Vantone Grp. Ltd. v. Yangpu NGT Indus. Co.
| Decision Date | 28 July 2016 |
| Docket Number | No. 13CV7639-LTS-FM,13CV7639-LTS-FM |
| Parties | THE VANTONE GROUP LIMITED LIABILITY CO., Plaintiff, v. YANGPU NGT INDUSTRIAL CO., LTD., et al., Defendants. |
| Court | U.S. District Court — Southern District of New York |
Defendants Vantone Holdings Co., Ltd., China Center New York LLC, Vantone Property NY LLC, Vantone Residences LLC, Vamerica Fund LLC, Vantone US LLC n/k/a Vamerica LLC, Vantone U.S. Inc., Beijing Vantone Real Estate Co., Ltd. and Feng Lun (collectively, "Defendants") herein move for summary judgment, seeking: (1) dismissal of the Second Amended Complaint filed by Plaintiff The Vantone Group LLC ("Plaintiff" or "The Vantone Group"); (2) summary judgment on their counterclaim seeking cancellation of Plaintiff's US Patent and Trademark Office ("USPTO") and New York State registrations of the "Vantone" mark; and (3) summary judgment on their counterclaim for a declaration that Defendants are entitled to use "Vantone" as a mark and trade name due to their position as senior users of the mark.1 The Court has jurisdiction of this action pursuant to 28 U.S.C. §§ 1331 and1367.
The Court has considered all of the parties' submissions carefully and, for the reasons stated herein, Defendants' motion is denied in its entirety.
In light of the extensive prior motion practice in this case, the Court provides only a brief recitation of the pertinent factual background.
"Vantone" is a name that has been adopted by a number of related China-based companies characterizing themselves as a conglomeration, which hold the equivalent of billions of U.S. dollars in assets in China and which have various subsidiaries operating within the United States. (Pl. 56.1 St. ¶ 1.) The Vantone entities based in the United States (the "Vantone US Defendants") include the China Center New York LLC, Vantone Property NY LLC, Vantone Residences LLC, Vamerica Fund LLC, Vantone US LLC n/k/a Vamerica LLC and Vantone U.S. Inc.3 (Id. ¶ 3.) The China Center is the lessee of six upper floors of One World Trade Center inNew York City. (Def. 56.1 St. ¶ 5.) The China Center is meant to serve as a gateway for foreign companies interested in conducting business in the United States, as well as a venue for business, social and cultural exchange, event and office space, restaurants, and other such services. (Id.) Defendants proffer, through the conclusory declaration of Vantone Holdings Co., Ltd. Vice Chairman Li Xu, that the "Vantone" name enjoys significant prestige and good will in both China and the United States, and that the China Center has been able to attract prospective clients due to its association with the Vantone name. (See Def. 56.1 St. ¶¶ 6-9.)
Defendants assert that the Vantone US Defendants have been registered business entities in the United States since the 1990's, and further claim that the Vantone US Defendants' business activities and use of the "Vantone" mark in interstate commerce and as a trade name dates back to the 1990's. (Def. 56.1 St. ¶¶ 10-11.)4 The domain name "Vantone.com" was registered by an employee of Yangpu NGT Industrial Co. Ltd. ("Yangpu") - a part of the Vantone conglomeration - in 1996. (Id. ¶ 12.)5 Defendants also assert that the Vantone US Defendants' business activities and use of the Vantone mark in interstate commerce and as a trade name continued into the 2000's. (Id. ¶ 13.) Defendants proffer media coverage within the United States - particularly New York - of Vantone's interest in developing the China Center at the World Trade Center as evidence of the use of Vantone as a trade name in 2005 and 2006.(Pl. 56.1 St. ¶¶ 14-15.)6
On April 13, 2006, an article entitled "Tycoon of Chinese Real Estate is Leasing at Trade Center Site" was published in the New York Times. (Def. 56.1 St. ¶ 16.) The article referred to Vantone chairman Feng Lun as "one of China's biggest real estate tycoons" and made reference to "Feng's real estate company, the Vantone Group," noting his desire to "open in New York City what he calls a business and cultural 'China Center.'" (Id.) The article used the term "Vantone Group" at least five times. (Id.) That same evening, Leonardo Gianella ("Gianella") - owner of the Plaintiff Vantone Group - registered the domain name "VantoneGroup.com," as well as the domain names "VantoneGroup.net," VantoneGroup.info" and VantoneGroup.biz," on GoDaddy.com. (Id. ¶ 17.) Plaintiff claims that he never saw the April 13, 2006, New York Times article, that he selected the Vantone mark for purely personal reasons, and that he held an honest, good faith belief that he was entitled to registration of the Vantone mark as a senior user. (Pl. 56.1 St. ¶¶ 77-79.)
On April 18, 2007, Gianella filed articles of organization for plaintiff The Vantone Group LLC, and on January 8, 2008, The Vantone Group LLC became a licensed real estate brokerage. (Def. 56.1 St. ¶ 18.) On March 3, 2010, Gianella submitted an application to register the service mark "The Vantone Group" for "real estate brokerage" services, which later matured into federal service mark registration 3,856,724. (Id. ¶ 25.)7 As part of the application,Gianella represented that the mark was first used anywhere "[a]t least as early as 4/13/2006 " and first used in commerce "[a]t least as early as 4/18/2007." (Def. 56.1 St. ¶ 27.)8 Gianella also declared, under penalty of perjury, that he believed himself to be the owner of the Vantone mark, and that no other firm or corporation had a superior right to use the mark in commerce. (Def. 56.1 St. ¶ 27; Pl. 56.1 St. ¶ 77.)9
On March 8, 2010, Gianella registered the service mark "The Vantone Group" in New York State, representing that the mark was first used in New York on April 27, 2007, and that it was first used anywhere on April 13, 2006. (Def. 56.1 St. ¶¶ 44-45.) Gianella claims to have used the mark in connection with soliciting right to sell agreements, obtaining leases, locating rental apartments for clients, listing a condominium for sale and registration with various websites used to advertise real estate services. (See Pl. 56.1 St. ¶ 46; Docket Entry No. 193-3, Declaration of Leonardo Gianella ("Gianella Decl.") ¶ 5.)
On September 4, 2013, Gianella sent an email to Chinese counsel for the China-based Vantone companies, claiming that he valued the Vantone brand at "20 Million dollars" and stating "[s]o that I am crystal clear we will not settle this for 'little money.'" (Def 56.1 St. ¶ 58.) Gianella later confirmed that he had offered to sell the Vantone name for $20 million, a number that he claims to have "kind of pulled . . . out of a hat." (Def. 56.1 St. ¶ 59.) Based onthis email, Defendants claim that Gianella sought trademark registration solely for the purpose of the instant lawsuit, in an attempt to profit from litigation against the Defendants. (Id.)
At the core of this dispute is the question of which party is properly recognized as the senior user of the Vantone mark. Both Plaintiff and Defendants claim priority in the Vantone mark, and each party contests the legitimacy of the other's right to use of the mark as well as the good faith of the other in adopting it. Neither Plaintiff nor Defendants, however, have proffered conclusive evidence in connection with the issues raised by this motion practice, leaving genuine issues of material fact that ultimately must be resolved at trial.
Pursuant to Rule 56(a) of the Federal Rules of Civil Procedure, summary judgment is to be granted in favor of a moving party where that party can demonstrate "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 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986). A party that is unable to "make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial" will not survive a Rule 56 motion. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). It is the moving party's burden to demonstrate the absence of material issues of fact, and the court must be able to find that, "'after drawing all reasonable inferences in favor of a non-movant, no reasonable trier of fact could find in favor of that party.'" Marvel Entertainment, Inc. v. Kellytoy (USA), Inc., 769 F. Supp. 2d 520, 523 (S.D.N.Y. 2011) (quoting Heublein v. United States, 996 F.2d 1455, 1461 (2d Cir. 1993)). Moreover, "[o]n summary judgment, the Courtconstrues the facts, resolves all ambiguities, and draws all permissible factual inferences in favor of the non-moving party . . . [and if] there is any evidence from which a reasonable inference could be drawn in favor of the non-moving party on the issue on which summary judgment is sought, summary judgment is improper." See Cuadrado v. Zito, No. 13CV3321-VB, 2014 WL 1508609, at *2 (S.D.N.Y. Mar. 21, 2014) ().
A fact is considered material for the purposes of summary judgment motion practice "if it might affect the outcome of the suit under the governing law." Holtz v. Rockefeller & Co. Inc., 258 F.3d 62, 69 (2d Cir. 2001) (internal quotation marks and citations omitted). An issue of fact is "genuine" where "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. Evidence that is "merely colorable or not significantly probative" will not defeat a motion for summary judgment. Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 346 (2d Cir. 1999). "[M]ere conclusory allegations or denials . . . cannot by themselves create a genuine issue of material fact where none would otherwise exist." Hicks v. Baines, 593 F.3d 159, 166 (2d Cir. 2010) (internal quotation marks and citation omitted). "As to issues on which the non-moving p...
To continue reading
Request your trial