Elastic Wonder, Inc. v. Posey

• Decision Date: 12 April 2016
• Docket Number: 13-CV-5603 (JGK)
• Citation: 179 F.Supp.3d 307
• Parties: Elastic Wonder, Inc., Plaintiff, v. Idil Doguoglu Posey, Defendant. Idil Doguoglu Posey, Third Party Plaintiff, v. Spandex House, Inc., et al., Third Party Defendants.
• Court: U.S. District Court — Southern District of New York

179 F.Supp.3d 307

Elastic Wonder, Inc., Plaintiff,

v.Idil Doguoglu Posey, Defendant.

Idil Doguoglu Posey, Third Party Plaintiff,

v.Spandex House, Inc., et al., Third Party Defendants.

13-CV-5603 (JGK)

United States District Court, S.D. New York.

Signed April 12, 2016

Steven Stern, Richard Scott Schurin, Stern & Schurin LLP, Garden City, NY, Joshua Ross Matthews, Gottlieb Rackman & Reisman, P.C., New York, NY, for Plaintiff.

Idil Doguoglu-Posey, Oakland, CA, pro se.

MEMORANDUM OPINION AND ORDER

JOHN G. KOELTL, District Judge:

This case concerns a dispute over the trademark of a legging brand named “Elastic Wonder.” The original Complaint in this action was brought against the defendant and third party plaintiff Idil Doguoglu Posey by the plaintiff, Elastic Wonder, Inc. (“Elastic Wonder”). The Complaint alleged federal trademark infringement under the Lanham Act, 15 U.S.C. § 1125(a), and cybersquatting under the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d), along with related state law claims. Posey, appearing pro se, brought counterclaims against Elastic Wonder and a Third Party Complaint against Spandex House and Sabudh Chandra Nath. Each of the parties claimed the right to use the mark “ELASTIC WONDER” and claimed that the other party violated federal and state law by using that mark. Posey's surviving counterclaims and third party claims are substantially the same claims that had been brought against her by Elastic Wonder, with the addition of copyright infringement claims over the design of the leggings sold by Elastic Wonder.

Posey now moves pursuant to Fed. R. Civ. P. 56(a) for summary judgment in her favor dismissing all claims in the plaintiff's Complaint. The plaintiff and the third party defendants similarly move pursuant to Fed. R. Civ. P. 56(a) to dismiss Posey's claims against them. For reasons explained below, Posey's motion is denied. The plaintiff and the third party defendants' motion is granted.

I.

The standard for granting summary judgment is well established. “The Court shall grant summary judgment if 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.” Fed. R. Civ. P. 56(a) ; see also Celotex Corp. v. Catrett, 477 U.S. 317, 322–23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ; Gallo v. Prudential Residential Servs., Ltd. P'ship, 22 F.3d 1219, 1223 (2d Cir.1994). “[T]he trial court's task at the summary judgment motion stage of the litigation is carefully limited to discerning whether there are any genuine issues of material fact to be tried, not to deciding them. Its duty, in short, is confined at this point to issue-finding; it does not extend to issue-resolution.” Gallo, 22 F.3d at 1224. The moving party bears the initial burden of “informing the district court of the basis for its motion” and identifying the matter that “it believes demonstrate[s] the absence of a genuine issue of material fact.” Celotex, 477 U.S. at 323, 106 S.Ct. 2548. The substantive law governing the case will identify those facts which are material and “[o]nly disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

In determining whether summary judgment is appropriate, a court must resolve all ambiguities and draw all reasonable inferences against the moving party. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (citing United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962) ). Summary judgment is improper if there is any evidence in the record from any source from which a reasonable inference could be drawn in favor of the non-moving party. See Chambers v. TRM Copy Ctrs. Corp., 43 F.3d 29, 37 (2d Cir.1994). If the moving party meets its burden, the non-moving party must produce evidence in the record and “may not rely simply on conclusory statements or on contentions that the affidavits supporting the motion are not credible ....” Ying Jing Gan v. City of New York, 996 F.2d 522, 532 (2d Cir.1993) (citations omitted); see also Scotto v. Almenas, 143 F.3d 105, 114–15 (2d Cir.1998) (collecting cases). If there are cross motions for summary judgment, the Court must assess each of the motions and determine whether either party is entitled to judgment as a matter of law. Admiral Indem. Co. v. Travelers Cas. & Sur. Co. of America, 881 F.Supp.2d 570, 574 (S.D.N.Y.2012) ; see also Staudinger+ Franke GMBH v. Casey, No. 13–CV–6124 (JGK), 2015 WL 3561409, at *1–2 (S.D.N.Y. June 8, 2015).

Where, as here, a pro se litigant is involved, although the same standards for dismissal apply, a court should give the pro se litigant special latitude in responding to a summary judgment motion. See McPherson v. Coombe, 174 F.3d 276, 280 (2d Cir.1999) (courts “read the pleadings of a pro se plaintiff liberally and interpret them ‘to raise the strongest arguments that they suggest’ ” (quoting Burgos v. Hopkins, 14 F.3d 787, 790 (2d Cir.1994) )). In particular, the pro se party must be given express notice of the consequences of failing to respond appropriately to a motion for summary judgment. See McPherson, 174 F.3d at 281 ; Vital v. Interfaith Med. Ctr., 168 F.3d 615, 620–21 (2d Cir.1999). “However, a pro se party's 'bald assertion,' completely unsupported by evidence, is not sufficient to overcome a motion for summary judgment.”

Staten v. City of N.Y., No. 12–CV–3544 (ER), 2014 WL 3907926, at *4 (S.D.N.Y. Aug. 7, 2014) (citations and quotation marks omitted); see also Heicklen v. Toala, No. 08–CV–2457 (JGK), 2010 WL 565426, at *2 (S.D.N.Y. Feb. 18, 2010), aff'd sub nom., Heicklen v. Kelly, 409 Fed.Appx. 457 (2d Cir.2011).

There is no indication that Posey received express notice of the requirements for responding to the summary judgment motion or of the consequences of failing to oppose it. However, in this case, Posey filed a response to the motion for summary judgment against her, which included a twenty-five page Rule 56.1 counterstatement and more than 300 pages of exhibits. Posey's Rule 56.1 counterstatement cited to Local Rule 56.1 and vigorously attempted to dispute nearly every fact that was purportedly undisputed with citations to the exhibits. Moreover, Posey also moved for summary judgment against the plaintiff and the third party defendants, and in her motion Posey cited to Fed. R. Civ. P. 56 and Local Rule 56.1. These submissions by Posey are sufficient to show that she knew the nature and consequence of a summary judgment motion and the need to set forth all available evidence demonstrating a genuine dispute over material facts; express notice is therefore unnecessary. See Chepak v. New York City Health & Hosps. Corp., No. 15–679, 2016 WL 1055780, at *1 (2d Cir. Mar. 17, 2016) (summary order) (finding the record made clear that the pro se party understood the nature of a summary judgment motion because the party submitted an opposition that cited to the district court's Local Rule 56.1, a statement of disputed facts, and over 300 pages of exhibits); M.B. # 11072 – 054 v. Reish, 119 F.3d 230, 231 (2d Cir.1997) (per curiam).

II.

There is no genuine dispute regarding the following facts for purposes of these motions unless otherwise noted.¹

Posey is a Swiss fashion designer who has been in the fashion industry for over twenty years. (Posey Decl. ¶ 2-3, ECF No. 182.) In December 2012, Posey allegedly came up with “Elastic Wonder” as the name for a new line of leggings. (Schurin Decl. Ex. G at 10-11.) Also in December 2012, while developing the Elastic Wonder line, Posey visited the third party defendant Nath and discussed business with him. (Schurin Decl. Ex. G at 12; Schurin Decl. Ex. V at 5-6.) During that visit and in emails sent to Nath around the same time, Posey proposed the idea of developing a legging line with Nath. (Pl.'s R. 56.1 Stmt. ¶ 1; Posey's Resp. to Pl.'s R. 56.1 Stmt. ¶ 1; Schurin Decl. Ex. G at 13-14.) In an email dated December 16, 2012, Posey proposed “Elastic Wonder” to Nath as the name for this new legging line. (Pl.'s R. 56.1 Stmt. ¶ 1; Posey's Resp. to Pl.'s R. 56.1 Stmt. ¶ 1; Schurin Decl. Ex. C.)

On December 27, 2012, Posey sent an email to Nath requesting that Nath pay Posey $10,000 per month plus expenses for 4-6 months for the new legging line business. (Pl.'s R. 56.1 Stmt. ¶ 3; Posey's Resp. to Pl.'s R. 56.1 Stmt. ¶ 3; Schurin Decl. Ex. E.) In another email dated January 6, 2013, Posey suggested to Nath that with regard to the new legging line, “[Nath] will be the owner of the business, the domain, and website,” and that Posey would only be “freelancing” for Nath. (Pl.'s R. 56.1 Stmt. ¶ 4; Posey's Resp. to Pl.'s R. 56.1 Stmt. ¶ 4; Schurin Decl. Ex. F.)

In early February 2013, Nath agreed to move forward and set up this new business with Posey, and agreed to pay Posey a maximum of $5000 per month for six months “as petty cash to buy necessary materials to set up everything in return for receipts in addition to the fabric and sample sewer needed.” (Schurin Decl. Ex. G at 15-16, 31-32; Pl.'s R. 56.1 Stmt. ¶ 6; Posey's Resp. to Pl.'s R. 56.1 Stmt. ¶ 6.) During the period between February and June 2013, Posey submitted receipts to Nath for expenses incurred in relation to the Elastic Wonder business, and received checks from Nath for about $5000 per month. (Pl.'s R. 56.1 Stmt. ¶¶ 7-8; Posey's Resp. to Pl.'s R. 56.1 Stmt. ¶¶ 7-8; Schurin Decl. Ex. G at 31-32; Ex. Y; Ex. Z.)

Posey registered the domain name www.elasticwonder.com (“the website”) for the new brand on December 12, 2012. (Schurin Decl. Ex. G. at 11.) She wrote to Nath on February 6, 2013, informing Nath that she had set up a general welcome page for www.elasticwonder.com, but that there had been no shop yet on that website and there had been no traffic. (Pl.'s R. 56.1 Stmt. ¶ 9; ...