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SUPREME COURT OF THE STATE OF NEWYORK '——V NEW YORK COUNTY
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`MOTION CALINO.’
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`The following papers, numbered 1 to
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`were read on this motion to/for'
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`Notice of Motion/ Order to Show Cause — Affidavits — Exhibits
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`_ Answering Affidavits — Exhibits
`Replying Affidavits
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`_____—————————-
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`“52
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`PAPERS NUMBERED
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`Cross-Motion: .3 Yes
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`i: No
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`Upon the foregoing papers, it is ordered that this motionfiv
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`SO ORDERED
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`FORTHEFOLLOWINGREASON(S):
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`MOTION/CASEISRESPECTFULLYREFERREDTOJUSTICE
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`Dated: 35/ 9/oé
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`FBEM
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`SUPREME COURT OF THE STATE OF NEW YORK
`COUNTY OF NEW YORK
`
`------------------------------------------------X
`METROPOLITAN TRANSPORTATION AUTHORITY
`and NEW YORK CITY TRANSIT
`
`O
`
`
`0fthe Supreme Court ofthe
`Part 4
`State of New York, held in and for New
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`York Cogty, atthe Coun Courthouse
`on the
`day of
`n a , 2006
`PRESE
`Hon.
`’§ {"3160
`
`Justice of the Supreme Court
`
`:
`
`AUTHORITY,
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`Plaintiffs,
`
`- against -
`
`Index No. 05'403518
`
`476 SMITH STREET CORP. d/b/a. F LINE BAGELS,
`FARIED ASSAD, FOWAD ASSAD, John Doe I, John
`Doe 2, John Doc 3, and John Doc 4,
`
`FRIED, BERNARD J.
`Justlce of the Supreme Court
`
`ORDER
`
`Defendants.
`___________________________________________________________________X
`
`Plaintiffs, Metropolitan Transportation Authority ("MTA") and New York City Transit
`
`Authority ("NYCTA") commenced this action pursuant to New York State General Business
`
`Law §§ 133, 349, 350, 360-k, 360-1, 360-m, New York State Arts and Cultural Affairs Law §
`
`33.09, and 15 U.S.C. §§ 1114, 1125, and Section 32 ofthe Lanham Act, and under common law;
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`for remedies including a judgment permanently enjoining and restraining defendants, and their
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`agents, servants, and employees, from infringing plaintiffs' trademarks.
`
`Parties
`
`Plaintiffs MTA and NYCTA are New York State public authorities engaged in providing
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`regional transportation in the New York City region. Plaintiffs' subway lines carry over 4.5
`
`million passengers on an average weekday, about 1.4 billion passengers a year. Plaintiffs provide
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`the only subway line service in the City of New York and surrounding areas.
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`Plaintiffs have identified their subway line service with arbitrary letters and numbers such
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`as the "F" and "6" lines, presented in distinctive colors and designed and advertised at significant
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`costs. Through widespread acceptance and favorable recognition, these subway line designations
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`

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`have become assets of substantial value as symbols identifying plaintiffs, reflecting plaintiffs'
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`quality service and embodying plaintiffs' good will. The unique, distinct Marks of the plaintiffs
`
`are readily recognizable to the general public in New York City and its neighboring counties, as
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`well as to visitors from other states and other countries. Plaintiffs“ symbols, servicemarks, and
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`trademarks (the "Marks") have Federal and New York State registration rights and common law
`
`rights and have been in use by the plaintiffs long before defendants opened their business.
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`Plaintiffs have a successful royalty producing licensing program (the "Program") in connection
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`with the services associated with, and products bearing, the Marks (the "Merchandise").
`
`Accordingly, plaintiffs' subway line symbols and designations have become uniquely associated
`
`with and hence identify plaintiffs. Alexander Ave. Kosher Rest. Corp. v. Dragoon, 306 A.D.2d
`
`298, 300, 762 N.Y.S.2d 101 (2d Dep't) (extensive advertising and long period of use), appeal
`
`dismissed, 1 N.Y.3d 546 (2003); Staten Island Bd ofRealtors, Inc. v. Smith, 298 A.D.2d 592,
`
`594, 749 N.Y.S.2d 267 (2d Dep't 2002).
`
`In connection with plaintiffs' regional transportation service, and reflective of it,
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`Merchandise and food items are regularly available from mail order, intemet, and two New York
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`Transit Museum Store retail outlets affiliated with plaintiffs, including one museum in Brooklyn.
`
`Plaintiffs also generate revenue from leasing space to establishments that serve food, and from
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`the service of food at the museum locations surrounded by transit-oriented decor and
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`designations that reflect plaintiffs' identity.
`
`Defendant 476 Smith Street Corp., doing business as "F Line Bagels", is a domestic
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`corporation formed in 2004, and with other defendants own and operate a retail delicatessen
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`business located at 476 Smith Street, Brooklyn, New York, near a station of NYCTA's F Line
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`subway. Without plaintiffs' permission, defendants named this business after plaintiffs' subway
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`

`

`line, dressed their store in plaintiffs' subway decorations, and used plaintiffs' registered subway-
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`related trademarks. Plaintiffs in March 2005 demanded that the defendants stop infringing on
`
`plaintiff‘s Marks, and again in June 2005, after defendants failed to execute a licensing
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`agreement which had already been negotiated. This litigation followed.
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`Litigation
`
`On October 20, 2005, plaintiffs served and filed this action against defendants and
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`requested a Temporary Restraining Order ("TRO"), Preliminary and Permanent Injunctions, an
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`accounting, damages, and costs.
`
`Plaintiffs' registration of their subway line Marks are prima facie evidence of the validity
`
`of plaintiffs' registered Marks. New York State General Business Law § 360-d; 15 U.S.C. §
`
`1057(b). Unauthorized use of a valid mark is an infringement. Lykens Hosiery Mills, Inc. v.
`
`Elder Hosiery Mill, Inc., 9 N.Y.2d 1002, 1004, 176 N.E.2d 518, 218 N.Y.S.2d 71 (1961)
`
`(injunction proper because of similarity in script and design).
`
`Even if plaintiffs' Marks had not been registered (and here plaintiffs' Marks were
`
`registered before defendants' began defendants' business), plaintiffs' Marks have protected
`
`"secondary meaning". "Secondary meaning" for a mark is such that the mark is so associated in
`
`the mind of the public that the public identifies goods so marked with the Mark's owner,
`
`distinguishing goods marked otherwise. Alexander Ave. Kosher Rest. Corp. v. Dragoon, 306
`
`A.D.2d 298, 300, 762 N.Y.S.2d 101 (2d Dep't) (secondary meaning established by history of
`
`extensive advertising, long exclusive use of the Marks for the market area, and substantial sales
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`success), appeal dismissed, l N.Y.3d 546 (2003); Wyndham Co. v. Wyndham Hotel Co., 176
`
`Misc.2d 116, 118, 670 N.Y.S.2d 995 (New York County Sup. Ct. 1997) (traditional factors of
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`secondary meaning include: advertising expenditures, consumer surveys, sales success,
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`

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`unsolicited media coverage, attempts to plagiarize the mark, and length and exclusivity of use).
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`In the present case, plaintiffs have expended substantial advertising, with long exclusive,
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`successful use of the Marks, all long prior to the defendants even organizing for business.
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`Accordingly, plaintiffs' Marks have secondary meaning and, especially when accompanied by a
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`"likelihood of confusion" with defendants' marks, conclusively established plaintiffs' trademark
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`infringement claim. Wyndham Co. v. Wyndham Hotel Corp, 261 A.D.2d 242, 243, 691
`
`N.Y.S.2d 34 (lst Dep't) (injunction proper when plaintiff had long period of successful use of
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`name), appeal denied, 93 N.Y.2d 812 (1999); Staten Island Bd. ofRealtors, Inc. v. Smith, 298
`
`A.D.2d 592, 594, 749 N.Y.S.2d 267 (2d Dep't 2002) (injunction proper when plaintiffs mark has
`
`extensive advertising and long period of use); Adirondack Appliance Repair, Inc. v. Adirondack
`
`Appliance Parts, Inc., 148 A.D.2d 796, 798, 538 N.Y.S.2d 118 (3d Dep't 1989) (injunction
`
`proper when defendant capitalized on and diluted the reputation of plaintiff); Attorney’s Process
`
`& Research Serv. v. American Process & Research Corp, 177 Misc.2d 292, 293, 676 N.Y.S.2d
`
`419 (Albany County Sup. Ct. 1998) (injunction proper where plaintiff used protected four-letter
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`name first and defendant's use would cause confusion). See also, Playland Holding Corp. v.
`
`Playland Center, Inc., 1 N.Y.2d 300, 302-04, 135 N.E.2d 202, 152 N.Y.S.2d 462 (1956)
`
`(infringer was five miles away strategically located on a major road to plaintiff).
`
`Defendants initially used prominent displays of identical copies of plaintiffs registered
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`trademark to name and market defendants' business. Defendants also used similar trade dress
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`and a location near plaintiffs which increased defendants' reference to plaintiffs' business.
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`Accordingly, on October 21, 2005, this Court found likelihood of infringement and granted a
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`TRO to enjoin defendants from their conduct. Glenn Miller Productions, Inc. v. De Rosa, 167
`
`A.D.2d 281, 281, 561 N.Y.S.2d 783 (lst Dep't 1990); Adirondack Appliance Repair, Inc. v.
`
`

`

`Adirondack Appliance Parts, Inc., 148 A.D.2d 796, 797, 538 N.Y.S.2d 118 (3d Dep't 1989);
`
`Burmax Co. v. B & S Industries, Inc, 135 A.D.2d 599, 600, 522 N.Y.S.2d 177 (2d Dep't 1987);
`
`Jackson Dairy, Inc. v. HP. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir. 1979). And see, Savin
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`Corp. v. Savin Group, 391 F.3d 439, 453 (2d Cir. 2004) (an identity of marks creates a
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`presumption of actual dilution), cert. denied, 126 S.Ct. 116 (2005).
`
`This Court scheduled a hearing for a Preliminary Injunction for November 15.
`
`On November 10, plaintiffs moved this Court to find defendants in contempt of the TRO.
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`Defendants' attorney appeared and agreed to a November 15 contempt hearing.
`
`On November 15, the only defense raised against the contempt was that defendants had
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`never been properly served with the conformed copy of the TRO. This Court conducted a
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`hearing on the issue of service, found that the conformed TRO was properly served, and
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`adjourned the contempt hearing until November 21.
`
`On November 21, defendants reappeared with counsel at this Court. In open court, both
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`counsel and defendants signed a stipulation consenting to the entry of the Permanent Injunction.
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`Moreover, defendants confirmed to this Court on the record that the stipulation had been
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`discussed with counsel and that the stipulation's terms were understood. For their part, plaintiffs
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`agreed to allow defendants until January 20, 2006 to comply with the terms of the Permanent
`
`Injunction. The Court So-Ordered the stipulation and granted a Preliminary Injunction under the
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`same terms as the TRO. Plaintiffs' TRO contempt motion was denied without prejudice with
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`leave to renew.
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`In December 2005, plaintiffs inspected defendants' store and saw that defendants had
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`substantially complied with the terms of the Preliminary Injunction with temporary tape and
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`paper coverings over the subway line symbols and designations at defendants' store.
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`

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`However, in January 2006, plaintiffs learned through the public media that defendants
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`intended to circumvent the injunction by using mirror images of plaintiffs' Marks. Plaintiffs
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`duly notified defendants that using mirror images of plaintiffs' Marks instead of removing them
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`would be considered by plaintiffs to be in violation of the injunction. Nonetheless, defendants
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`began displaying mirror images of plaintiffs' Marks.
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`In March 2006, plaintiffs again moved for contempt. This Court ruled that the stipulated
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`injunction prohibited defendants' use both of plaintiffs' subway line designations and of mirror
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`images of plaintiffs' subway line symbols, and that merely taping paper over the infringing
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`images was not sufficiently permanent. A party subject to an injunction is required to take such
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`reasonable measures as would render the decree effective. The Court of Appeals has instructed
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`"injunction orders must be fairly and honestly obeyed, and not defeated by subterfiiges and tricks
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`on the part of those bound to obey them". New York v. New York & Staten Island Ferry Co, 64
`
`NY. 622, 624 (1876). See also, Oral B Lab., Inc. v. Mi-Lor Corp., 810 F.2d 20, 24 (2d Cir.
`
`1987) (infringer has a duty "to keep a safe distance from the line drawn by the district court's
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`injunction").
`
`If defendants disagreed with this Court's rulings, they should have moved to
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`vacate or modify the rulings, rather than disobeying the Order. Geller v. F[amount Realty Corp.,
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`260 NY. 346, 351, 183 NE. 520, 260 N.Y.S. 346 (1932).
`
`On April 19, 2006, the Court found defendants in contempt of the Preliminary Injunction,
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`and allowed defendants time to cure their non-compliance. In fact, this Court has given, and
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`plaintiffs have not challenged, several opportunities for defendants to cure their non-compliance.
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`Defendants' stipulation to the Preliminary and Permanent Injunction shall be enforced. On April
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`24, 2006, defendants in open court with counsel again consented to the entry of the Permanent
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`Injunction. This Order granting the entry of a permanent injunction against defendants follows.
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`

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`Discussion
`
`A stipulation is binding on parties that have legal capacity to negotiate, do in fact freely
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`negotiate their agreement and either reduce their stipulation to a properly subscribed writing or
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`enter the stipulation orally on the record in open court. When a stipulation meets these
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`requirements, as it does here, courts should construe it as a contract subject to settled principles
`
`of contractual interpretation. McCoy v. Feinman, 99 N.Y.2d 295, 302, 785 N.E.2d 714, 755
`
`N.Y.S.2d 693 (2002); Cappello v. Cappello, 286 A.D.2d 360, 360, 729 N.Y.S.2d 175 (2d Dep't
`
`2001) (stipulation in open court is to binding). Here, this Court's November 21, 2005 orders
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`subjected defendants to the Preliminary Injunction and to an entry of the Permanent Injunction.
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`The Permanent Injunction shall permanently prohibit defendants from using any of
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`plaintiffs' subway line designations, which includes "F Line". Accordingly, prohibited uses shall
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`include any "F Line" on defendants' walls. Furthermore, defendants clearly understood the "F
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`Line" designation on defendants' wall to be subject to the injunction, because once the
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`Preliminary Injunction was granted defendants initially covered up all of defendants' "F" Line
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`references, including that on defendants' wall. David B. Findlay, Inc. v. Findlay, 47 Misc.2d
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`649, 657-58, 262 N.Y.S.2d 1008 (New York County Sup. Ct. 1965) (defendant initially used
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`own full name before changing to the infringing name), afl'd, 23 A.D.2d 846 (lst Dep't 1965),
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`afi’d, l8 N.Y.2d 12 (1966), cert. denied, 385 US. 930 (1966).
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`Any mirror image manipulation of the Marks is also prohibited by the Permanent
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`Injunction. The Injunction states that defendants shall not dilute plaintiffs' Marks, or indeed use
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`any part of them, including the colors, the symbols, or any colorable imitations thereof. Gallina
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`v. Giacalone, 171 Misc.2d 645, 648, 655 N.Y.S.2d 317 (Kings County Sup. Ct. 1997) (dilution
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`is based upon the idea that a mark can lose its value through unauthorized use). Defendants'
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`

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`mirror images of plaintiffs' symbols employed the same configurations of color and shape as
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`plaintiffs' Marks, and create the same general impression. Oral B Lab., Inc. v. Mi-Lor Corp,
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`810 F.2d 20, 24—25 (2d Cir. 1987) (infringer's ovals were neither precisely the same color nor
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`exactly the same shape as plaintiffs oval, but "subtle distinctions" would not suffice if infringer
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`created "the same general impression"); RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058,
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`1060 (2d Cir. 1979) (test is not whether the marks can be differentiated when subjected to a side-
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`by-side comparison, but rather whether they create the same general overall impression); Apple
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`Corps, Ltd. v. Adirondack Group, 124 Misc.2d 351, 354, 476 N.Y.S.2d 716 (New York County
`
`Sup. Ct. 1983) (defendants used names of the bandmembers instead of the actual band name).
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`See also, Leviton Mfg. Co. v. Universal Sec. Instruments, Inc., 409 F.Supp.2d 643, 652 (D. Md.
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`2006) (using a trademark upside-down would not avoid infringement); Solow v. BMW (US)
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`Holding Corp, No. 97-1373, 1998 US. Dist. LEXIS 16059, at *3, 11-12, 1998 WL 717613
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`(S.D.N.Y. Oct. 13, 1998) (defendants' mark - a red number '5' may infringe on plaintiffs mark - a
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`red number '9'); American Std, Inc. v. Lyons Indus. , No. 97-4806, 1998 US. Dist. LEXIS
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`22882, at *28-29 (D.N.J. Feb. 17, 1998) (simply adding a feature that is a mirror image of an
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`existing feature does not create a significantly different effect upon the eye of the ordinary
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`observer); Roulo v. Russ Berrie & C0,, 886 F.2d 931, 940 (7th Cir. 1989) (minute differences
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`which defendant painstakingly incorporated to prevent a mirror image copy of plaintiffs' work
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`are insignificant in light of the nearly identical composition and appearance).
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`Defendants' use of mirror images also would not be protected by a "parody" exception,
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`since defendants are not expressing any message. "A parody must convey two simultaneous --
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`and contradictory -- messages: that it is the original, but also that it is not the original and is
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`instead a parody. To the extent that it does only the former but not the latter, it is not only a poor
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`parody but also vulnerable under trademark law, since the customer will be confused." Cliffi
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`Notes, Inc. v. Bantam Doubleday Dell Publishing Group, 886 F.2d 490, 494 (2d Cir. 1989).
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`Here, defendants rode on the recognition of plaintiffs' Marks, yet defendants voice no expression
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`or message at all, let alone one worthy of parody protection. Furthermore, plaintiffs derive
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`revenue from food services, as defendants do, and such competition further limits applicability of
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`the parody defense. Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806, 812-13 (2d Cir. 1999)
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`(humorous but impermissible use of plaintiffs mark to promote defendant's competing services).
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`It is important to note in the present case that likelihood of confusion, mistake, or
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`deception is sufficient; actual confusion need not be shown. Henegan Constr. Co. v. Heneghan
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`Contr. Corp, 2002 US. Dist. LEXIS 10545, at *27-28, 2002 WL 1300252 (S.D.N.Y. June 12,
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`2002) (citing, Frank's Rest, Inc. v. Lauramar Enters, Inc., 273 A.D.2d 349, 350, 711 N.Y.S.2d
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`433 (2d Dep‘t 2000) ("Nor is it any excuse or justification
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`that the parties are not in actual
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`competition or in identically the same line of business"); Star Indus. v. Bacardi & Co. , 412 F.3d
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`373, 384 (2d Cir. 2005) ("In order to be confused, a consumer need not believe that the owner of
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`the mark actually produced the item and placed it on the market. The public's belief that the
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`mark's owner sponsored or otherwise approved the use of the trademark satisfies the confusion
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`requirement." ), cert.denied, 126 S. Ct. 1570 (2006); Blaich Assocs. v. Coach/Blaich Real Estate
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`ofManhasset, Inc., 186 Misc.2d 594, 597, 719 N.Y.S.2d 820 (Nassau County Sup. Ct. 2000)
`
`(injunction proper where similar visual display and nearby location is likely to confuse the public
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`and dilute the plaintiffs trade name - actual confusion not needed); Rainbow Ranch Corp. v.
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`Rainbow Shops, Inc., 89 Misc.2d 808, 812, 392 N.Y.S.2d 796 (Suffolk County Sup. Ct. 1977)
`
`(likelihood is sufficient - actual proof of deception, misrepresentation, confusion or loss of
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`business is not needed); Anti—Defamation League ofB 'Nai B’Rith v. Arab Anti-Defamation
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`

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`League, 72 Misc.2d 847, 856, 340 N.Y.S.2d 532 (New York County Sup. Ct. 1972) (evidence of
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`actual confusion, deception, misrepresentation or loss of business is not needed).
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`"Equity will, therefore, enjoin as unfair competition the adoption or use of the trade
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`name, trade-mark or advertising of another, where the apparent purpose is to reap where one has
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`not sown, or to gather where one has not planted, or to build upon, or profit from, the name,
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`reputation, good will or work of another.". David B. Findlay, Inc. v. Findlay, 47 Misc.2d 649,
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`657-58, 262 N.Y.S.2d 1008 (New York County Sup. Ct. 1965) (citing, Forsythe Co. v. Forsythe
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`Shoe Corp, 234 AD. 355, 358 (lst Dep't 1932).
`
`It is no defense that defendant did not intend
`
`to defraud plaintiffs or that defendants made a partial discontinuance of the infringing acts.
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`Robert Reis & Co. v. Herman B. Reiss, Inc., 63 N.Y.S.2d 786, 807 (New York County Sup. Ct.
`
`1946)
`
`The Permanent Injunction is also appropriate in this case because plaintiffs seek to halt
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`unlawful infringement and do not seek to deny defendants' ability to continue a business.
`
`Plaintiffs derive revenue for the public benefit from plaintiffs' use and control over plaintiffs'
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`own Marks. Plaintiffs also derive revenue for the public benefit from food-related transactions
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`that bridge the gap into the market area which defendants wish to share. In contrast, defendants'
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`private delicatessen business can function without defendants choosing to infringe on plaintiffs'
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`Marks. Accordingly, the equities strongly favor an injunction against defendants. Fusha
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`Japanese Rest, Inc. v. Fusha, 17 A.D.3d 226, 227, 793 N.Y.S.2d 43 (lst Dep't 2005) (injunction
`
`proper where plaintiff operated a year before defendants, defendants copied plaintiffs registered
`
`logo, even with no evidence of actual confusion); Gasoline Heaven at Commack, Inc. v.
`
`Nesconset Gas Heaven, Inc., 191 Misc.2d 646, 649, 743 N.Y.S.2d 825 (Suffolk County Sup. Ct.
`
`2002) (actual confusion need not be shown for granting of injunction, even if parties are not in
`
`10
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`

`

`actual competition or same line of business); Attorney’s Process & Research Serv. v. American
`
`Process & Research Corp, 177 Misc.2d 292, 293, 676 N.Y.S.2d 419 (Albany County Sup. Ct.
`
`1998) (injunction proper where plaintiff used protected mark first and defendant's use would
`
`cause confusion); Gallina v. Giacalone, 171 Misc.2d 645, 651, 655 N.Y.S.2d 317 (Kings County
`
`Sup. Ct. 1997) (injunction proper where party's purpose is to profit from the name, reputation,
`
`good will or work of another); Burberrys, Ltd v. After Six, 122 Misc.2d 561, 562, 471 N.Y.S.2d
`
`235 (New York County Sup. Ct. 1984) (mere likelihood of confusion sufficient to grant
`
`injunction for unlicensed use of mark even if product is of the same quality). And see, Sullivan
`
`v. Ed Sullivan Radio & T. V., Inc., 1 A.D.2d 609, 611-12, 152 N.Y.S.2d 227 (lst Dep't 1956)
`
`(although defendant was only one isolated store, plaintiff must aggressively seek an injunction to
`
`protect its trademarks, while defendant could easily change its name); National Design Center,
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`Inc. v. 53 St. Design Centre, Inc., 24 Misc.2d 545, 547, 203 N.Y.S.2d 517, (New York County
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`Sup. Ct. 1960) (plenty of names available other than plaintiffs); Harvey Machine Co. v. Harvey
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`Aluminum Corp, 9 Misc.2d 1078, 1081, 175 N.Y.S.2d 288 (New York County Sup. Ct. 1957)
`
`(defendant could select many names other than plaintiffs).
`
`AND NOW,
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`On motion of plaintiffs, with consent of all parties, and upon all prior pleadings,
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`submissions, and proceedings, including those of November 21 , 2005, March 21, 2006, and
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`April 24, 2006, it is:
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`ORDERED, ADJUDGED AND DECREED,
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`That individual defendants, including Faried Assad, Fouad Assad, Ahmad Samhan, and
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`476 Smith Street Corp., its officers, directors, agents, servants, employees, associates, and
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`11
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`attorneys, and/or all those persons in active concert or participation with defendants, and/or
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`acting or purporting to act for or on behalf of any defendant, be forthwith and hereafter
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`permanently enjoined and restrained from:
`
`a.
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`Using plaintiffs' trademark, servicemarks, symbols, and/or designations, in part
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`and/or whole, including any color coding that references plaintiffs' subway lines,
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`facsimiles, and/or derivative variations thereof , and/or any confusingly similar
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`designation alone and/or in combination with other words, as a trademark, trade
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`name component and/or otherwise:
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`(i)
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`to market, advertise and/or identify defendants' services, merchandise
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`and/or other products offered for sale;
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`(ii)
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`in association with any commercial enterprise with locations within New
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`York City and/or within a radius of one hundred and twenty (120) miles of
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`the borders of New York City; and/or
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`(iii)
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`on any signage on any structure, buildings, and/or premises;
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`Otherwise infringing plaintiffs' trademarks and servicemarks;
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`Unfairly competing with plaintiffs in any manner whatsoever;
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`Causing likelihood of confusion, injury to business reputation, and/or dilution of
`
`the distinctiveness of plaintiffs' trademarks, servicemarks, symbols, designations,
`
`labels, and/or forms of advertisement;
`
`Manufacturing, producing, printing, publishing, selling, and/or distributing any
`
`materials, including but not limited to menus or advertising, bearing the plaintiffs'
`
`trademarks, servicemarks, symbols, designations, and/or any colorable imitations
`
`thereof; and
`
`12
`
`

`

`f.
`
`Making any representation liable to mislead the public and/or tradespeople into
`
`believing that the defendant is a subsidiary of, licensee of, and/or in any way
`
`connected with the plaintiffs.
`
`AND IT IS FURTHER ORDERED, ADJUDGED AND DECREED,
`
`That defendants, and their agents, servants, and employees, permanently and completely
`
`obliterate, delete, and remove all of plaintiffs' trademarks, servicemarks, symbols, and/or
`
`designations contained therein from defendants' business offices, stationery, listings, telephone
`
`books, signs, advertising, and wheresoever else the same may appear in connection with
`
`defendants' business; and that defendants for all other materials bearing such prohibited
`
`trademarks, servicemarks, symbols, and/or designations which cannot be obliterated, deleted or
`
`removed, that defendants identify to plaintiffs in writing all such materials and explain why the
`
`trademarks, servicemarks, symbols, and/or designations thereof cannot be obliterated, deleted or
`
`removed; and that defendants at defendants' cost take any lawful action(s) as plaintiffs deem
`
`appropriate to eliminate or mitigate such matters.
`
`AND IT IS FURTHER ORDERED,
`
`That the parties appear on June 26, 2006, 2:30 pm, before this Court on the issues of
`
`damages, including accounting, attorneys fees and costs; unless such issues are settled by the
`
`parties before the scheduled date of appearance.
`
`Partial Judgment signed this
`
`ENTER:
`
` BERNARDJ. F IED
`
`Justice of the Supreme Court
`
`

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