defendants reply brief on appeal
TRANSCRIPT
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PRELIMINARY STATEMENT
This reply to Appellee, Nancy Grigors, (Grigor) brief is being made by
Defendant-Counterclaimant-Appellant, Darrell Rubens (Darrell) and
Defendant-Counterclaimants, Barbara and Richard Rubens, (Barbara and
Richard). Since Darrell, Barbara and Richard anticipated and thoroughly
refuted most of Appellees arguments in their initial brief, Rubens reply is
limited to minor, but necessary observations, rebuttal arguments and
comments.
COUNTER JURISDICTIONAL STATEMENT
GRIGORS CONTENTION THAT THE RUBENS JURISDICTIONAL
PROCEDURES ARE INCORRECT ARE ERRONEOUS
Darrell, Richard and Barbaras Jurisdictional Statement does comply to
FRAP. 3 (c)(1)(A).
Darrell, Richard and Barbaras Amended Notice of Appeal dated June
22, 2009, filed on June 23, 2009 does comply with FRAP 4(a)(4)(A)(i) and
(B)(i) and Appellants Jurisdictional Statement does comply to FRAP.
3(c)(1)(A). Barbara, Richard and Darrells Preliminary Statement is proper
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since it refers to the one Jury Verdict that was entered on January 30, 2007
which is the Clerks Judgment in this Civil Case. The Conclusion does
challenge the Jury Verdict, and does properly challenge the issues appealed,
and in this Reply Brief it is rewritten to be exacting.
Based on the above, and in contrary to Grigors claims in her Brief, all
issues in Darrells brief should be decided by this Court.
Grigors jurisdictional claim that the Rubens have not filed a timely
appeal on the interlocutory decision of Judge Hurley dated February 17, 2004,
which was docketed and entered by the clerk on March 2, 2004, (A-18, Docket
97) which dismissed their counterclaim, is erroneous. The case given by Grigor
to support her contentions confirms just the opposite. In FirstTier Mortgage
Company v. Investors Mortgage Insurance Company, 498 U.S. 269, Justice
Kennedy, stated. that the trial court, when it rendered the interlocutory
decision to dismiss allFirstTiers claims, though not necessarily a final decision
within the meaning of 28 U.S.C. 1291, had sufficient attributes of finality to
be a decision under the saving provision of Rule 4(a)(2) of the FRAP. It is
appropriate to talk in terms of finality in the case before us because the bench
ruling did announce a decision purporting to dispose of all of FirstTier's
claims."Ante, at 277. I would add, however, that the saving provision of Rule
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4(a)(2) applies as well to the announcement of an order, and that some orders
are appealable even though they do not possess attributes of finality. See 28
U.S.C. 1292(a). In such cases, operation of the saving provision would not be
controlled by whether or not the trial court's announcement was in the nature of
a final judgment.
Richard, Barbara and Darrell, acting Pro se, at that juncture, filed their
interlocutory appeal on March, 11, 2004 within the requisite 30 day time limit of
the March 2, 2004 entry of judgment by the clerk on the docket, (A-18, Docket
97), along with the requisite filing fee of $255.00, (A-18, Docket 98). The Court
in U.S. v. Delileon, WL 5190921, S.D.N.Y., December 01, 2008 stated; a
notice of appeal filed by a pro se litigant must be viewed liberally. The
Rubens had reason to believe that the dismissal of their counterclaims was a
final decision and therefore, was appealable at the end of this case.
There is no requirement for Rubens to move to amend the Judgment
under FRAP, 59(e), or to move to correct a clerical error in the judgment under
FRAP, 60(a) or to request that the District Court review the dismissal of their
counterclaims underFRAP, 60(b) for their Notice of Appeal to be procedural
valid. After the final determination of the case at bar the Rubens did an
Amended Notice of Appeal which merged the Appeals as one, and this
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Amended Notice was filed within 30 days of the final decision of the Court
which disposed all issues in the case, and therefore, the Rubens Appeal
regarding the dismissal of their counterclaims is within the jurisdictional
guidelines and should not be dismissed since procedure was timely and proper.
COUNTERSTATEMENT TO APPELLEES STATEMENT OF FACTS
Trial testimony and the record do not support Grigors false accusations
in her Statement of Facts in her brief:
1. Contrary to Grigor on p.22 2, there were no prior intervening
demands and or events that involved Darrell prior to the Cease and Desist letter
sent to Darrell.
2 Contrary to Grigor, on p.22 2; After DARRELL conferred with his
fatherRICHARD demanded money The record and trial testimony
support, that it was Grigors husband/attorney whorefusedto accept the domain
without Richard paying Griffiths demand of $2,800.00. This is clear and
Griffith admitted such at trial, Court Trial Exhibit (2), (Darrells Brief p. 44).
This statement, however, has nothing to do with Darrell or are there any claims
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now or then that Darrell demanded any money from anyone for the alleged
infringing domain address.
3. Contrary to Grigor on p. 23 2, there is nothing to base any conclusion
that the attorneys that Darrell consulted with when he answered the Cease &
Desist letter were not qualified to give him advice.
4. Contrary to Grigor on p.23 2 the infringing domain name was not
continued on the internet.
5. Contrary to Grigor on p. 23 -24 3 Grigor changed her trial testimony
when she was presented with her opposition to Rubens Motion for Summary
Judgment in which she attested to and submitted her card file folder (Exhibit
182 (E-56), (A-276-282) that; she immediately made up this folder on May
22, 2000 after taking photos of the Rubens house, (Darrells brief p.48).
ARGUMENTS
POINT I
GRIGORS MARK IS GENERIC AND IS A FUNCTIONAL
DESCRIPTIVE TERM THAT CANNOT HAVE ACQUIRED
SECONDARY MEANING AS OF JULY 8, 1999
Grigor has failed to address or counter any of the arguments, evidence
or case law that Darrell has presented which proves that Hamptons Locations
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is a functional term that is generic and cannot be monopolized as a mark,
(Darrells brief, p.2237). It is interesting that Grigor compares her small
company, in which she is the sole employee, located in her home in a small
beachfront community of the Hamptons to American Airlines and U.S.
Airways to counter the fact that Hamptons Locations is not a functional
term and generic term and cannot be monopolized by her as a mark. Even
though the names of these airlines are made up of common words, both
American Airlines, who registered their service mark in 1934 and U.S.
Airlines who registered their mark in 1949, are world renowned, depict the
true definition of source indicators and have acquired secondary meaning.
Grigor cannot compare some of the worlds largest airlines, which are public
companies that have been established decades ago and have tens of thousand
of employees and huge revenues to her Hamptons Locations.
Richard and Barbara who have a Hampton Location and Grigors
competitors who offer Hamptons Locations find Hampton(s) Location(s) a
necessary functional term to describe and market their Hamptons Locations,
(A-242), Darrells Brief p. 27-28, (E-59), At least 129,000 others, that are
listed in Google and Yahoo find it necessary to use the identical term to
market their service or product, Darrells Brief p 27-28. (E-59), (A-242).
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Trademark law seeks to provide a producer neither with a monopoly over a
functional characteristic it has originated nor with a monopoly over a
particularly effective marketing phrase.
The fact that Grigor, in her brief, p.36, 3, refers to her competitors,
that are in the same exact business as her, who use the exact term Hampton(s)
Locations(s) to advertise in Google, Yahoo, their own respective websites,
and in trade publications, the same exact location services, in the same
geographical location, as a casual use1 is preposterous. Therefore, the only
logical conclusion to draw is that Darrells use of the alleged infringing
name to describe his parents Hampton Location was lawful and fair use.
Grigors production of four insignificant news articles, which two
predated her declaration of first use (Darrells main brief p. 33-35) and her
husbands testimony that; when they go to dinner all the restaurant owners
know his wife, (A-265), along with her conflicting, unsupported and
inconsequential sales figures are certainly not what the courts have
determined is proof for Secondary Meaning. For the Jury to have decided that
Grigors mark acquired secondary meaning as of July 8, 1999 is based on
such lack of evidence, it had to be based on pure conjecture and surmise. For
1Grigor has not attempted to stop any of her competitors from using her mark.
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Judge Hurley to go against all prior decisions of the Second Circuit, in
determining Secondary Meaning is clear error.
POINT II
THE JURY VERDICT FINDING THAT DARRELL VIOLATED 1125(d)
OF THE LANHAM ACT AND THE DISTRICT COURTS DENIAL OF
DARRELLS 50B MOTION IS ERRONEOUS.
Section 1125(1)(D) expressly provides
that a person may not be liable for using a domain name unless that
person is the domain registrant or that registrants authorized licensee.
Judge Hurley in his decision dated September 30, 2005, (A-66, A-67), states
that; The only evidence before the Court is that, one of Darrells friends
purchased this name through DSNY. Judge Hurley goes on to say, that
the evidence linking Darrell is marginal at best.
Darrells parents website www.dqny.com was established before the
link and before any registration of any alleged infringing domain name and
the fact that Darrell helped his parents in the design of their website is not
bad faith. In Judge Hurleys September 30, 2005 decision, (A-68), on the
Rubens Motion for Summary Judgment he refers to the affidavits the Rubens
submitted in support of their motion from Darrell, and his attorney/friends,
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James, (Jimmy) Wang, and Christopher, (Chris) Spuges. Jimmy attests to
being an attorney since 1996 and knowing Darrell for fifteen years. Chris,
attests to being an attorney since 1997 and knowing Darrell for over nineteen
years. They both attest that the alleged infringing name was obtained for a
business venture they were pursuing to offer discount Hamptons rentals over
the internet and how this domain name, (www.hamptonlocations.com) was
geographically indicative of their venture, (A-13- Docket Entry 161). Judge
Hurley states, Darrell argues that this evidence demonstrates he acted in
good faith. Judge Hurley goes on to state that the Court agrees that this
evidence is probative of his (Darrells) intent Trial testimony by Darrell
and Richard explained this innocent and fair use and there was absolutely
not a shred of evidence presented to assume otherwise. In fact, a review of the
entire trial transcript de novo will affirm this.
Grigors brief, p. 38 3 misstated the record since page 560 was
accidentally left out of Darrells Joint Appendix, Contrary to trial testimony,
Darrell never testified that he thought up DSNY, Darrell testified, at that
time the only way to register through Network Solutions is you neededa
corporationwe had a couple of attorneys in the room and they were saying
theres no need to file for a corporation right nowI mentioned my dad
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had an corporationI know it went under DSNY,(A-198-199), (Trial
transcript pages of Darrell 559,560&561). It is clear by the record that DSNY
was selected with the advice of counsel and the correct contact information
was provided.
Grigor is being very coy on p.39 2 of her brief, she wants this Court to
believe Richard had prior knowledge of this registration when she states,
RICHARD was aware of Darrells usage of the infringing domain name
The fact is that Darrell consulted with his attorneys when he received the
Cease & Desist letter and did not immediately tell his father, but as soon as he
told his father, Darrell removed the link in good faith.
Grigor in her brief, on p.39 1 makes statements for the first time that
are not in the record and draws her own conclusions and says that Darrell
worked for his parents in a commercial context in the marketing of their
house for profit. The record does not support this, but instead shows that
Darrell is a full time real estate agent working for Winick Realty in New York
City. The record shows that all contact information on the location page of
www.dqny.com had Design Quest and Richard Rubens contact information.
There was never any claim or any evidence presented that Darrell
demanded any money for the alleged infringing domain. Grigor tries to
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confuse the facts, as she did at trial and on p. 39 tries to instill blame on
Richard to take away from the threatening conduct of Grigors
husband/attorney which Grigor has always been aware of. The allegations
that Richard demanded money for the domain address were cleared up at trial
with testimony from both Richard and Griffith. Griffiths testimony and Court
Exhibit 2, clearly shows it was Griffith, who threatened and demanded money
from Richard (not conversely). Court Exhibit 2 clearly shows that it was
Griffith who refused to accept the domain name without Richard paying
Griffiths demand of $2,800.00. This evidence is clear and Griffith reluctantly
admitted such, only after a portion of the transcribed recording2 had to be
read into evidence at trial.
Grigors attorney, Ms. Weiss, offers her own statements and
hypothetical conclusions which are not part of the record. P 42 2, Ms. Weiss
calls Darrells reply to Roomians Cease and Desist letter impertinent,
misleading, deceptive, coy and sassy and that DARRELL had every intention
of continuing his bad faith However, Darrells reply was reviewed by
three attorneys and ended by stating to Roomian, If you have any questions,
please feel free to call me.(A-50), Roomian did not reply or contact Darrell
2 There was a tape recording made by Richard Rubens of Griffiths demand and threatswhen he spoke with Darrell over the phone.
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(A-233). Even in light of no response from Roomian, (which Darrell rightly,
conceived as permission to continue use), Darrell discontinued any use
within 30 days after receipt of this letter and prior to any litigation.3 The Jury
should have determined that it was Roomian and Grigor that acted in bad
faith not Darrell. The undeniable facts are that Darrell did not ignore
Roomians letter, Darrell consulted with attorneys prior to sending his reply,
(3 days of receiving it). Darrell ceased any use within 30 days of this letter,
even though Darrell believed he had the lawful right to this fair use. This
is good faith and for the Jury to have construed otherwise was the result of
surmise and conjecture. It was clear error that Judge Hurley did not vacate the
Jurys Verdict.
On p. 29 of Grigors brief she cites Yurman Design, Inc. v. PAJ, Inc.4
262 F. 3d 101 and Hamil America, Inc. v GFI, 193 F. 3d 92, (two copyright
infringement cases) to show the definition of willfulness, which in copyright
law means a "reckless disregard". Both cases are not on point, nor do they
relate to trademark infringement. They have nothing to do with the actions of
Darrell, nor did Darrell act with reckless disregard. Neither case had a
3 Justice Court action for trademark violation commenced after there was no use of thedomain and this action at bar commenced more than one year after any use had beendiscontinued.4 In Yurman the Court of Appeals reversed judgment and vacated plaintiffs claims ofviolation of the Lanham Act and Unfair Competition.
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defendant that should have been protected by the Safe Harbor clause of the
Lanham Act, neither had a defendant that believed his use of the domain
address was lawful and fair use. Neither case had a defendant that stopped
all use within 30 days after receiving and replying to a Cease & Desist Letter.
Here again Grigors analogies fail. As shown in Desert Beauty, Inc. v. Fox
568 F. Supp. 2d 416 S.D.N.Y. (2008). Judge Chin even states; failure to
completely abandon the use after receiving a Cease & Desist letter is
insufficient to support an allegation of bad faith(Darrells brief p. 41). In
Lemme v. N.B.C., Inc. 472 F. Supp. 2d 433 E.D.N.Y., Judge Hurley, in a case
very similar to Darrells, states, prior knowledge of Plaintiffs mark without
more, does not create an inference of bad faith, (p. 42-43 Darrells brief)
Ms. Weiss states again, which is not part of the record, (p. 43 of
Grigors brief) and ironically says that Darrell did not consult with any
qualified intellectual property counsel (in responding to the Cease & Desist
letter), and therefore, DARRELL was acting willfully and recklessly Ms.
Weiss continues these inappropriate remarks and draws more of her own
conclusions and in effect testifies that by Darrell not engaging
professional consultation with a qualified attorneyDARRELL demonstrated
that his conduct was willful and thus engaged in bad faith. Ms. Weiss has
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wrongfully inferred to this Court that there must be some law, somewhere,
that states that an attorney must specialize in a certain area to qualify in
order to help or represent a client and that friends who are attorneys should
not offer their services without formally being hired. In this case, who could
be better qualified to assist Darrell with a Cease & Desist letter than
attorneys who knew Darrell and his parents for over fifteen years and that
have personal knowledge and were part of the intended business venture.
Even though the basis of this fanciful argument could not possibly lead any
reasonable people to conclude that Darrells actions were willful or in bad
faith, Ms. Weiss is not coming to this Court with clean hands. She fails to
mention that Griffith, admittedly has no knowledge whatsoever in trademark
law and admittedly did not know anything about the action he personally
brought forth for his wife against Darrell and Richard in Justice Court for
trademark infringement, (A-260-264). Even more astonishing, Ms. Weiss
appears to have only been involved in one intellectual property case and that
is this one at bar, there appears to be no prior experience in trademark cases.
The Pacer Dockets of Eastern & Southern District Courts and the second
Circuit show that Ms. Weiss is extensively involved in just Civil Rights
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claims and little more5. Therefore, it is clear that Grigors attorneys
arguments about Darrell consulting with unqualified attorneys are baseless
and no reasonable person could assume otherwise. Likewise I have no prior or
subsequent trademark experience.
POINT III
DARRELL BELIEVED HE ACTED LAWFULLY AND IN GOOD
FAITH AND ANY FINDING DIFFERENTLY IS PURE CONJECTURE
AND SURMISE.
Darrell acted in good faith when he consulted attorneys and
immediately replied to Roomians Cease and Desist letter and Darrell acted in
good faith when he discontinued the link to his parents interior design
website within 30 days. (Darrells Brief, p. 40-51).
www.dqny.com is the website of Design Quest which displays the
name Design Quest, tells about the interior designers Richard and Barbara
Rubens, and has portfolios of the corporations design projects and a location
page with a modern house and contact information for Richard Rubens at the
corporations phone number. No purchases of any kind can be made from this
web site and www.hamptonlocations.com was never displayed. At trial the
5 Civil Rights actions and Trademark actions provide attorney fee awards and do notfollow the American Rule where each litigant bears its own expense. It seems as Ms.Weiss seeks to obtain these fees from the opposing parties rather than her own clients.
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Court agreed that Grigor failed to offer any evidence that anyone was
confused, deceived or that there was any loss of good will, nor did Grigor
even attempt to show any loss of business, or lost profits. Anyone viewing the
Design Quest web site would know that it was Design Quest. No reasonable
person and certainly not the specialized type of scout that wished to look for a
Hampton location for their client would by any stretch of imagination confuse
the Design Quest web site for that of Hamptons Locations.
The ACPA contains a bad-faith safe harbor for a defendant who
believed and had reasonable grounds to believe that the use of the domain
name was a fair use or otherwise lawful. 15 U.S.C. 1125(d)(1)(B)(ii);
Hartog & Co. AS v. Swix.com, 136 F.Supp.2d 531, 541 (E.D.Va.2001);
Chatam Int'l, Inc. v. Bodum, Inc., 157 F.Supp.2d 549, 554 (E.D.Pa.2001)
Darrell indisputably had reasonable grounds to believe that any use of the
domain name was lawful and fair use, Darrells brief, (p. 38-51) The
record establishes that the vast majority of factors listed in ACPA favor a
findingof nobad-faith.
The finding of bad faith or again as Ms. Weiss hypothesizes; p. 47 2
true cyperpiracy is ludicrous. Any erroneous finding of bad faith by the
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Jury had to be based on pure conjecture and surmise and the finding of Judge
Hurley in not vacating the Jurys decision is erroneous.
Interestingly enough Ms. Weiss cites, Lukes Cataract and Sanderson
Laser Institute P.A. v. Sanderson 573 F. 3d 1186 (11th Circuit 2009) as to how
statutory damages act as a punishment. For Ms. Weiss to compare the actions
of defendant in that case to Darrell is ridiculous. Sanderson, an oculoplastic
surgeon, under the employ of St. Lukes, pirated the hospitals web site,
changed the internet hosting company and directed the hospitals domain
names into a new hosting company under his sole control without any
authorization to do so. Sanderson made a copy of St. Lukes website, hired
someone to make some minor changes and shortly after he resigned from the
hospital and opened up his own practice and relaunched the web site and
directed the domain names to his own internet hosting companys server.
Certainly, there is no comparison here to Darrell, and in fact, Ms. Weiss
analogy of what willful behavior and bad faith is proves that there is
absolutely no reason to punish Darrell.
Grigor has not produced one case on point. Darrells brief, Joint and
Special Appendix and Exhibits, supported by trial testimony, case law and the
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entire record makes it clear error for any Jury or Court to determine that
Darrell acted in bad faith and violated 1125(d).
Richard, Barbara and Darrell still argue that this is a junk lawsuit,
concocted to harass and retaliate against the Rubens. Darrell believes that his
use of the alleged infringing mark was a mere token use that was lawful,
innocent an in fair use. Darrell has put forth clear and concise arguments
and case law that the term Hampton Locations is functional and should be re
classified as generic or at the least be determined that Grigors mark has not
acquired secondary meaning as of July 8, 1999. Any finding that Hamptons
Locations has acquired secondary meaning would be in total disregard of any
previous decisions or what has been established by the Second Circuit to
prove distinctiveness of a mark. An erroneous finding in this case would
contradict all the law established by the various Appellate Circuits as well as
with the U.S. Supreme Court.
U.S.C. 15 1117 of the Lanham Act and U.S.C 28 1927 provides that
the Court in exceptional cases may award reasonable attorney fees to the
prevailing party. Grigor has failed to tell this Court that Richard, Barbara and
Darrell have a motion pending in the District Court for their attorney fees.
The Second Circuit has held that the standard for the award of attorneys fees
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to a prevailing defendant is the same as to a prevailing plaintiff. Conopco,
Inc. v. Campbell Soup Co., 95 F.3d 187, 194-95 (2d Cir.1996), Nothing ...
indicates that a different standard should apply for prevailing plaintiffs and
prevailing defendants. The general rule is that the prevailing party in a
multi-claim case which includes both Lanham Act and non-Lanham Act
counts should be entitled to attorney fees only for work expended in
prosecuting or defending the Lanham Act counts. However, if the claims
are so intermingled that the factual basis and the legal theories are
essentially the same; the court may award all of the prevailing party's attorney
fees, making no deduction for the Lanham Act counts. The Rubens motion
in District Court is based on the fact that allof Grigors five intermingled
claims were summarily dismissed against Barbara, three of the five claims
were summarily dismissed against Richard and Darrell and the Jury dismissed
the remaining two claims as to Richard, and one of the remaining claims as to
Darrell which left only the one claim against Darrell, which is now before this
Court on appeal.
The District Courts attorney fee motions are not before this Court nor
has any decision been rendered. Upon the resolution of this Appeal, or as
soon as this Court requests, Darrell, Richard, Barbara Rubens will move this
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https://web2.westlaw.com/find/default.wl?tf=-1&rs=WLW9.10&referencepositiontype=S&serialnum=1996205367&fn=_top&sv=Split&referenceposition=194&findtype=Y&tc=-1&ordoc=2006520484&mt=SecondCircuit&db=506&utid=1&vr=2.0&rp=%2ffind%2fdefault.wl&pbc=FF4EFDEFhttps://web2.westlaw.com/find/default.wl?tf=-1&rs=WLW9.10&referencepositiontype=S&serialnum=1996205367&fn=_top&sv=Split&referenceposition=194&findtype=Y&tc=-1&ordoc=2006520484&mt=SecondCircuit&db=506&utid=1&vr=2.0&rp=%2ffind%2fdefault.wl&pbc=FF4EFDEFhttps://web2.westlaw.com/find/default.wl?tf=-1&rs=WLW9.10&referencepositiontype=S&serialnum=1996205367&fn=_top&sv=Split&referenceposition=194&findtype=Y&tc=-1&ordoc=2006520484&mt=SecondCircuit&db=506&utid=1&vr=2.0&rp=%2ffind%2fdefault.wl&pbc=FF4EFDEFhttps://web2.westlaw.com/find/default.wl?tf=-1&rs=WLW9.10&referencepositiontype=S&serialnum=1996205367&fn=_top&sv=Split&referenceposition=194&findtype=Y&tc=-1&ordoc=2006520484&mt=SecondCircuit&db=506&utid=1&vr=2.0&rp=%2ffind%2fdefault.wl&pbc=FF4EFDEFhttps://web2.westlaw.com/find/default.wl?tf=-1&rs=WLW9.10&referencepositiontype=S&serialnum=1996205367&fn=_top&sv=Split&referenceposition=194&findtype=Y&tc=-1&ordoc=2006520484&mt=SecondCircuit&db=506&utid=1&vr=2.0&rp=%2ffind%2fdefault.wl&pbc=FF4EFDEF -
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Court to determine that this is an exceptional case based on the
circumstances and lack of any evidence supporting this unnecessary,
vexatious, and meritless lawsuit and for the oppressive conduct of Grigor and
her husband attorney and Ms. Weiss for the having knowledge of and the
orchestration of threats on the Rubens family and their witness Mr. Lee
Davis. And based on the fact that this junk lawsuit was initiated for
retaliation and for the sole purpose of harassing the Rubens and tying them
up in extensive and costly litigation.
POINT IV
GRIGORS ARGUMENT THAT DARRELL DID NOT PRESENT ADEFENSE CASE MUST FAIL
Grigors argument, that because Darrell did not present any defense
case the Jury verdict is hardly surprising. This argument fails. There was no
need to burden the Court or the Jury with repetition of the main case. Grigor
and her witnesses were adequately cross examined and impeached. Darrell
and Richard, were called as witnesses in the main case, entered exhibits into
evidence and adequately refuted any and all claims. Grigor failed to present a
Prima Facie Case, and Defendants made a proper 50A Motion. It was clear
error on the part of the Court to deny such motion.
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POINT V
THERE WAS SUCH INSUFFICIENT EVIDENCE THAT THE JURYVERDICT HAD TO BE BASED ON SHEER CONJECTURE AND
SURMISE AND JUDGE HURLEYS DENIAL OF DARRELLS 50 BMOTION WAS CLEAR ERROR.
The Jury Verdict was based on such a lack of evidence that it had to be
based on pure conjecture and surmise. For a Jury to find that Grigors mark
acquired Secondary Meaning based on such a thread bare evidence shows
that they could not have understood the heavy burden of proof that Grigor
needed to show. It had to be error for Judge Hurley to rule that Hamptons
Locations is a descriptive mark and not generic and it must be clear error that
Judge Hurley did not reverse the Jurys determination that Hamptons
Locations had acquired Secondary Meaning as of July 8, 1999 nor vacate the
Jurys Verdict that found that Darrell violated 1125(d). Judge Hurleys
finding is inconsistent with any previous decision of the Second Circuit
including the finding of Judge Hurley himself in Lemme v. NBC, Inc. 472 F.
Supp. 2d 433, a very similar case, which he dismissed on a Motion for
Summary Judgment on February 1, 2007, just a few days after the Jury
findings in this case at bar, (Darrells brief p. 42-43), To uphold the Jurys
Verdict and the denial of Darrells 50B Motion would turn this junk lawsuit
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into one of the most important and adverse decisions the Circuits have seen
and would defy the legislative intent of the ACPA. It would open up the
floodgates of frivolous trademark actions and give trademark owners a sword
to slaughter the innocent with and would totally change the necessary and
determined standards of burden of proof required to substantiate a finding of
secondary meaning. It would also give functional terms an undeserved
monopoly to trademark owners and eradicate the American dream of free
enterprise.
POINT VI
THE DECISION OF JUDGE HURLEY TO DISMISS RICHARD,BARBARA AND DARRELLS COUNTERCLAIM SHOULD BE
REVERSED.
As stated in the Rubens brief, p. 53-60, there are good and valid
reasons for these counterclaims. It is evident that this abuse of process
continues, p. 58, 3 of Grigors brief, and it would be a mockery of justice if
Grigor and her agents were able to continue to use the judicial system in such
an oppressive way and not let the Rubens family have their day in Court.
Grigor and her agents abuse of process continues to this day and certainly this
abuse conforms to the necessary three elements that are to be pled. The
Rubens were Pro Se litigants when they pled their counterclaims and when
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they were dismissed, and now this Court has the option to afford some degree
of flexibility in allowing them to demonstrate the validity of their claims.
CONCLUSION
WHEREFORE, Barbara, Richard and Darrell respectfully request
this Court to reinstate their counterclaims. Darrell respectfully requests this
Court to reverse the January 24, 2007 decision of Judge Hurley that classified
Grigors mark descriptive and to classify Hamptons Locations as a generic
mark and upon such classification order the cancellation of the registration of
such mark. In the event that this Court finds that the mark is not generic then
Darrell respectfully requests this Court to find that Hamptons Locations has
not acquired secondary meaning as of July 8, 1999 and upon such
determination order the cancellation of the registration of such mark. It is
further respectfully requested that the one Jury Verdict that was decided on
January 29, 2007 and entered as the Clerks Judgment in a Civil Case on
January 30, 2007 that determined that Darrell violated 1125(d) and awarded
Grigor a statutory award of $1,000.00 be reversed and vacated and for this
Court to reverse the denial of Judge Hurleys 50B Motion, along with such
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further relief as this Court deems just and proper including award Rubens
attorney fee motion for the undertaking of this appeal and grant Rubens
Motion for sanctions for this baseless and frivolous lawsuit.
Dated October 21, 2009
Respectfully Submitted:
_____________________________Michael B. RonemusRonemus & Villensky112 Madison AvenueNew York, NY 10016212-779-7070E-mail: [email protected]
To: Patricia Weiss, Esq.Sag Harbor Shopping Cove75 Main StreetP.O. Box 751Sag Harbor, NY 11963-0019
mailto:[email protected]:[email protected]