Uptown Grill, LLC v. Shwartz et al

Filing 485

ORDER AND REASONS: For the foregoing reasons, the Motion to Alter or Amend 473 is GRANTED IN PART, as stated herein. IT IS FURTHER ORDERED that this Court's Order and Reasons (Doc. 470 ) is hereby AMENDED as identified herein. IT IS FURTHER ORDERED that a Judgment be rendered in favor of CGH on its breach of the License Agreement claim. Signed by Judge Jane Triche Milazzo on 08/25/2021. (Reference: All Cases)(am)

Case 2:13-cv-06560-JTM Document 485 Filed 08/25/21 Page 1 of 7

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
UPTOWN GRILL, LLC

CIVIL ACTION

VERSUS

NO. 13-6560

MICHAEL LOUIS SHWARTZ, ET AL.

SECTION: “H”

ORDER AND REASONS
Before the Court is Camellia Grill Holdings, Inc.’s Motion to Alter or
Amend Order and Reasons (Doc. 473). For the following reasons, the Motion is
GRANTED IN PART.
BACKGROUND
This case arises from two transactions that took place in 2006: (1) the
sale of the New Orleans-based Camellia Grill restaurant (the “Carrollton
restaurant”) and (2) the licensing of the rights to Camellia Grill intellectual
property. The Bill of Sale was executed by the owner of the Camellia Grill,
Michael Shwartz, and his wholly-owned entities, Camellia Grill, Inc. and
Camellia Grill Holdings Inc. (“CGH”), in favor of Uptown Grill, L.L.C.
(“Uptown Grill”), wholly owned by Hicham Khodr. In the License Agreement,
CGH licensed the exclusive rights to use Camellia Grill’s federally registered
trademarks to a separate Khodr-owned company, The Grill Holdings, L.L.C.
(“The Grill Holdings”). Hicham Khodr, through The Grill Holdings, made many
Khodr-owned entities sublicensees to the License Agreement and used those

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entities to operate the Carrollton restaurant and new Camellia Grill-style
restaurants.
In 2008, Shwartz and Khodr began to contest the terms of the License
Agreement and to litigate their rights under both the License Agreement and
the Bill of Sale. 1 The litigation of these issues has lasted approximately twelve
years—seven of which have been before this Court. The Fifth Circuit has also
rendered two opinions in this matter. As this Court provided a detailed outline
of the long and litigious history of this case in its most recent opinion in this
matter, 2 the Court will now provide only facts relevant to the instant Motion
to Reconsider.
On January 27, 2021, this Court issued an Order and Reasons granting
in part and denying in part CGH’s Motion for Summary Judgment. 3 In its
Motion for Summary Judgment, CGH asked the Court to: (1) find that Khodr
breached the License Agreement by using Camellia Grill trade dress at the
Camellia Grill-style restaurant, Chartres Grill; (2) enjoin Khodr from further
use of the Camellia Grill trade dress beyond the Carrollton location; and (3)
award attorney’s fees. 4 This Court granted the Motion as to the issue of breach,
denied the request for injunctive relief, and awarded attorney’s fees only
insofar as they related to CGH’s breach of contract claim and originated after
the most recent remand from the Fifth Circuit.
Now before the Court is CGH’s Motion to Alter or Amend the Court’s
Order and Reasons granting in part and denying in part its Motion for
For ease of reference, the Court collectively refers to Michael Shwartz and the Shwartzowned entities (Camellia Grill Holdings, Inc.; and Camellia Grill, Inc.) as “Shwartz.” The
Court collectively refers to Hicham Khodr and the Khodr-owned entities (Uptown Grill,
L.L.C.; Uptown Grill of Destin, L.L.C., The Grill Holdings, L.L.C., RANO, L.L.C., K&L
Investments, L.L.C., Robert’s Gumbo Shop, L.L.C., and Chartres Grill, L.L.C.) as “Khodr.”
2 See Doc. 470.
3 See id.
4 Chartres Grill was operated by Chartres Gill L.L.C., a sublicensee to the License
Agreement.
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Summary Judgment. In the Motion, CGH requests that this Court modify its
holding as it pertains to the issues of injunctive relief and attorney’s fees.
Khodr opposes.
LEGAL STANDARD
A Motion for Reconsideration of an interlocutory order is governed by
Federal Rule of Civil Procedure 54(b). 5 “Under Rule 54(b), ‘the trial court is
free to reconsider and reverse its decision for any reason it deems sufficient,
even in the absence of new evidence or an intervening change in or clarification
of the substantive law.’” 6
LAW AND ANALYSIS
In its Motion to Alter, CGH asks the Court to reconsider its Order and
Reasons as it pertains to its denial of the request for injunctive relief and
awarding of attorney’s fees. The Court will discuss each issue in turn.
I.

Injunctive Relief
In this Court’s Order and Reasons addressing CGH’s Motion for

Summary Judgment, this Court found Khodr in breach of the post-termination
provisions of the License Agreement by his use of Camellia Grill trade dress
beyond the Carrollton location. Sections 12.1 and 12.2 of the License
Agreement provide that, in the event of a breach, all rights will revert back to
the Licensor and that the Licensee is to “avoid any action or the continuance
of any condition which might suggest to the public that Licensee has any right

FED. R. CIV. P. 54(b) (noting that a district court may revise at any time prior to final
judgment “any order . . . that adjudicates fewer than all the claims or the rights and liabilities
of fewer than all the parties”). See McClendon v. United States, 892 F.3d 775, 781 (5th Cir.
2018).
6 Austin v. Kroger Tex., L.P., 864 F.3d 326, 336 (5th Cir. 2017) (quoting Lavespere v. Niagara
Mach. & Tool Works, Inc., 910 F.2d 167, 185 (5th Cir. 1990)).
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to the Marks, or that Licensee continues to be associated with Licensor.” 7 In
its Motion for Summary Judgment, CGH asked the Court to craft injunctive
relief that precluded Khodr’s use, and derivative use, of Camellia Grill’s trade
dress. However, as the scope of Camellia Grill’s trade dress had not yet been
determined by this Court and was not defined in the License Agreement, the
parties disputed the trade dress elements to be included in the injunction.
In its Order and Reasons, this Court concluded that the Camellia Grill’s
trade dress should be limited to that which is protectable under the Lanham
Act. In so finding, the Court reasoned that the Lanham Act’s definition of
protectable trade dress would adequately serve the goal of “enforc[ing]
Shwartz’s rights under the License Agreement while preserving Khodr’s right
to future competition in the restaurant industry.” 8 Finding that additional
evidence was necessary for this Court to define the scope of Camellia Grill’s
protectable trade dress, this Court deferred the issue to trial.
In its Motion to Reconsider, CGH now argues that this Court’s decision
to limit Camellia Grill’s trade dress to that which is protectable under the
Lanham Act runs counter to the language of the License Agreement and the
Fifth Circuit’s most recent opinion in this matter. CGH further argues that a
trial on the issue of injunctive relief would require the parties to incur
“significant expense with no practicable benefit.” 9 Accordingly, CGH requests
that this Court issue an injunction broadly prohibiting Khodr from any action
that suggests to the public that he and his entities have any right to, or
association with, Camellia Grill intellectual property. In response, Khodr
contests the broad scope of CGH’s requested injunction but submits no
opposition to CGH’s request to avoid trial.
Doc. 414-4 at 13.
Doc. 470 at 34.
9 Doc. 473-1 at 10.
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After considering the briefing provided by the parties in connection with
the instant Motion, this Court will amend its previous Order and Reasons to
grant CGH’s request for an injunction. In crafting this injunction, the Court
looks specifically to the definition of “trade dress” utilized by the Fifth Circuit
in its May 29, 2019 opinion. “Trade dress” is defined as “the total image and
overall appearance of a product [that] may include features such as the size,
shape, color, color combinations, textures, graphics, and even sales techniques
that characterize a particular product.” 10 The alleged elements of trade dress
include: (1) the pink and green interior paint scheme, (2) the “U-Shaped”
double horseshoe counter design, (3) the stainless steel stemmed stools with
green stool cushions, (4) the fluted metal design under the customer side of the
counter and above the cooking line, (5) the visible pie cases attached to the rear
wall at both ends of the cooking line, (6) the “straw popping” routine, (7) audible
order calling routine, and (8) the individual counter checks handed to each
customer. The enjoined parties’ utilization of all or most of the above Camellia
Grill trade dress elements at any single location will constitute a violation of
this injunction.
II.

Attorney’s Fees
In its Order and Reasons addressing CGH’s Motion for Summary

Judgment, this Court granted CGH’s request for attorney’s fees but limited the
award to fees related to CGH’s breach of contract claim on trade dress and fees
incurred after the most recent remand from the Fifth Circuit. CGH now argues
that, in light of its success on appeal, this Court’s Order and Reasons should

Uptown Grill, L.L.C. v. Camellia Grill Holdings, Inc., 920 F.3d 243, 251 (5th Cir. 2019)
(quoting Test Masters Educ. Svcs., Inc. v. State Farm Lloyds, 791 F.3d 561, 565 (5th Cir.
2015)).
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be amended to include all related fees incurred before remand and in
connection with the successful appeal of the issue.
After further consideration, this Court agrees in part with CGH.
Accordingly, this Court’s prior Order and Reasons is hereby amended to
include an award in favor of CGH for all attorney’s fees incurred in connection
with the enforcement of the License Agreement’s post-termination regarding
trade dress, and this award shall include all fees incurred before and after the
current remand and in connection with the successful appeal of the issue. The
award, however, continues to exclude fees related to Shwartz’s Motion to
Dismiss under the Rooker-Feldman Doctrine, Khodr’s Motion for Rule 11
Sanctions, and any requests under the Lanham Act.
CONCLUSION
For the foregoing reasons, the Motion to Alter or Amend is GRANTED
IN PART.
IT IS ORDERED that CGH is entitled to an injunction to preclude any
further operation in violation of the License Agreement. Accordingly, the
entities that the Court has already found to be bound by the License
Agreement—Chartres Grill, LLC, The Grill Holdings, LLC, and Uptown Grill,
LLC—are hereby ENJOINED from employing the Camellia Grill trade dress
at any location other than the Carrolton location. Trade dress, as utilized in
this injunction, is defined as “the total image and overall appearance of a
product [that] may include features such as the size, shape, color, color
combinations, textures, graphics, and even sales techniques that characterize
a particular product.” 11
Uptown Grill, L.L.C. v. Camellia Grill Holdings, Inc., 920 F.3d 243, 251 (5th Cir. 2019)
(quoting Test Masters Educ. Svcs., Inc. v. State Farm Lloyds, 791 F.3d 561, 565 (5th Cir.
2015)).
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IT IS FURTHER ORDERED that this Court’s Order and Reasons
(Doc. 470) is hereby AMENDED as identified herein.
IT IS FURTHER ORDERED that a Judgment be rendered in favor of
CGH on its breach of the License Agreement claim.
New Orleans, Louisiana this 24th day of August, 2021.

____________________________________
JANE TRICHE MILAZZO
UNITED STATES DISTRICT JUDGE

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