City of New York v. Henriquez

• Decision Date: 23 February 2023
• Docket Number: 22-CV-3190 (KAM)(PK)
• Parties: THE CITY OF NEW YORK, by and through the FDNY, and the FDNY FOUNDATION, INC., v. JUAN HENRIQUEZ Defendant.
• Court: U.S. District Court — Eastern District of New York

THE CITY OF NEW YORK, by and through the FDNY, and the FDNY FOUNDATION, INC., v. JUAN HENRIQUEZ Defendant.

No. 22-CV-3190 (KAM)(PK)

United States District Court, E.D. New York

February 23, 2023

MEMORANDUM & ORDER

KIYO A. MATSUMOTO, United States District Judge.

At issue in this case are the Defendant's trademarks of the words MEDICAL SPECIAL OPERATIONS CONFERENCE (the “MSOC Mark”), and the acronym “MSOC” (“Acronym Mark”) (collectively, the “Marks”), used to describe a series of conferences organized by Mr. Henriquez and founding members of MSOC for emergency rescue medical professionals. Defendant and founding members of MSOC hosted conferences starting in 2010, in collaboration with different municipalities and city agencies throughout the country, including, for some years with the Fire Department of New York (“FDNY”). Pending before the Court is Defendant and Counterclaim Plaintiff Juan Henriquez's (“Mr. Henriquez” or “Counter-Plaintiff”) motion for a preliminary injunction pursuant to Federal Rule of Civil Procedure 65. Mr. Henriquez moves the Court to enjoin the City of New York by and through the FDNY, and the FDNY Foundation, Inc. (the “FDNY Parties” or “Counter-Defendants”), and their agents, from “(1) using Mr. Henriquez's trademarked MSOC Mark and Acronym Mark in connection with charitable fundraising, special events, training courses, and other goods or services confusingly similar thereto; and (2) using any trademark, name, logo, design, or source designation in connection with the [FDNY Parties'] services that are confusingly similar to Mr. Henriquez's MSOC Mark or Acronym Mark or likely to cause public confusion that such services are produced, provided, sponsored, authorized by, or connected to Mr. Henriquez.”

The Court held an evidentiary hearing on January 17 and 18, 2023. (ECF No. 28, Evidentiary Hearing Transcript (“Tr.”).) Having reviewed the submissions and evidence and assessed the credibility of the witnesses, pursuant to Federal Rule of Civil Procedure 65, the Court sets forth herein its findings of fact and conclusions of law and GRANTS Defendant's motion for a preliminary injunction against Counter-Defendants.

BACKGROUND

I. FINDINGS OF FACT

The Court makes the following findings of fact based on the parties' submissions, evidence, and testimony presented at the preliminary injunction hearing.^[1] Defendant and Counter-Plaintiff Juan Henriquez is a rescue paramedic who has worked for FDNY since 2001 and has received numerous awards and citations for his service, including the FDNY's top medal multiple times. (ECF No. 49, Henriquez Decl. ¶ 3.) In 2009 or 2010, Mr. Henriquez and other medical first responders trained in the field of urban search and rescue, including Mr. Joseph Hernandez and Mr. Vincent Johnson, attended a conference that provided training on military special operations skills. (Id. ¶ 4; see also ECF No. 50, Hernandez Decl. ¶¶ 6-7.) The conference was organized by the Special Operations Medical Association (“SOMA”). After the SOMA training, Mr. Henriquez, Mr. Hernandez, and other medical first responders decided to bring military-level special operations medical skills and training to the wider medical first responder community through a series of conferences. (Id.)

In or around 2010, on his own time and separate from his FDNY duties, Mr. Henriquez began to organize and implement the Medical Special Operations Conference idea with Mr. Hernandez and other medical responders passionate about the field of medical special operations training for civilian medical first responders. (ECF No. 49, Henriquez Decl. ¶ 4.) Mr. Henriquez created the name “Medical Special Operations Conference” and acronym “MSOC” to brand these conferences. (Id.) On October 7, 2010, Mr. Hernandez wrote an email to Mr. Henriquez that stated in relevant part, “I think we are really moving along and everyone seems really excited to participate. I like your idea for the medical operations conference name better. Let me know when you have time to talk. I spoke to a few of the guys from SOMA follow up.” (ECF No. 49-2, Henriquez Decl., Ex. B at pp. 1-3.)

Around this time, in approximately 2010 or 2011, Mr. Henriquez and Mr. Hernandez also invited Dr. Doug Issacs, then the FDNY Assistant Medical Director, to attend a military-oriented conference organized by SOMA in Tampa, Florida. (Id; Tr. at p. 256.)(“We invited [Dr. Isaacs] to try to attend [the SOMA conferences]. We kept trying to persuade him and see if he would be interested in the idea that we had, and I believe that he attended in 2010 or 2011, not real sure.”) Around 2010 or 2011, Mr. Henriquez and Mr. Hernandez shared with Dr. Isaacs their idea of bringing military-oriented medical special operations training to the medical profession, but there is no evidence that Dr. Isaacs communicated Mr. Henriquez's and Mr. Hernandez's ideas to the FDNY at that time. (Id.)

Mr. Henriquez continued to organize materials and publicity for the Medical Special Operations Conference idea. He designed a graphic logo with the words Medical Special Operations Conference. (ECF No. 49, Henriquez Decl., Ex. A at p. 5.) Mr. Henriquez testified at the hearing, that in 2011, he finalized the MSOC logo, with each image used in the logo carefully designed to symbolize meanings for those working in the medical special operations community. (Tr. at pp. 65-66)(He explained, “Each one of those things that are in [the MSOC logo], as far as like the eagle, the shovel, the Maltese cross, the Star of Life, the hazardous materials trefoil, and the hurricane sign, along with the world, they each have a meaning. And none of it relates to the FDNY.”) On March 28, 2012, Mr. Hernandez emailed Mr. Henriquez, “I love the MSOC logo. Great job! .... I also sent it out to . . . the team from Ohio.” (ECF No. 49-2, Henriquez Decl., Ex. B.) Versions of Mr. Henriquez's MSOC logo were used for other MSOC-branded events that Mr. Henriquez, Mr. Hernandez, and others organized and presented, outside of New York City. (ECF Nos. 50, Hernandez Decl. ¶ 10; 49-7, Henriquez Decl., Ex. G.)

From January 30 and February 1, 2011, Mr. Henriquez and his collaborators produced a conference, with support from private commercial entities including FERNO, FERNO Military Systems, and Mr. Hernandez's company, Disaster Medical Solutions (“DMS”), in Wilmington, Ohio and used the Medical Special Operations Conference name and MSOC acronym. (ECF No. 49-1, Henriquez Decl.,Ex. A at pp. 1-3.) In connection with this event, Mr. Henriquez began developing materials and speakers- such as agendas, programs, publicity flyers, Event Action Plans (“EAP”)-for the Medical Special Operations Conference. (ECF No. 49, Henriquez Decl., Ex. A at pp. 2-4.) At the top of the 2011 Ohio MSOC event agenda, the name Medical Special Operations Conference is placed prominently, and at the bottom of page two are the words, “Prepare[d] by: Juan Henriquez.” (Id.) The flyer for the 2011 Ohio MSOC event described the target audience as: “Medical professionals working in Urban Search and Rescue, Disaster Medicine, Civilian pre-hospital care, equipment development and Military Special Operations.” (Id.) The conference flyer also stated: “To register pleas [sic] email: msoc@yahoo.com.” (Id.) This email address was created and registered by Mr. Henriquez. (Id.)

In 2012, Mr. Henriquez, Mr. Hernandez, and other medical professionals planned another Medical Special Operations Conference in Perry, Georgia, parts of which were to be located at the soon-to-be opened Guardian Centers, an emergency training center. (ECF No. 49, Henriquez Decl. ¶ 7.) Like the MSOC Ohio event, the flyer for the August 2012 Georgia MSOC event stated, “Open to all first responders . . . Medical professionals working in Urban Search and Rescue, Disaster Medicine, Civilian pre-hospital care, equipment development and Military Special Operations are all invited to attend the Medical Special Operations Conference (MSOC) in Perry Georgia.”^[2](ECF No. 49-1, Henriquez Decl., Ex. A at pp. 6-9.) The 2012 Perry, Georgia MSOC agenda listed Mr. Henriquez and Mr. Hernandez as points of contact. (Id.)

Mr. Henriquez also developed an Event Action Plan for the 2012 MSOC Georgia event, which included the logo designed by Mr. Henriquez, with the location, Perry, Georgia, incorporated into the logo. (Id.) Mr. Henriquez explained that he incorporates into his MSOC logo, and continues to incorporate, the names of the various locales and entities hosting MSOC events for that specific event and refers to the location addition as a “rocker.” (Tr. at p. 67) (“Yeah, the rocker . . . was added, . . . depending on where we were going to be and who was sponsoring it or who was the supporter for that.”)

Throughout this time, Dr. Isaacs stayed in touch with Mr. Henriquez and Mr. Hernandez, together attending events focused on military-oriented and urban medical operations. (ECF No. 49, Henriquez Decl. ¶¶ 9-10.) Mr. Henriquez and Dr. Isaacs had a relationship outside of the FDNY and considered one another a friend. (Tr. at pp. 159-60, 267.) Mr. Henriquez and Dr. Isaacs discussed the various events that Mr. Henriquez and Mr. Hernandez were hosting in Ohio and Georgia. (Id.)

Beginning from 2010 to 2011, Mr. Isaacs was aware of the first MSOC events and expressed interested in bringing the MSOC event to New York. (Id.)

In 2012, Dr. Isaacs approached Mr. Henriquez about bringing MSOC events to New York to partner with FDNY. (ECF No. 49 Henriquez Decl. ¶ 11.) On June 29, 2012, Mr. Henriquez emailed Dr. Isaacs, “I attached a draft to show how we would do [an MSOC event] in NY. It follows the same structure as the previous MSOC events. The formula is the same just tweaked it to what we have available here. It...