Emanuel Mizrahi, DDS, P.C. v. Angela Andretta, DMD, P.C.

• Decision Date: 27 March 2019
• Docket Number: Index No. 12974/15,2018–00317
• Citation: 170 A.D.3d 1120,97 N.Y.S.3d 273
• Parties: EMANUEL MIZRAHI, DDS, P.C., Respondent, v. ANGELA ANDRETTA, DMD, P.C., et al., Appellants.
• Court: New York Supreme Court — Appellate Division

170 A.D.3d 1120

97 N.Y.S.3d 273

EMANUEL MIZRAHI, DDS, P.C., Respondent,

v.ANGELA ANDRETTA, DMD, P.C., et al., Appellants.

2018–00317

Index No. 12974/15

Supreme Court, Appellate Division, Second Department, New York.

Argued - December 14, 2018

March 27, 2019

Reisman Peirez Reisman & Capobianco LLP, Garden City, N.Y. (Joseph Capobianco of counsel), for appellants.

Law Offices of David A. Day, P.C., Glen Cove, NY, for respondent.

WILLIAM F. MASTRO, J.P., LEONARD B. AUSTIN, SHERI S. ROMAN, VALERIE BRATHWAITE NELSON, JJ.

DECISION & ORDER

ORDERED that on the Court's own motion, the notice of appeal is deemed an application for leave to appeal from so much of the order as sua sponte granted preliminary injunctive relief to the plaintiff, and leave to appeal is granted (see CPLR 5701[c] ); and it is further,

ORDERED that the order is modified, on the facts and in the exercise of discretion, by deleting that provision awarding the plaintiff preliminary injunctive relief; as so modified, the order is affirmed insofar as appealed from, without costs or disbursements.

The plaintiff is an orthodontic professional corporation located in Forest Hills, Queens, doing business as "Forest Hills Orthodontic Associates." The defendant Angela Andretta, DMD, P.C. (hereinafter the corporate defendant), is also an orthodontic professional corporation located in Forest Hills, Queens, doing business as "Forest Hills Orthodontics." The defendants Angela Andretta and Michael H. Rogrow (hereinafter together the individual defendants) are or were the sole principals of the corporate defendant.

The plaintiff commenced this action against the defendants, alleging that the defendants injured the plaintiff by using the Forest Hills Orthodontics trade name. The complaint asserted four causes of action against each of the defendants: trademark infringement under the Lanham Act (see 15 USC § 1125 [a][1] ), trademark dilution (see GBL § 360–l ), common-law trademark infringement, and common-law unfair competition. The plaintiff moved for summary judgment on the issue of liability on its first and second causes of action and, inter alia, sought permanent injunctive relief in the form of an order prohibiting the defendants from, among other things, using the Forest Hills Orthodontics trade name, including the internet domain name "foresthillsorthodontics.com." The defendants opposed the motion and cross-moved pursuant to CPLR 3211(a)(7) to dismiss the first cause of action in its entirety and to dismiss the remainder of the complaint insofar as asserted against the individual defendants. By order dated November 8, 2017, the Supreme Court denied the plaintiff's motion for summary judgment and denied the defendants' cross motion to dismiss. The court also, sua sponte, preliminarily enjoined the defendants from using the "Forest Hills Orthodontics" trade name, including the internet domain name. The defendants appeal. We modify the order to vacate the award of preliminary injunctive relief.

We agree with the Supreme Court's denial of the defendants' cross motion to dismiss. "On a motion to dismiss a complaint pursuant to CPLR 3211(a)(7), the court must accept all facts as alleged in the pleading to be true, accord the plaintiff the benefit of every favorable inference, and determine only whether the facts as alleged fit within any cognizable legal theory" ( T. Mina Supply, Inc. v. Clemente Bros. Contr. Corp., 139 A.D3d 1040, 1041, 34 N.Y.S.3d 82 ; see Leon v. Martinez, 84 N.Y.2d 83, 87–88, 614 N.Y.S.2d 972, 638 N.E.2d 511 ; Sasidharan v. Piverger, 145 A.D.3d 814, 815, 44 N.Y.S.3d 85 ; Out of Box Promotions, LLC v. Koschitzki, 55 A.D.3d 575, 577, 866 N.Y.S.2d 677 ). "Where evidentiary material is submitted and considered on a motion to dismiss a complaint pursuant to CPLR 3211(a)(7), and the motion is not converted into one for summary judgment, the question becomes whether the plaintiff has a cause of action, not whether the plaintiff has stated one, and unless it has been shown that a material fact as claimed by the plaintiff to be one is not a fact at all and unless it can be said that no significant dispute exists regarding it, dismissal should not eventuate" ( Rabos v. R & R Bagels & Bakery, Inc., 100 A.D.3d 849, 851–852, 955 N.Y.S.2d 109 ; see Guggenheimer v. Ginzburg, 43 N.Y.2d 268, 274–275, 401 N.Y.S.2d 182, 372 N.E.2d 17 ).

We agree with the Supreme Court's denial of that branch of the defendants' cross motion which was to dismiss the first cause of action, as the requisite connection between the plaintiff's business and interstate commerce was established to support the plaintiff's cause of action for trademark infringement under the Lanham Act (see Rush v. Hillside Buffalo, LLC, 314 F.Supp.3d 477, 482–483 [W.D. N.Y.] ; C=Holdings B.V. v. Asiarim Corp., 992 F.Supp.2d 223, 240 [S.D. N.Y.] ; Freedom Calls Found. v. Bukstel, 2006 WL 845509, *4–5, 2006 U.S. Dist. LEXIS 19685 [E.D. N.Y. No. 05–CV–5460 SJ VVP] ; Planned Parenthood Fedn. of Am., Inc. v. Bucci, 1997 WL 133313, *3, *3 n 7, 1997 U.S. Dist. LEXIS 3338 [S.D. N.Y. No. 97 Civ. 0629(KMW) ], affd 152 F.3d 920 [2d Cir.] ).

We also agree with the denial of that branch of the defendants' cross motion which was to dismiss the complaint insofar as asserted against the individual defendants, since " ‘a corporate officer who participates in the commission of a tort may be held individually liable, regardless of whether the officer acted on behalf of the corporation in the course of official duties and regardless of whether the corporate veil is pierced’ " ( Rajeev Sindhwani, M.D., PLLC v. Coe Bus. Serv., Inc., 52 A.D.3d 674, 677, 861 N.Y.S.2d 705, quoting American Express Travel Related Servs. Co. v. North Atl. Resources, 261 A.D.2d 310, 311, 691 N.Y.S.2d 403 ; see Chanel, Inc. v. Italian Activewear of Fla., Inc., 931 F.2d 1472, 1477 [11th Cir.] [natural persons can be liable under the Lanham Act where they "actively and knowingly caused the infringement"] ). Here, contrary to the defendants' arguments, the complaint did not purport to hold the individual defendants liable for the corporate defendant's allegedly wrongful conduct by virtue of their status as its principals. Rather, the complaint sought to hold them individually liable for committing the alleged wrongs, and as such, dismissal was not required simply because the plaintiff failed to plead facts sufficient to pierce the corporate veil (see North Shore Architectural Stone, Inc. v. American Artisan Constr., Inc., 153 A.D.3d 1420, 1421–1422, 61 N.Y.S.3d 627 ; PDK Labs, Inc. v. G.M.G. Trans W. Corp., 101 A.D.3d 970, 973–974, 957 N.Y.S.2d 191 ; Greenway Plaza Off. Park–1 v. Metro Constr. Servs., 4 A.D.3d 328, 329–330, 771 N.Y.S.2d 532 ).

Nevertheless, the Supreme Court should not have exercised its discretion in awarding injunctive relief to the plaintiff. That relief was not specifically requested in the motion for summary judgment. The granting of such relief sua sponte is appealable only by permission (see CPLR 5701[a][2], [c] ); thus, we exercise our discretion to grant leave to appeal from that portion of the order which granted preliminary injunctive relief.

Turning to the merits, " ‘[p]reliminary injunctive relief is a drastic remedy which will not be granted unless a clear right thereto is established under the law and the undisputed facts upon the moving papers, and the burden of showing an undisputed right rests upon the movant’ " ( Saran v. Chelsea GCA Realty Partnership, L.P., ...