C.M.B. Prods. v. SRB Brooklyn, LLC

• Decision Date: 12 July 2022
• Docket Number: 19-CV-02009 (ENV) (CLP)
• Parties: C.M.B. PRODUCTIONS, INC. Plaintiff, v. SRB BROOKLYN, LLC, ARDEN KAISMAN, and MICHAEL BRUNO, Defendants.
• Court: U.S. District Court — Eastern District of New York

C.M.B. PRODUCTIONS, INC. Plaintiff,
v.
SRB BROOKLYN, LLC, ARDEN KAISMAN, and MICHAEL BRUNO, Defendants.

No. 19-CV-02009 (ENV) (CLP)

United States District Court, E.D. New York

July 12, 2022

MEMORANDUM & ORDER

ERIC N. VITALIANO UNITED STATES DISTRICT JUDGE

Plaintiff C.M.B. Productions, Inc. (“CMB”), brings this action against defendants SRB Brooklyn, LLC, Dr. Arden Kaisman, and Michael Bruno (collectively, “SRB”), alleging claims for trademark infringement, false designation of origin, unfair competition, and false advertising under the Lanham Act, 15 U.S.C. §§ 1114, 1125, as well as claims under New York law for unfair & deceptive practices and trademark dilution. Presently before the Court are the parties' cross-motions for summary judgment pursuant to Federal Rule of Civil Procedure 56.^[1] See Dkts. 44, 45, 48. For the reasons that follow, plaintiff's motion is denied, and defendants' motion is granted.

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Background^[2]

CMB, founded by Craig Bernabeu in 1999, designs and sells sound systems to night clubs. Plaintiff's Statement of Material Undisputed Facts (“Pl.'s 56.1”), Dkt. 44-1, ¶¶ 1-2. Bernabeu is the sole shareholder and President of CMB, and is known within the night club industry for his sound system services. Pl.'s 56.1 ¶¶ 1, 4. Defendant SRB is a New York limited liability company that operates a Gowanus, Brooklyn night club previously known as ANALOG BKNY. Defendants' Statement of Material Undisputed Facts (“Defs.' 56.1”), Dkt. No. 45-2, ¶ 3. Dr. Kaisman is SRB's founder and sole member, and Bruno is the night club's former manager. Defs.' 56.1 ¶¶ 4-5.

In 2015, Bernabeu and Bruno, who by then had known each other for several decades, arranged to add one of CMB's analog sound systems to defendants' Gowanus night club to attract more business. Pl.'s 56.1 ¶¶ 22, 25-26; Defs.' 56.1 ¶ 6. Under the arrangement, the night club, then known as ONE77, would become ANALOG BKNY, a name that highlighted Bernabeu's newly installed analog sound system.^[3] For its services, CMB would be paid a base fee for each event hosted at the night club, with a nightly bonus if the club had a successful night

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in terms of bar sales. Pl.'s 56.1 ¶ 37. With the parties' agreement in place, the joint venture launched in early 2016.

A year later, with the collaboration still intact, CMB applied to register the ANALOG BKNY word mark and the related Mi M logo mark on the federal trademark register. Defs.' 56.1 ¶¶ 10-11. The United States Patent and Trademark Office (“USPTO”) registered the marks on its supplemental register for “providing showrooms for the goods of others in the field of sound system technologies; [r]etail store services featuring sound system technology, speakers, and sound equipment” and for “[d]ance club services; [n]ightclub services; [a]rranging and conducting nightclub entertainment events; presentation of live show performances.” Id. ¶¶ 10-11. Shortly thereafter, plaintiff also applied to register the word mark CLUB ANALOG for “[p]roviding showrooms for the goods of others in the field of sound system technologies; [r]etail store services featuring sound system technology, speakers, and sound equipment.” The USPTO registered this mark on its principal register, id. ¶ 12, however neither party introduces evidence of anyone using the CLUB ANALOG mark during the relevant time period.

From 2016 to 2019, the ANALOG BKNY marks were used by both parties in connection with the night club. Defs.' 56.1 Reply ¶ 33. For example, SRB's in-house social media and marketing team used the marks in connection with advertisements for the club. Pl.'s 56.1 ¶ 59. Bernabeu also used the marks when posting on his personal social media accounts about events at the night club. Defs.' 56.1 ¶ 16. Bernabeu contends that during the nearly three-year-long arrangement between the parties, “several [of Bernabeu's personal] posts received many reactions, and others had several user comments.” Pl.'s 56.1 Reply ¶ 16. During this period, several online articles either mentioned or featured the night club, including industry publications praising the club for its sound system. Defs.' 56.1 ¶ 20; Pl.'s 56.1 ¶ 53. The parties

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dispute the extent to which such coverage was unsolicited, or due to the efforts of the club's inhouse marketing and promotion team.

Over the course of the three-year arrangement, the night club's bar gross sales amounted to, in the aggregate, $1.4 million, but the parties dispute whether that figure is indicative of the club's economic success. See Pl.'s 56.1 Reply ¶ 21; Defs.' 56.1 ¶ 21. For example, SRB cites documents it produced during discovery purporting to show that, while the parties' arrangement was in place, ANALOG BKNY failed to turn a profit in any year. Defs.' 56.1 Reply ¶ 52; Defs.' 56.1 ¶ 26. Plaintiff, on the other hand, says that these financial statements include nonbusiness-related expenses that put the gross profit figures into question. Pl.'s 56.1 Reply ¶ 115.

Ultimately, in late 2018, Bernabeu, frustrated by what, he believed, was the nightclub's lack of success, announced his intention to end CMB's collaboration with the night club, Pl.'s 56.1 ¶ 72, and, on January 1, 2019, made good on his promise by dismantling and removing the night club's sound system, Pl.'s 56.1 ¶ 73. At that time, Bernabeu also requested that defendants cease using the ANALOG BKNY marks, but defendants did not comply: they continued to use the marks, and, on social media, utilized the hashtag #analogbkny in connection with events at the night club. Pl.'s 56.1 ¶¶ 73-77. Defendants did, however, change the name of the night club from ANALOG BKNY to ANALOG BROOKLYN and replace the night club's sound system. Pl.'s 56.1 ¶¶ 79, 81. In February 2019, shortly after ending the parties' arrangement, plaintiff sent defendants cease-and-desist letters demanding that they stop using the ANALOG BKNY trademarks, but, despite plaintiff's requests, defendants continued to use the marks to promote the night club until at least December 2019. Pl.'s 56.1 ¶¶ 84-90.

In contrast to defendants' use of the marks, CMB's use of them subsequent to the dissolution of the parties' night club venture appears to be limited, though there is no dispute that

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Bernabeu embarked on, and, in certain instances, utilized the marks in connection with, discrete business ventures following his partnership with defendants. For example, Bernabeu used the marks to promote a pop-up event at Market Hotel, another Brooklyn night club, in March 2020, though the success of that event was hindered by the COVID-19 pandemic and accompanying government shutdowns. Pl.'s 56.1 ¶¶ 95-96. Bernabeu also maintains a website that uses the ANALOG BKNY marks, and, while it is disputed by the parties, claims to have used the marks in conjunction with an online radio show as well. Pl.'s 56.1 ¶ 113; Defs.' 56.1 Reply ¶ 113. Finally, although CMB also installed an analog sound system-similar to the ANALOG BKNY unit-in one other Brooklyn club, Nowadays, CMB does not use the ANALOG BKNY marks in connection with that club. See Pl.'s 56.1 ¶¶ 102, 100-104; Defs.' 56.1 Reply ¶ 99.

On April 8, 2019, plaintiff brought this action, Dkt. 1, and, on June 30, 2020, filed an amended complaint, Dkt. 38. The parties submitted cross-motions for summary judgment on November 5, 2020. Dkts. 44, 45.

Standard of Review

Rule 56(a) of the Federal Rules of Civil Procedure provides that a district court may grant summary judgment when the “movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” A fact is material “if it might affect the outcome of the suit under the governing law, and an issue of fact is genuine if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Reeves v. Anderson, No. 11 Civ. 3770, 2014 WL 7336459, at *3 (S.D.N.Y. Dec. 24, 2014) (citing Windsor v. United States, 699 F.3d 169, 192 (2d Cir. 2012)). “In determining if a genuine dispute of material fact exists, ‘the court must resolve all ambiguities and draw all justifiable factual inferences in favor of the party against whom summary judgment is sought.'” Fletcher v. Standard Fire Ins. Co.,

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80 F.Supp.3d 386, 390 (E.D.N.Y.2015) (quoting Buckley v. Deloitte & Touche USA LLP, 888 F.Supp.2d 404, 415 (S.D.N.Y.2012), aff'd, 541 Fed.Appx. 62 (2d Cir. 2013)). “Where, as here, both parties move for summary judgment, ‘each party's motion must be examined on its own merits, and in each case all reasonable inferences must be drawn against the party whose motion is under consideration.'” Gen. Star Indem. Co. v. Driven Sports, Inc., 80 F.Supp.3d 442, 449 (E.D.N.Y.2015) (quoting Lumbermens Mut. Cas. Co. v. RGIS Inventory Specialists, LLC, 628 F.3d 46, 51 (2d Cir. 2010)).

In opposing a motion for summary judgment, “it is insufficient for the nonmoving party ‘merely to assert a conclusion without supplying supporting arguments or facts.'” Id. (cleaned up) (quoting BellSouth Telecomms., Inc. v. W.R. Grace & Co., 77 F.3d 603, 615 (2d Cir. 1996)). “Once the moving party has met its burden, the opposing party ‘must do more than simply show that there is some metaphysical doubt as to the material facts .... [T]he nonmoving party must come forward with specific facts showing that there is a genuine issue for trial.'” Id. (emphasis in original) (quoting Caldarola v. Calabrese, 298 F.3d 156, 160 (2d Cir. 2002). “Where it is clear that no rational finder of fact ‘could find in favor of the nonmoving party because the evidence to support its case is so slight,' summary judgment should be granted.” F.D.I.C. v. Great Am. Ins. Co., 607 F.3d 288, 292 (2d Cir.2010) (quoting Gallo v. Prudential Residential Servs., Ltd. P'ship, 22 F.3d 1219, 1224 (2d Cir. 1994)).

Discussion

A. Lanham Act Claims

Section 32 of the Lanham Act provides a cause of action against any person who uses in...