Itc Ltd. v. Punchgini, Inc.

• Decision Date: 10 February 2005
• Docket Number: No. 03 Civ. 1306(GEL).,03 Civ. 1306(GEL).
• Citation: 373 F.Supp.2d 275
• Parties: ITC LIMITED and ITC Hotels Limited, Plaintiffs, v. PUNCHGINI, INC. d/b/a Bukhara Grill, Bukhara Grill II, Inc., Raja Jhanjee, Paragnesh Desai, Vicky Vij, Dhandu Ram, Mahendra Singh, and Bachan Rawat, Defendants.
• Court: U.S. District Court — Southern District of New York

Page 275

373 F.Supp.2d 275

ITC LIMITED and ITC Hotels Limited, Plaintiffs, v. PUNCHGINI, INC. d/b/a Bukhara Grill, Bukhara Grill II, Inc., Raja Jhanjee, Paragnesh Desai, Vicky Vij, Dhandu Ram, Mahendra Singh, and Bachan Rawat, Defendants.

No. 03 Civ. 1306(GEL).

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

February 10, 2005.

Ethan Horwitz, Kandis M. Koustenis, Goodwin Procter LLP, New York City, for Plaintiffs ITC Limited and ITC Hotels Limited.

Edward J. Handler, III, Michelle Mancino Marsh, Kenyon & Kenyon, New York City, for Defendants Punchgini, Inc., Bukhara Grill II, Inc., Raja Jhanjee, Paragnesh Desai, Vicky Vij, Dhandu Ram, Mahendra Singh and Bachan Rawat.

OPINION AND ORDER

LYNCH, District Judge.

Plaintiffs ITC Limited and ITC Hotels Limited (collectively, "ITC") sue defendant Punchgini, Inc. and its principals, alleging defendants'"Bukhara Grill," a restaurant with, until recently, two locations in Manhattan, infringes upon ITC's rights in the "Bukhara" trademark and dress associated with its own "Bukhara" restaurants located throughout the world. Defendants move for summary judgment dismissing the complaint in its entirety, and separately move in limine to exclude the testimony of ITC's expert witness. The summary judgment motion will be granted in its entirety, mooting the motion in limine.

BACKGROUND

Plaintiffs ITC Limited and ITC Hotels Limited are large Indian corporations engaged in a variety of ventures, including ownership of the Maurya Sheraton Hotel & Towers in New Delhi, India.¹² The Maurya Sheraton complex contains a handful of restaurants, including "Bukhara," which opened in 1977, and is named for the legendary Great Silk Road city in Uzbekistan. (P.R. 56.1 Stmt. ¶ 84; Marsh Reply Decl. Ex. 35.) As conceived by ITC, the menu of the New Delhi "Bukhara" is drawn from the cuisine of the "North West Frontier" region of India, with a decor to match: "The restaurant's look is pure Flintstones: walls of boulders, solid-wood tables and menus printed on laminated sections of tree." (Curry Without the Hurry, Time, Dec. 23, 2002, Koustenis Decl. Ex. 60; see also P.R. 56.1 Stmt. ¶¶ 84-86; Draft Concept Note, Koustenis Decl. Ex. 54.) Acting as either operators or franchisers, ITC replicated its flagship "Bukhara" restaurant at locations throughout the world, including Ajman, Bangkok, Hong Kong, Kathmandu, Montreal, and Singapore. (P.R. 56.1 Stmt. ¶ 88.) ITC also opened a "Bukhara" in New York in 1986, and licensed use of the "Bukhara" mark, for which it had obtained United States trademark registration for restaurant services in 1987, to a Chicago restaurateur that same year. ITC's award-winning "Bukhara" restaurants have garnered significant media attention in the past quarter-century. (P.R. 56.1 Stmt. ¶¶ 95-98, 105-106; Koustenis Decl. Exs. 59-71, 78, 80, 81 (collecting media reports touting various "Bukhara" restaurants and awards).)

The New York ITC "Bukhara" closed in 1991, and ITC terminated its licensing agreement with the Chicago "Bukhara" on August 28, 1997. Since terminating the Chicago licensing agreement, ITC has not owned, operated, or licensed a restaurant in the United States using the "Bukhara" mark or dress. ITC asserts that it has continued to seek out appropriate business partners to open a "Bukhara" restaurant in the United States, a contention strongly disputed by defendants in defending against ITC's trademark infringement claims, see Part II below. In the past three years, ITC, in partnership with its U.S. importer, King Maker Marketing, has begun marketing a line of packaged food products in the United States, including "Dal Bukhara," derived from the dish of that name served at ITC's New Delhi "Bukhara," and has applied for trademark registrations for the "Bukhara" mark in connection with food products. (Sekhar Aff. ¶¶ 21-25; Marsh Decl. Ex. 6 (trademark registration applications).)

When this litigation began, defendants owned two restaurants in New York City, "Bukhara Grill" and "Bukhara Grill II."³ The first of these restaurants was opened in 1999, and the second in 2001. Defendants Vicky Vij, Raja Jhanjee, Mahendra Singh, Bachan Rawat, and Dhandu Ram, all employees of defendant Punchgini, Inc., were previously employed by ITC. (D. Objections and Responses to Plaintiffs' First Set of Interrogatories, Koustenis Decl. Ex. 52, at 5-6.) ITC alleges that many aspects of defendants'"Bukhara Grill" restaurants are borrowed from its "Bukhara" franchise, including the rustic decor, heavy wooden menus, use of checkered bibs in lieu of napkins, and logo font. (P. Opp.Mem.18.)

On March 22, 2000, counsel for ITC sent defendant Raja Jhanji a letter informing him of ITC's registration of the "Bukhara" mark, charging Punchgini, Inc. with "passing off [their] new business as that of" ITC, and threatening legal proceedings unless defendants desisted from use of the "Bukhara" mark and compensated ITC accordingly. (Marsh Decl. Ex. 23.) Defendants' counsel responded that their preliminary investigation showed no present use of the "Bukhara" mark by ITC in the United States, and encouraged discussions between the parties to avoid litigation. (Marsh Decl. Ex. 24.) In June and July, 2000, defendants' counsel attempted to engage ITC's counsel in discussion of their clients' respective rights, stating they would assume ITC's rights in the "Bukhara" mark had been abandoned if no response was received by a date certain. (Marsh Decl. Exs. 25-26.) Neither ITC nor its counsel responded. Almost two years later, in April 2002, ITC's counsel again wrote to defendants' counsel complaining that no formal response had ever been received to their first cease and desist letter, and that defendants continued to violate ITC's property rights, particularly as "Bukhara Grill II" had opened by this point. (Marsh Decl. Ex. 27.) Defendant's counsel responded within days, restating their position that ITC had abandoned the "Bukhara" mark. (Marsh Decl. Ex. 28.)

No further communication was received from ITC or its counsel until the complaint in the instant case was filed on February 26, 2003. Defendants moved to dismiss the complaint, but their motion was denied. See Order of June 9, 2003. Having survived defendants' motion to dismiss, ITC amended its complaint on April 9, 2004. The Amended Complaint stated five causes of action in somewhat conclusory terms, three under the Lanham Act, 15 U.S.C. § 1051 et seq. (infringement of registered trademark, false designation of origin, unfair competition), one under New York General Business Law § 349 (deceptive acts and practices), and one under New York common law (trademark infringement and unfair competition). But in opposing defendants' present motion for summary judgment, ITC has clarified its complaint as claiming only trademark and trade dress infringement, unfair competition, and false advertising claims. (P. Opp.Mem.1 — 2.) Defendants asserted a number of counterclaims in their Amended Answer of April 26, 2004, including a claim for cancellation of ITC's trademark registration for the "Bukhara" mark. (Counterclaim II, Am. Answer ¶¶ 16-36.)

Defendants now move for summary judgment to dismiss the complaint against them and to cancel ITC's trademark registration for the "Bukhara" mark. Defendants also move to exclude the testimony of ITC's expert witness, William J. Guilfoyle.

DISCUSSION

I. Summary Judgment Standard

Summary judgment is appropriate when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). A "genuine issue as to any material fact," in turn, is established "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Where a "genuine issue of material fact" exists, the motion will be defeated with respect to those claims that present such genuine issues. In determining the existence of a "genuine issue," this Court must view the evidence in the light most favorable to the nonmoving party. See United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962) ("On summary judgment the inferences to be drawn from the underlying facts contained in such materials must be viewed in the light most favorable to the party opposing the motion.").

As set forth in their moving papers, defendants construed ITC's complaint as asserting claims sounding almost exclusively in trademark and trade dress infringement. It now moves for summary judgment dismissing these claims on the sole ground of ITC's alleged abandonment of its rights in the "Bukhara" mark and dress.⁴ In its opposition papers, ITC, while asserting that it has not abandoned its rights in the "Bukhara" mark or dress, also claims that it has brought two additional causes of action independent of its ownership or use of the "Bukhara" mark and dress in the United States — unfair competition under section 43(a) of the Lanham Act and New York common law and false advertising under the Lanham Act — which were not addressed by defendants in their moving papers. (P. Opp.Mem.1-2.) Consequently, defendants addressed these additional causes of action in their reply brief, but as their arguments for summary judgment were made there for the first time, ITC has not responded directly.

Nonetheless, defendants' motion for summary judgment on these additional claims is properly before the Court. First, defendants have moved for summary judgment dismissing the complaint in its entirety, and so the issues are technically before the Court. Second, given the sparsity of ITC's complaint, and the complaint's overt references to this being a trademark and trade dress case, it was reasonable for defendants not to have fully identified the unfair competition...