Patsy's Brand, Inc. v. I.O.B. Realty, Inc., et al

Filing 327

ORDER: As set forth above, each of Plaintiff's objections to the direct testimony of Paul Grandinetti is sustained. SO ORDERED. (Signed by Judge Kimba M. Wood on 5/18/2021) (ama)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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PATSY’S BRAND, INC.,

USDC SDNY
DOCUMENT
ELECTRONICALLY FILED
DOC #: __________________
DATE FILED: May 18, 2021

Plaintiff,
-against-

99-CV-10175 (KMW)

I.O.B. REALTY, INC., PATSY’S INC.,
FRANK BRIJA, JOHN BRECEVICH, and
NICK TSOULOS,

ORDER

Defendants.
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KIMBA M. WOOD, United States District Judge:
On May 11, 2021, Plaintiff filed objections to the written direct testimony of Paul
Grandinetti.

(ECF No. 317.)

The Court rules on Plaintiff’s objections as follows:

1. Objection(s) One: Sustained.
a. Plaintiff’s objections: (1) hearsay (Rules 801 and 802); (2) lack of personal
knowledge (Rules 602 and 701); (3) relevance (Rule 401); and (4) confusing the
issues (Rule 403).
b. Testimony to be stricken:
i. “In late 1999 or 2000, my colleague, Mr. Joseph J. Zito, showed up in my
office and told me that we were going to New York City the next day. Mr.
Zito wanted to introduce me to his cousin, Mr. Donald E. Creadore. Mr.
Creadore did not practice trademark law in any substantive manner.”
ii. “Mr. Creadore introduced me to his client, Mr. Isa (Frank) Brija, the
owner of Patsy’s Pizzeria. Mr. Brija had been sued by Patsy’s Brand, Inc.
(Patsy’s Brand), and was preparing for a hearing before Judge John S.
Martin. I was asked by Mr. Brija to attend the hearing.”
iii. “At the hearing Judge Martin permitted me to show him specimens of the
respective marks of the parties, and we discussed whether there was a
likelihood of confusion between the marks.”
iv. “During the meeting, Judge Martin stated that he would permit use of one
of the specimens as long as Patsy’s Pizzeria only used the same color of
green that was on this particular specimen. The logo on this specimen and
the particular color of green with which it was associated had been in use
by Patsy’s Pizzeria for a very long time. I can no longer remember the exact
specimen that was accepted by Judge Martin but I am certain that Mr. Brija
can identify the specimen. The relevance of this meeting with Judge Martin
is that Judge Martin on one occasion did determine that a mark for Patsy’s

Pizzeria was not confusingly similar to the mark and label being used by
Patsy’s Brand (Exhibit B of the original complaint).”
2. Objection(s) Two: Sustained.
a. Plaintiff’s objections: (1) lack of personal knowledge (Rules 602 and 701); and
(2) relevance (Rule 401).
b. Testimony to be stricken:
i. “While with my firm, Ms. Stempien Coyle worked closely with Mr.
Brija. She developed a rapport with Mr. Brija, and he would present
to her various concepts for trademarks and labels for review. Mr.
Brija liked to work on ideas for new labels, but almost none of the
new labels was ever used by him. Ms. Stempien Coyle would analyze
the labels and provide her opinion as to whether the proposed
marks were confusingly similar to the Patsy’s Brand marks. As part
of that analysis, Ms. Stempien Coyle would assess whether the
marks complied with the injunction and the Second Circuit opinions.
Mr. Brija did not want or seek formal written opinions from Ms.
Stempien Coyle regarding these ideas on new labels. Mr. Brija
preferred to have conversations wherein he could discuss options
and understand the bases for Ms. Stempien Coyle’s opinions. Ms.
Stempien Coyle kept me informed regarding these studies and any
opinions she expressed. Frequently, I would join the discussions
involving new labels or ideas. Mr. Brija often followed Ms.
Stempien Coyle’s advice, but not always.”
ii. “As I noted earlier, Ms. Stempien Coyle’s opinions were almost
always oral. One reason for the opinions being expressed orally
was that Mr. Brija frequently developed new marks and labels but
rarely used them. Mr. Brija typically desired a brief conversation
regarding his new marks or labels as a “work in progress.” Mr.
Brija was almost always not prepared to follow through with the use
of a new mark or label in any particular project. Many, many
dozens of such opinions were expressed by this firm over the years.”
iii. “The frequent conversations with Mr. Brija were often casual in
nature, but Ms. Stempien Coyle never treated a review of a new
mark or label as a casual task. She gave a serious, fresh analysis to
each request. Ms. Stempien Coyle almost always refused to clear
the new marks or labels for use in commerce, especially if the mark
might be used on non-pizza goods or non- pizzeria services.”
3. Objection(s) Three: Sustained.
a. Plaintiff’s objections: (1) lack of personal knowledge (Rules 602 and 701).
b. Testimony to be stricken:
i. “In about 2017, Mr. Brija began to develop a composite mark. (See
Dkt. 282-6, Declaration of Ms. Stempien Coyle at pages 3 through 5
of 7.) Ms. Stempien Coyle did not approve the second, third, and
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fourth variations of this composite mark for use in commerce
because the word "pizzeria" was not present or not fully displayed.”
ii. “On or about late July 2018, Mr. Brija sent Ms. Stempien Coyle a
variation of the composite mark. (See Dkt. 282-6 at pages 6 and 7 of
7.)”
4. Objection(s) Four: Sustained.
a. Plaintiff’s objections: (1) lack of personal knowledge (Rules 602 and 701); and
(2) hearsay (Rules 801 and 802).
b. Testimony to be stricken:
i. “At the time that the August 2018 opinion was expressed, it was my
understanding and Ms. Stempien Coyle’s understanding that the
new composite mark and label were to be only used with pizzas. The
reason for this belief is that Mr. Brija had just been approached by
Jet Blue to participate in a promotion campaign for the Jet Blue
airlines. Jet Blue asked Patsy’s Pizzeria to make a large number of
pizzas in New York City. Then, the pizzas were placed in large, clear
plastic bags and flown by Jet Blue to California. Once in California,
the pizzas were removed from the bags, the baking was finished in a
commercial kitchen, and the pizzas were placed in boxes with a
special design in support of the Jet Blue promotion of its New York
City to California service. Jet Blue then delivered the pizzas to
customers, who were quick to request a pizza on its website.”
ii. “The Jet Blue promotion required Mr. Brija to acquire a few chest
freezers and a heat sealing press that was used to seal the large,
clear plastic bags. During the preparations for the Jet Blue
promotion, Mr. Brija designed and acquired the green plastic bags,
which bear the composite mark. (See Dkt. 282-6, Declaration of Ms.
Stempien Coyle at page 7of7.) Mr. Brija explained that he wanted to
experiment with freezing his pizzas in the bags. At some point, he
did freeze some of his pizzas in a few of these bags. The experiment
occurred in a private building separate from Patsy’s Pizzeria and
not accessible to the public. Unfortunately, the experiment was a
failure.”
iii. “The few pizzas frozen in the sealed bags warped and crinkled. The
pizzas were no longer flat and could not be stacked. Regardless, Mr.
Brija wanted to notify Patsy’s Brand that he was considering a new
project. At some point, Mr. Brija delivered one or two bagged pizzas
to Patsy’s Brand. . . .”
iv. “I later learned that another reason for abandoning the project was
that the bags failed to work as intended. I was informed that the
bags were too small to insert the pizzas made at Patsy’s Pizzeria.
Also, Mr. Brija did not understand plastic packaging when he
ordered the bags. The mil thickness of the plastic sheet material
used to make the bags is too thin for reliable heat sealing. I was
informed that approximately half of the bags that Patsy’s Pizzeria
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tried to heat seal burned when placed under the heat seal press and
did not form an air-tight seal.”
v. “Mr. Brija only considered small in-house productions of frozen
pizzas. A large-scale production of frozen pizzas that would
compete with, for example, DiGiorno Pizza would require the use o
f a commercial frozen food producer and marketing professionals
that could sway grocery store chains to purchase another product in
an already crowded grocery category that had many well-known
companies competing for shelf space.”
vi. “After the failed private experiments with the plastic bag project,
Mr. Brija abandoned the project. Mr. Brija had no other food
product that could be used with the plastic bags. Mr. Brija and I
both understood that there was no need to approach the Court for a
declaratory judgment proceeding or modification of the injunction.
Stated differently, by the time of the frozen pizza failure, I knew from
Mr. Brija that he was not capable of and was not going to use his
composite mark on pizza sold in a plastic bag with the new logo. I
knew with certainty that there was no basis for seeking the Court’s
involvement in such a project.”
5. Objection(s) Five: Sustained.
a. Plaintiff’s objections: (1) lack of personal knowledge (Rules 602 and 701); and
(2) hearsay (Rules 801 and 802).
b. Testimony to be stricken:
i. “Mr. Brija is on a friendly basis with the family that owns, or until
recently owned, a small restaurant called Rao’s, which is a short
walk from Patsy’s Pizzeria. I was told by Mr. Brija that he talked to
this family on a few occasions about the success of Rao’s creation of
a line of packaged foods, including marinara sauce. Mr. Brija
discussed with me what he had learned, from his discussion with the
Rao family.”
ii. “Mr. Brija informed me that it was beyond his current financial and
other abilities to create, acquire commercial production, and
market to wholesalers and retailers a line of packaged foods. . . . Mr.
Brija understood that any action or attempt to market sauces under
any trademark would cause Patsy’s Brand to initiate a court
action. . . .”
iii. “. . . The red sauce was the sauce his pizza makers spread on pizza
dough before baking the pie. Mr. Brija used a spoon to dip this
sauce into some empty glass jars that his pizzeria provides
customers when customers want to take some leftovers home. . . .”
6. Objection Six: Sustained.
a. Plaintiff’s objections: (1) lack of personal knowledge (Rules 602 and 701).

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b. Testimony to be stricken:
i. “Mr. Brija developed the composite mark in part to modernize his
logo for use with the pizzas made and sold in his pizzerias. Mr. Brija
hoped that the new logo would be acceptable to the Court, someday
in the future, on fresh pizzas for home baking and/or goods other
than pizza. For this reason, the composite mark comprises
numerous elements that identify Patsy’s Pizzeria and distinguish the
mark from any mark owned by Patsy’s Brand. However, as of the
December 2019 hearing, Mr. Brija had not used this mark
commercially and had never had any intention to use the mark
commercially without authorization from the Court.”
CONCLUSION
As set forth above, each of Plaintiff’s objections to the direct testimony of Paul
Grandinetti is sustained.
SO ORDERED.
Dated: New York, New York
May 18, 2021

/s/ Kimba M. Wood
KIMBA M. WOOD
United States District Judge

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