VIDIVIXI, LLC et al v. Grattan et al

Filing 73

OPINION AND ORDER: The Court has considered all of the arguments raised by the parties. To the extent not specifically addressed, the arguments are either moot or without merit. Bradley's motion for a preliminary injunction is denied. (As further set forth in this Order.) (Signed by Judge John G. Koeltl on 1/11/2016) (spo)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
────────────────────────────────────
VIDIVIXI, LLC ET AL.,
Plaintiffs,

15-cv-7364 (JGK)

- against -

OPINION AND ORDER

MARK ANTHONY GRATTAN ET AL.,
Defendants.
────────────────────────────────────
JOHN G. KOELTL, District Judge:
This is a case about an unfortunate falling out between
former friends and business partners in a firm that designs
high-end furniture.

The firm is incongruously known as

“VIDIVIXI,” an apparent play on the well-known phrase: “Veni,
vidi, vici,”---“I came, I saw, I conquered.”

Julius Caesar

allegedly used the Latin boast to describe a speedy and decisive
military victory, 1 but there is nothing particularly salutary
about the parties’ current relationship in this case.
The plaintiffs VIDIVIXI, LLC and Francis Timothy Bradley
(collectively, “Bradley”), have moved for a preliminary
injunction under Rule 65 of the Federal Rules of Civil Procedure
against the defendants, Mark Grattan and Mark Grattan Design and
Build (collectively, “Grattan”).

Bradley seeks, among other

remedies, an order enjoining the defendants from using or

1

See generally Matthew Bunson, Encyclopedia of the Roman Empire
87 (2002).

infringing the VIDIVIXI Mark, directing Grattan to turn over any
infringing material to Bradley, and ordering Grattan to pay
Bradley’s costs and fees.
The Court held an evidentiary hearing on December 1 and 2,
2015.

Having assessed the credibility of the witnesses and

reviewed the evidence, the Court makes the following findings of
fact and reaches the following conclusions of law.
I.
Bradley and Grattan have known each other since they were
students at the Pratt Institute.

Tr. at 18; Grattan Decl. ¶ 7.

In 2013, they discussed launching a high-end furniture design
business that they called VIDIVIXI. 2

Tr. at 11.

They showed

their first pieces under the VIDIVIXI name at a Factory Floor
Exhibition in the autumn of 2013.

Bradley and Grattan

collaborated on VIDIVIXI in the years that followed and operated
as a de facto partnership.

They rented woodshop space at a

Sunset Park studio, created a website, and showed their designs
at several exhibitions.

During their partnership, VIDIVIXI

designed fourteen pieces of furniture.

See Tr. at 24, 220.

The

parties dispute who exactly did what during the following two
years, but there is no question that both Bradley and Grattan
2

In the original Complaint, Bradley alleged that Grattan was an
independent contractor. In the Amended Complaint and at the
evidentiary hearing, Bradley stated that he and Grattan entered
into a de facto business partnership pursuant to New York
Partnership Law § 10. See Amended Compl. ¶ 54; Tr. at 24-25.
2

contributed to the progress of the partnership.
Tr. at 14-15, with id. at 199-200.

Compare, e.g.,

Bradley contends that he

raised money, built and designed products, conducted development
and research, handled outsourcing, and “everything else in
between.”

Tr. at 14-15.

Grattan contends that he designed the

VIDIVIXI logo, fabricated the furniture, maintained the website,
and marketed the products, while Bradley mostly contributed a
capital investment of about $80,000 and some conceptual ideas.
See Grattan Decl. ¶¶ 13-22; Tr. at 15, 199-202.
Regardless of the specific division of labor, the VIDIVIXI
furniture was the result of a collaboration between Bradley and
Grattan, and they held themselves out as a de facto partnership.
See Tr. at 24, 220.

For example, in April 2014, Bradley and

Grattan signed a contract to display five of their VIDIVIXI
pieces in the “Good Colony” showroom.
& Ex. 16.

See Grattan Decl. ¶ 45-46

The contract identified Bradley and Grattan as “Co-

Owner[s]” of VIDIVIXI.

See Grattan Decl. ¶ 45, Ex. 16.

VIDIVIXI furniture was also entered in Architectural Digest
Home Design Shows in March 2014 and in March 2015, in the
Collections at a Colony show in May 2015, and in the Le Bon
Marche/Triode Gallery show in September 2015.
¶ 53.

See Grattan Decl.

In correspondence with gallery owners before the 2014 and

2015 Architectural Digest Home Design Shows---on which Bradley
was courtesy copied---Grattan referred to Bradley as his

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“partner,” Grattan Decl. Ex. 17, and used words like “us” and
“our” when referring to VIDIVIXI, Grattan Decl. Ex. 18.

In July

2015, both Bradley and Grattan signed a contract with the Triode
Gallery as “Principal[s].”

Grattan Decl. Ex. 19.

The VIDIVIXI

website also describes the entity as “a design collaborative”
and lists Bradley and Grattan as “principals.”
Exs. 7 & 8.

Grattan Decl.

In retrospect, both Bradley and Grattan have

described their relationship as a “collaboration” and a
“partnership.”

See, e.g., Tr. at 21, 199, 253.

On March 27, 2015, long after the de facto partnership
began, Bradley applied to register the VIDIVIXI trademark on
behalf of a “Francis T. Bradley Limited Liability Company,”
which is a company that does not actually exist.

See Bradley

Aff. Ex. 3; Tr. at 37
The relationship between Bradley and Grattan began to sour
in the summer of 2015.

Grattan sent Bradley a partnership

proposal on August 25, 2015 to formalize their relationship.
See Grattan Decl. ¶ 78.
partnership agreement.

Bradley did not sign the proposed
The next day, on August 26, 2015,

Bradley organized VIDIVIXI as a Domestic Limited Liability
Company under New York law.

See Bradley Aff. Ex. 1.

On August

31, 2015, after a verbal confrontation with Grattan at the
Sunset Park woodshop, Bradley removed from the space his tools,
a laptop he had loaned to Grattan to use, and an external hard

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drive that Grattan states was his property.
¶ 43 & Ex. 10; Grattan Decl. ¶ 67.

See Bradley Aff.

On the laptop, Bradley found

what he contends are invoices for sales of VIDIVIXI furniture--evidence, he alleges, that Grattan sold VIDIVIXI pieces without
Bradley’s knowledge and kept the proceeds for himself.
Bradley Decl. ¶ 15 & Ex. 6.

See

Bradley also alleges that Grattan

took “control” of the VIDIVIXI website, implemented a “clickthrough” mechanism whereby anyone who visited Grattan’s website
would be directed to the VIDIVIXI homepage, and at one point
shut down the VIDIVIXI website.

See Bradley Aff. ¶¶ 9-13.

After the woodshop confrontation, Grattan sent an email in which
he described Bradley as going on a “rampage” following their
“significant falling out,” called him “a threat to me,” said
Bradley took Grattan’s external hard drive, and said that
Bradley should be barred from the woodshop.

See Pl.’s Ex. 1.

Bradley alleges that Grattan launched a “VIDIVIXI-takeover
plan,” Amended Compl. ¶ 7, and undertook “a grand scheme of
misappropriation of propriety information and material,” id. ¶ 5.
While Bradley states VIDIVIXI has not “earned a single cent,”
id. ¶ 12, he contends Grattan brokered “at least 20 separate
sales of furniture . . . under the trademark and trade name and
associated good will of VIDIVIXI,” id. ¶ 7.

Aside from

Grattan’s alleged sales, Bradley states VIDIVIXI never sold a
piece of furniture.

See Tr. at 53-54.

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The evidence failed to support Bradley’s claims that
Grattan sold VIDIVIXI furniture without Bradley’s knowledge and
approval.

Grattan testified credibly that some of the

“invoices” Bradley found were merely proposals for sales
prepared in response to inquiries to purchase VIDIVIXI furniture
(proposals that never led to sales).

Several of the invoices

have the word “Proposal” written at the top.
Ex. 6.

See Bradley Aff.

Grattan testified that Bradley approved the one sale

Grattan did make of a piece of VIDIVIXI furniture, called the
Dakku Bedframe, and that Bradley told Grattan to keep the
proceeds in full.

See Tr. at 222-28.

The remaining invoices

did not relate to the fourteen pieces of VIDIVIXI furniture but
to furniture that Grattan had built for his personal design firm
that was unaffiliated with VIDIVIXI.

See Tr. 220-22.

Grattan

also testified that a computer glitch caused the website to
crash temporarily.

See Tr. 248.

About two weeks after the confrontation at the woodshop,
Bradley filed this action.

In his original Complaint, Bradley

alleged numerous causes of action, which he has supplemented in
his Amended Complaint.

Among other claims, Bradley now alleges:

1. Federal trademark infringement and reverse confusion pursuant
to 15 U.S.C. §§ 1114, 1125(a); 2. Federal unfair competition
pursuant to 15 U.S.C. § 1125(a); 3. Common law trademark
infringement; 4. Common law unfair competition; 5. Federal false

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designation of origin pursuant to 15 U.S.C. §§ 1114, 1125(a);
and, 6. Deceptive business practices under state law pursuant to
New York General Business Law § 349. 3

Bradley now seeks a

preliminary injunction under Federal Rule of Civil Procedure 65
to enjoin Grattan from using the VIDIVIXI Mark, unfairly
competing with Bradley, and aiding and abetting anyone who does.
II.
The standards that govern the issuance of a preliminary
injunction are well established.

“A party seeking a preliminary

injunction ordinarily must show: (1) a likelihood of irreparable
harm in the absence of the injunction; and (2) either a
likelihood of success on the merits or sufficiently serious
questions going to the merits to make them a fair ground for
litigation, with a balance of hardships tipping decidedly in the
movant’s favor.”
2008).

Doninger v. Niehoff, 527 F.3d 41, 47 (2d Cir.

In addition, because the plaintiff seeks a mandatory

injunction requiring the defendant to take affirmative action
that will alter the status quo, the plaintiff must show a clear
3

Bradley also sued Jean Lin and Jean LLC d/b/a “Good Colony,”
where five pieces of VIDIVIXI furniture were shown, for breaches
of contract and the implied covenant of good faith and fair
dealing and for aiding and abetting Grattan’s alleged actions.
Bradley voluntarily dismissed his suit against the Lin
defendants pursuant to Federal Rule of Civil Procedure
41(a)(1)(A)(i) on October 28, 2015. In response to a temporary
restraining order the Court entered on September 21, 2015, the
five pieces of furniture at the Good Colony showroom were
removed to a storage facility for which Bradley is paying. See
ECF Dkt. Nos. 4, 56.
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likelihood of success on the merits.

See Tom Doherty Assocs.,

Inc., v. Saban Entm’t, Inc., 60 F.3d 27, 34 (2d Cir. 1995); see
also Ben Hur Moving & Storage, Inc. v. Better Bus. Bureau of
Metro. N.Y., Inc., No. 08cv6572 (JGK), 2008 WL 4702458, at *6
(S.D.N.Y. Oct. 3, 2008).
The Lanham Act prohibits the use in commerce, without the
consent of the registrant, of any “registered mark in connection
with the sale, offering for sale, distribution, or advertising
of any goods” in a way that is likely to cause confusion. 15
U.S.C. § 1114(1)(a).

“The Act similarly prohibits the

infringement of unregistered, common law trademarks.”
Time, Inc. v. Petersen Pub. Co. LLC, 173 F.3d 113, 117 (2d Cir.
1999) (citing 15 U.S.C. § 1125(a)(1)).
To prevail on a trademark infringement claim “a plaintiff
must demonstrate that ‘it has a valid mark entitled to
protection and that the defendant’s use of it is likely to cause
confusion.’”

Id. (quoting Arrow Fastener Co. v. Stanley Works,

59 F.3d 384, 390 (2d Cir. 1995)). “A mark is entitled to
protection when it is inherently distinctive; [or] . . . if it
has acquired secondary meaning, i.e., if it has become
distinctive of the . . . goods in commerce.”
citations and quotation marks omitted).

Id. (internal

Once the possessor

establishes a valid mark entitled to protection, “its possessor,
in order to succeed on its infringement claim, must prove that

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‘numerous ordinary prudent purchasers are likely to be misled or
confused as to the source of the product in question because of
the entrance in the marketplace of defendant’s mark.’”

Id.

(quoting Gruner + Jahr USA Publishing v. Meredith Corp., 991
F.2d 1072, 1077 (2d Cir. 1993).
III.
Bradley has failed to show that he has a likelihood of
success on any of his intellectual property claims, much less a
clear likelihood of success on the merits.

This is so because

the evidence adduced thus far shows that the VIDIVIXI Mark is an
asset of the de facto partnership between Francis Bradley and
Mark Grattan, and, contrary to Bradley’s allegations, Grattan
has not acted to breach that de facto partnership.
In his Amended Complaint, Bradley asserts that there was,
in fact, a de facto partnership between Bradley and Grattan
personally.

Amended Compl. ¶ 54.

The evidence supports that

such a de facto partnership existed.
“When there is no written partnership agreement between the
parties, the court must determine whether a partnership in fact
existed . . . .”
(App. Div. 2010).

Czernicki v. Lawniczak, 904 N.Y.S.2d 127, 131
To do so, a court looks for four elements:

“(1) the parties’ sharing of profits and losses; (2) the
parties’ joint control and management of the business; (3) the
contribution by each party of property, financial resources,

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effort, skill, or knowledge to the business; and (4) the
parties’ intention to be partners.”

Kidz Cloz, Inc. v.

Officially For Kids, Inc., 320 F. Supp. 2d 164, 171 (S.D.N.Y.
2004); see also Griffith Energy, Inc. v. Evans, 925 N.Y.S.2d
282, 283 (App. Div. 2011).
Bradley and Grattan met these four elements.

VIDIVIXI had

no profits, but both Bradley and Grattan contributed to its
losses financially and through their labor and expertise.

See,

e.g., Tr. 14-15, 31, 39 (Bradley’s contributions); id. 197-98;
245-36, 262-64 (Grattan’s contributions).

They worked to design

and fabricate the furniture, promote the company, and they
repeatedly held themselves out as partners.

See Part I, supra.

Partnerships can own intellectual property, such as
patents, copyrights, trademarks, and trade names.

See N.Y.

P’ship L. § 12 (“All property originally brought into the
partnership stock or subsequently acquired, by purchase or
otherwise, on account of the partnership is partnership
property.”).

The VIDIVIXI logo, the designs for VIDIVIXI

furniture, and the furniture itself constitute partnership
assets.

See, e.g., First Metlife Inv’rs Ins. Co. v. Zilkha, No.

08CV10113 (HB), 2009 WL 2999607, at *5 (S.D.N.Y. Sept. 21,
2009), aff’d sub nom., Patou v. Zilkha, 372 F. App’x 187 (2d
Cir. 2010) (two doctors in partnership/joint venture jointly
owned intellectual property associated with enterprise including

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trademarks, the copyright to the book and, allegedly, a patent).
The parties conceded as much at the evidentiary hearing.

See

Tr. at 24-25, 80-81, 199-200.
Grattan’s efforts to market and sell VIDIVIXI furniture
were not in breach of the partnership because Grattan had the
right, as partner, to use the VIDIVIXI name and designs to
promote the business. 4

Moreover, the credible evidence showed

that there was only one item of VIDIVIXI furniture that was
sold, and Bradley agreed that Grattan could keep the proceeds of
that single sale.
Because Bradley has failed to show that Grattan breached
the partnership agreement or has used the intellectual property
of the partnership in an unauthorized way, Bradley has not
established either a likelihood of success on the merits or
sufficiently serious questions going to the merits to make them

4

Bradley argues that the company “VIDIVIXI, LLC” now owns the
intellectual property. That argument is unpersuasive.
VIDIVIXI, LLC was organized in August 2015, long after Bradley
and Grattan’s de facto partnership created VIDIVIXI’s logo,
website, and furniture. Bradley had no authorization to
appropriate the intellectual property of the partnership for
himself alone. Furthermore, Bradley’s “intent to use”
application, which he filed in March 2015 on behalf of “Francis
T. Bradley, LLC”---an apparently nonexistent corporate entity--is void because the application was not filed by the entity that
intended to use the mark or an entity that had the right to
claim the mark. See Oculu, LLC v. Oculus VR, Inc., No. SACV 140196 (DOC), 2015 WL 3619204, at *6 (C.D. Cal. June 8, 2015)
(quoting Am. Forests v. Sanders, 54 U.S.P.Q.2d (BNA) 1860, 1862
(T.T.A.B.1999), aff’d, 232 F.3d 907 (Fed. Cir. 2000) (per
curiam)).
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a fair ground for litigation to justify a preliminary
injunction.

See Blanksteen v. N.Y. Mercantile Exch., 879 F.

Supp. 363, 368 (S.D.N.Y. 1995).
Similarly, Bradley has failed to show a balance of the
equities in his favor.

The evidence establishes that the

intellectual property was developed as part of the collaboration
between Bradley and Grattan.

Bradley has no equitable claim to

sole possession of the property and the right to exclude Grattan
from the use of that property.

As the Court emphasized to the

parties at the evidentiary hearing, the parties should either
find a way to work together or determine how the partnership
assets can be equitably divided.

But Bradley has no equitable

claim to take all of the assets that he concedes were developed
as partnership assets.
Moreover, Bradley has failed to establish irreparable
injury.

There is no evidence that Grattan is acting in a way

that has harmed or will harm the assets of the partnership,
Bradley’s interest in the partnership, or Bradley personally.
Indeed, if there were an unaccounted for sale of VIDIVIXI
furniture, such a sale could be readily compensated with money
damages.

See, e.g., Jayaraj v. Scappini, 66 F.3d 36, 38-39 (2d

Cir. 1995); Stokely-Van Camp, Inc. v. Coca-Cola Co., 646 F.
Supp. 2d 510, 532 (S.D.N.Y. 2009).

These circumstances do not

warrant the “extraordinary and drastic remedy” of a preliminary

12

injunction.

See Munaf v. Geren, 553 U.S. 674, 689-90 (2008)

(citation omitted).
Bradley has failed to establish an entitlement to a
preliminary injunction.
CONCLUSION
The Court has considered all of the arguments raised by the
parties.

To the extent not specifically addressed, the

arguments are either moot or without merit.

Bradley’s motion

for a preliminary injunction is denied.
SO ORDERED.
Dated:

New York, New York
January 11, 2016

_____________/s/______________
John G. Koeltl
United States District Judge

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