Ivy League Sch., Inc. v. Danick Indus., Inc.

• Decision Date: 20 August 2014
• Docket Number: No. 062350/2013.,062350/2013.
• Court: New York Supreme Court
• Parties: IVY LEAGUE SCHOOL, INC., Cooper Camps, LLC d/b/a Ivy League Day Camp and Volar, Inc., d/b/a The Day Care Center at Ivy League, Plaintiffs, v. DANICK INDUSTRIES, INC., d/b/a/ Ivy League Early Learning Academy and Gabriel Colmenares, Defendants.

999 N.Y.S.2d 797 (Table)

IVY LEAGUE SCHOOL, INC., Cooper Camps, LLC d/b/a Ivy League Day Camp and Volar, Inc., d/b/a The Day Care Center at Ivy League, Plaintiffs

v.DANICK INDUSTRIES, INC., d/b/a/ Ivy League Early Learning Academy and Gabriel Colmenares, Defendants.

No. 062350/2013.

Supreme Court, Suffolk County, New York.

Aug. 20, 2014.

Marylou Paulucci and Associates, Smithtown, attorneys for plaintiffs.

French & Casey, New York, attorneys for defendants.

Opinion

THOMAS F. WHELAN, J.

Upon the following papers numbered 1 to 15 read on this motion by the defendants to dismiss the complaint; Notice of Motion and supporting papers: 1–3; Notice of Cross Motion and supporting papers; Answering papers 4–5; 6–7; 8–9; Reply papers 10; Other 11–12 (defendants' memorandum in support); 13–14 (plaintiffs' memorandum in opposition); 15 (defendants' reply memorandum in support); (and after hearing counsel in support and opposed to the motion) it is,

ORDERED that this motion (# 001) by the defendants for an order dismissing the complaint served in this action is considered under CPLR 321(a)(1),(3) and (7) and is granted to the extent that those portions of the First cause of action set forth in the complaint in which the plaintiffs seek relief pursuant to Section 32 of the Lanham Act (15 U.S.C. § 1114 ) and the Second and Eighth causes of action are dismissed; and it is further

ORDERED, that the court shall conduct a preliminary conference with respect to the remaining causes of action on Friday, October 3, 2014, at 10:00 a.m. in the courtroom of the undersigned located in the Annex Building of the Supreme Courthouse at One Court Street, Riverhead, New York 11901.

The plaintiffs respectively operate a private, grammar school housing grades one through eight, a summer day camp for youngsters and teens and a day care center for children and pre-school children at facilities located in Smithtown, New York. The school has used the name “Ivy League” since 1965 while its affiliate plaintiffs have done so since their later incorporations in 2000 and 2011, respectively. In April of 2011, defendant Danick Industries Inc., [hereinafter “Danick”] was incorporated and thereafter commenced operating a day care center in Deer Park, New York known as Tutor Time under a franchise from Tutor Time Learning Center. Effective as of August 27, 2012, the name of the defendants' business was changed to the Ivy League Early Learning Academy of Deer Park. Defendant Colmenares is the owner of defendant Danick and he owns and operates four other former Tutor Time franchises in Queens, Bronx, Manhattan and Staten Island. All of defendant Colmenares day care centers, which provide supervision and educational services to pre-school, pre-Kindergarten primary school age children, use the name “Ivy League Early Learning Academy” together with the name of the borough or town in which the school is located.

The plaintiff commenced this action in August of 2013 seeking the recovery of money damages from the defendants and injunctive relief. They claim that the defendants' use of the name Ivy League constitutes actionable acts of trade name infringement and unfair competition which has caused great harm to the plaintiffs' business, confusion to its customers and has infringed on rights that are protected by various state and federal statutes. The eight causes of action advanced in the complaint are as follows: 1) Infringement of plaintiff's Trade Name and Mark in violation of the Lanham Act § § 32 & 43 (15 USC § 1114 and § 1125, et. seq. ); 2) Infringement of the plaintiff's Protected Trade Name and Mark in violation of GBL § 360–k ; 3) Injury to the plaintiffs' Business Reputation and Dilution in violation of GBL § 360 –1 ; 4) Common Law Unfair Business Competition; 5) Use of the plaintiffs' name with intent to deceive in violation of GBL § 133 ; 6) Infringement of plaintiffs' name with intent to deceive in violation of BCL § 301 ; 7) Common Law Misappropriation and Misrepresentation; and 8) Violations of GBL § 349. In lieu of answering, the defendants move to dismiss the complaint on several grounds delineated in CPLR 3211(a), including legal insufficiency, documentary proof and standing. For the reasons stated below, the motion is granted to the extent stated.

Standing, like lack of capacity to sue, are affirmative defenses which challenge the right of the plaintiff to recover. However, a challenge based on a purported lack of capacity to sue requires inquiry into the status of claimant and its right to appear and bring its grievance before the court, whereas, a standing challenge requires an inquiry into whether the litigant has “an interest in the claim at issue in the lawsuit that the law will recognize as a sufficient predicate for determining the issue at the litigant's request” (Wells Fargo Bank Minnesota, Natl. Ass'n v. Mastropaolo, 42 AD3d 239, 242, 837 N.Y.S.2d 247 [2d Dept 2007] [internal citations omitted] ). A party moving to dismiss on standing grounds must establish, in the first instance, that the claimant lacks standing to sue, after which the claimant bears the burden of establishing its standing (id ). A motion to dismiss a complaint pursuant to CPLR 3211(a)(1) is grounded upon a defense possessed by the moving party and it may be granted only if the documentary evidence submitted by the moving party utterly refutes the factual allegations of the complaint and conclusively establishes a defense to the claims as a matter of law (see Goshen v. Mutual Life Ins. Co. of NY, 98 N.Y.2d 314, 326, 746 N.Y.S.2d 858 [2012];Shuttle Contr. Corp. v. Peikarian, 108 AD3d 179, 968 N.Y.S.2d 179 [2d Dept 2013] ; Choudhary v. First Option Title Agency, 107 AD3d 657, 967 N.Y.S.2d 86 [2d Dept 2013] ; Bua v. Purcell & Ingrao, P.C., 99 AD3d 843, 952 N.Y.S.2d 592 [2d Dept 2012] ). To succeed on such a motion, the movant must establish that the documentary evidence that forms the basis of the motion resolves all factual issues as a matter of law and conclusively disposes of the plaintiff's claim (see AG Capital Funding Partners, L.P. v. State St. Bank and Trust Co., 5 NY3d 582, 590–591, 808 N.Y.S.2d 573 [2005];Choudhary v. First Option Title Agency, 107 AD3d 657, supra; Bua v. Purcell & Ingrao, P.C. 99 AD3d 843, supra; Fontanetta v. Doe, 73 AD3d 78, 898 N.Y.S.2d 569 [2d Dept 2010] ). To qualify as “documentary,” the evidence relied upon must be unambiguous and undeniable in a manner like judicial records and documents reflecting out-of-court transactions such as mortgages, deeds, and contracts. Documents compiled by the parties such as affidavits, notes, accounts, depositions, correspondence and the like generally do not constitute documentary evidence within the ambit of CPLR 3211(a)(1) (see Granada Condominium III Assn. v. Palomino, 78 AD3d 996, 913 N.Y.S.2d 668 [2d Dept 2010] ; Fontanetta v. Doe, 73 AD3d 78, supra )

“On a motion to dismiss the complaint pursuant to CPLR 3211(a)(7) for failure to state a cause of action, the court must afford the pleading a liberal construction, accept all facts as alleged in the pleading to be true, accord the plaintiff the benefit of every possible inference, and determine only whether the facts as alleged fit within any cognizable legal theory” (Agai v. Liberty Mut. Agency Corp., 118 AD3d 830, 2014 WL 2743253 [2d Dept 2014], quoting Breytman v. Olinville Realty, LLC, 54 AD3d 703, 703–704, 864 N.Y.S.2d 70 [2d Dept 2008] ; see Leon v. Martinez, 84 N.Y.2d 83, 87, 614 N.Y.S.2d 972 [1994] ). If the court can determine that the plaintiff is entitled to relief on any view of the facts alleged, its inquiry is complete and the complaint must be declared legally sufficient (see Symbol Tech. v. Deloitte & Touche, LLP, 69 AD3d 191, 888 N.Y.S.2d 538 [2d Dept 2009] ). Whether a plaintiff can ultimately establish its allegations is not part of the calculus (see EBC I, Inc. v. Goldman, Sachs & Co., 5 NY3d 11, 19, 799 N.Y.S.2d 170 [2005];Haberman v. Zoning Bd. of Appeals of City of Long Beach, 94 AD3d 997, 942 N.Y.S.2d 571 [2d Dept 2012] ).

Where evidentiary material is submitted by the moving party 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 (see Guggenheimer v. Ginzburg, 43 N.Y.2d 268, 274–275, 401 N.Y.S.2d 182 [1977];Agai v. Liberty Mut. Agency Corp., 118 AD3d 830, supra; Minovici v. Belkin BV, 109 AD3d 520, 971 N.Y.S.2d 103 [2d Dept 2013] ; Fishberger v. Voss, 51 AD3d 627, 628, 858 N.Y.S.2d 257 [2d Dept 2008] ). However, “on a motion made pursuant to CPLR 3211(a)(7), the burden never shifts to the nonmoving party to rebut a defense asserted by the moving party” (Weill v. East Sunset Park Realty, LLC, 101 AD3d 859, 955 N.Y.S.2d 402 [2d Dept 2012], quoting Sokol v. Leader, 74 AD3d at 1181, 904 N.Y.S.2d 153 [2d Dept.2010] ). A plaintiff may choose to submit affidavits and/or other evidentiary materials but is not obliged to do so on penalty of dismissal (see Rovello v. Orofino Realty, Co., 40 N.Y.2d 633, 389 N.Y.S.2d 814 [1976] ) and such submissions are considered for the limited purpose of remedying defects in the complaint (id., at 40 N.Y.2d 636; see Karimov v. Brown Harris Stevens Residential Mgt., LLC, 117 AD3d 910, 985 N.Y.S.2d 883 [2d Dept.2014] ; Way v. City of Beacon, 96 AD3d 829, 947 N.Y.S.2d 531 [2d Dept 2012] ; Quinones v. Schaap, 91 AD3d 739, 937 N.Y.S.2d 262 [2d Dept 2012] ). Upon such consideration, the facts alleged therein, like those set forth in the complaint, must also be assumed to be true (see Harris v. Barbara, 96 AD3d 904, 947 N.Y.S.2d 548 [2d Dept 2012] ; Kopelowitz & Co., Inc. v. Mann, 83 AD3d 793, 921N. Y.S.2d...