Calamari Fisheries, Inc. v. The Village Catch, Inc., Civ. A. No. 87-1469-WD.

• Decision Date: 24 October 1988
• Docket Number: Civ. A. No. 87-1469-WD.
• Citation: 698 F. Supp. 994
• Parties: CALAMARI FISHERIES, INC. d/b/a The Daily Catch, Plaintiff, v. THE VILLAGE CATCH, INC. d/b/a The Village Catch, et al., Defendants.
• Court: U.S. District Court — District of Massachusetts

698 F. Supp. 994

CALAMARI FISHERIES, INC. d/b/a The Daily Catch, Plaintiff, v. THE VILLAGE CATCH, INC. d/b/a The Village Catch, et al., Defendants.

Civ. A. No. 87-1469-WD.

United States District Court, D. Massachusetts.

October 24, 1988.

Roberta Fitzsimmons, Ricklefs, Uehlein & Nason, Boston, Mass., for plaintiff.

Harvey A. Schwartz, Schwartz, Shaw & Griffith, Boston, Mass., for defendants.

ORDER

WOODLOCK, District Judge.

After a hearing upon the defendants' objections to the Report and Recommendation of Magistrate Saris regarding Plaintiff's Motion for Preliminary Injunction and consideration of the submissions of the parties with respect thereto, it is hereby ORDERED:

That until final adjudication on the merits of this matter or further order of this Court, the defendants, their agents, servants, employees and those persons in active concert or participation with them who receive actual notice of this Order, are hereby restrained and enjoined from using the names THE VILLAGE CATCH and VILLAGE CATCH in connection with their restaurant services; and it is FURTHER ORDERED:

That such persons are hereby enjoined and restrained from using the terms CATCH, THE CATCH, CATCHES, THE CATCHES, and CATCH'S as the last word(s) in any two or three word trade name or service mark in connection with their restaurant services; and it is FURTHER ORDERED:

That Defendants shall commence forthwith erection of a different sign or signs for their establishment not using the name THE VILLAGE CATCH or VILLAGE CATCH and shall commence forthwith destruction or quarantine of all previously prepared business cards and other promotional materials bearing such name, leaving in any place under defendants' custody or control at any time after November 25, 1988 no publicly available indication of their establishment's previous name; and it is FURTHER ORDERED:

That the plaintiff post a bond in the amount of $5,000 as security pursuant to Fed.R.Civ.P. 65(c).

MEMORANDUM

At issue here is what to do about consumer confusion concerning the use of the name "Catch" to describe a distinctive Sicilian-type seafood restaurant in the Greater Boston area. The matter comes before me on the defendants' objections to Magistrate Saris' Report and Recommendation Regarding Plaintiff's Motion for a Preliminary Injunction issued August 17, 1988.

Upon review of that Report and of the defendants' objections and the plaintiff's response thereto, and after a hearing in this matter, I will adopt the recommendation of the Magistrate substantially for the reasons stated in her Report. Certain editorial modifications, however, have been made in the Magistrate's recommended Order, which will issue as the Court's injunctive decree.

Because the Magistrate's clear and comprehensive Report is in many ways a model for the treatment of these issues and because I find that any further observations by me are unlikely to improve upon the analysis given to the issues in the Report, I incorporate the Magistrate's Report in this Memorandum and direct that the entirety of the Magistrate's Report be published as part of the papers by which I dispose of this motion.

I add only a few comments directed to the objections presented by the defendants.

At this stage in the proceedings, it appears quite likely that plaintiff will prevail on its claim that the principal of the defendant restaurant — a former chef for the plaintiff at its restaurant — has been trading on the plaintiff's reputation through the use of a confusingly similar name and the presentation of a similar menu in a similar ambience.

Although the defendants object that the Magistrate's conclusions with respect to the four branches of preliminary injunction analysis, see generally Camel Hair and Cashmere Institute of America, Inc. v. Associated Dry Goods Corporation, 799 F.2d 6, 12 (1st Cir.1986), are erroneous, the primary objection is to the recommended interim remedy of a name change for the defendants' establishment. The defendants make two points.

First, they assert that the particular restrictions on the use of the word "Catch" in the Magistrate's Order would permit evasions of the spirit of the Order, resulting in the same confusion which gave rise to the restrictive remedy. Second, they assert that a disclaimer in all advertising would be a fully effective but appropriately less severe alternative in this case.

By contrast, the plaintiff, which had originally sought as an interim remedy to prohibit entirely the use of the word "Catch" in the name of defendants' restaurant, does not now object to the less restrictive alternative recommended by the Magistrate. The plaintiff, however, adamantly opposes the use of a disclaimer as now proposed by the defendants.

If I had initially been confronted with the parties' submissions at the hearing stage before the Magistrate, I might well have framed the remedy with both a total prohibition of the word "Catch" in the name of the defendants' restaurant and a direction to provide a disclaimer for a period of time. The process of presenting the matter to the Magistrate has, however, modified and sharpened the parties' views regarding the appropriate interim remedy. They are in the best position to calibrate the relative harms they face. Under these modified circumstances I find the Magistrate's recommendation appropriate.

Presented with a defendant restaurant which makes little use of advertising, and a principal of the restaurant who characterizes the most important aspects of his restaurant's success as involving not its catchy name but rather its "location, decor, me, and seafood," I am satisfied that a carefully tailored name change of the type fashioned by the Magistrate to ameliorate consumer confusion is an appropriate interim remedy. I am suspicious of the defendants' protestations that the standards for the name change recommended by the Magistrate create opportunities for them to evade the spirit of the preliminary injunction decree. Given plaintiff's satisfaction with the Order — despite an awareness of defendants' suggestion of evasive compliance — I decline to restyle the Order recommended.

The defendants' request for a disclaimer is no less questionable than its expressed concern regarding its own evasive compliance. Having considered plaintiff's views as to a disclaimer, I have concluded that the use of a disclaimer here could become a subtle, indirect, and ironic means for the defendants to communicate and reinforce association with the plaintiff. Any disclaimer will appear to some customers to be little more than an attempt to impose a meaningless, hypertechnical legal requirement. By coupling the plaintiff's name with the defendants' establishment through the litotic presentation of the plaintiff's protected name in a disclaimer, defendants will continue to achieve indirectly what they are proscribed even from suggesting directly. The defendants should not be permitted to encourage patrons to enter their own restaurant through a descriptive back door below a sign containing reference to plaintiff's name. See generally Charles of the Ritz Group Ltd. v. Quality King Distributors, Inc., 832 F.2d 1317, 1324 (2d Cir.1987).

Report and Recommendation Re: Plaintiff's Motion for Preliminary Injunction (Docket 16)

PATTI B. SARIS, United States Magistrate.

I. INTRODUCTION

This is an action brought by one seafood restaurant, THE DAILY CATCH, with three locations in Boston and Cambridge, against a competing Brookline seafood restaurant, THE VILLAGE CATCH, which was started and is operated and owned by a chef who had worked at THE DAILY CATCH for three years.

Count I of the Verified Complaint filed on June 9, 1987, alleges that plaintiff has used the service marks THE DAILY CATCH and DAILY CATCH continuously since 1973 to identify its restaurant services specializing in a cuisine of fresh squid, seafood and pasta prepared in a Sicilian style of cooking, and that the marks have acquired secondary meaning causing consumers to associate the marks with plaintiff and its restaurant services. (Docket 1, ¶¶ 16, 40, 49). Plaintiff also claims in Count I that defendants' use of the marks THE VILLAGE CATCH, VILLAGE CATCH, THE CATCH, and THE CATCHES to identify their restaurant services is likely to create confusion in the minds of a substantial number of the restaurant-going public, and indeed has caused instances of actual confusion, in violation of the Lanham Act, 15 U.S.C. § 1125(a). (Id., ¶¶ 25, 50-52).¹

On September 21, 1987, plaintiff filed a motion for preliminary injunction to enjoin defendants "from using the terms CATCH, THE CATCH, CATCHES, THE CATCHES, CATCH'S and DAILY alone or in combination with other words or symbols or devices as a service mark, trademark, trade name, corporate or other entity name or otherwise to identify, market, advertise, promote, offer to sell, sell or provide restaurant services and from otherwise infringing plaintiff's service marks THE DAILY CATCH and DAILY CATCH." (Docket 16). The motion for preliminary injunction is based solely on Count I of the Verified Complaint.

Plaintiff's motion for preliminary injunction has been referred here for report and recommendation.² After an opportunity for discovery, the parties completed the filing of memoranda, supporting affidavits and exhibits in May 1988, and a hearing was held on May 31, 1988. No live testimony was heard. After reviewing the parties' arguments, well-briefed memoranda and ample supporting documentation, the Court RECOMMENDS that plaintiff's motion for preliminary injunction be ALLOWED in part. A recommended order is attached.

II. FINDINGS OF FACT

A. The Daily Catch

Plaintiff, Calamari Fisheries, Inc. d/b/a The Daily Catch, is owned by Paul R. Freddura and Maria Lombardo Freddura, who are husband and wife. (Docket 18, ¶ 1). They opened the first THE DAILY CATCH restaurant at 323 Hanover Street in the North End section of Boston, Massachusetts in 1973 as...