Lebewohl et al v. Heart Attack Grill LLC et al

Filing 76

REPLY MEMORANDUM OF LAW in Support re: 62 MOTION for Summary Judgment Of Non-Infringement.. Document filed by Jack Lebewohl, Jeremy Lebewohl, Uncle Abies Deli Inc., Uncle Abies Deli Sandwich Trademarks LLC, Uncle Abies Deli on First, Inc.. (Chuang, Willliam)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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JACK LEBEWOHL, JEREMY LEBEWOHL,
UNCLE ABIES DELI INC. d/b/a 2ND AVE DELI,
UNCLE ABIES DELI ON FIRST INC. d/b/a 2ND AVE DELI,
AND UNCLE ABIES DELI SANDWICH TRADEMARKS LLC,
Plaintiffs,
-against-

Index No. 11-cv-3153 (PAE)

HEART ATTACK GRILL LLC, HAG LLC,
JON BASSO, DIET CENTER LLC (TEXAS) AND
DIET CENTER LLC (DELAWARE)
Defendants.
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REPLY MEMORANDUM OF LAW IN FURTHER SUPPORT OF
PLAINTIFFS’ MOTION FOR SUMMARY JUDGMENT

William W. Chuang (WC3050)
Jakubowitz & Chuang LLP
325 Broadway, Suite 301
New York, NY 10007
Tel.: [phone]
Attorneys For Plaintiffs

TABLE OF CONTENTS
PRELIMINARY STATEMENT.................................................................................................................. 1
CONCURRENT USE DOES NOT APPLY ABSENT A LIKELIHOOD OF CONFUSION ............1
THE DELI HAS SUFFICIENT PRE- AND POST-CRITICAL DATE EVIDENCE TO ESTABLISH
TRADEMARK RIGHTS IN ITS MARKS .................................................................................................2
THE COURT HAS JURISDICTION OVER THIS CASE; INTRASTATE USE IS SUFFICIENT TO
OBTAIN TRADEMARK RIGHTS .............................................................................................................4
JON BASSO TESTIFIED THAT THERE IS A DIFFERENCE BETWEEN SANDWICHES AND
HAMBURGERS .............................................................................................................................................6
THE COURT HAS AUTHORITY TO ISSUE A DECLARATORY JUDGMENT OF NONINFRINGEMENT..........................................................................................................................................6
CONCLUSION ...............................................................................................................................................7

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TABLE OF AUTHORITIES
Cases
Dawn Donut Co. v. Hart’s Food Stores, Inc., 67 F.2d 358 (2d Cir. 1959).
Novak v. Tucows, Inc., 2007 WL 922306 (E.D.N.Y. 2007).
Omicron Capital, LLC v. Omicron Capital, LLC, 433 F.Supp.2d 382 (S.D.N.Y. 2006).
Patsy’s Italian Restaurant, Inc. v. Banas, 958 F.3d 254 (2d Cir. 2011).
Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).
Sam's Riverside, Inc. v. Intercon Solutions, Inc.,790 F.Supp.2d 965 (S.D.Iowa 2011)
In Re Silenus Wines, Inc., 557 F.2d 806 (CCPA 1977).

Statutes
15 U.S.C. § 1052.
15 U.S.C. § 1127.

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PRELIMINARY STATEMENT
The Deli seeks a judgment that its marks “Instant Heart Attack Sandwich” and
“Triple Bypass Sandwich” are not confusingly similar to any marks owned by HAG. HAG
cross-moves for a judgment that there is currently no likelihood of confusion, and also
moved for its own counterclaims to be dismissed without prejudice. HAG does not apply
the Polaroid analysis to contradict the Deli’s claim that there is no likelihood of confusion.1
Therefore, the Court should grant the Deli’s motion on the merits.
I.

CONCURRENT USE DOES NOT APPLY ABSENT A
LIKELIHOOD OF CONFUSION

HAG maintains that concurrent use doctrine can be applied absent a likelihood of
confusion. (Memo In Opp. pp. 17-18.) That is plainly incorrect. The Southern District has
rejected the notion that concurrent use registration is available in the absence of confusion.
Omicron Capital, LLC v. Omicron Capital, LLC, 433 F.Supp.2d 382, 395 (S.D.N.Y. 2006). HAG
does not discuss Omicron Capital, and fails to cite any case law to support of its
interpretation of the statute. The language of the Lanham Act clearly states that concurrent
use registration is an exception to the general rule that marks that are likely to cause
confusion with an existing mark cannot be registered. 15 U.S.C. § 1052(d).
The filing date of the HAG’s Marks is relevant only if the concurrent use doctrine
applies. 15 U.S.C. § 1052(d)(3). The parties agree that there is no likelihood of confusion.
Therefore, the concurrent use doctrine does not apply, per Omicron Capital, and the filing
date of the HAG Marks is irrelevant.

1

Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961).

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II.

THE DELI HAS SUFFICIENT PRE- AND POST-CRITICAL DATE EVIDENCE TO
ESTABLISH TRADEMARK RIGHTS IN ITS MARKS.

Jack Lebewohl states that he conceived of the Instant Heart Attack Sandwich in 2004,
and after talking to Bobby Flay, put it onto the menu the next time it was printed.
(Lebewohl Decl. ¶¶ 5, 8.) His testimony is corroborated by a Chowhound article dated May
19, 2004 (SUF Ex. B), an article appearing in the July 2004 issue of the Morning Calm
newsletter of Korean Airlines (SUF Ex. C), and a January 13, 2005 post on Chowhound
recommending the Deli and its Instant Heart Attack Sandwich to tourists. (SUF Ex. D.) A
Yelp review shows that the Sandwich was sold at the Deli’s new location from its opening
day. (SUF Ex. M PLFS000704.) A New York Times article dated January 6, 2006 refers to the
Sandwich. (SUF Ex. N.) A Bloomberg article dated December 18, 2007 also reviews the
Sandwich. (SUF Ex. O.) A copy of the Deli menu for the location that closed at the end of
2005 and an invoice for the printing of the menus dated August 10, 2005 further
corroborates Jack’s story. (SUF Ex. E, PLFS000089-92).
HAG’s attacks on the admissibility of these documents are misplaced. In considering
whether or not a trademark was used in interstate commerce, the Second Circuit has
considered articles from the New York Times, reviews for tourist guides such as the 2003
Not For Tourists Guide to New York City and the 2004 Zagat Survey for New York City
Restaurants. Patsy’s Italian Restaurant, Inc. v. Banas, 658 F.3d 254, 268 (2d Cir. 2011). The
Deli offers articles from the New York Times, Chowhound, Bloomberg, and Yelp reviewing
the Sandwich. The Chowhound article from January 13, 2005 and the Morning Calm
newsletter are reviews for tourists planning to visit New York. The Deli offers these
documents to show that Bloomberg, Chowhound, Yelp, the New York Times, and the

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Morning Calm Newsletter have all reviewed the Deli and the Instant Heart Attack
Sandwich, which is relevant under Patsy’s Restaurant. 658 F.3d at 268.
HAG asserts that the Deli offers the documents in the SUF Exhibits as advertisements.
(Memo. In. Opp. ¶ 10-11.) That is not the case. The Deli offers these documents—which
include a menu listing the Sandwich—to corroborate Jack Lebewohl’s testimony that the
Deli was using the Instant Heart Attack Sandwich mark in reference to a sandwich made
with latkes.
HAG also attacks the authenticity of the Chowhound documents and the Morning
Calm review. (Memo. In Opp. pp. 9-10.) As an initial matter, the Internet documents
challenged contain the date it was printed out from the Internet and the URL that was
printed out. The documents were, in fact, copies of the URLs contained on the documents
and printed out on the dates contained therein. (Chuang Decl. ¶¶ 2-8).
The cases HAG cites in support are inapplicable. The plaintiff in Novak v. Tucows, Inc.
tried to introduce pages from a third-party website, the Wayback Machine, to show that the
defendant’s website contained certain allegedly infringing material. 2007 WL 922306 *5
(E.D.N.Y. 2007). The court struck these documents because the Novak plaintiff did not offer
any sworn statements from the owners and managers of the Wayback Machine to show
that the contents of the Wayback Machine were an accurate depiction of the defendant’s
website. Id. Similarly, the plaintiff in Sam's Riverside, Inc. v. Intercon Solutions, Inc. tried to
introduce printouts of its own website from the Wayback Machine to establish the earliest
date of use of his mark. 790 F.Supp.2d 965, 979-80 (S.D.Iowa 2011). An affidavit from the
plaintiff’s employee was insufficient to authenticate the document, but the court admitted
the document based on an affidavit from an employee of the Wayback Machine. Id. at 981.
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The documents sought to be admitted in this case are not archives from a third-party
website but rather are direct printouts from Chowhound and the Morning Calm Review.
(Chuang Decl. ¶¶ 2-4). Therefore, the documents are properly authenticated and
admissible.
The documents whose authenticity is not challenged—the New York Times and
Bloomberg articles, as well as the menu and invoice—sufficiently corroborate Jack
Lebewohl’s testimony to support summary judgment.
III.

THE COURT HAS JURISDICTION OVER THIS CASE; INTRASTATE USE IS
SUFFICIENT TO OBTAIN TRADEMARK RIGHTS.

HAG continues to assert that a sandwich or menu has to be shipped over state lines
in order to constitute trademark use. (Memo. In Opp. ¶ 12.) That is certainly not the case.
The Deli’s memorandum of law in support contains a multitude of cases in the Dawn Donut
vein holding that the intrastate sale of a good is sufficient to invoke the jurisdiction of the
Lanham Act.2 (Memo. In Supp. pp. 8-11.) Furthermore, In Re Silenus Wines, Inc. held that
there is only one definition of “commerce” in the Lanham Act, which applies to registration
and infringement, and to goods and services. 557 F.2d 806, 811-812 (CCPA 1977).
Therefore, the Deli’s use of the mark was in commerce within the meaning of the Lanham
Act even though the use was purely intrastate.
Furthermore, the Deli seeks a declaratory judgment that there is no likelihood of
confusion. The cases cited in the Deli’s memo make clear that jurisdiction exists under the
Lanham Act for HAG to bring a trademark infringement lawsuit against the Deli’s purely
intrastate activities. Therefore, jurisdiction exists for this Court to issue a declaratory

2

Dawn Donut Co. v. Hart’s Food Stores, Inc., 67 F.2d 358, 365 (2d Cir. 1959).

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judgment that there is no likelihood of confusion, which HAG does not contest and actually
agrees with.
Lastly, HAG does not address Patsy’s Restaurant, which considers newspaper
articles, reviews, and proximity to interstate highways to determine the effects on
interstate commerce by purely intrastate activities. 658 F.3d at 268. The articles offered by
the Deli include the newsletter for Korean Airlines, the New York Times, and Bloomberg
News, which all reach national if not international audiences. The Deli is located in
proximity to major interstate highways. As part of its restaurant services, the Deli
necessarily offers to sell the Instant Heart Attack Sandwich to all of its customers.
Therefore, the Sandwich has sufficient effect on interstate commerce for jurisdiction under
the Lanham Act.
To put this another way, and not to belabor the point, if the IHAS was named the
“Heart Attack Grill Sandwich,” and everything else remained the same, HAG would
definitely claim jurisdiction to sue the Deli, and one would be hard-pressed to disagree in
light of Dawn Donut and its progeny. 267 F. 2d at 365. If there is jurisdiction to bring a
Lanham Act claim, then there is an apprehension of suit, and the Deli is entitled to a
declaratory judgment that it is not infringing.
Alternatively, if there is jurisdiction to sue, then there is jurisdiction under the
Lanham Act because there is only one definition of commerce and use in commerce in the
Lanham Act, 15 U.S.C. § 1127, as confirmed by In Re Silenus Wines, 557 F.2d at 811-812.
HAG requests the Court to re-open jurisdiction for 60 days based on the Deli’s
responses to Requests to Admit Nos. 103-104. (Memo In Opp. pp. 16.) The argument lacks
any merit. HAG’s Request to Admit No. 104 asks for an admission that the Deli has no
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documents relating to the channels of trade through which the Deli markets the Sandwich
in New York. The Deli denied the allegation, and responded that the Deli does in fact have
documents showing that it markets the Sandwich in New York. The Deli never admitted
that New York is the only channel where it marketed the Sandwich. Moreover, the FedEx
invoices and other vendor data are not marketing documents. Similarly, HAG’s RTA No. 103
asks for an admission that there are no documents relating to the channels of trade through
which the Deli markets the Sandwich. The invoices and other vendor data are not
marketing documents.
In any event, HAG fails to point out what it could have done differently, or what
discovery it would undertake if its request were granted. Therefore, its request should be
denied and the case should proceed.
IV.

JON BASSO TESTIFIED THAT THERE IS A DIFFERENCE BETWEEN
SANDWICHES AND HAMBURGERS

Jon Basso stated, with regard to the Instant Heart Attack Sandwich and HAG’s
products: “They are different things. Theirs is a sandwich, this is a burger. They – I use
marks, my marks are widely publicized. They use terms. Their terms are little known
outside the person actually reading the menu. No, I don’t think there is any confusion.”
(Basso Depo. pp. 105:1-6.) The Court should not take judicial notice of the USPTO website
when the Defendants’ principal very clearly states that sandwiches and burgers are
different things in the marketplace.
V.

THE COURT HAS AUTHORITY TO ISSUE A DECLARATORY JUDGMENT OF
NON-INFRINGEMENT

Both parties concede that the Court has power to rule on this issue. (Memo. In Opp.
pp. 19.) The Deli seeks a declaration that there is no infringement anywhere. HAG does not

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seriously contest this, failing to cite to Polaroid or to apply its factors. 287 F.2d at 495. In
fact, HAG claims that there would be no likelihood of confusion even if it were to open a
restaurant in New York. If that is the case, why would there be confusion if the Deli sold the
Sandwich in Las Vegas?
VI.

CONCLUSION

The Deli respectfully requests that the Court grant its motion for summary judgment
of non-infringement.
Dated: New York, New York
May 7, 2012

Respectfully Submitted,

/s/
William W. Chuang, Esq.
Jakubowitz & Chuang LLP
325 Broadway, Suite 301
New York, NY 10007
Tel: [phone]
Attorneys For Plaintiffs

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