?

3 A. It was after the letter.

4 Q. The letter you wrote?

5 A. Yes, the 21st, the letter of the 21st.

6 Q. How long after the letter?

7 A. I'm not sure when he did it.

8 But it was after the argument that promoted the

9 letter.

10 Q. Do you believe it was sometime in July of 2000?

11 A. Yes.

12 Q. End of July, more or less, is what you were thinking?

13 A. I believe so.

14 Q. Okay.

15 MS. WEISS: I'd like to show the witness a

16 document filed in this case called Richard Rubens

17 Declaration in Support and see if he recognizes his

18 signature on this, your Honor.

19 It's from September 4, 2001. It's not an

20 exhibit on our exhibit list, but I did want to find out if

21 this would refresh his recollection, your Honor.

22 May I show it to him and counsel?

23 THE COURT: Yes, you may.

24 MS. WEISS: And I believe it's No. 5 -- pardon

25 me -- No. 9 on the court's docket.

A-229



TRIAL TRANSCRIPT OF MICHAEL GRIFFITH(Page # 1065)

A-230



Griffith/Redirect-Weiss

1065

1 MR. RONEMUS: Judge, I object. If she's going

2 to read it, read it.

3 THE COURT: Just read it.

4 MS. WEISS: This would be Mr. Griffith speaking.

5 A year ago, I said give me the name, and he

6 said -- meaning Richard Rubens -- he'd give me the name,

7 but he won't give me the money. The end.

8 We have resolved this.

9 THE COURT: That's one way that evidence can be

10 presented by stipulation, both parties agree to something.

11 That's one item of evidence that you will consider with

12 all the other evidence and attach such weight as you deem

13 appropriate.

14 Are there additional questions of Mr. Griffith?

15 MS. WEISS: Yes. Just a couple.

16 REDIRECT EXAMINATION

17 BY MS. WEISS:

18 Q. Mr. Griffith, we were talking about the dates you

19 testified to.

20 You said you talked about your wife taping her

21 Hamptons Locations business cards on the Rubens' house,

22 and you stated winter of '98, and spring of '99.

23 Do you remember that?

24 A. Yes.

25 Q. And then you talked about the time that Nancy and

A-230



TRIAL TRANSCRIPT OF RICHARD RUBENS(Page # 953,54,55,56)

A-231




953

1 fax and via registered mail. It says, Dear

2 Mr. and Mrs. Griffith, I must tell you that I'm extremely

3 upset about the threats that you made to me today. I do

4 not need anyone telling me, quote, I'm a criminal

5 attorney. I have a location for you for three days for $2

6 or $3,000 a day, but we will not refer your location

7 unless you give up your name Hampton Locations, and not

8 only will you lose business, we will tie you up in

9 expensive -- extensive, expensive litigation, end quotes.

10 While --

11 Q. I'm sorry to interrupt you.

12 Why did you write that?

13 A. I wrote it just to document our phone call that day.

14 Q. Okay.

15 Go ahead.

16 A. I went on to say, well, that sounds like extortion to

17 me. I am in the field of architectural and interior

18 design, and I have been using our showroom location, and

19 our residential locations for film, print, video, or any

20 other type of related situations for a fee since 1972.

21 In 1983, when my Hampton home was built, I

22 continuously offered this unique site as a Hampton

23 location. I deal direct with the user who through various

24 -- I'm sorry, through the various location companies. I

25 own the internet site Hampton Locations. This site is

A-231




954

1 used for my Hampton location which, as you already --

2 which you or anybody else knows, features only my home and

3 my architectural and interior design service.

4 My home has been referred by countless people as

5 a Hampton location since 1983, and I will not capitulate

6 to extortion or other threats to make me give up the site.

7 Furthermore, I withdraw my offer to sell you the site.

8 Q. What did you mean by withdraw your offer to sell the

9 site?

10 A. Well, I was angry and I just formally withdrew the

11 offer that day. I said I would give it to you for $5.

12 Q. That's what you meant when you said you withdrew your

13 offer to sell?

14 A. Yes.

15 Q. Back up in that paragraph you said I own the internet

16 site Hampton Locations.

17 What did you mean by that?

18 A. I didn't mean it technically, like I tell people I

19 own my car, but it actually belongs to the bank to which I

20 lease it from.

21 Q. I'm sorry?

22 Did you consider yourself to be the owner of

23 hamptonlocations.com at that time?

24 A. No.

25 Q. Why did you write that I own the internet site

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955

1 hamptonlocations.com?

2 A. It was written as an angry type of letter and it was

3 just a short version of the long story.

4 Q. Had you ever considered yourself an owner of that

5 domain name since its inception in July of '99, until its

6 expiration in July of '01?

7 A. Never.

8 Q. Okay.

9 Just continue reading, please.

10 A. I offered to work with you in harmony. I advise you

11 that we do not in any way compete with each other, or are

12 we in any way doing the same thing.

13 We cannot cause you any financial hardship, but

14 you, in turn, can and possibly have caused us to lose fees

15 from shoots you have chosen not to give to us, such as a

16 shoot that you have threatened us with.

17 Therefore, it is you, not us, that have caused

18 damages. Do not forget that it was our e-mail to you that

19 introduced you to our location last year -- which is a

20 typographical error.

21 Q. What are you referring to there?

22 A. The famous e-mail of Darrell to Mrs. Griffith.

23 Q. And that's April 18th of 2000?

24 A. Right.

25 Q. So several months before this letter?

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956

1 A. Correct.

2 Q. Okay.

3 A. Don't forget that it was our e-mail to you that

4 introduced you to our location last year --

5 Q. Hang on.

6 Just start at that bottom paragraph.

7 A. Well, that's a mistake.

8 Last year is a mistake.

9 Q. Okay. I'm sorry.

10 Go ahead.

11 A. And has led to the recent one-day shoot on June 13,

12 2000.

13 This shoot was to pay us $2,500 plus overtime.

14 As of this writing, there is a small balance on the

15 overtime still due. I strongly suggest that you rethink

16 your position on this matter.

17 In the meantime, I will keep my ear to the

18 ground, as they say, so please do not interfere with any

19 contractual or potential contractual relations.

20 Q. And what did you mean by that?

21 A. Well, because Mr. Griffith also threatened to call

22 location companies and tell them that we don't have

23 permits to do shoots and different things like that.

24 Q. Did you ever receive a response from Mr. Griffith or

25 Ms. Grigor to this letter?

A-234



TRIAL TRANSCRIPT OF RICHARD RUBENS(Page # 958)

A-235




958

1 house was in good condition.

2 Q. At any time, have you ever had a business card which

3 said Hampton Locations?

4 A. No.

5 Q. Have you ever had any letterhead or stationery or

6 envelopes that said -- when I say you, I'm talking about

7 you or Darrell or Barbara.

8 A. I understand.

9 Q. Any letterhead or stationery or envelopes which said

10 Hampton Locations?

11 A. No.

12 Q. Have you ever had any bank accounts under


14 A. No.

15 Q. Did you ever make any profits, whatsoever, from any

16 business that was referred to you from the domain name


18 A. No.

19 Q. Or any shoots ever referred to you through that

20 domain name?

21 A. No -- yes.

22 Q. Who was that?

23 A. Ms. Griffith.

24 Q. And that's referring to the e-mail that Darrell

25 wrote?

A-235



TRIAL TRANSCRIPT OF JUDGE HURLEY

(Page # 730)

A-236



SIDE BAR 1-23-07 THE COURT

730

1 Now, the $2,800, we are going to delete that,

2 and the reason we are going to delete that, there will be

3 some reference to a dollar amount, it will just be a

4 dollar amount and the reason we are going to do that is

5 because I don't think the jury should hear that number.

6 I think that runs afoul of the theory, at least,

7 of 408, and it's completely unnecessary -- I shouldn't say

8 completely unnecessary. But it's unnecessary to the

9 reason that this item's being admitted, i.e. to show that

10 at some point during negotiations, Richard Rubens said

11 I'll give you the name. However, I'm not going to pay the

12 amount you are demanding in addition to giving up the

13 name. So I'm going to allow it for that limited purpose.

14 Now, in making this determination, I also looked

15 at the transcript. The transcript speaks for itself. I

16 juxtapositioned the transcript against 408. The advantage

17 to the defendants, if this information is placed before

18 the jury, is basically Mr. Griffith does not come off as a

19 sterling light.

20 He does make some threats which, presumably, are

21 the predicate for the legally extortion counterclaim

22 asserted by the plaintiffs, and the general tenor is bad,

23 plus there are also a number of misrepresentations in the

24 letter as to what the law is, but that's neither here nor

25 there

A-236



TRIAL TRANSCRIPT OF NANCY GRIGOR(Page # 311,312,313,314,395)

A-237



Grigor/Cross-Ronemus

311

1 July 8, 1999.

2 Correct?

3 A. Yes.

4 Q. So you knew, then, it was going to expire July 8,

5 2001?

6 A. Yes.

7 Q. Did you follow that and purchase that on the day

8 after it expired on July 9, 2001?

9 A. No.

10 Q. But it's your claim that as of that time, July of

11 2001, the Rubens were improperly -- Darrell and Richard

12 Rubens were improperly using that domain name, true, as of

13 the time it expired on July of 2001?

14 A. I believe so.

15 I believe so.

16 Q. Okay.

17 At some point after it expired on July 8, 2001,

18 you then purchased that domain name.

19 Correct?

20 A. Yes.

21 Q. And when was that?

22 A. It was May 12, 2002.

23 Q. So not quite, but almost a year after it expired?

24 A. Yes.

25 Q. So during that ten months, it was out there with no

A-237




312

1 owner.

2 Correct?

3 A. Yes.

4 Q. And it's your testimony that during that ten months

5 it was out there with no owner, if someone typed in by

6 mistake that domain name, they would get something that

7 obviously didn't go to your website, true?

8 A. Could I tell you what happened?

9 Q. Just during that ten months, if someone typed in

10 Hampton Locations looking for you, typed it in by mistake,

11 it certainly wouldn't come to your website?

12 A. No.

13 It didn't -- we didn't do the connection for the

14 website yet.

15 Q. You didn't own it yet.

16 You didn't buy it --

17 A. I didn't buy it -- I didn't know it was available

18 until then.

19 Q. Wait a minute.

20 You knew in February of 2000 it was registered

21 on July 8, 1999?

22 A. Yes.

23 Q. And you knew it was going to expire on July 8, 2001?

24 A. Yes.

25 Q. So you are telling us that you did not know until you

A-238




313

1 purchased it in May of 2002, approximately that ten-month

2 period, you did not know it was available.

3 Is that what you are telling us?

4 A. No.

5 I didn't know it was available. I assumed they

6 still had it because we were in these different lawsuits

7 and we were in court and we were doing all kind of motions

8 and everything --

9 Q. Ms. Grigor, I'm just asking you to please answer the

10 question, if you can.

11 At any time between when it expired on July 8,

12 2001, and when you purchased it in May of 2002, did you go

13 on to that website to determine what the status of that

14 domain name was?

15 A. No.

16 Q. But it's your testimony that you were concerned that

17 people were being misdirected by going on that website by

18 mistake, correct?

19 A. Before that they were going on their website and

20 under construction, and I was in the middle of getting a

21 new designer, a website designer.

22 So I didn't have time to just go constantly

23 looking at the website.

24 Q. Because you knew it was going to expire in July of

25 2001, right, July 8, 2001, you knew that?

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314

1 A. Yes.

2 Q. Is it your testimony you were not concerned about

3 what happened to people who were looking for you but typed

4 in a wrong name between July 8, 2001 and May of 2002, when

5 you purchased it?

6 You were not concerned over that ten-month

7 period?

8 A. Yes, I was.

9 Q. And what efforts did you make, if any, to try to

10 obtain that website for yourself during that ten-month

11 period?

12 A. I left it up to my website people, and she finally --

13 she didn't even know it was available.

14 And when she called me, I called my attorney,

15 and because --

16 Q. Wait a minute. Please. Please.

17 I hate to interrupt you, but I just -- I can

18 only focus on one thing at a time.

19 So it's your testimony you were concerned about

20 something being misdirected to that website during that

21 ten-month period, true, after they -- after it was no

22 longer registered to DSNY?

23 A. Right.

24 Q. And it's your testimony that you left it up to your

25 website person to try to obtain this domain name after it

A-240




(Page # 1082)

A-241



THE COURT January 24, 2007

1082

1 few things, however, which I will not reserve decision on.

2 One of the claims of the defense is whether this is a

3 generic mark. Many times there are factual issues that

4 are involved in whether a mark should be labeled as

5 generic or descriptive and so forth. Here I find as a

6 matter of law, and this is not a generic mark, I find that

7 it is a descriptive mark.

8 A descriptive mark is not entitled to protection

9 unless it has secondary meaning. Secondary meaning in

10 this case is clearly an issue for the jury. I'm going to

11 withdraw that. What I'm going to say is I find that this

12 is not a generic mark. Accordingly, I'm not going to

13 present to the jury the question of whether this is a

14 generic mark.

15 I'm going to tell the jury that it's a

16 descriptive mark. I'll tell the jury it will be their

17 function to determine whether the mark is protectable, due

18 to secondary meaning, in other words, has the mark

19 acquired distinctiveness in the marketplace. And I will

20 tell them that's something for them to decide.

21 The reason I say that now is, this has been

22 discussed before, and I'm going to structure the proposed

23 charge consistent with what I have just said. Also, I

24 think it's worthwhile to say this, although I think we

25 have said this before, as a matter of fact, I know we have

A-241



TRIAL TRANSCRIPT OF NANCY GRIGOR AND DARRELL RUBENS(Page # 215,216,217,518,519,520,521,522,712,713,714)

A-242



Grigor/Direct-Weiss

215

1 A. I just don't remember the dates of the cases, and

2 there were so many motions and court cases and court

3 documents going back and forth.

4 I just don't remember the exact dates of the

5 court documents.

6 Q. I see.

7 Did there come a time when there were, to your

8 knowledge, any settlement discussions between your

9 attorney, Michael Griffith, and the defendants, Darrell

10 Rubens and Richard Rubens, or either one of them?



13 BY MS. WEISS:

14 Q. Are you familiar with someone named Jenny Landey?

15 A. Yes.

16 Q. And who is Jenny Landey?

17 A. She has a company called Jenny Landey Productions,

18 and she does production and she has some locations.

19 Q. Does she have a website?

20 A. Yes.

21 Q. You visited her website?

22 A. Yes.

23 Q. Can you describe what you have seen on her website?

24 A. She's got some photos of some jobs she's done, and

25 she has different divisions, categories.

Grigor/Direct-Weiss

A-242



216

1 She has Hamptons location, she has New York

2 location, she has, I think, LA location. She has

3 locations throughout the country, and there are different

4 divisions of locations.

5 Q. Do you know what her website says?

6 A. WWW.JennyLandeyProductions.com.

7 Q. Have you seen her advertisements?

8 A. Yes.

9 Q. Is there anything about her particular advertisements

10 that you feel competes with your company, Hamptons

11 Locations?

12 A. Well, she's not taking the name Hamptons.

13 She has her own name, her own website,

14 www.JennyLandeyProductions.com, and she's not using

15 Hampton Locations or Hamptons Locations, or any form of it

16 to direct anybody to her website.

17 She's using her name of her company. So...

18 Q. Okay. I understand.

19 How about Andrew Blatz, are you familiar with

20 Andrew Blatz?

21 A. Yes.

22 Q. And what sort of business is he in?

23 A. Same thing, production, location scouting.

24 Q. What is the name of his company?

25 A. LMI.

Grigor/Direct-Weiss

217

A-243



1 Q. Does that stand for something, those letters?

2 A. I think it's Location Management, Inc.

3 Q. And does he have a website?

4 A. Yes.

5 Q. And have you looked at his website?

6 A. Yes.

7 Q. And does he use phrases like Hamptons Locations or

8 Hampton Locations on his website?

9 9 A. Yes, Hampton Location, he has it into a division of

10 11 10 where -- he has locations in Manhattan. He's got

12 13 11 locations in different divisions of the country.

14 15 12 Q. And as far as you know, does he have any website, or

16

17 13 has he ever had any website that uses the word Hampton

18 19 14 Locations or Hamptons Locations in his website?

20 21 15 A. No.

22 23 16 MR. RONEMUS: Objection.

24 25 17 You mean in the URL, itself, in the domain name

26 27 18 or in the website?

28 29 19 That's not what I'm clear on.

30 31 20 THE COURT: Why don't you make that clearer?

32 33 21 THE WITNESS: They are not advertising my

34 35 22 name --

36 37 23 THE COURT: Wait a minute.

38 39 24 There's no question.

40 41 25 BY MS. WEISS:

A-244



Grigor - Cross/Mr. Ronemus

518

1 Google, that's not like a big ad. People have the words

2 in their metatags and search engines. Because she has

3 that division, she comes up. She's not advertising as

4 Hamptons Locations.

5 Q. She's not advertising?

6 A. No, she's not. She's Jenny Landey Productions.

7 Q. Now, Mr. Roomian testified today that -- withdrawn.

8 Are there other location companies who have used

9 the words Hamptons location or Hampton locations, as far

10 as you're aware?

11 A. I don't know.

12 Q. You're not aware of any other location companies who

13 used that term in promoting their business?

14 A. I'm not aware.

15 THE COURT: At this point, ladies and gentlemen,

16 we will take the afternoon recess. Please don't discuss

17 the case. We will see you in 15 minutes.

18 (The jury is excused.)

19 (Recess taken.)

20 (After recess.)

21 THE COURT: If you would resume the stand,

22 please.

23 (The witness, Ms. Grigor, resumes the stand.)

24 (The jury is present.)

25 THE COURT: If everybody would be seated,

A-245




519

1 please.

2 We will continue with the cross-examination.

3 BY MR. RONEMUS:

4 Q. Ms. Grigor, you testified that you're aware that when

5 you get on Jenny Landey's web site, that the words

6 Hamptons locations comes up in her web site, correct,

7 you're aware of that true?

8 A. Yes.

9 Q. And Holly Lee is another location company in

10 competition with you, true?

11 A. I think so. I'm not sure.

12 Q. Well, are you aware that when you got on Holly Lee's

13 web site, that Holly Lee is a location company and uses

14 the words Hamptons locations to promote her services?

15 A. I'm not aware of that.

16 Q. Have you ever typed the word Hamptons location into

17 Google and seen the location companies that come up?

18 A. Mostly me. I don't see -- the last time I Google'd

19 I'm pretty much alive.

20 Q. Let me show you what's been marked as Defendant's

21 Exhibit PP.

22 (Exhibit handed.)

23 Do you see this is a Google search where the

24 words Hamptons locations are typed in as a search?

25 A. That's what it says up on the top left.

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521

1 Q. Page 2.

2 A. I don't see it.

3 Q. What's the first result on page 2?

4 A. It has my name, Hamptons Locations. That's me.

5 Q. I said page 2.

6 Do you see on page 2 the company Holly Lee

7 Productions comes up when the search for Hamptons

8 locations was performed?

9 A. I see www.hollyleeproductions, and she probably has

10 Hamptons in her search engine somewhere or her metatags,

11 but her name is Holly Lee Productions.

12 Q. Is Holly Lee a company that performed search and

13 locations in the Hamptons?

14 A. I'm not familiar with her.

15 Q. You don't know who Holly Lee Productions is?

16 A. I heard her name, but I don't really know her that

17 well. I just heard the name. I don't know exactly what

18 she does.

19 Q. Is your understanding, based on the fact that her

20 name comes up, that she uses Hamptons locations to promote

21 her company, is that what you testified to?

22 A. On Google?

23 Q. Yes.

24 A. I think this is a search engine. It's not

25 advertising.

A-248




522

1 Q. Is it your understanding that because her name comes

2 up when you search under Hamptons locations, that she

3 promotes herself using that term Hamptons locations?

4 A. Say that again?

5 Q. Do you know whether or not Holly Lee Productions uses

6 the words Hamptons locations to promote her company?

7 A. Well, she might have the words in her metatags to get

8 onto Google.

9 Q. And do you know whether you or an attorney ever sent

10 a cease and desist letter to Holly Lee Productions to stop

11 using the term Hamptons locations?

12 A. Well, I might discuss it with my attorney, but I have

13 never seen this, so I don't know.

14 Again, sir, she is using her name, not my name,

15 her production name. She's not www.hamptonslocations.

16 She is www.hollyleeproductions. She is not my name.

17 THE COURT: The jury will disregard the latter

18 portion of the answer. It's volunteered information.

19 It's not responsive, number one. Number two, it's already

20 been said.

21 BY MR. RONEMUS:

22 Q. When you got on the Rubens' web site, it was Design

23 Quest, that was the name of the web site; is that correct?

24 Yes or no, Design Quest?

25 A. That was the words there, yes.

A-249




712

1 the easiest way to find anything on the internet.

2 Q. Have you performed a Google search on Hamptons

3 Locations or Hampton Locations related to this lawsuit?

4 A. Thousands of times since this lawsuit has started,

5 yes.

6 Q. Why have you done it thousands of times?

7 A. Just to, you know, they're printing out a new exhibit

8 or coming up with some new story, so I wanted to make sure

9 that they didn't do anything either by hijacking our web

10 site or something to change a Google outcome.

11 I wanted to make sure they were always coming

12 up. First all their competitors were there and we had

13 nothing. Nothing wouldn't even come up.

14 I think I dug 500 pages deep on a Google search

15 of Hamptons Locations and I can testify we didn't come up

16 within the first 500. Did I go to the other 500,000? No.

17 Q. When you say they came up, you're talking about the

18 plaintiff's web site came up on a Google search?

19 A. Yes.

20 She's always done a very good job in promoting

21 her business and I think since day one her site would be

22 number one on the hit list, sometimes one and two or even

23 three, yes.

24 Q. And it's your testimony that other location

25 companies, competitors of hers, would come up when you

A-250




713

1 type in Hamptons Locations?

2 A. Many competitors come up. Many locations, scouting

3 competitors come up when you type in any variation of the

4 words Hamptons location.

5 Q. Do you recall any of the names of the competitors as

6 you sit here today?

7 A. I think one was Jenny Landey or something. I know I

8 saw an exhibit floating around here yesterday.

9 Q. When is the last time you did a Google search on

10 Hamptons Locations and the plaintiff's name came up on the

11 first page?

12 A. Last night.

13 Q. Now, you said when you did a Google search on Hampton

14 or Hamptons Locations, DQNY would not come up in the first

15 500 pages?

16 A. The first 500 pages that have probably about 10

17 matches on each page, so we're probably talking about

18 5,000 I never saw, no.

19 Q. What does that mean, wouldn't come up in the first

20 500 pages?

21 A. As the lawsuit's been going on, I wanted to make

22 absolutely sure that, you know, even if we use the word

23 location in a description somewhere that wouldn't even

24 come up near her description.

25 So when I type in any variation of the word


A-251



714

1 Hampton or locations, as I said, she comes up first and it

2 always has her competitors are the first couple of pages

3 and you even have Hamptons locations in central Illinois

4 for Hamptons hotels, car rental companies, everything in

5 the world comes up, but never once did I see or find

6 anything relating to DQNY whatsoever.

7 Q. During the course of this lawsuit over the past six

8 and a half years did Ms. Weiss ever take your deposition?

9 A. She was supposed to. She got a Court order.

10 THE COURT: The answer is yes or no.

11 BY MR. RONEMUS:

12 Q. Just yes or no?

13 A. No.

14 Q. Ms. Weiss asked you yesterday about BCC, or blind

15 carbon copy which at the bottom of the e-mail you sent I

16 believe on April 18 to Ms. Grigor?

17 A. Correct.

18 Q. Can you describe what that indicates?

19 A. Yes.

20 I think this is the first time she understood

21 what it was, because she actually deposed my boss Jeff.


23 This is not responsive. Don't do that. Just

24 answer his question.

25 THE WITNESS: Okay.

A-252



TRIAL TRANSCRIPT OF NANCY GRIGOR(Page # 487,488,489,490)

A-253




487

1 the witness, Ms. Weiss?

2 If you don't, take it back and show it to her

3 before you show it to the witness.

4 MR. RONEMUS: She just saw it, your Honor.

5 MS. WEISS: Yes, your Honor.

6 I do know.

7 THE COURT: Just so the rule is clear, I think I

8 mentioned this before, perhaps I didn't, but any time an

9 attorney shows a witness an item, he or she should show it

10 to the opposing counsel before it's presented to the

11 witness.

12 The reason for that is, it makes it easier for

13 the other party's counsel to follow the questioning. So

14 I'd ask each of you to do that in the future.

15 MS. WEISS: Thank you, your Honor.

16 BY MR. RONEMUS:

17 Q. Can you tell us, Ms. Grigor, what the income for your

18 company was in 1999?

19 A. $129,000.

20 THE COURT: What does that mean, income?

21 This is the taxes and income, gross receipts?

22 THE WITNESS: I made some notes because if they

23 asked me, I just can't remember all the numbers.

24 So I put them down in case he asked me, I was

25 going to refer to it.

A-253




488

1 THE COURT: Is there a title to that?

2 THE WITNESS: Well, I just put down tax income,

3 you know.

4 THE COURT: All right. That's fine.

5 I didn't know it had the tax income. It has tax

6 income on the top?

7 THE WITNESS: Yes.

8 BY MR. RONEMUS:

9 Q. So that's not the gross income for the company for

10 that year?

11 A. That's -- yeah, I guess that's gross.

12 Q. That's the total income for your company for that

13 year?

14 A. Yes.

15 Q. Yes?

16 A. Yes.

17 MS. WEISS: Your Honor, I'm not sure in terms of

18 gross income or taxable income --

19 BY MR. RONEMUS:

20 Q. I'm talking about the total amount of money that your

21 company made in 1999.

22 Is that the number that's --

23 THE COURT: You are talking about gross

24 receipts?

25 MR. RONEMUS: Gross receipts.

A-254




489

1 THE COURT: This is before the deduction of any

2 expenses and anything else.

3 The gross receipts that your company generated

4 in that year.

5 A. Yes.

6 Q. And what's the total?

7 A. $129,246.30.

8 Q. Did you hear Mr. Roomian testify that you signed a

9 statement submitted in your application for your trademark

10 where you indicated you made $294,000 in 1999?

11 A. I don't remember him saying that.

12 Q. You didn't hear him say that this morning?

13 A. I don't remember.

14 Q. I'm going to show you what's been marked in evidence

15 this morning with Mr. Roomian as Exhibit No. 4, which

16 includes -- well, let me show it to you.

17 MR. RONEMUS: Your Honor, may I question her

18 from here since I only have one copy?

19 THE COURT: Yes.

20 BY MR. RONEMUS:

21 Q. Is that your signature, ma'am?

22 A. Yes.

23 Q. Do you recognize what this document is?

24 A. It's for the trademark.

25 Q. Okay.

A-255




490

1 It states here declaration of acquired

2 distinctiveness?

3 A. Yes.

4 Q. And did you sign that on March 7, 2001?

5 A. Yes.

6 Q. And that was part of your application to obtain a

7 trademark for Hamptons Locations.

8 Is that true?

9 A. Well --

10 Q. Is that true?

11 A. Yes, that's what it is.

12 But this --

13 Q. Ma'am.

14 THE COURT: It's cross-examination.

15 Just answer the question.


17 BY MR. RONEMUS:

18 Q. And did you indicate --

19 THE COURT: Your attorney will be able to ask

20 follow-up questions.


22 BY MR. RONEMUS:

23 Q. Did you indicate here in 1999 your company made

24 $294,534, yes or no?

25 A. Yes.

A-256



TRIAL TRANSCRIPT OF ROBERT ROOMIAN(Page # 382)

A-257



Roomian - Direct/Ms. Weiss

382

1 A. As part of her declaration, yes.

2 Q. Is that the declaration of acquired distinctiveness?

3 A. Yes.

4 Q. And for fiscal year 1994, how much -- what is the

5 dollar amount for sales of services that was conveyed to

6 the Patent and Trademark Office?

7 A. $6,200.

8 Q. And how about for 1995?

9 A. $32,320.


11 A. $43,176.


13 A. $126,622.


15 A. $332,831.

16 Q. And what about for 1999?

17 A. $294,531.

18 Q. And did you tell the Patent and Trademark Office how

19 the company's services are advertised?

20 A. Yes, I did.

21 Q. What did you tell them?

22 A. I provided them with the attachments which showed her

23 use on her Web site, and in the various trade directories.

24 And those were the advertisements.

25 Q. So that's where things stood on March 7, 2001.

A-257




509

1 doing that to try to steal business from your company?

2 A. No, not by that e-mail.

3 Q. Can you tell us why he sent you that e-mail on April

4 18 of 2000, asking to list the house with your company?

5 MS. WEISS: Objection.


7 BY MR. RONEMUS:

8 Q. Are you aware of the role of any of Darrell Rubens'

9 friends or business associates in obtaining the

10 hamptonlocations.com domain name?

11 A. No.

12 Q. Would you say it's important for you to know what the

13 role of other people were in obtaining that domain name

14 before you can accuse Darrell Rubens of trying to take

15 business from your company?

16 A. Would you repeat that?

17 Q. Would you say that it's important for you to

18 understand what the role of other people involved in

19 obtaining that domain name were, before you can come into

20 court and accuse Darrell Rubens of trying to take business

21 from your company?


23 THE COURT: Overruled. I'll permit it. You can

24 answer it.

25 A. I didn't know any other people. I only had Darrell's

A-258




510

1 name. I didn't know anybody else.

2 Q. My question is, would you say it's important for you

3 to know the roles of other people involved in obtaining

4 the domain name before you accused Darrell Rubens of

5 trying to steal your business?

6 THE COURT: Now, it becomes argumentative.

7 She's endeavored to answer it, and that's her

8 answer.

9 BY MR. RONEMUS:

10 Q. At any point in time did you know that people other

11 than Darrell Rubens were involved in obtaining that domain

12 name?

13 MS. WEISS: Objection to the form of the

14 question.

15 THE COURT: I'll sustain it as to the form.

16 BY MR. RONEMUS:

17 Q. Have you learned, at any time up until today, that

18 anybody other than Darrell Rubens was involved in

19 obtaining the domain name?

20 A. I don't know who obtained the domain name. I don't

21 know. It was DSNY.

22 Q. So you don't know whether anyone else was involved

23 other than Darrell Rubens, is that fair?

24 A. He said that he had partners, but I didn't know who

25 they were.

A-259



TRIAL TRANSCRIPT MICHAEL GRIFFITH(Page # 1012, 1013, 1014, 1015, 1016 )

A-260



Griffith/Cross-Ronemus

1012

1 A. I believe in May of 2002.

2 Q. And do you know how long that domain name was

3 available to be purchased before your wife purchased it?

4 A. No.

5 Q. At any time before your wife purchased it, did you

6 search to determine if that domain name that's the issue

7 of this entire lawsuit was available?

8 A. No.

9 Q. Did you tell your wife that maybe you should find out

10 if that domain name was available so we can now own that

11 domain name, at any time before she obtained it?

12 A. No.

13 Q. Do you know when --


15 BY MR. RONEMUS:

16 Q. Do you know what DSNY is?

17 A. I believe it's Decorator Services of New York.

18 Q. And are you aware that in July of 1999 DSNY was the

19 registrant for the domain name that's the issue in this

20 lawsuit?

21 A. I believe it was.

22 Q. So then are you aware that in July of 2001, their

23 registration expired?

24 A. I believe it did.

25 Q. So it's your testimony that no time between July of


A-260



1013

1 2001 and May of 2002, when your wife purchased it, you

2 made a search to try to determine if that domain name was

3 available.

4 Is that correct, sir?


6 Q. When did hamptonlocations.com first connect into the

7 Design Quest Interior Design and Architectural Web site?

8 A. I don't know.

9 Q. Do you have any understanding at all when that

10 connection was first made?

11 A. No.

12 Q. Before you started the lawsuit in Southampton Town

13 Court for trademark violation, did you have an

14 understanding of when that connection was made?

15 A. No.

16 Q. Do you know how long that domain name

17 hamptonlocations.com connected into the Design Quest

18 Web site?

19 A. No.

20 Q. When you sued --


22 BY MR. RONEMUS:

23 Q. I believe you testified on direct that the suit in

24 the Southampton Justice Court was for trademark violation.

25 A. Common law trademark.


1014

A-261



1 Q. And was it part of your claim that the domain name

2 was connecting into the Design Quest Web site?

3 A. No.

4 Q. Did you know whether at the time you filed that

5 lawsuit that the domain name connected to the Web site?

6 A. No.

7 Q. Did you know whether it connected to the Web site

8 before you started the lawsuit?

9 A. No.

10 Q. So at the time you started the lawsuit, it was your

11 claim that just owning that domain name was a violation of

12 your wife's trademark?

13 A. I can't answer that with a yes or a no.

14 Q. Can you explain what the basis of your claim that

15 Darrell Rubens and Richard Rubens violated your wife's

16 trademark was when you brought that common law trademark

17 claim in the Justice Court?

18 A. Yes, I can.

19 Q. Okay.

20 What is that?

21 A. Mr. Roomian had sent a letter to Darrell telling him

22 to cease and desist, and Mr. Rubens admitted to me on the

23 telephone that he was the -- in the letter, and on the

24 telephone that he was the owner of the Web site,

25 hamptonlocations.com.


1015

1 Q. Okay.

2 Did you have --

A-262




4 Q. Just so I'm clear, the fact that he owned that domain

5 name was the basis of your lawsuit.

6 Is that true?

7 A. No, that he owned it and that he was using it on the

8 internet.

9 Q. How did you know he was using it on the internet when

10 you started that lawsuit?

11 I thought you said you didn't know if it

12 connected to a web page when you started that lawsuit.

13 A. Well, I believe at the time, as I said, I believe

14 that my wife showed me the image of a big white house.

15 Q. But I thought you said that that was sometime in

16 either 2000 or 2001.

17 A. I think I told you before that it was somewhere in

18 the third week of -- or the fourth week of July.

19 Q. So is it your testimony now that when you started the

20 lawsuit in the Southampton Justice Court, you were aware

21 that that domain name, when you typed it this, went to a

22 picture of a big white house on the internet?

23 A. All I know is I saw a big white house.

24 I didn't -- I was not a plaintiff in the

25 lawsuit. I'm the attorney. It's my client who made those


1016

1 allegations.

2 Q. You are the one who drafted the summons and complaint

3 in the Justice Court.

A-263



4 Correct?

5 A. Correct.

6 Q. And, in fact, there were more claims than just a

7 violation of common law trademark.

8 True?

9 A. Correct.

10 Q. In fact, you sued for five separate counts.

11 THE COURT: I don't want to go through these

12 counts.

13 That's a different proceeding.

14 MR. RONEMUS: I understand, but he said --

15 Q. You sued for more than common law trademark, which is

16 what you testified to on direct.

17 Is that true?


19 Q. And at the time that you began that lawsuit on behalf

20 of your wife, you were not aware of whether or not that

21 domain name linked up to anything on the internet?

22 A. I only know what she showed me once, and I know about

23 Mr. Roomian's letter.

24 I know what she told me, and based upon that, I

25 felt that it was a bona fide claim.

A-264



TRIAL TRANSCRIPT OF MICHAEL GRIFFITH(Page #:975,976)

A-265



Griffith/Direct-Weiss

975

1 and that they get the service that they require.

2 Q. That's your understanding of good will.

3 Is that correct?

4 A. Correct.

5 Q. And have you personally observed any good will in

6 connection with Nancy Grigor and Hamptons Locations in the

7 community?

8 MR. RONEMUS: Note my objection.


10 BY MS. WEISS:

11 Q. Mr. Griffith, when you are in the community with

12 Nancy Grigor, do people recognize her?


14 THE COURT: I'll sustain it as to the form.

15 If he's seen people come over and greet her and

16 so forth, that's something he observed.

17 BY MS. WEISS:

18 Q. Mr. Griffith, would you speak into the microphone

19 also for your answers, so our court reporter can hear you.

20 Have you been out with Nancy in places where

21 people have come over to greet her?

22 A. Yes.

23 Nancy's a very well-known figure in the

24 community.

25 Q. And when they greeted her, have there been

A-265



Griffith/Direct-Weiss

976

1 discussions about Hamptons Locations?

2 A. All the time.

3 Q. And how frequently would you say that occurs?

4 A. Literally every time we go out for dinner, every

5 restaurant owner I think on the east end knows Nancy that

6 we have been to.

7 Q. And would you say that that -- those types of

8 greetings that you have discussed, and people coming over,

9 occurred prior to February 2000, as well as after February

10 of 2000?

11 A. Yes.

12 Q. I wanted to turn to a conversation that you had on

13 the telephone with Richard Rubens on July 21, 2000.

14 Before doing that, I'd like to show you a letter

15 that's already been marked into evidence, and it's a

16 letter addressed to you, as well as your wife, and I'd

17 like you to take a look at it.

18 Perhaps it will refresh your recollection. Do

19 you see it there?

20 A. Is that Exhibit No. 39? I think it is.

21 Yes.

22 Q. Is Exhibit 39 a letter to you?

23 A. Yes, July 21, 2000.

24 Q. From Richard Rubens?

25 A. Yes, ma'am.

A-266



TRIAL TRANSCRIPT OF ROBERT ROOMAIN AND NANCY GRIGOR(Page # 308,500, 429 - 434, 469)

A-267




308

1 A. Well, when my website girl was going out to buy these

2 website names, she came back and told me that Hampton

3 Locations was taken.

4 And I said, well, what does that mean, and what

5 do I do? First I said who, who has it? And she told me

6 it was DSNY.

7 Q. And what did you do as far as trying to contact DSNY

8 and telling them that you had what you felt was your

9 domain name?

10 A. Well, it was registered at 575 Madison Avenue, which

11 was a big building.

12 And I didn't think anything of it.

13 Q. Madison Avenue in New York City?

14 A. Yes.

15 Q. Did you write a letter to DSNY at 575 Madison Avenue

16 and tell them that they had what you felt was your domain

17 name?

18 A. Not at that time.

19 Q. Why not?

20 A. Well, they didn't have a site up. They weren't doing

21 the diverting.

22 They just had a name. They just owned the name.

23 I figured they weren't hurting me. They have the name,

24 but they don't have the website up. So I didn't think

25 anything of it.

A-267




500


2 Q. Was it before or after the shooting at the Rubens'

3 house in 2000?


5 Q. Are you aware of any other cease and desist letters

6 that you or your attorney have written to anyone else who

7 you felt was using the name improperly for a locations

8 company?

9 A. No, no one else.

10 Q. Now, you testified, I believe, you first learned

11 about Hampton Locations in February 2000, the web site,

12 the domain name Hampton Locations?

13 A. It was sometime around there, sometime around then,

14 February 2000.

15 Q. And you learned, in or about February of 2000, that

16 it was registered to an entity known as DSNY?

17 A. Yes.

18 Q. Did you ever write or call DSNY and ask them what

19 they were using that domain name for?

20 A. No.

21 Q. Why not?

22 A. My web site person, we didn't think, we didn't think

23 they had any locations company at the time.

24 We knew it was a big building in New York City

25 and it was just four letters.

A-268




429

1 registration for her mark.

2 Q. Her Hamptons Locations?

3 A. Yes.

4 Q. When did you first learn that someone else had

5 obtained the domain name Hamptonlocations.com?

6 A. That would have been on February 18, 2000.

7 Q. How did you learn that she learned about that --

8 withdrawn.

9 Did she tell you how she learned about that?

10 A. No, she did not.

11 Q. Did you learn that the registrant for that domain

12 name was DSNY?

13 A. Not at that time.

14 Q. When did you first learn that?

15 A. That would have been right before I sent the letter

16 to Mr. Rubens, just a few days before.

17 Q. The letter of?

18 A. June 25, 2000.

19 Q. When you sent your letter on June 25 of 2000, did you

20 realize that Ms. Grigor had, in fact, booked a shooting at

21 a house owned by the defendants within two weeks before

22 your letter?

23 A. Yes, I did.

24 Q. When you learned that DSNY was the registrant for

25 hamptonslocations.com, did you send a letter to DSNY?

A-269



Roomian - Cross/Mr. Ronemus430

1 A. No, I did not.

2 Q. I believe you said you were aware of an address?

3 A. Yes, on the domain listed that was the address

4 information with the domain name register.

5 Q. I believe that's 575 Madison Avenue?

6 A. Yes, that's the one.

7 Q. Is there any reason you didn't send a letter to the

8 owner, the registered owner, of the domain name?

9 A. Because after checking into it further, this was the

10 name and address that we felt or we believed was connected

11 to it.

12 Q. That's Darrell Rubens?

13 A. Yes.

14 Q. Now, when you first applied for the mark, I believe

15 you indicated you applied for several different things.

16 One of them was providing locations for photo

17 shoots, and I'm looking at your exhibit number two which

18 was your original application.

19 A. Okay.

20 Q. Of March 3, 2000?

21 A. Right.

22 I originally applied for all those services that

23 are identified in that application, and I applied all in

24 one class in the hope that I could keep the government

25 filing fees as low as possible.


A-270



431

1 Q. Before I get to that, I'm going to ask you one other

2 thing.

3 You say you first learned in February that

4 somebody else had applied for hamptonlocations.com, yet

5 you did not write your letter until June 25, 2000, true?


7 Q. Did Ms. Grigor, at some point, ask you to write a

8 cease and desist letter, or is that a decision you made?

9 A. No.

10 She had been trying to, I guess, investigate who

11 was behind the use, and it wasn't until right before I

12 wrote the letter that she had the information for me to

13 send it out.

14 Q. When did she first ask you to write the letter you

15 wrote on June 25?

16 A. I'll have to refer to my file for that.

17 Q. Okay.

18 A. March 17, 2000.

19 Q. March 17, 2000, is when she asked you to write the

20 letter?

21 A. No, that's when I wrote to her.

22 We must have been discussing it around that

23 time, because at that time I said to her that my cost to

24 send that letter is $200.

25 Q. So, it's your understanding she had asked you before

A-271




432

1 March 17 of 2000 to send a cease and desist letter?

2 A. Yes, we must have discussed it.

3 Q. Not until sometime immediately before June 25, it's

4 your testimony that she did learn that Darrell Rubens was

5 the person that the letter should be sent to?

6 A. Yes, because I see here I say in my letter we sent a

7 letter concerning legal action to the domain name owner.

8 Q. Did you send one?

9 A. I said in my letter to her that I thought it would be

10 justified to send a letter threatening legal action to the

11 domain name owner.

12 Q. That was March 17 of 2000?

13 A. And, at that time, we weren't certain who it was

14 because we just weren't.

15 Q. At that time you had no idea -- withdrawn.

16 At that time that domain name wasn't even linked

17 to any web site, true?

18 A. My recollection is vague on that. She was the one

19 that was checking up on it, and there was a domain name.

20 Whether it was linked to a workable web site or one that's

21 said under construction, I don't remember.

22 Q. So all you knew, as of March, you didn't know

23 anything about Darrell Rubens at that time, correct?


25 Q. And you did not know that hamptonlocations.com, at

A-272




1 that time, it did not take you to a web site for a home

2 that was owned by the Rubens, true?

3 A. Yes, true.

4 Q. All you knew, at that time, was someone named DSNY

5 had registered for that domain name?


7 Q. And based upon that, she asked you to send a cease

8 and desist letter to the owner of that?

9 A. Later in time after my letter to her of March 17, and

10 it would have been -- at that time it would have been

11 closer to the date that I sent the letter on June 25.

12 Q. So by June 25, it's your testimony that Ms. Grigor

13 had learned that Darrell Rubens was somehow involved with

14 the purchase of this domain name?

15 A. Yes.

16 Q. Did she tell you that she received an e-mail from him

17 on April 18, I believe?

18 A. Oh, yes.

19 Q. And his name was on that e-mail?

20 A. Yes.

21 Q. Now, certainly by April 18, then, she was aware that

22 Darrell Rubens was somehow related to that domain name,

23 true?


25 THE COURT: Overruled. I'll permit it.

A-273




1 If you can't answer it as it's phrased, just

2 indicate that you can't answer it.

3 THE WITNESS: I can't answer that question.

4 MR. RONEMUS: Your Honor, may I refer to the

5 e-mail?

6 THE COURT: Yes.

7 BY MR. RONEMUS:

8 Q. This e-mail is in evidence as Plaintiff's Exhibit 20.

9 Did she tell you she received this e-mail from

10 Darrell Rubens on April 18, 2000?


12 THE COURT: Overruled.

13 A. I don't think I got that to attach to my letter until

14 about the time I sent it, because what she told me was

15 that she hadn't had time to go through her e-mails and

16 that was the reason why she hadn't advised me about it

17 beforehand.

18 Q. Did you learn that she had, in fact, opened this

19 e-mail from Darrell Rubens on April 21st of 2000?

20 A. No.

21 Q. Did you see down at the bottom of the e-mail that it

22 was opened on April 21st of 2000?

23 A. No.

24 Q. Do you see that there now?

25 A. Yes.

A-274




469

1 what he stated in paragraph No. 4 there?

2 THE COURT: Why is it germane what knowledge he

3 has now?

4 Why wouldn't it be what knowledge he had as of

5 the time he wrote the letter?

6 MR. RONEMUS: I'll withdraw that.

7 BY MR. RONEMUS:

8 Q. No. 5, hamptonlocations.com was designed to make

9 scouting agencies aware of its availability, uniqueness

10 and location in the Hamptons, and hopes of scouting

11 agencies listing our house in their database with current

12 photos and information.

13 Did you understand at that time he was offering

14 when he says our house, to scouting agencies, a house to

15 scouting agencies?

16 A. I understand that.

17 Yes.

18 Q. Okay.

19 No. 6, since hamptonlocations.com does not scout

20 for locations, it does not offer the same services as your

21 client.

22 Did you have any evidence at that time other

23 than the e-mail that he wrote on April 18th that Darrell

24 Rubens was involved in scouting for locations?


A-275



TRIAL TRANSCRIPT GRIGOR(Page #327-331, 503,504)

A-276




327

1 So it's called, yeah -- it's a working form.

2 It's like just where I jot down everything, but I thought

3 you were talking about this.

4 Q. May I see this?

5 A. Sure.

6 Q. So this manila folder, which is Exhibit 182, is that

7 a card folder file that pertained to the Rubens' house?

8 A. Well, I don't call it that.

9 I just call it the -- it's like a notepad card

10 folder, but it's just what I do.

11 I take an envelope like this and I pull it out

12 to take my notes.

13 Q. So other than the photographs, these are the notes --

14 A. I guess you want to call it a card folder, you can

15 call it that.

16 Q. That's what you called it?

17 A. Yes, well --

18 Q. Other than the photographs, is this the only document

19 you had pertaining to the Rubens' house?

20 A. Yes -- other than the address -- my address book with

21 their phone number in it.

22 That's all I had pertaining to them.

23 Q. Now, in your affidavit, you stated that you created

24 this document, which is attached as an exhibit,

25 immediately following the meeting.

A-276




328

1 Do you recall saying that in your affidavit?

2 A. Could I see what I said?

3 Q. Sure.

4 A. Where?

5 Q. Here.

6 A. Okay.

7 This is the folder for the shoot. These are

8 cards, what I use for the shoot, the card folder.

9 Q. Did you see in the affidavit where you swore that you

10 created that card folder file immediately after your

11 visit --

12 A. I'm sorry.

13 You know, I --

14 THE COURT: You have to let him finish the

15 question.

16 THE WITNESS: I'm sorry.

17 THE COURT: Just relax.

18 THE WITNESS: I'm sorry.

19 BY MR. RONEMUS:

20 Q. Do you see in your affidavit where you swore that you

21 created this card folder file, which is attached as an

22 exhibit, immediately following your visit to the Rubens'

23 house, which you testified was in July of 1999?

24 A. Well --

25 Q. Do you see where you signed that?

A-277




329

1 A. I did.

2 But I'm just telling you, first of all --

3 THE COURT: You can't do this. This is

4 cross-examination. He's just asking you do you see where

5 it appears.

6 THE WITNESS: I see where I did say that.

7 Yes.

8 THE COURT: The answer's yes?

9 THE WITNESS: Yes.

10 BY MR. RONEMUS:

11 Q. So you swore in the affidavit that you created

12 this --

13 A. No. No. I'm sorry.

14 I did not create this document. I created this.

15 This is what I created when I left the Rubens' house, the

16 portfolio.

17 When I say card folder, basically I put it in my

18 book, and I put it on a list of my locations. It's like

19 a, you know, this is when I take the booking. This is

20 when I take the booking down.

21 This is --

22 Q. Do you see that document, the manila document

23 attached as Exhibit 3 to your affidavit?

24 A. Yes.

25 I didn't make that --

A-278




330

1 Q. Please. Please. Please. Let me ask you a question.

2 A. All right.

3 Q. Is that your signature, sworn in front of a notary,

4 Patricia Weiss, on February 9, 2005?

5 Is that your signature?

6 A. Excuse me.

7 You are really confusing me, because, first of

8 all --

9 THE COURT: Answer the question.

10 A. That's a signature, but there's a mistake here

11 because that was a booking. This is a booking.

12 THE COURT: We can spend forever doing this, but

13 it doesn't help anybody.

14 I don't have the document in front of me.


16 THE COURT: As I understand it, he's asking if

17 that's your signature which, apparently, was notarized or

18 witnessed by your attorney. That's all he's asking.

19 He's not asking whether there is some error in

20 the document.

21 BY MR. RONEMUS:

22 Q. Is that your signature sworn in front of a notary?

23 A. Yes.

24 Q. And in this affidavit, did you swear that Exhibit 3

25 is a document you prepared immediately after visiting the

A-279




331

1 Rubens' house?

2 Yes or no?

3 MS. WEISS: Excuse me, your Honor.

4 May I look at what he's showing the witness? I

5 don't have a copy here.

6 THE COURT: Sure.

7 MR. RONEMUS: Yes.

8 THE COURT: You can look.

9 MS. WEISS: And I'm not so sure that's what

10 Exhibit 3 actually refers to.

11 A. Actually --

12 MR. RONEMUS: Judge, can you instruct her not to

13 answer until we have a question.

14 THE COURT: It's late in the day, I know, and we

15 are going to recess shortly.

16 We are trying to make a record of what everybody

17 says. When you have two people speaking at once, it's

18 almost impossible, when you have three, it is impossible.

19 Everybody should just remember that, and calm

20 down.

21 THE WITNESS: Yes, sir.

22 (Whereupon, there was a pause in the

23 proceedings.)

24 MS. WEISS: I'd like to note that he's showing

25 his client's --

A-280




504

1 A. I don't understand.

2 Q. Do you keep any kind of a notebook or a card list or

3 anything that has the information for their home on it

4 when you first sign up a home?

5 A. Yes, I have an appointment book.

6 Q. So your appointments book tells you when you first

7 sign up a home?

8 A. No. It just has the name, address, telephone number,

9 contact information.

10 Q. But you can't look at your appointment book and

11 determine when you first got a home on your inventory; is

12 that true?

13 A. No. There's no dates on there.

14 Q. So there's nothing you have in this case other than

15 that manila folder dated May 22nd, 2000, that indicates

16 the date that you first obtained the Rubens' home as part

17 of your inventory; is that fair to say?

18 A. I'm not sure of what else I would have.

19 Q. Anything?

20 A. Other than the portfolio?

21 Q. Yeah, whatever, that manila folder dated May 22nd,

22 2000, do you have anything at all relating to the Rubens'

23 home that indicates when they first became a home that was

24 listing with you?

25 A. I don't know. I don't know. I don't know at this

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(Page # 1025)

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1025

1 Is that your understanding of what that e-mail

2 said?

3 A. Now I do.

4 At the time I saw it, it was just an E -- I'll

5 withdraw that.

6 You'd have to ask him what his intention was. I

7 can't speak for him.

8 Q. But when you first read it, did you -- what did you

9 understand it to be?

10 A. That he was trying to do business with my wife.

11 Q. And do you recall when it was you first saw that

12 e-mail?

13 A. I don't.

14 Q. Was it --


16 BY MR. RONEMUS:

17 Q. Did you see it on the computer or did you see it

18 someplace else, if you recall?

19 A. I think I saw a printout of it.

20 Q. Okay.

21 Did your wife show it to you or did you see it

22 sitting on the desk or something else?

23 A. I think she showed it to me.

24 Q. Do you know if your wife owns the domain name,

25 hamptonslocations.com?

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(Page # 260,279,1098 -1104)

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Grigor/Direct-Weiss

260

1 THE COURT: That's sustained.

2 Ladies and gentlemen, you have heard what

3 plaintiff believes may have transpired. At some point, if

4 you find liability, then you are going to have to consider

5 damages, and when you consider damages, you are not

6 allowed to speculate.

7 In other words, there has to be some evidence

8 before you with specificity that would permit you to infer

9 that a loss was sustained and why. You can't say, in

10 effect, well, if somebody wanted to reach me and they

11 tried to get on the website and they typed in or mistyped

12 the domain name and got the Hampton Locations, you can't

13 do that.

14 Because why? You can't attach any dollar number

15 to it. You don't know if it's happened or it hasn't

16 happened. That's the idea to it.

17 So I'm going to sustain the objection to it.

18 Again, this is speculation. But I have no problem -- it

19 sounds more lik e lawyer argument than witness testimony,

20 who testifies as to facts. But I'm not foreclosing you

21 from revisiting the subject, but there has to be some

22 information for the jury to work with, rather than

23 potential or possibilities. That's the problem.

24 In any event, the objection's sustained. So the

25 jury will disregard the portion of the answer about if

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279

1 www.HamptonLocations, it's a plural name, Locations.com.

2 They are misleading and confusing people and it

3 looks too much -- it's too similar to my name, and if

4 somebody mistypes it and they get their website, if it's a

5 client that's looking for me and they get them, I lose

6 them.

7 If it's a client looking for a big white house

8 and they type in -- they are looking for me and my

9 company, and they type in and mistype, and they get him,

10 and they are looking for a big white house, they are going

11 to book this big white house. So they are going to get

12 him.

13 And, of course, I mentioned earlier about my

14 legal fees and the commission and my expenses. So this

15 has been a long process.

16 Q. Okay.

17 A. But the commissions are really important, and if he's

18 getting all of the people coming to his website, you know,

19 I lose those people plus the future business with those

20 people, and they go directly to him.

21 Q. Okay.

22 That's speculative. Would you agree?

23 THE COURT: You don't have to answer that.

24 That's argumentative. That's more of a matter

25 of law.

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THE COURT1098

1 before, the issue I'm talking about, which is whether

2 plaintiff has proven any actual damages.

3 The plaintiff has not proven damages in the

4 sense of business lost, nor has plaintiff established

5 profits gained by the defendants as a result of the

6 alleged infringing conduct. Under the circumstances,

7 there's not a sufficient factual predicate for a jury to

8 award actual damages.

9 Therefore, in the charge what I have said is,

10 with respect to the 1125(a) claim, that the jury is not

11 being asked to award damages or the profits, possibly,

12 earned by the defendant because we have no idea what they

13 are.

14 I do tell them that if the plaintiffs have

15 established each and every element of the 1125 claim, that

16 they may award nominal damages. Nominal damages are

17 typically in the amount of $1.

18 Under the Lanham Act, there are no punitive

19 damages allowed. So that's true for the 1125(a) and the

20 1125(d) claims. Under the 1125(d) section, as I indicated

21 earlier, making reference to page 46 of the proposed

22 charge, the plaintiffs have an option. They can seek

23 statutory damages.

24 We had discussed this the other day, to some

25 extent, and I'll place some cases on the record later. I

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THE COURT AT SIDE BAR1100

1 amended.

2 So, therefore, since plaintiff has demanded a

3 jury trial, this is an issue that goes to the jury even

4 though, as I indicated earlier, a reading of the statute

5 suggests this would be a matter addressed to the court,

6 not to the jury.

7 MS. WEISS: Your Honor, may I ask a question?

8 THE COURT: Let me mention one other thing.

9 Also in the charge, as I'm talking about

10 1125(d), and 1117(d), I think I may have to check the

11 charge because I think in one section I refer to the

12 option, and I refer to 1125(d) as providing the option.

13 That's actually wrong. It's 1117(d) that provides the

14 option.

15 Let me see what else I want to go over. On the

16 question of good will, plaintiffs' position is that there

17 is evidence that raises a factual issue concerning good

18 will, more particularly, diminution in the good will

19 concerning plaintiff's business caused by the activities

20 of the defendants should be placed before the jury as an

21 item of damages.

22 As I recall the evidence, what we have on the

23 issue of good will is essentially that the individual

24 plaintiff's niece endeavored to show the Web site for

25 plaintiff's business to some friends, and was unable to do

A-287




1 so. And the reason she was unable to do so was because

2 she apparently dropped the S in typing in the Web name of

3 Hamptons Locations. When she inserted the name

4 Hampton Locations she basically, as a result of a link,

5 ended up at the DQNY Web site and saw a picture of a big

6 white house.

7 And also, the niece indicated that she saw the

8 screen at one time indicating that the Web site was under

9 construction. And individual plaintiff also testified

10 concerning the subject, and she said that a number of

11 individuals had spoken to her and said that they had

12 similar problems with respect to the Web site.

13 A few observations, though.

14 Firstly, it is my recollection, and I will

15 listen to counsel if I'm incorrect, I don't believe there

16 is any indication that any customers or individuals who

17 could be legitimately considered as potential customers

18 were deceived, or confused is probably a better word, and

19 that that has some impact on the reputation of the

20 business.

21 This, again, is a situation where there is a

22 lack of sufficient specificity to permit the jury to make

23 a reasonable estimate as to the amount of damage. If, in

24 fact, this factual predicate would be sufficient to permit

25 an award for diminution in good will, it would,

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THE COURT AT SIDE BAR

1103

1 sure it's that helpful, but, in any event, it's in 104

2 New York Juror 2d., Trade Regulations Section 284.

3 But the point is, if you think about it, what

4 would the jury do? How would the jury come up with a

5 number? How would they decide what would be the

6 appropriate figure to attach to the diminution to good

7 will. Having said that, I recognize that damages

8 typically are estimated. I recognize, which is saying the

9 same thing in two ways, obviously damages do not have to

10 be determined with mathematical precision, or anything

11 close to mathematical precision.

12 It is also true, to the extent the lack of

13 specificity is attributable to the acts of the defendant,

14 that the courts have to take a fairly liberal approach to

15 this. However, we all know that damages cannot be based

16 on pure speculation.

17 I know that if I were the trier of fact, and

18 that's not necessarily the appropriate standard, I

19 wouldn't know what number to attach. And I severely doubt

20 whether any of the attorneys in the room, free of their

21 advocacy position, could articulate what number should be

22 attached to the supposed diminution of good will. So

23 that's why that hasn't been included.

24 I wanted to go over this at this point because,

25 otherwise, when you read the charge, if I hadn't made

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THE COURT AT SIDE BAR

1102

1 essentially, open the floodgates. More specificity is

2 clearly required.

3 There are just a few items I will place on the

4 record in this regard, but what I said essentially

5 completes my thoughts on that regard, but this question of

6 what you have to prove to create a triable issue of fact

7 concerning good will is at least alluded to, and this

8 would be a CF cite, in a New York case. It's a New York

9 State Court of Appeals case, which case is cited in a

10 Second Circuit case.

11 But, in any event, the case is Electrolux

12 Corporation v Val-Worth Inc., 6 New York 2d., 556, and the

13 relevant language appears on page 990 of that decision.

14 The relevant language from the decision reads, in part,

15 quotes, the damage in the instant case is chiefly to good

16 will and reputation of the plaintiff corporation. Thus,

17 it would seem that the measure of damages would be any

18 loss in business which can be traced directly to

19 respondent's disparagement of the rebuilt Electrolux.

20 This will no doubt be difficult to prove due to

21 the widespread and shifting nature of the injury which is,

22 of course, one of the items dictating injunctive relief,

23 but if the plaintiff is able to prove such damages, it

24 should be given an opportunity to do so. Also, this is an

25 excerpt from New York Juror, I mention this, I'm not so

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1104

1 these rulings, you wouldn't know why it's constructed as

2 it is. The point is, I think this will help you, rather

3 than hurt you.

4 You wanted to say something?

5 MS. WEISS: When you said that hasn't been

6 included, does that mean you haven't instructed the jury

7 about good will as a loss?

8 THE COURT: I have instructed them. I said that

9 that issue isn't even before them.

10 I'm saying as a matter of law, this jury cannot

11 determine what amount should be awarded for the loss of

12 good will. It hasn't even been shown there is a loss of

13 good will. In other words, it would be unfair. It would

14 be unfair and a violation of my obligation to

15 appropriately charge a jury to ask them to attach a

16 number.

17 I dare say, you couldn't attach a number, as I

18 said, free of your role as an advocate, because there's no

19 evidence to do it. Basically when all the dust settles,

20 if plaintiff can prove that the cyber squatting statute,

21 and I don't know what election you are going to make, but

22 as I understand it, there is one domain name at issue.

23 MS. WEISS: Yes.

24 THE COURT: And then the jury would be permitted

25 to award anything from $1,000 to $100,000.

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(Page # 280, 283-300)

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280

1 BY MR. RONEMUS:

2 Q. Do you have any proof, ma'am, of $1 that Richard or

3 Darrell Rubens made as a result of anybody who you claim

4 found their interior design website by mistake when they

5 were trying to find Hamptons Locations.com?

6 A. They have had shoots at their house, many shoots. I

7 have seen the shoots at their house during this whole

8 lawsuit.

9 I don't know if they came from my clients or

10 they were people that were misled there, but they have had

11 a lot of shoots at their house.

12 Q. Are you claiming that they are not allowed to have

13 shoots at their house?

14 A. They can have them, but I don't know if they came

15 through my website.

16 I don't know how many people mistyped it.

17 Q. Are you aware -- I'll ask you again -- are you aware

18 of one person who, as a result of apparently mistyping

19 your website, looking for you, landed on their interior

20 design website and, as a result of that, did a shooting

21 which you claim should have resulted in financial income

22 to you, but did not?

23 Just yes or no, are you aware of one person?

24 A. No.

25 Q. Are you aware that to prevail in the case, you have

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]Grigor/Cross-Ronemus

283

1 production page, it's very confusing. It's very

2 misleading that they are having that name. It's too close

3 to my name.

4 Q. So the fact that you were confused is a loss that you

5 feel should be compensated for?

6 Just yes or no?

7 A. Yes.

8 Q. And how much do you feel you should be compensated

9 for your confusion in this case?

10 A. Well, I initially said earlier that, you know,

11 between me, I mean, I'm being honest, this has been six

12 years. He sued me in all these courts.

13 I had to pay for lawyer fees --

14 Q. Ma'am --

15 MR. RONEMUS: Your Honor, can she please respond

16 to the question?

17 THE COURT: I think she is endeavoring to.

18 MR. RONEMUS: I think she is going off into

19 things that are not compensable in this case.

20 MS. WEISS: Subject to my proving, my other

21 evidence that they are compensable.

22 So I think the question --

23 THE COURT: That's fine. I won't comment on

24 that.

25 But I can tell you time spent on court while a

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284

1 case is going on is not compensable. I could be wrong,

2 but I have been doing this for 25 years, and, again,

3 repetition of an error doesn't make it a nonerror. I

4 understand that.

5 But I never heard anybody claim time spent in

6 court, time spent preparing for court, and so forth,

7 should be subject to compensation. I can understand how a

8 plaintiff would feel that way, but by law, lawyers really

9 don't address that type of situation, and, as you know,

10 there are a number of things the law can do in cases of in

11 sort.

12 Like, for instance, they can issue injunctions

13 and they can say you can't do that anymore, that type of

14 thing. But that's not what we are talking about for

15 reasons that I think are evident based on what's already

16 before the jury.

17 I don't pretend to have all the answers, but as

18 I said to the jury earlier, there has to be some

19 specificity, and the fact that people may have mistyped

20 the website name and ended up on another site, that's --

21 and I can understand to a plaintiff, that's very

22 troubling, and it's troubling for a number of reasons.

23 That doesn't mean that somehow a jury can attach

24 a dollar value to that. Think about that. How are you

25 going to do that? It's a tough task. In my judgment,

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285

1 it's impossible. You do need some evidence of specifics,

2 jobs that you should have gotten that were lost, that type

3 of thing.

4 But, in any event, I think what we ought to do

5 is just go back to the questioning of the witness. Don't

6 ask her to juxtaposition her answer against the legal

7 standard. That's not appropriate. Just ask her your

8 questions and she'll answer them as best she can and we

9 will leave it at that.

10 Go ahead.

11 MR. RONEMUS: Okay.

12 BY MR. RONEMUS:

13 Q. Just the fact that you are confused, or you have been

14 confused because you went on, perhaps, and you typed the

15 wrong name, you went on their interior design website, how

16 much do you feel the jury should compensate you for your

17 own confusion?

18 A. Well, it's not just that.

19 Q. I'm just talking about that.

20 A. Well, the way you are saying it, you are saying that

21 I'm the only one.

22 But there are other people out there that

23 mistype. And I don't know how many people out there

24 mistyped. I don't know how many people got to their site.

25 Q. When you say you don't know how many, it could be

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286

1 zero, true?

2 A. I --

3 Q. True?

4 A. I doubt it.

5 Q. Why do you doubt that?

6 A. Because I know people.

7 Especially people that are looking for a white

8 modern house. They are going to go and see this house and

9 book it directly.

10 Q. But isn't it true that you can't tell us the name of

11 one person who told you that they booked a white modern

12 house because they got on the Rubens' website by mistake

13 when they were looking for yours?

14 True?

15 A. True.

16 Q. In fact, isn't it true, ma'am, that you don't know if

17 you have lost any business, whatsoever, as a result of the

18 fact that Darrell Rubens, along with friends, purchased a

19 domain name HamptonLocations.com in 1999?

20 MS. WEISS: Objection, your Honor.

21 It hasn't been established by any proof that

22 Darrell Rubens and friends purchased that website that's

23 in the name of DSNY.

24 We haven't heard from Darrell Rubens --

25 THE COURT: I'll sustain it as to form.

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287

1 BY MR. RONEMUS:

2 Q. It's true, Ms. Grigor, is it not, that you don't know

3 if you lost any business at all as a result of what you

4 claim the defendants have done wrong in this case?

5 True?

6 A. I had phone calls from clients that got their

7 website.

8 Q. It's true, is it not, that you do not know, cannot

9 prove in this court, that you have lost $1 of business as

10 a result of what you claim the defendants did improper in

11 this case?

12 A. I don't know how much money and how much business I

13 lost.

14 Q. So if you don't know, then you can't prove it?

15 A. How can I find out how many people called him? He's

16 not going to tell me.

17 Q. You are the one that sued him?

18 A. Well --

19 THE COURT: This is getting very argumentative,

20 the last question and answer.

21 Q. Let me ask you this.

22 THE COURT: They will be set aside.

23 BY MR. RONEMUS:

24 Q. Do you remember your deposition where you were asked

25 questions back in July of 2004?

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288

1 A. Some of it.

2 Q. Do you recall being present with your attorney,

3 Ms. Weiss, and you were questioned by an attorney named

4 Sam Israel on behalf of the Rubens?

5 A. Yes.

6 Q. Do you recall being asked this question and giving

7 this answer, page 55, line 18:

8 Have you lost any business by reason of any

9 actions that have been taxicab by the defendants?

10 Answer: I don't know.

11 THE COURT: So the question is whether you were

12 asked that question and whether you gave that answer.

13 THE WITNESS: I -- maybe. I guess I did.

14 I don't remember -- I didn't read the deposition

15 again. But if it's in there.

16 BY MR. RONEMUS:

17 Q. Well, as you sit here today, can you tell us whether

18 you have lost any business by reason of any actions taken

19 by the defendants?

20 A. No -- I -- no.

21 Q. You can't tell us that you have?

22 A. I don't have -- I don't know how many people got him.

23 I don't know -- I don't have the names. When

24 people were calling me and saying they mistyped, that's

25 six years ago. I didn't write down their names.

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289

1 I didn't say, well, oh, what's your name, and,

2 you know, I didn't ask these people who they were. So,

3 you know, I didn't think I would be in court for this many

4 years.

5 Q. Well, you started the lawsuit about six years ago.

6 True?

7 A. Yes.

8 Q. So when these people who you tell us now called you

9 and told you they were confused, that was the time you

10 started the lawsuit.

11 Correct?


13 I don't think there has been any dates to

14 establish that.

15 MR. RONEMUS: She just said six years ago.

16 A. Well, the lawsuit was in Southampton Court.

17 Q. 2000?

18 A. Was it 2000?

19 Q. So when these people were calling you six years ago

20 and telling you that they were confused --

21 A. No. No. No.

22 Q. Let me ask the question first, and then you can

23 answer.

24 When you say, as you just told us, that people

25 called you six years ago and told you they were confused

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290

1 and you didn't write down their name, why didn't you do

2 that if you just started a lawsuit?

3 A. I don't understand the question.

4 Q. Is there any reason you did not write down the names

5 of people who you now tell us called you and told you that

6 they were confused?

7 A. I did not write down their names.

8 I don't know why -- I didn't write them down.

9 Well, no.

10 I'm confused on what you are saying, six years

11 ago. I'm confused on that question.

12 Q. My question confuses you?

13 A. Yes.

14 Could you say it one more time?

15 Q. Is there any reason when people called you and told

16 you they were confused six years ago, as you just

17 testified, you did not write their names down?

18 A. I did not write their names down, but now I'm trying

19 to remember if it was six years ago.

20 I don't remember the dates that these calls

21 came. They came over a period of time, and it was around

22 the time of June, like June 13th. So that was, you know,

23 six years ago, approximately, I guess.

24 Right? Of 2000, I guess.

25 Q. So why didn't you write the names down of these

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291

1 people who you now tell us told you they were confused?

2 A. This was before. They called me before.

3 Q. Before what?

4 A. The people that were calling me on the phone, it was

5 before I realized, and before I had the lawsuit.

6 This all happened before. I didn't sue

7 Mr. Rubens until later.

8 Q. You sued Mr. Rubens in approximately August of 2000,

9 about two months after the shooting?

10 A. Yes, that's true.

11 Q. Okay.

12 A. And the calls came before that because I was getting

13 some phone calls before.

14 Q. Okay.

15 A. And I was just getting the calls. I didn't write

16 anything down.

17 I didn't have a lawsuit.

18 Q. Well, when you started the lawsuit in Southampton

19 Justice Court, your husband was your lawyer.

20 Right?

21 A. Yes.

22 Q. And did you tell him that people had called you and

23 told you they were confused?

24 A. Yes.

25 Q. And did he suggest to you that maybe you should get

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292

1 the names of the people that told you this?

2 A. He didn't start the lawsuit until later.

3 This happened much later.

4 Q. I believe you said he started the lawsuit in August

5 of 2000.

6 A. I -- we started the lawsuit after the phone call,

7 after the phone conversation with Mr. Rubens.

8 Q. That was June of 2000.

9 You can look at your document, if it helps you

10 remember.

11 A. Well, the lawsuit with the Southampton lawsuit?

12 I don't remember when that actually took place.

13 Is it here? Here it is. July 27, 2000, it took place.

14 Q. That's the day you started the lawsuit in

15 Southampton?

16 A. The lawsuit was started.

17 Yes.

18 THE COURT: Let me just take judicial notice of

19 this.

20 I'm looking at the original complaint in this

21 court, not Southampton. There has been a reference to

22 this court, I believe. The case here was brought August

23 14, 2001.

24 The way I know that is, as you know, when it's

25 filed, it's stamped.

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293

1 MR. RONEMUS: Right.

2 BY MR. RONEMUS:

3 Q. So the case in the Justice Court was started about a

4 year before the case in Federal Court.

5 Correct?

6 A. It was started on July 27, 2000.

7 Q. And when you started this lawsuit, you spoke to your

8 husband, who was your lawyer, true?

9 A. Yes.

10 Q. And you told your husband that you had been getting

11 phone calls from people who told you they were confused

12 about this alleged -- about the two different domain

13 names.

14 Correct?

15 A. I believe so.

16 Q. And is there --


18 BY MR. RONEMUS:

19 Q. Did your husband tell you that you should write these

20 people's names down and call them as witnesses to prove

21 that there were, in fact, people who were confused?


23 THE COURT: On what ground?

24 MS. WEISS: Attorney-client privilege, what he

25 told her or what she told him.

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294

1 THE COURT: I'll sustain it.

2 BY MR. RONEMUS:

3 Q. Did you have discussions with your attorney about

4 whether or not you should -- don't tell us what you said,

5 about whether or not you should write down the names of

6 the people who you now tell us told you they were

7 confused.

8 Did you have discussions?

9 A. We talked about me finding the website. We talked

10 about the conversation with Mr. Rubens, and they weren't

11 going to give back the name.

12 I don't really recall talking too much about the

13 phone calls, actually.

14 Q. So you don't recall whether or not you spoke to your

15 husband/lawyer about the fact that as you now claim people

16 called you and say they were confused.

17 Correct?

18 A. I might have said it, but I don't remember, exactly.

19 I don't remember when.

20 I thought I said it, but I'm not sure.

21 Q. You are not aware of --


23 BY MR. RONEMUS:

24 Q. There is nothing that you know of that the defendants

25 have done in this case that hurt your reputation in the

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295

1 business community.

2 True?

3 A. Well, I'm feeling that if somebody got his site and

4 they got -- went to his house, you know, I just feel that

5 my reputation, he might have said something about me or

6 done something to my clients.

7 Q. Now, when you say he might have said something about

8 you --

9 A. Well --

10 Q. Let me just finish, and then you can answer.

11 So it true that you are not aware of one person

12 who has told you that your reputation in the business

13 community has suffered as the result of anything that the

14 defendants did in this case?

15 Just yes or no?

16 A. I don't -- say it one more time.

17 Q. Has anybody ever told you that as a result of

18 something that the defendants did in this case, your

19 business reputation has suffered?

20 A. My business reputation -- you mean one person just

21 saying, oh, he's like -- I don't understand, exactly.

22 Q. You don't understand what I'm asking you?

23 A. Say it again.

24 Q. Has anybody ever told you that as the result of

25 something that Darrell or Richard Rubens did in this case

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296

1 caused your business reputation to suffer?

2 A. I can't recall if anybody said that right now.

3 Q. Now, in fact, when you were testifying about your

4 business, it sounds like you are doing pretty well.

5 I think you said you have 500 houses right now?

6 A. Approximately.

7 Q. And you have expanded from New York, down to Florida,

8 to the Poconos.

9 Anyplace else that you are covering right now?

10 A. The north fork.

11 Q. Back at the time of '99 and 2000, your business was

12 all located in the Hamptons region.

13 True?

14 A. '99 and 2000, mostly Hamptons, yes.

15 Q. So, in fact, you weren't doing any out-of-state

16 business at that time.

17 It was all within New York State?

18 A. Yes.

19 Q. And as far as you know, the Rubens did not conduct

20 any business outside of New York State under the domain

21 name Hampton Locations.com.

22 True?

23 A. Well, the domain name is on the internet.

24 It goes everywhere, right?

25 Q. My question is: Are you aware of any business that

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297

1 they conducted using that domain name outside of New York

2 State?

3 A. You mean, like, other than the Design Quest business?

4 Q. Well, the website took -- during that two-month

5 period, the website took people to the Design Quest site.

6 Right?

7 A. Yes.

8 Q. Are you aware of any business that they performed

9 from using that domain name which you claim they should

10 not have been using during that two-month time period

11 outside of New York State?

12 A. I am not sure.

13 I don't know what jobs they had.

14 Q. Okay. That's your answer.

15 Is it your testimony today that Barbara and

16 Richard Rubens or Darrell Rubens ever acted as location

17 scouts?

18 A. Yes.

19 Q. And what is that based on?

20 A. Based on, you know, the website is plural. They have

21 locations in their website. They had the word Hamptons

22 Locations.

23 And I feel that the fact that they are

24 advertising in the production book, it's misleading that

25 they are doing production and locations, and when you get

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1 to their website, you see locations. You see a sign

2 saying Hamptons Locations. So it's misleading and it's

3 confusing.

4 Q. Is your testimony they are not allowed to use

5 Hamptons Locations on their website?

6 A. Yes, they cannot use that.

7 Yes.

8 Q. Why not?

9 A. Well, I mean, they could use it if they are a

10 company, and they are, like, designating a division.

11 But they are using my name on the internet.

12 They are putting www.HamptonLocations.com, and my website

13 is www.HamptonsLocations.com.

14 And I'm saying that it's too confusing and it's

15 very misleading and it's way too close, and they shouldn't

16 be using it.

17 Q. So it's your testimony that that name, Hampton

18 Locations, is your name, when they --

19 A. Well, I --

20 Q. Let me finish it.

21 When they bought it, it's your testimony that

22 that's your name.

23 True?

24 A. Yes.

25 Q. And the DSNY had no right to own that domain name

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1 when it was purchased in 1999.

2 Is that your testimony?

3 A. Correct.

4 They shouldn't have bought -- if they knew I had

5 Hamptons Locations, why would they go and do that? They

6 wanted to have people diverted to their website.

7 They were being sneaky and trying to get people

8 into their website.

9 Q. So that's your understanding of why that domain name

10 was purchased in 1999.

11 True, as they were being sneaky and trying to

12 divert people into the interior design website for Design

13 Quest?

14 A. Well, I --

15 Q. Is that your testimony?

16 A. Yes.

17 Q. And what proof do you have of that, other than your

18 own thoughts about that?

19 A. What, that they were being sneaky?

20 Q. Yes.

21 A. Well, Mr. Rubens wants to be listed with all of the

22 multiple agents out there.

23 Q. When you say Mr. Rubens, you are talking about

24 Richard Rubens?

25 A. Richard Rubens, his house --

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1 Q. And when you say he wants to be listed --

2 A. Well, he's listed --

3 Q. Let me just finish, please.

4 A. Okay.

5 Q. He can't get everything down and I ask you to let me

6 finish the question and I'll let you answer, as long as

7 you are answering my question. Is that fair enough?

8 You understand? Just say yes or no?

9 A. Yes.

10 Q. Okay.

11 It's your testimony that Richard Rubens wants to

12 be with all the location companies out there.

13 Is that what you are telling us?

14 A. He wants to be listed -- he is listed with a

15 multiple -- he's on a multiple listing.

16 Q. Is there something wrong with that?

17 A. No, nothing.

18 Q. Is there something about that that bothers you?

19 A. No.

20 Q. Is that, in your mind, being sneaky -- let me finish

21 -- is that in your mind being sneaky that Mr. Rubens is

22 listed with another location company?

23 A. No, it's being sneaky using my name and going to his

24 site. If he wants to go to Jenny Landey, go to Jenny

25 Landey Production and take away from her business.

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07 0486 joint appendix

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