Bravo Pizza Enters. v. Yossef Azizo
| Docket Number | 23-CV-04540 (HG) |
| Decision Date | 29 August 2023 |
| Parties | BRAVO PIZZA ENTERPRISES, INC., Plaintiff, v. YOSSEF AZIZO and KOSHER BRAVO PIZZA L.L.C., Defendants. |
| Court | U.S. District Court — Eastern District of New York |
There is currently in place a temporary restraining order prohibiting Defendants from using Plaintiff's various trademarks, along with any other mark or name likely to cause confusion with Plaintiff's trademarks. ECF No. 29. This order provides the Court's findings of fact and conclusions of law supporting its decision to convert that temporary restraining order into a preliminary injunction, as required by Rule 52(a)(2), and accompanies the Court's separate order defining the scope of the preliminary injunction, as required by Rule 65(d). Additionally, the Court grants Defendants' request to compel arbitration regarding Plaintiff's claim that Defendants breached the parties' written license agreement, which contains an arbitration clause, and stays litigation related to the remainder of Plaintiff's claims while that arbitration is pending. The Court declines, however, to abstain from exercising jurisdiction over Plaintiff's claims in deference to state court litigation that Plaintiff previously commenced against Defendant Azizo.
As further explained below, Plaintiff's claims arise out of Defendants' use of several of Plaintiff's trademarks at several different locations where Defendants do business. Shortly after commencing this case, Plaintiff moved for a preliminary injunction prohibiting Defendants' use of Plaintiff's trademarks. ECF No. 10. The Court held a hearing on August 3, 2023, during which counsel for both parties appeared to reach a negotiated resolution. However, that resolution fell apart when it became apparent that representations made by Defendants' former counsel that his clients had stopped using Plaintiff's trademarks at certain locations had been inaccurate. Plaintiff therefore sought emergency injunctive relief, see ECF No. 23, and the Court responded by entering a temporary restraining order against Defendants' use of Plaintiff's trademarks see ECF No. 25.
When Plaintiff presented evidence demonstrating that Defendants were not complying in good faith with the temporary restraining order, by using a name that was obviously likely to cause confusion with the name for Plaintiff's business, the Court entered a modified temporary restraining order. ECF No. 29. That order gave Defendants additional time to comply with the order and also expressly forbade Defendants from using any mark or name likely to cause confusion with Plaintiff's trademarks. Id. The Court also granted Defendants' counsel's motion to withdraw and ordered Defendant Kosher Bravo Pizza L.L.C. to find new counsel by September 15, 2023, or else the Court would likely order the entry of default against the company. ECF No. 30. The current temporary restraining order is in place until 12:00pm Eastern Time on August 30, 2023. ECF No 29.
Plaintiff's complaint asserts several causes of action, including claims under the Lanham Act for trademark infringement related to two separate registered trademarks, false designation of origin, and trademark dilution. ECF No. 1. Plaintiff also asserts a claim for unfair trade practices under New York's General Business Law and a New York breach of contract claim based on a written license agreement between the parties. Id.
A party seeking a preliminary injunction must establish: “(1) irreparable harm; (2) either (a) a likelihood of success on the merits, or (b) sufficiently serious questions going to the merits of its claims to make them fair ground for litigation, plus a balance of the hardships tipping decidedly in favor of the moving party; and (3) that a preliminary injunction is in the public interest.” Conn. State Police Union v. Rovella, 36 F.4th 54, 62 (2d Cir. 2022).[1] “[A] preliminary injunction is an extraordinary remedy never awarded as of right.” Benisek v. Lamone, 138 S.Ct. 1942, 1943 (2018). Instead, a preliminary injunction “should not be granted unless the movant, by a clear showing, carries the burden of persuasion.” Sound Around Inc. v. Shenzhen Keenray Innovations Ltd., No. 22-cv-6943, 2022 WL 17811475, at *2 (E.D.N.Y. Dec. 18, 2022) (emphasis in original). “The purpose of such interim equitable relief is not to conclusively determine the rights of the parties, but to balance the equities as the litigation moves forward.” Trump v. Int'l Refugee Assistance Proj., 582 U.S. 571, 580 (2017).
Since the parties have a written license agreement regarding Defendants' use of Plaintiff's trademarks that is due to expire in February 2024, see ECF No. 1-3 at 2, this case likely represents an instance, at least with respect to Plaintiff's breach of contract claim, where a preliminary injunction would “provide[] [Plaintiff] substantially all the relief [it] seeks in the litigation, and . . . cannot be meaningfully undone in the event that the enjoined party prevails at trial on the merits.” JTH Tax, LLC v. Agnant, 62 F.4th 658, 667 (2d Cir. 2023). Under such circumstances, the party seeking a preliminary injunction, must “show[] a clear or substantial likelihood of success on the merits” and “mak[e] a strong showing of irreparable harm.” Id.
“Where the parties have agreed to arbitrate a dispute, a district court has jurisdiction to issue a preliminary injunction to preserve the status quo pending arbitration,” and in such circumstances, “[t]he standard for such an injunction is the same as for preliminary injunctions generally.” Benihana, Inc. v. Benihana of Tokyo, LLC, 784 F.3d 887, 894-95 (2d Cir. 2015).
Nicosia v. Amazon.com, Inc., 834 F.3d 220, 238 (2d Cir. 2016). Instead, “courts should consider the merits of a requested preliminary injunction even where the validity of the underlying claims will be determined in arbitration.” Id. In this case, the arbitration clause in the parties' written license agreement expressly authorizes Plaintiff to seek injunctive relief in court. ECF No. 1-3 at 4.
Plaintiff operates restaurants that sell pizza and other foods, with an emphasis on kosher foods, in New York, New Jersey, and Florida. ECF No. 10-2 ¶ 2. Plaintiff began using the name “Bravo Pizza” for its business in 2000 and began using the name “Bravo Kosher Pizza” in 2012. Id. ¶¶ 3-4. On January 31, 2023 Plaintiff registered separate trademarks for those names with the U.S. Patent and Trademark Office (the “USPTO”). ECF Nos. 1-1 & 1-2. Plaintiff also uses a logo with the name “Bravo Pizza” surrounded by exclamation points, for which Plaintiff has not received a registered trademark, but which Plaintiff has used since 2002. ECF No. 10-2 ¶ 9. Defendant Azizo is the owner of Defendant Kosher Bravo Pizza L.L.C. ECF No. 19 ¶ 1.
At an unspecified time in 2016, Plaintiff entered into an oral license agreement with Defendant Azizo permitting him to use Plaintiff's trademarks at a pizza store in Woodridge, New York, for ten weeks during the summer months, in exchange for a license fee. ECF No. 10-2 ¶ 12-13. In February 2019, Plaintiff and Defendant Azizo entered into a separate, written license agreement permitting Azizo to use Plaintiff's trademarks at a single location on Kings Highway in Brooklyn, in exchange for monthly license fees. ECF No. 1-3. Defendants operate another pizza store at that location. ECF No. 19 ¶¶ 9-10. The written license agreement contains an arbitration clause that applies to any disputes, but the clause contains an exception that authorizes Plaintiff to seek injunctive relief in court. ECF No. 1-3 at 4.
In December 2022, Plaintiff became aware that Defendant Azizo had begun operating a bagel store, next door to Defendants' Brooklyn pizza store, that used Plaintiff's “Bravo” name, even though such use was not authorized by the parties' oral or written license agreements. ECF No. 10-2 ¶ 18. On December 1, 2022, Plaintiff's attorney sent Defendant Azizo a cease-and-desist letter stating that Defendant's use of the Bravo name for his bagel store was unauthorized. ECF No. 20-1 at 13-14. Plaintiff demanded that Defendant Azizo either stop using the Bravo name at the bagel store or negotiate a separate license agreement permitting the use of the Bravo name at that store. Id.
On December 13, 2022, Plaintiff's attorney sent another letter to Defendant Azizo, informing Defendant that he had not paid the license fee required by the written agreement governing the Brooklyn pizza store for the month of December 2022. ECF No. 20-1 at 17-18. Pursuant to the written license agreement, Plaintiff informed Defendant that he had seven days to cure the nonpayment, or else Plaintiff intended to terminate the agreement. Id. That letter also informed Defendant Azizo that he had not paid the full amount of the license fee related to the Woodridge pizza store, required by the parties' oral license, for summer 2022, and warned that Plaintiff reserved the right to file a lawsuit to collect those fees. Id.
Finally on May 24, 2023, Plaintiff's counsel sent a letter to Defendant Azizo's counsel terminating the written license agreement due to Defendant's alleged failure to cure his nonpayment of license fees for the Brooklyn pizza store. ECF No. 10-2 at 23-24. The letter also reiterated Plaintiff's demands that Defendant stop using Plaintiff's trademarks at the Woodridge pizza store and the Brooklyn bagel store. Id. The...
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