Krevat v. Burgers To Go, Inc. et al

Filing 80

MEMORANDUM & ORDER denying 44 Motion to Dismiss; denying 54 Motion to Amend/Correct/Supplement; granting 77 Motion for Extension of Time to File Response/Reply; For the foregoing reasons, Sultan's motion to dismiss (Docket Entry 44) i s DENIED; Plaintiff's cross-motion for leave to file an amended complaint (Docket Entry 54) is DENIED WITHOUT PREJUDICE; and Burgers To Go's motion for permission to file a response to Plaintiff's damages statement against Burgers To G o (Docket Entry 77) is GRANTED. Burgers To Go is ORDERED to file a response to Plaintiff's damages statement within fourteen (14) days of the date of this Memorandum and Order. The Court will not grant Burgers To Go an extension of time to file its response absent extraordinary circumstances. So Ordered by Judge Joanna Seybert on 3/23/2015. C/ECF (Valle, Christine)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
----------------------------------X
MITCHELL KREVAT,
Plaintiff,
-against-

MEMORANDUM & ORDER
13-CV-6258(JS)(AKT)

BURGERS TO GO, INC. and
SAMMY SULTAN,

Defendants.
----------------------------------X
APPEARANCES
For Plaintiff:
Robert David Katz, Esq.
Eaton & Van Winkle LLP
3 Park Avenue, 16th Floor
New York, NY 10016
For Defendants:

Richard S. Schurin, Esq.
Steven Stern, Esq.
Stern & Schurin LLP
410 E. Jericho Turnpike
Mineola, NY 11501

SEYBERT, District Judge:
Plaintiff Mitchell Krevat (“Plaintiff”) commenced this
action on October 11, 2013 against defendants Burgers To Go, Inc.
(“Burgers To Go”) and its principal, Sammy Sultan (“Sultan,” and
together with Burgers To Go, “Defendants”), alleging unauthorized
use

of

Plaintiff’s

trademarks

hamburger restaurant.

in

connection

with

Defendants’

Currently pending before the Court are:

(1) Sultan’s letter motion to dismiss “all charges” against him,
(Docket Entry 44); (2) Plaintiff’s cross-motion for leave to amend
the Complaint, (Docket Entry 54); and (3) Burgers To Go’s motion
for permission to file a response to Plaintiff’s damages statement

against Burgers To Go, (Docket Entry 77).

For the following

reasons, Sultan’s motion to dismiss is DENIED; Plaintiff’s crossmotion

for

leave

to

amend

the

Complaint

is

DENIED

WITHOUT

PREJUDICE; and Burgers To Go’s motion for permission to file a
response to Plaintiff’s damages statement is GRANTED.
BACKGROUND
I.

Factual Background1
Between June 2006 and November 2011, Plaintiff ran and

operated Burgers Bar, a kosher food restaurant chain in New York
and

New

Jersey.

trademarks

with

(Compl.
the

U.S.

¶

10.)

Trademark

Plaintiff
Office

registered

that

he

five

uses

in

connection with the “promotion and sale of Burgers Bar products.”
(Compl. ¶¶ 9, 11.)

The Complaint identifies three of these marks

by name: BURGERS BAR, CHIPAYO MAYO, and MUSTAENGO.

(Compl ¶¶ 12–

17.)
At some point, Defendants Burgers To Go and Sultan opened
their own kosher hamburger restaurant named “Burgers” at a location
where Plaintiff formerly operated a Burgers Bar location.
¶¶ 18–19.)

(Compl.

According to Plaintiff, Defendants made no revisions

or alterations to the previous space with regard to decor, layout,
menu, food preparation, or delivery systems.

(Compl. ¶ 18.)

The following facts are taken from the Complaint and are
presumed to be true for the purposes of this Memorandum and
Order.
1

2

In

addition,

Defendants

frequently

referred

in

print

and

online

advertising to their restaurant as being “Formerly Burgers Bar.”
(Compl. ¶ 20.)
In 2013, Plaintiff became aware that Defendants were
unlawfully

using

restaurant.

his

trademarks

(Compl. ¶ 26.)

in

connection

with

their

Plaintiff and his representatives

called and wrote letters to Sultan demanding that Defendants “cease
unauthorized use of [Plaintiff’s] trademarks in connection with
[Defendants’] restaurant,” but Defendants refused and continued to
use Plaintiff’s marks.

(Compl. ¶¶ 36, 37.)

Based on this alleged conduct, the Complaint asserts
four causes of action: (1) unfair competition in violation of
Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (2) trademark
infringement in violation of Section 43(a) of the Lanham Act, 15
U.S.C. § 1125(a); (3) unfair competition under New York state law;
and (4) trademark infringement under New York state law.

(Compl.

¶¶ 38-61.) Plaintiff seeks an award of profits and damages arising
from Defendants’ alleged infringing activity, including pre- and
post-judgment

interest

and

attorneys’

fees,

and

an

order

preliminarily and permanently enjoining Defendants from using
Plaintiff’s trademarks and directing Defendants to deliver for
destruction all infringing materials.

3

(Compl. at 10-11.)

II.

Procedural Background
This case has a somewhat lengthy procedural history.

Plaintiff commenced this action on October 11, 2013.2

Defendants

did not answer or otherwise respond to the Complaint.

On November

19, 2013, the Clerk of the Court certified Defendants’ default.
(Docket Entry 12.)

On December 6, 2013, Plaintiff and Sultan

appeared at an initial conference before Magistrate Judge A.
Kathleen Tomlinson.

(Dec. 6, 2013 Civil Conference Minute Order

(“Dec. 2013 Minute Order”), Docket Entry 21.)

At the conference,

Plaintiff consented to relieve Sultan of his default and Judge
Tomlinson

instructed

the

Clerk

of

certificate of default as to Sultan.
1.)

the

Court

to

vacate

the

(Dec. 2013 Minute Order at

Judge Tomlinson also informed Sultan of the long-standing

rule that a corporation cannot proceed pro se and that if Burgers
To Go failed to retain counsel within forty-five days, Plaintiff
would be permitted to file a motion for default judgment against
Burgers To Go.

(Dec. 2013 Minute Order at 1.)

Burgers To Go did not retain counsel.

On January 23,

2013, Plaintiff filed a motion for default judgment against Burgers
To Go.
held

(Docket Entry 26.)
a

status

On February 18, 2013, Judge Tomlinson

conference,

during

which

“Sultan

stated

Plaintiff commenced the action pro se, but he has since
retained counsel, who filed a notice of appearance on July 25,
2014. (Docket Entry 52.)
2

4

that . . . Burgers To Go, Inc. ha[d] not been able to retain
counsel and [would] not be represented by counsel going forward.”
(Feb. 18, 2014 Civil Conference Minute Order, Docket Entry 28, ¶
2.)

On February 21, 2013, the undersigned referred Plaintiff’s

motion for default judgment to Judge Tomlinson for a Report and
Recommendation (“R&R”).

(Docket Entry 29.)

In the interim, Sultan filed a letter motion to dismiss
“all charges” against him on June 12, 2014.

(Docket Entry 44.)

On July 28, 2014, Plaintiff opposed Sultan’s motion and also filed
a cross-motion for leave to amend the Complaint to allege alter
ego liability against Sultan.

(Docket Entry 54.)

On August 5, 2014, Judge Tomlinson issued an R&R on
Plaintiff’s motion for default judgment against Burgers To Go.
(R&R, Docket Entry 59.)

Judge Tomlinson concluded that Burgers To

Go’s default was willful, that Burgers To Go failed to present a
meritorious defense, and that Plaintiff stated valid claims of:
(1) false designation of origin and trademark infringement in
violation of the Lanham Act, (2) unfair competition under New York
law, and (3) trademark infringement under New York law.
5–16.)

Judge

demonstrated

the

Tomlinson
required

further
elements

concluded
for

the

that

(R&R at
Plaintiff

issuance

of

an

injunction, as well as the circumstances required for an order
directing the return of any infringing merchandise for destruction
under Section 36 of the Lanham Act.
5

(R&R at 16–21.)

Judge

Tomlinson’s

R&R

ultimately

recommended:

(1)

that

a

default

judgment be entered against Burgers To Go; (2) that an injunction
be

issued

preventing

Burgers

To

Go

from

engaging

in

or

participating in any infringing activity; (3) that Burgers To Go
be

directed

to

turn

over

to

Plaintiff

for

destruction

any

infringing merchandise in its possession, custody, or control; and
(4) that the calculation of damages against Burgers To Go be
postponed until this action is resolved as to both Defendants.
(R&R at 23.)
By Memorandum and Order dated September 16, 2014, after
receiving no objections from Burgers To Go, the undersigned adopted
Judge Tomlinson’s R&R in its entirety.

Krevat v. Burgers to Go,

Inc., No. 13-CV-6258, 2014 WL 4638844 (E.D.N.Y. Sept. 16, 2014).3
As

Judge

Tomlinson

recommended,

the

undersigned

deferred

the

calculation of damages against Burgers To Go until the resolution
of this case as against Sultan and also granted Plaintiff thirty
days to supplement his default judgment motion with appropriate
documentation to support his damages calculations.

Id. at *3.

On October 15, 2014, Plaintiff moved to file his damages
statement

under

seal

since

it

information concerning Sultan.

apparently

contained

(Docket Entry 65.)

sensitive

By Electronic

On August 11, 2014, Sultan filed a letter “clarify[ing]” that
Burgers To Go still had not hired counsel because “it no longer
ha[d] any assets” and “[could not] afford a lawyer.” (Docket
Entry 60.)
3

6

Order dated October 16, 2014, Judge Tomlinson deferred ruling on
Plaintiff’s motion to seal pending a response from Sultan.

On

October 29, 2014, Sultan filed a letter advising that he “[did
not] wish for [the damages statement] to be sealed.” (Docket Entry
66.)
Thereafter, Sultan and Burgers To Go finally retained
counsel.
November

Defendants’ counsel filed notices of appearance on
6,

2014.

Defendants’

newly

(Docket
retained

Entries
counsel

69-70.)
filed

a

That

same

day,

letter

to

Judge

Tomlinson requesting a telephone conference “for the purpose of
clarifying
including

[Burgers
“when

the

To

Go’s]

Court

obligations

expects

to

in

this

receive

a

matter,”
response

from . . . Burgers To Go to Plaintiff’s damage statement.” (Defs.’
Nov. 6, 2014 Letter, Docket Entry 71, at 1.)
Judge

Tomlinson

denied

counsel’s

On November 13, 2014,

request

for

a

telephone

conference, explaining that there was no lack of clarity in the
record, that the Court never directed Burgers To Go to file a
response

to

Plaintiff’s

damages

statement,

and

that

“[i]f

defendants [were] seeking to take some action or seek some form of
relief with regard to plaintiff’s damages statement, they [would
have to] make that application directly to Judge Seybert.”

(Nov.

13, 2014 Order, Docket Entry 74, at 2.)
On November 20, 2014, Defendants’ counsel filed a letter
motion for permission to file a response to Plaintiff’s damages
7

statement. (Docket Entry 77.) That letter motion, Sultan’s motion
to dismiss, and Plaintiff’s cross-motion for leave to amend the
Complaint are currently pending before the Court.
DISCUSSION
I.

Sultan’s Motion to Dismiss
Sultan filed his letter motion to dismiss while he was

still pro se and he did not identify the Federal Rule of Civil
Procedure pursuant to which he seeks dismissal.

He argues that

“as an individual shareholder of Burgers To Go,” he “cannot be
held

personally

liable

for

the

actions

of

the

corporation.”

(Letter Mot. to Dismiss, Docket Entry 44, at 1.)

The Court

therefore construes Sultan’s letter motion as a motion to dismiss
for failure to state a claim pursuant to Federal Rule of Civil
Procedure 12(b)(6).
legal

standard

The Court will first set forth the applicable

before

turning

to

Sultan’s

motion

more

specifically.
A.

Legal Standard
In deciding a Rule 12(b)(6) motion to dismiss, the Court

applies a “plausibility standard,” which is guided by “[t]wo
working principles.”

Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.

Ct. 1937, 173 L. Ed. 2d 868 (2009) (citing Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 127 S. Ct. 1955, 167 L. Ed. 2d 929 (2007);
accord Harris v. Mills, 572 F.3d 66, 71–72 (2d Cir. 2009).

First,

although the Court must accept all allegations as true, this
8

“tenet”

is

“inapplicable

to

legal

conclusions;”

thus,

“[t]hreadbare recitals of the elements of a cause of action,
supported by mere conclusory statements, do not suffice.”
556 U.S. at 678; accord Harris, 572 F.3d at 72.

Iqbal,

Second, only

complaints that state a “plausible claim for relief” can survive
a Rule 12(b)(6) motion to dismiss.

Iqbal, 556 U.S. at 679.

Determining whether a complaint does so is “a context-specific
task that requires the reviewing court to draw on its judicial
experience and common sense.”
B.

Id.; accord Harris, 572 F.3d at 72.

Application
As noted, Sultan urges the Court to dismiss “all charges

against [him]” because “as an individual shareholder of Burgers To
Go,” he “cannot be held personally liable for the actions of the
corporation.” (Letter Mot. to Dismiss at 1.) The Court disagrees.
Although
individually

“a

liable

corporate
for

torts

officer
committed

is

not

on

necessarily

behalf

of

the

corporation, personal liability for trademark infringement and
unfair competition is established if the officer is a moving,
active

conscious

infringement.”

force

behind

the

defendant

corporation’s

Bambu Sales, Inc. v. Sultana Crackers, Inc., 683

F. Supp. 899, 913 (E.D.N.Y. 1988) (internal quotation marks and
citation omitted) (brackets omitted); accord Elastic Wonder, Inc.
v. Posey, No. 13-CV-5603, 2015 WL 273691, at *4 (S.D.N.Y. Jan. 22,
2015).

“Demonstrating that a corporate officer ‘authorized and
9

approved the acts of unfair competition which are the basis of the
corporation’s liability is sufficient to subject the officer to
personal liability.’”

Study Logic, LLC v. Clear Net Plus, Inc.,

No. 11-CV-4343, 2012 WL 4329349, at *11 (E.D.N.Y. Sept. 21, 2012)
(quoting Bambu Sales, 683 F. Supp. at 913).
Here, the Complaint alleges that Sultan “is the owner
and manager of Burgers To Go,” (Compl. ¶ 3), and that he directly
participated in all of the alleged acts of infringement, (see
generally Compl.).

“The case law is clear that if a corporate

officer was either the sole shareholder and employee, and therefore
must have approved of the infringing act, or a direct participant
in the infringing activity, the officer is a moving, active,
conscious, force behind the corporation’s infringement.”

See

Chloe v. Queen Bee of Beverly Hills, LLC, No. 06-CV-3140, 2011 WL
3678802, at *5 (S.D.N.Y. Aug. 19, 2011).

The allegations of the

Complaint therefore plausibly allege that Sultan, as the owner and
manager of Burgers To Go and as a direct participant in the
infringing

activity,

is

the

“moving,

behind” Burgers To Go’s infringement.

active

conscious

force

See Elastic Wonder, Inc. v.

Posey, No. 13-CV-5603, 2015 WL 273691, at *4 (S.D.N.Y. Jan. 22,
2015) (denying motion to dismiss trademark infringement claim
against the corporate defendant’s president).

Moreover, Plaintiff

contends that he and his representatives contacted Sultan and
“demanded

that

the

defendants
10

cease

unauthorized

use

of

[Plaintiff’s] trademarks in connection with the restaurant,” but
that “Defendants refused.” (Compl. ¶ 36.) This allegation further
suggests that Sultan was behind Burgers To Go’s infringement.

See

Elliott v. Gouverneur Tribune Press, Inc., No. 13-CV-0055, 2013 WL
6240489, at *3 (N.D.N.Y. Dec. 3, 2013) (finding that the allegation
“that

[the]

[p]laintiff

spoke

with

[the

defendant

corporate

officer] regarding [the] [p]laintiff’s demands that [the defendant
corporation]

not

reproduce

her

copyrighted

images

without

permission plausibly suggest[ed] that [the defendant corporate
officer]

was

a

moving,

defendant

corporation’s]

original)

(internal

Accordingly,

active,

infringement”

quotation

Plaintiff

conscious

has

marks
stated

and
a

force

(last

behind

alteration

citation
claim

[the

for

in

omitted)).
trademark

infringement against Sultan, and Sultan’s motion to dismiss is
therefore DENIED.
II.

Plaintiff’s Cross-Motion for Leave to Amend the Complaint
In his brief, Plaintiff states that “[t]o the extent

necessary, plaintiff respectfully requests leave to amend the
complaint to add the allegation that [Burgers To Go] was the alter
ego of . . . Sultan.”

(Pl.’s Br., Docket Entry 53, at 6.)

It is

unclear what Plaintiff means by “[t]o the extent necessary.”

In

any event, “numerous courts have held that a bare request to amend
a pleading contained in a brief, which does not also attach the
proposed amended pleading, is improper under Fed. R. Civ. P. 15.”
11

Garnett-Bishop v. N.Y. Cmty. Bancorp, Inc., No. 12-CV-2285, 2014
WL 5822628, at *5 (E.D.N.Y. Nov. 6, 2014) (internal quotation marks
and citations omitted) (collecting cases); see also Curry v.
Campbell, No. 06-CV-2841, 2012 WL 1004894, at *7 (E.D.N.Y. Mar.
23, 2012) (“To satisfy the requirement of particularly in a motion
to amend a pleading, the proposed amended pleading must accompany
the

motion

so

that

both

the

Court

and

opposing

parties

can

understand the exact changes sought.” (internal quotation marks
and citation omitted)).

Accordingly, Plaintiff’s cross-motion to

amend the Complaint is DENIED WITHOUT PREJUDICE.
III. Burgers To Go’s Request to File a Response to Plaintiff’s
Damages Statement
Finally, Burgers To Go requests permission to file a
response to Plaintiff’s damages statement.

(See Docket Entry 77.)

Plaintiff opposes this request, arguing that Burgers To Go waived
any right to respond to Plaintiff’s damages statement since Sultan
chose not to reply to the damages statement when it was originally
filed.

(Pl.’s Nov. 25, 2014 Letter, Docket Entry 79, at 3.)

The

Court disagrees with Plaintiff.
“Unlike allegations pertaining to liability, allegations
in connection with damages are not deemed admitted in the context
of a default judgment.” Deckers Outdoor Corp. v. TKM Forest Hills,
LLC, No. 12-CV-5986, 2014 WL 4536715, at *6 (E.D.N.Y. Sept. 11,
2014).

“Damages, which are neither susceptible of mathematical

12

computation nor liquidated as of the default, usually must be
established by the plaintiff in an evidentiary proceeding in which
the

defendant

has

the

opportunity

to

contest

the

amount.”

Greyhound Exhibitgroup, Inc. v. E.L.U.L. Realty Corp., 973 F.2d
155, 158 (2d Cir. 1992).
As noted, on September 16, 2014, the Court granted
Plaintiff’s motion for default judgment against Burgers To Go and
gave Plaintiff thirty days to provide appropriate documentation to
support his damages calculation.

According to his statement,

Plaintiff seeks damages based on a reasonable royalty theory,
which, in this Court’s estimation, may require an evidentiary
hearing.

See Deckers, 2014 WL 4536715, at *6 (“It is within the

Court’s discretion to determine whether plaintiffs’ burden has
been met, and whether or not to hold an evidentiary hearing.”
(internal quotation marks and citation omitted)).
has

a

right

to

participate

at

this

Burgers To Go

potential

hearing

notwithstanding its prior default. In any event, even if the Court
does not hold an evidentiary hearing, Plaintiff will not suffer
any

prejudice

if

Burgers

To

Go

is

permitted

to

respond

to

Plaintiff’s damages statement because the Court has deferred the
calculation of damages until this case is resolved as to the nondefaulting defendant, Sultan.

Accordingly, the Court will permit

Burgers

response

To

File

to

file

a

statement.
13

to

Plaintiff’s

damages

CONCLUSION
For the foregoing reasons, Sultan’s motion to dismiss
(Docket Entry 44) is DENIED; Plaintiff’s cross-motion for leave to
file an amended complaint (Docket Entry 54) is DENIED WITHOUT
PREJUDICE; and Burgers To Go’s motion for permission to file a
response to Plaintiff’s damages statement against Burgers To Go
(Docket Entry 77) is GRANTED.

Burgers To Go is ORDERED to file a

response to Plaintiff’s damages statement within fourteen (14)
days of the date of this Memorandum and Order.

The Court will not

grant Burgers To Go an extension of time to file its response
absent extraordinary circumstances.

SO ORDERED.

/s/ JOANNA SEYBERT______
Joanna Seybert, U.S.D.J.
Dated:

March
23 , 2015
Central Islip, New York

14