Van Praagh v. Gratton

Citation993 F.Supp.2d 293
Decision Date28 January 2014
Docket NumberNo. 13–CV–375 (ADS)(AKT).,13–CV–375 (ADS)(AKT).
CourtU.S. District Court — Eastern District of New York
PartiesJames VAN PRAAGH, Plaintiff, v. Lynn GRATTON, Defendant.

OPINION TEXT STARTS HERE

Buchanan Ingersoll & Rooney PC, New York, NY, By Philip L. Hirschhorn, Esq., of Counsel, for Plaintiff.

Whyte Hirschboeck Dudek, SC, Madison, WI, By Thomas P. Heneghan, Esq., Melinda S. Giftos, Esq., of Counsel, Mark S. Frey, Esq., New York, NY, for Plaintiff.

MEMORANDUM OF DECISION AND ORDER

SPATT, District Judge.

On January 22, 2013, the Plaintiff James Van Praagh (the Plaintiff) commenced this trademark infringement action against his sister, the Defendant Lynn Gratton (the Defendant). The Plaintiff accuses the Defendant of (1) trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1114(1)(a); (2) false designation of origin in violation of the Lanham Act, 15 U.S.C. § 1125(a); (3) trademark dilution in violation of the Lanham Act, 15 U.S.C. § 1125(c); and (4) trademark infringement, unfair competition, trademark dilution and deceptive acts and practices in violation of N.Y. Gen. Bus. Law (“NYGBL”) §§ 349 and 360l and New York common law.

Presently before the Court is a Federal Rule of Civil Procedure (Fed. R. Civ.P.) 12(b)(6) motion by the Defendant to dismiss the Plaintiff's Complaint in its entirety. For the reasons that follow, the Court grants in part and denies in part the Defendant's motion.

I. BACKGROUND
A. Rule 12(b) Standard for Considering Factual Allegations and Evidence Outside the Complaint

Before reciting the underlying factual allegations of this case, as an initial matter, the Court notes that despite the Defendant's apparent confusion, generally evidence outside of the Complaint may not be considered by the Court when deciding a motion to dismiss brought pursuant to Fed.R.Civ.P. 12(b)(6). See, e.g., DiFolco v. MSNBC Cable L.L.C., 622 F.3d 104, 113 (2d Cir.2010) (“In ruling on a motion pursuant to Fed.R.Civ.P. 12(b)(6), the duty of a court is merely to assess the legal feasibility of the complaint, not to assay the weight of the evidence which might be offered in support thereof.”) (citation and internal question marks omitted); Hahn v. Rocky Mt. Express Corp., No. 11 Civ. 8512(LTS)(GWG), 2012 WL 2930220, at *2 (S.D.N.Y. June 16, 2012) (“When deciding a motion to dismiss ... [e]vidence outside [the complaint] ... cannot [ ] be considered on review of a 12(b)(6) motion.”) (citation and internal quotation marks and alterations omitted).

Rather, pursuant to Fed.R.Civ.P. 12(d), where matters outside the complaint are presented in connection with a Rule 12(b)(6) motion, “a district court must either ‘exclude the additional material and decide the motion on the complaint alone’ or ‘convert the motion to one for summary judgment under Fed.R.Civ.P. 56 and afford all parties the opportunity to present supporting material.’ Friedl v. City of New York, 210 F.3d 79, 83 (2d Cir.2000) (quoting Fonte v. Bd. of Managers of Continental Towers Condo., 848 F.2d 24, 25 (2d Cir.1988)).

In this case, the Court declines to convert the Plaintiff's motion to dismiss to one for summary judgment. Thus, while the Defendant repeatedly attempts to counter the Plaintiff's Complaint with her own factual allegations not alleged in the Complaint, these allegations cannot be considered by the Court at this stage of the litigation. See, e.g., Dual Groupe, LLC v. Gans–Mex LLC, 932 F.Supp.2d 569, 572 (S.D.N.Y.2013) (Defendants dispute many of the complaint's factual allegations, which the court cannot adjudicate at the motion to dismiss stage.”) Nevertheless, in its analysis, the Court may refer “to documents attached to the complaint as an exhibit or incorporated in it by reference, to matters of which judicial notice may be taken, or to documents either in [the] [P]laintiff['s] possession or of which [the] [P]laintiff[ ] had knowledge and relied on in bringing suit.” Brass v. Am. Film Tech., Inc., 987 F.2d 142, 150 (2d Cir.1993)

In this regard, the Court will consider the Defendant's website, as it was incorporated by reference in the Plaintiff's Complaint. ( See Compl., ¶ 17.) However, the Court declines to take judicial notice of the death of the Defendant's husband, Dennis Gratton, on June 7, 2000, since the Defendant has failed to provide the Court with a copy of Dennis Gratton's death certificate, which courts generally require. See Johnson v. Morgenthau, 160 F.3d 897, 898 (2d Cir.1998) (taking judicial notice that the plaintiff had died because his sister-in law provided the court with a copy of the plaintiff's death certificate); G–I Holdings, Inc. v. Baron & Budd, No. 01 Civ. 0216(RWS), 2003 WL 193502, at *8 (S.D.N.Y. Jan. 29, 2003) (in a wrongful death suit, taking judicial notice of the date of the decedents' deaths where the defendants attached copies of their death certificates to their motion to dismiss). Moreover, even if the Court were to consider the death of the Defendant's husband, it would have no impact on the Court's decision. Lastly, the Court shall consider no additional factual allegations raised by the Defendant in either her motion papers or reply, as none of the Defendant's other factual allegations meet the criteria to allow for their consideration on a motion to dismiss.

Thus, unless otherwise stated, the Court, as it must, draws the following facts from the Plaintiff's Complaint and construes them in a light most favorable to the Plaintiff. Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 1949–50, 173 L.Ed.2d 868 (2009).

B. Underlying Factual Allegations

The Plaintiff, a resident of California, and the Defendant, a resident of New York, are siblings. (Compl., ¶¶ 1–2, 13.) While the Defendant and the Plaintiff at one time shared the surname Van Praagh,” the Defendant ceased using Van Praagh as her last name when she married on August 28, 1970, at which time she assumed the surname “Gratton” instead. (Compl., ¶ § 13–14.) As such, Van Praagh is no longer the Defendant's surname and has not been for more than forty years. (Compl., ¶ 15.)

The Plaintiff purports that for the last twenty years, he has provided spiritual medium services in connection with his name and trademark James Van Praagh (the James Van Praagh Trademark”). (Compl., ¶ 7.) In this regard, while using the James Van Praagh Trademark, he has appeared on syndicated television shows; presented at large conferences and retreats; worked with people throughout the United States and internationally; authored books; maintained a website and online community; and offered seminars. (Compl., ¶¶ 8–9.) According to the Complaint, the Plaintiff “has developed an enormous following and is one of the most recognized spiritual mediums in the world.” (Compl., ¶ 10.) He claims that by using the James Van Praagh Trademark in association with his spiritual medium services, books, website, shows and seminars, he “has built valuable good will in his name.” (Compl., ¶ 11.)

However, the Plaintiff alleges that in 2010, the Defendant began providing her own spiritual medium services in the State of New York using the surname Van Praagh,” which he also suggests is trademarked by him (the Van Praagh Trademark”). (Compl., ¶ 15.) Upon learning that the Defendant was using the alleged Van Praagh Trademark, the Plaintiff contacted the defendant and demanded she stop using the name. (Compl., ¶ 16.) However, the Defendant ignored those demands. (Compl., ¶ 16.)

In addition, the Plaintiff claims that the Defendant has used the Van Praagh Trademark while offering her spiritual medium services at various venues throughout the United States and on her websites, Facebook Page, Twitter account and YouTube channel. (Compl., ¶¶ 17–18.) In this regard, the Plaintiff appears to suggest that his sister has marketed her spiritual medium services using the trademarks Lynn Van Praagh and Lynn Van Praagh–Gratton,” and that the use of these names overlap with his James Van Praagh Trademark and Van Praagh Trademark. (Compl., ¶ 18.)

With respect to the Defendant's websites, the Plaintiff alleges that the Defendant has registered the domain names “www. lynnievan praagh. com” and “www. lynnievan praagh gratton. com.” (Compl., ¶ 17.) According to one of these websites, which as the Court noted above, is incorporated by reference in the Complaint, the Defendant holds herself out as “a Spiritual Medium with the gift of communicating on the other side with those who have passed” and that she “comes from a long line of highly gifted psychics and mediums, it's been her family's gift for many generations.” (Def. Mot., Exh. B.) Further, the “about” page of this website includes claims that the Defendant's mother had the gift as do some of her siblings.” (Def. Mot., Exh. B.)

When the Plaintiff discovered that the Defendant, without authorization, was continuing to use and expanding upon her use of the Van Praagh Trademark, he again contacted her and demanded she cease using the Van Praagh Trademark. (Compl., ¶ 19.) However, the Defendant declined to do so. (Compl., ¶ 19.)

Approximately two years after the Defendant began using the Van Praagh name in association with her own spiritual medium services, on October 30, 2012, the Plaintiff registered the James Van Praagh Trademark with the United States Patent and Trademark Office. (Compl., Exh. A.) The federal trademark registration numbers for the James Van Praagh Trademark are U.S. Reg. Nos. 4,233,849 and 4,233,848. Prior to October 30, 2012, the James Van Praagh Trademark was unregistered. It also appears that the Van Praagh Trademark was and remains unregistered.

At the time the Complaint was filed, January 22, 2013, the Defendant was still marketing and providing spiritual medium services throughout the United States while using the Van Praagh Trademark. (Compl., ¶ 20.) The Plaintiff alleges that the Defendant “is knowingly and willingly continuing her unauthorized use of the [Van Praagh] name/trademark to intentionally deceive consumers...

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