Ryan v. Volpone Stamp Co., Inc.
| Decision Date | 01 August 2000 |
| Docket Number | No. 99Civ.9116 (CSH).,99Civ.9116 (CSH). |
| Citation | 107 F.Supp.2d 369 |
| Parties | Nolan RYAN, Plaintiff v. VOLPONE STAMP COMPANY, INC., d/b/a Sport Stamps Collectors Association, Defendant. |
| Court | U.S. District Court — Southern District of New York |
Golenbock, Eiseman, Assor & Bell, New York, NY (Martin S. Hyman, Joel S. Tennenberg, of counsel), for Plaintiff.
Feder Kaszovitz Isaacson Weber Skala & Bass LLP, New York, NY (Ezio Scaldaferri, Bruce Robins, of counsel), for defendant.
This action arises out of a dispute between a licensor and ex-licensee over the use of former Major League Baseball pitcher Nolan Ryan's name, likeness and signature in association with the sale of several products including stamps, coins, teddy bears, model trains and autographed items. Plaintiff Nolan Ryan brought this action under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), New York Civil Rights Law §§ 50-51, and applicable common law alleging, inter alia, trademark infringement and breach of contract. Plaintiff moves for a preliminary injunction enjoining and restraining Defendant from manufacturing, causing to be manufactured, selling, causing to be sold, licensing or otherwise exploiting any products bearing Nolan Ryan's image. Defendant cross-moves to dismiss the action in deference to the pending New York State Court action between the parties, or in the alternative pursuant to Rules 12(c) and 19(b) of the Federal Rules of Civil Procedure.
Plaintiff Nolan Ryan, a former Major League Baseball player, pitched seven no hitters during his career and continues to hold the record for most strikeouts. He was inducted into the Baseball Hall of Fame and voted by fans onto Baseball's All-Century Team. In light of his accomplishments and illustrious career, Ryan currently derives substantial revenue from endorsements, commercials, and the licensing of his name and image. Ryan is represented with respect to these matters by his agent Mattgo Enterprises, Inc. ("Mattgo"), a New York corporation. Matt Merola is the president of Mattgo. Neither Mattgo nor Merola are currently parties to this action.
Defendant Volpone Stamp Company, Inc. d/b/a Sport Stamps Collectors Association ("Volpone") is in the business of selling sports-related merchandise. Bernie Neumark is the president of Volpone.
In 1998 Ryan through Mattgo entered into a licensing agreement with Volpone (the "Master Agreement"). The Master Agreement was dated March 2, 1998 and was signed by Neumark for Volpone, Merola for Mattgo, and Ryan himself. . The Master Agreement granted Volpone exclusive rights to manufacture, sell, and sublicense numerous Nolan Ryan products, including, stamps, coins and medals, cards and all products with facsimile Nolan Ryan signatures. It also granted Volpone non-exclusive rights with respect to two styles of watches as well as plates and figurines. The Master Agreement was for a term of two years with an effective starting date of January 1998. In return Volpone promised to pay royalties equal to ten percent of its wholesale price and guaranteed minimum royalties of $150,000 the first year and $175,000 the second year to be paid according to a schedule outlined in the Master Agreement. The Master Agreement also provided that Ryan would personally sign an unlimited quantity of baseballs at $25 per item, and an unlimited quantity of cards, flats and stamps at $20 per item. Finally, in case of nonpayment of the minimum royalties, Volpone would have sixty days to cure any default, after which the Master Agreement would terminate and all licensing rights would revert to Mattgo.
On September 23, 1998, a second agreement was entered into expanding Volpone's rights (the "Train Set Agreement"). The Train Set Agreement, signed by Neumark for Volpone, Merola, and Ryan, granted Volpone an exclusive license for Nolan Ryan train sets. . This contract required royalty payments amounting to twelve percent of wholesale sales and guaranteed a minimum payment of $5,000 due on March 31, 1999. Absent a written extension, the license expired by its own terms on December 31, 1999.
On November 23, 1998, the third and final agreement between the parties was executed granting Volpone the license to manufacture, sell and sub-license Nolan Ryan Plush Teddy Bears (the "Teddy Bear Agreement"). This contract required royalty payments amounting to ten percent of wholesale sales and guaranteed a minimum payment of $5,000 due on June 30, 1999. The Teddy Bear Agreement also expired on December 31, 1999. .1
The instant action arises out of a dispute that began in the Summer of 1999. In accordance with the Master Agreement and the Teddy Bear Agreement, Volpone delivered checks covering its minimum guarantee payments in late June 1999. Specifically, he tendered two checks payable to Mattgo in the amounts of $43,750 (the second quarterly minimum guarantee payment for 1999 under the Master Agreement) and $5,000 (the minimum guarantee payment due under the Teddy Bear Agreement). Although the payments were due no later than June 30, 1999, both checks were post-dated July 31, 1999. According to Merola, Mattgo accepted the post-dated checks as an accommodation to Neumark. Merola deposited the post-dated checks on August 2, 1999. The checks were returned for insufficient funds. Volpone claims that payment was deliberately stopped.
Sometime in July 1999, Ryan autographed numerous items, including baseballs and photos, for Volpone in accordance with the Master Agreement. Volpone then tendered two additional checks compensating Ryan according to the rates agreed upon. One of the two checks was made payable to Nolan Ryan in the amount of $38,035. The other check was made payable to the Nolan Ryan Foundation in the amount of $2,117; this check represented a nominal fee for the Foundation's services in facilitating the signing of the objects and delivery of the items to Volpone. Thereafter payment was stopped on both checks.
Volpone justifies its actions based on the belief that Plaintiff had breached the Master Agreement which granted Volpone exclusive rights to Ryan's name, image and facsimile signature with respect to several products. As early as April 15, 1999, Neumark sent a letter to Merola expressing concern that the Master Agreement had been breached or that other companies were selling unauthorized merchandise. (Neumark Aff., Exh. B).
Not surprisingly, the parties dispute what happened next. Merola claims that he asked Neumark to provide specific information regarding his allegations so that he could investigate. Neumark allegedly failed to provide further information or return Merola's calls. According to Neumark, Merola promised to make inquiries but never followed up or reported back to him.
Neumark sent another letter to Merola dated July 28, 1999 demanding a list of all licensing agreements Mattgo had made for Nolan Ryan products. (Neumark Aff., Exh. H). He also requested that Merola not deposit the outstanding checks until the matter was resolved. Merola did not heed his plea and deposited the checks on August 2, 1999. Nevertheless, as previously stated, Volpone never made good on any of the four checks tendered in June and July 1999. On August 9, 1999, Neumark informed Merola by letter that he had stopped payment on the checks made payable to Nolan Ryan and the Nolan Ryan Foundation because Merola disregarded his request not to deposit the checks made out to Mattgo. (Neumark Aff., Exh. H). He also reiterated his request for the list of licensing agreements Mattgo has made for Nolan Ryan products.
On August 10, 1999 counsel for Ryan wrote a letter to Volpone stating that its allegations concerning violations of the Master Agreement did not justify its failure to make the minimum guarantee payments. . Such failure to pay, the letter continued, constituted a breach of the licensing agreements, and, therefore, the letter was to serve as notice that the licensing agreements were terminated. The letter stated in no uncertain terms that Volpone was no longer authorized to "manufacture, cause to be manufactured, sell, market or otherwise distribute or promote any products bearing Nolan Ryan's name, photograph, signature, image, etc." Id. Plaintiff alleges that Volpone disregarded the termination letter and continued to manufacture and distribute Nolan Ryan merchandise.
On August 16, 1999, Volpone commenced an action against Ryan, Merola and Mattgo in New York State Supreme Court asserting claims of breach of contract and fraud. Plaintiff commenced the present action in this Court on August 24, 1999.
Believing that Defendant continued to market Nolan Ryan products even after the commencement of litigation by both sides to this dispute, counsel for Plaintiff sent another cease and desist letter dated October 7, 1999, this time addressed to counsel for Defendant. (Hyman Aff., Exh. B). Plaintiff alleges that Defendant has failed to comply and now moves for a preliminary injunction pursuant to Fed. R.Civ.P. 65(a) enjoining Volpone from continuing to manufacture, sell, distribute and otherwise market Nolan Ryan products. It also moves this Court to direct Defendant to certify its compliance and account for its sales and revenue relating to Nolan Ryan items.
Defendant cross-moves to dismiss the action in its entirety in deference to the action between the parties pending in the state court. Alternatively, Defendant moves to dismiss the complaint pursuant to Fed.R.Civ.P. 12(c) for lack of subject matter jurisdiction and pursuant to Fed. R.Civ.P. 19(b) for nonjoinder of indispensable parties. As a further alternative, Defendant moves to dismiss the first, second and, eighth causes of action pursuant to Rule 12(c) for failure to state a cause of action upon...
To continue reading
Request your trial
-
Capri Sun GmbH v. American Beverage Corporation
...C=Holdings , 992 F. Supp. 2d at 241 (emphasis added); see also L&L Wings , 676 F. Supp. 2d at 189 (same); Ryan v. Volpone Stamp Co. , 107 F. Supp. 2d 369, 400 (S.D.N.Y. 2000) (same); see 15 U.S.C. § 1127 (defining "counterfeit" as "a spurious mark which is identical with, or substantially i......
-
Bank of America Corp. v. Lemgruber
...that a party to a contract which is the subject of the litigation is considered a necessary party," Ryan v. Volpone Stamp Co., Inc., 107 F.Supp.2d 369, 387 (S.D.N.Y.2000) (citations omitted), Plaintiffs' breach of contract claim arises not out of the 2001 Agreement but the warranties, re-ce......
-
Adyb Engineered for Life, Inc. v. Edan Admin. Servs. Ltd.
...Homeowners Ass'n, Inc. v. DiFrancesco, 386 F. Supp. 3d 299, 304-05 (W.D.N.Y. 2019) (collecting cases); Ryan v. Volpone Stamp Co., Inc., 107 F. Supp. 2d 369, 387 (S.D.N.Y. 2000) (collecting cases); see Global Detection & Reporting, Inc., v. Securetec Detektions-Systeme AG, No. 08 Civ. 5411(G......
-
C=holdings B.V. v. Asiarim Corp.
...However, the Polaroid factors “are more geared towards comparing two distinct, albeit similar, marks.” Ryan v. Volpone Stamp Co., Inc., 107 F.Supp.2d 369, 400 (S.D.N.Y.2000). By contrast, application of the factors is “unnecessary” where use of an identical mark—that is, a counterfeit mark—......
-
Subject Matter Jurisdiction in Antitrust and Business Tort Litigation
...§ 227(b)(3); see Mims v. Arrow Fin. Servs., 132 S. Ct. 740, 745 (2012). 194. 28 U.S.C. § 1338(a); see Ryan v. Volpone Stamp Co., 107 F. Supp. 2d 369, 376 n.3 (S.D.N.Y. 2000); Stanford Telecomms. v. United States Dist. Ct. for the N. Dist. of Cal., 1989 WL 418538, at *1 (9th Cir. 1989); Bear......