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
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