Defendants Reply Brief on Appeal

8/14/2019 Defendants Reply Brief on Appeal

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PRELIMINARY STATEMENT

This reply to Appellee, Nancy Grigors, (Grigor) brief is being made by

Defendant-Counterclaimant-Appellant, Darrell Rubens (Darrell) and

Defendant-Counterclaimants, Barbara and Richard Rubens, (Barbara and

Richard). Since Darrell, Barbara and Richard anticipated and thoroughly

refuted most of Appellees arguments in their initial brief, Rubens reply is

limited to minor, but necessary observations, rebuttal arguments and

comments.

COUNTER JURISDICTIONAL STATEMENT

GRIGORS CONTENTION THAT THE RUBENS JURISDICTIONAL

PROCEDURES ARE INCORRECT ARE ERRONEOUS

Darrell, Richard and Barbaras Jurisdictional Statement does comply to

FRAP. 3 (c)(1)(A).

Darrell, Richard and Barbaras Amended Notice of Appeal dated June

22, 2009, filed on June 23, 2009 does comply with FRAP 4(a)(4)(A)(i) and

(B)(i) and Appellants Jurisdictional Statement does comply to FRAP.

3(c)(1)(A). Barbara, Richard and Darrells Preliminary Statement is proper

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since it refers to the one Jury Verdict that was entered on January 30, 2007

which is the Clerks Judgment in this Civil Case. The Conclusion does

challenge the Jury Verdict, and does properly challenge the issues appealed,

and in this Reply Brief it is rewritten to be exacting.

Based on the above, and in contrary to Grigors claims in her Brief, all

issues in Darrells brief should be decided by this Court.

Grigors jurisdictional claim that the Rubens have not filed a timely

appeal on the interlocutory decision of Judge Hurley dated February 17, 2004,

which was docketed and entered by the clerk on March 2, 2004, (A-18, Docket

97) which dismissed their counterclaim, is erroneous. The case given by Grigor

to support her contentions confirms just the opposite. In FirstTier Mortgage

Company v. Investors Mortgage Insurance Company, 498 U.S. 269, Justice

Kennedy, stated. that the trial court, when it rendered the interlocutory

decision to dismiss allFirstTiers claims, though not necessarily a final decision

within the meaning of 28 U.S.C. 1291, had sufficient attributes of finality to

be a decision under the saving provision of Rule 4(a)(2) of the FRAP. It is

appropriate to talk in terms of finality in the case before us because the bench

ruling did announce a decision purporting to dispose of all of FirstTier's

claims."Ante, at 277. I would add, however, that the saving provision of Rule

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4(a)(2) applies as well to the announcement of an order, and that some orders

are appealable even though they do not possess attributes of finality. See 28

U.S.C. 1292(a). In such cases, operation of the saving provision would not be

controlled by whether or not the trial court's announcement was in the nature of

a final judgment.

Richard, Barbara and Darrell, acting Pro se, at that juncture, filed their

interlocutory appeal on March, 11, 2004 within the requisite 30 day time limit of

the March 2, 2004 entry of judgment by the clerk on the docket, (A-18, Docket

97), along with the requisite filing fee of $255.00, (A-18, Docket 98). The Court

in U.S. v. Delileon, WL 5190921, S.D.N.Y., December 01, 2008 stated; a

notice of appeal filed by a pro se litigant must be viewed liberally. The

Rubens had reason to believe that the dismissal of their counterclaims was a

final decision and therefore, was appealable at the end of this case.

There is no requirement for Rubens to move to amend the Judgment

under FRAP, 59(e), or to move to correct a clerical error in the judgment under

FRAP, 60(a) or to request that the District Court review the dismissal of their

counterclaims underFRAP, 60(b) for their Notice of Appeal to be procedural

valid. After the final determination of the case at bar the Rubens did an

Amended Notice of Appeal which merged the Appeals as one, and this

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Amended Notice was filed within 30 days of the final decision of the Court

which disposed all issues in the case, and therefore, the Rubens Appeal

regarding the dismissal of their counterclaims is within the jurisdictional

guidelines and should not be dismissed since procedure was timely and proper.

COUNTERSTATEMENT TO APPELLEES STATEMENT OF FACTS

Trial testimony and the record do not support Grigors false accusations

in her Statement of Facts in her brief:

1. Contrary to Grigor on p.22 2, there were no prior intervening

demands and or events that involved Darrell prior to the Cease and Desist letter

sent to Darrell.

2 Contrary to Grigor, on p.22 2; After DARRELL conferred with his

fatherRICHARD demanded money The record and trial testimony

support, that it was Grigors husband/attorney whorefusedto accept the domain

without Richard paying Griffiths demand of $2,800.00. This is clear and

Griffith admitted such at trial, Court Trial Exhibit (2), (Darrells Brief p. 44).

This statement, however, has nothing to do with Darrell or are there any claims

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now or then that Darrell demanded any money from anyone for the alleged

infringing domain address.

3. Contrary to Grigor on p. 23 2, there is nothing to base any conclusion

that the attorneys that Darrell consulted with when he answered the Cease &

Desist letter were not qualified to give him advice.

4. Contrary to Grigor on p.23 2 the infringing domain name was not

continued on the internet.

5. Contrary to Grigor on p. 23 -24 3 Grigor changed her trial testimony

when she was presented with her opposition to Rubens Motion for Summary

Judgment in which she attested to and submitted her card file folder (Exhibit

182 (E-56), (A-276-282) that; she immediately made up this folder on May

22, 2000 after taking photos of the Rubens house, (Darrells brief p.48).

ARGUMENTS

POINT I

GRIGORS MARK IS GENERIC AND IS A FUNCTIONAL

DESCRIPTIVE TERM THAT CANNOT HAVE ACQUIRED

SECONDARY MEANING AS OF JULY 8, 1999

Grigor has failed to address or counter any of the arguments, evidence

or case law that Darrell has presented which proves that Hamptons Locations

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is a functional term that is generic and cannot be monopolized as a mark,

(Darrells brief, p.2237). It is interesting that Grigor compares her small

company, in which she is the sole employee, located in her home in a small

beachfront community of the Hamptons to American Airlines and U.S.

Airways to counter the fact that Hamptons Locations is not a functional

term and generic term and cannot be monopolized by her as a mark. Even

though the names of these airlines are made up of common words, both

American Airlines, who registered their service mark in 1934 and U.S.

Airlines who registered their mark in 1949, are world renowned, depict the

true definition of source indicators and have acquired secondary meaning.

Grigor cannot compare some of the worlds largest airlines, which are public

companies that have been established decades ago and have tens of thousand

of employees and huge revenues to her Hamptons Locations.

Richard and Barbara who have a Hampton Location and Grigors

competitors who offer Hamptons Locations find Hampton(s) Location(s) a

necessary functional term to describe and market their Hamptons Locations,

(A-242), Darrells Brief p. 27-28, (E-59), At least 129,000 others, that are

listed in Google and Yahoo find it necessary to use the identical term to

market their service or product, Darrells Brief p 27-28. (E-59), (A-242).

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Trademark law seeks to provide a producer neither with a monopoly over a

functional characteristic it has originated nor with a monopoly over a

particularly effective marketing phrase.

The fact that Grigor, in her brief, p.36, 3, refers to her competitors,

that are in the same exact business as her, who use the exact term Hampton(s)

Locations(s) to advertise in Google, Yahoo, their own respective websites,

and in trade publications, the same exact location services, in the same

geographical location, as a casual use1 is preposterous. Therefore, the only

logical conclusion to draw is that Darrells use of the alleged infringing

name to describe his parents Hampton Location was lawful and fair use.

Grigors production of four insignificant news articles, which two

predated her declaration of first use (Darrells main brief p. 33-35) and her

husbands testimony that; when they go to dinner all the restaurant owners

know his wife, (A-265), along with her conflicting, unsupported and

inconsequential sales figures are certainly not what the courts have

determined is proof for Secondary Meaning. For the Jury to have decided that

Grigors mark acquired secondary meaning as of July 8, 1999 is based on

such lack of evidence, it had to be based on pure conjecture and surmise. For

1Grigor has not attempted to stop any of her competitors from using her mark.

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Judge Hurley to go against all prior decisions of the Second Circuit, in

determining Secondary Meaning is clear error.

POINT II

THE JURY VERDICT FINDING THAT DARRELL VIOLATED 1125(d)

OF THE LANHAM ACT AND THE DISTRICT COURTS DENIAL OF

DARRELLS 50B MOTION IS ERRONEOUS.

Section 1125(1)(D) expressly provides

that a person may not be liable for using a domain name unless that

person is the domain registrant or that registrants authorized licensee.

Judge Hurley in his decision dated September 30, 2005, (A-66, A-67), states

that; The only evidence before the Court is that, one of Darrells friends

purchased this name through DSNY. Judge Hurley goes on to say, that

the evidence linking Darrell is marginal at best.

Darrells parents website www.dqny.com was established before the

link and before any registration of any alleged infringing domain name and

the fact that Darrell helped his parents in the design of their website is not

bad faith. In Judge Hurleys September 30, 2005 decision, (A-68), on the

Rubens Motion for Summary Judgment he refers to the affidavits the Rubens

submitted in support of their motion from Darrell, and his attorney/friends,

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James, (Jimmy) Wang, and Christopher, (Chris) Spuges. Jimmy attests to

being an attorney since 1996 and knowing Darrell for fifteen years. Chris,

attests to being an attorney since 1997 and knowing Darrell for over nineteen

years. They both attest that the alleged infringing name was obtained for a

business venture they were pursuing to offer discount Hamptons rentals over

the internet and how this domain name, (www.hamptonlocations.com) was

geographically indicative of their venture, (A-13- Docket Entry 161). Judge

Hurley states, Darrell argues that this evidence demonstrates he acted in

good faith. Judge Hurley goes on to state that the Court agrees that this

evidence is probative of his (Darrells) intent Trial testimony by Darrell

and Richard explained this innocent and fair use and there was absolutely

not a shred of evidence presented to assume otherwise. In fact, a review of the

entire trial transcript de novo will affirm this.

Grigors brief, p. 38 3 misstated the record since page 560 was

accidentally left out of Darrells Joint Appendix, Contrary to trial testimony,

Darrell never testified that he thought up DSNY, Darrell testified, at that

time the only way to register through Network Solutions is you neededa

corporationwe had a couple of attorneys in the room and they were saying

theres no need to file for a corporation right nowI mentioned my dad

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had an corporationI know it went under DSNY,(A-198-199), (Trial

transcript pages of Darrell 559,560&561). It is clear by the record that DSNY

was selected with the advice of counsel and the correct contact information

was provided.

Grigor is being very coy on p.39 2 of her brief, she wants this Court to

believe Richard had prior knowledge of this registration when she states,

RICHARD was aware of Darrells usage of the infringing domain name

The fact is that Darrell consulted with his attorneys when he received the

Cease & Desist letter and did not immediately tell his father, but as soon as he

told his father, Darrell removed the link in good faith.

Grigor in her brief, on p.39 1 makes statements for the first time that

are not in the record and draws her own conclusions and says that Darrell

worked for his parents in a commercial context in the marketing of their

house for profit. The record does not support this, but instead shows that

Darrell is a full time real estate agent working for Winick Realty in New York

City. The record shows that all contact information on the location page of

www.dqny.com had Design Quest and Richard Rubens contact information.

There was never any claim or any evidence presented that Darrell

demanded any money for the alleged infringing domain. Grigor tries to

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confuse the facts, as she did at trial and on p. 39 tries to instill blame on

Richard to take away from the threatening conduct of Grigors

husband/attorney which Grigor has always been aware of. The allegations

that Richard demanded money for the domain address were cleared up at trial

with testimony from both Richard and Griffith. Griffiths testimony and Court

Exhibit 2, clearly shows it was Griffith, who threatened and demanded money

from Richard (not conversely). Court Exhibit 2 clearly shows that it was

Griffith who refused to accept the domain name without Richard paying

Griffiths demand of $2,800.00. This evidence is clear and Griffith reluctantly

admitted such, only after a portion of the transcribed recording2 had to be

read into evidence at trial.

Grigors attorney, Ms. Weiss, offers her own statements and

hypothetical conclusions which are not part of the record. P 42 2, Ms. Weiss

calls Darrells reply to Roomians Cease and Desist letter impertinent,

misleading, deceptive, coy and sassy and that DARRELL had every intention

of continuing his bad faith However, Darrells reply was reviewed by

three attorneys and ended by stating to Roomian, If you have any questions,

please feel free to call me.(A-50), Roomian did not reply or contact Darrell

2 There was a tape recording made by Richard Rubens of Griffiths demand and threatswhen he spoke with Darrell over the phone.

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(A-233). Even in light of no response from Roomian, (which Darrell rightly,

conceived as permission to continue use), Darrell discontinued any use

within 30 days after receipt of this letter and prior to any litigation.3 The Jury

should have determined that it was Roomian and Grigor that acted in bad

faith not Darrell. The undeniable facts are that Darrell did not ignore

Roomians letter, Darrell consulted with attorneys prior to sending his reply,

(3 days of receiving it). Darrell ceased any use within 30 days of this letter,

even though Darrell believed he had the lawful right to this fair use. This

is good faith and for the Jury to have construed otherwise was the result of

surmise and conjecture. It was clear error that Judge Hurley did not vacate the

Jurys Verdict.

On p. 29 of Grigors brief she cites Yurman Design, Inc. v. PAJ, Inc.4

262 F. 3d 101 and Hamil America, Inc. v GFI, 193 F. 3d 92, (two copyright

infringement cases) to show the definition of willfulness, which in copyright

law means a "reckless disregard". Both cases are not on point, nor do they

relate to trademark infringement. They have nothing to do with the actions of

Darrell, nor did Darrell act with reckless disregard. Neither case had a

3 Justice Court action for trademark violation commenced after there was no use of thedomain and this action at bar commenced more than one year after any use had beendiscontinued.4 In Yurman the Court of Appeals reversed judgment and vacated plaintiffs claims ofviolation of the Lanham Act and Unfair Competition.

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defendant that should have been protected by the Safe Harbor clause of the

Lanham Act, neither had a defendant that believed his use of the domain

address was lawful and fair use. Neither case had a defendant that stopped

all use within 30 days after receiving and replying to a Cease & Desist Letter.

Here again Grigors analogies fail. As shown in Desert Beauty, Inc. v. Fox

568 F. Supp. 2d 416 S.D.N.Y. (2008). Judge Chin even states; failure to

completely abandon the use after receiving a Cease & Desist letter is

insufficient to support an allegation of bad faith(Darrells brief p. 41). In

Lemme v. N.B.C., Inc. 472 F. Supp. 2d 433 E.D.N.Y., Judge Hurley, in a case

very similar to Darrells, states, prior knowledge of Plaintiffs mark without

more, does not create an inference of bad faith, (p. 42-43 Darrells brief)

Ms. Weiss states again, which is not part of the record, (p. 43 of

Grigors brief) and ironically says that Darrell did not consult with any

qualified intellectual property counsel (in responding to the Cease & Desist

letter), and therefore, DARRELL was acting willfully and recklessly Ms.

Weiss continues these inappropriate remarks and draws more of her own

conclusions and in effect testifies that by Darrell not engaging

professional consultation with a qualified attorneyDARRELL demonstrated

that his conduct was willful and thus engaged in bad faith. Ms. Weiss has

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wrongfully inferred to this Court that there must be some law, somewhere,

that states that an attorney must specialize in a certain area to qualify in

order to help or represent a client and that friends who are attorneys should

not offer their services without formally being hired. In this case, who could

be better qualified to assist Darrell with a Cease & Desist letter than

attorneys who knew Darrell and his parents for over fifteen years and that

have personal knowledge and were part of the intended business venture.

Even though the basis of this fanciful argument could not possibly lead any

reasonable people to conclude that Darrells actions were willful or in bad

faith, Ms. Weiss is not coming to this Court with clean hands. She fails to

mention that Griffith, admittedly has no knowledge whatsoever in trademark

law and admittedly did not know anything about the action he personally

brought forth for his wife against Darrell and Richard in Justice Court for

trademark infringement, (A-260-264). Even more astonishing, Ms. Weiss

appears to have only been involved in one intellectual property case and that

is this one at bar, there appears to be no prior experience in trademark cases.

The Pacer Dockets of Eastern & Southern District Courts and the second

Circuit show that Ms. Weiss is extensively involved in just Civil Rights

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claims and little more5. Therefore, it is clear that Grigors attorneys

arguments about Darrell consulting with unqualified attorneys are baseless

and no reasonable person could assume otherwise. Likewise I have no prior or

subsequent trademark experience.

POINT III

DARRELL BELIEVED HE ACTED LAWFULLY AND IN GOOD

FAITH AND ANY FINDING DIFFERENTLY IS PURE CONJECTURE

AND SURMISE.

Darrell acted in good faith when he consulted attorneys and

immediately replied to Roomians Cease and Desist letter and Darrell acted in

good faith when he discontinued the link to his parents interior design

website within 30 days. (Darrells Brief, p. 40-51).

www.dqny.com is the website of Design Quest which displays the

name Design Quest, tells about the interior designers Richard and Barbara

Rubens, and has portfolios of the corporations design projects and a location

page with a modern house and contact information for Richard Rubens at the

corporations phone number. No purchases of any kind can be made from this

web site and www.hamptonlocations.com was never displayed. At trial the

5 Civil Rights actions and Trademark actions provide attorney fee awards and do notfollow the American Rule where each litigant bears its own expense. It seems as Ms.Weiss seeks to obtain these fees from the opposing parties rather than her own clients.

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Court agreed that Grigor failed to offer any evidence that anyone was

confused, deceived or that there was any loss of good will, nor did Grigor

even attempt to show any loss of business, or lost profits. Anyone viewing the

Design Quest web site would know that it was Design Quest. No reasonable

person and certainly not the specialized type of scout that wished to look for a

Hampton location for their client would by any stretch of imagination confuse

the Design Quest web site for that of Hamptons Locations.

The ACPA contains a bad-faith safe harbor for a defendant who

believed and had reasonable grounds to believe that the use of the domain

name was a fair use or otherwise lawful. 15 U.S.C. 1125(d)(1)(B)(ii);

Hartog & Co. AS v. Swix.com, 136 F.Supp.2d 531, 541 (E.D.Va.2001);

Chatam Int'l, Inc. v. Bodum, Inc., 157 F.Supp.2d 549, 554 (E.D.Pa.2001)

Darrell indisputably had reasonable grounds to believe that any use of the

domain name was lawful and fair use, Darrells brief, (p. 38-51) The

record establishes that the vast majority of factors listed in ACPA favor a

findingof nobad-faith.

The finding of bad faith or again as Ms. Weiss hypothesizes; p. 47 2

true cyperpiracy is ludicrous. Any erroneous finding of bad faith by the

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Jury had to be based on pure conjecture and surmise and the finding of Judge

Hurley in not vacating the Jurys decision is erroneous.

Interestingly enough Ms. Weiss cites, Lukes Cataract and Sanderson

Laser Institute P.A. v. Sanderson 573 F. 3d 1186 (11th Circuit 2009) as to how

statutory damages act as a punishment. For Ms. Weiss to compare the actions

of defendant in that case to Darrell is ridiculous. Sanderson, an oculoplastic

surgeon, under the employ of St. Lukes, pirated the hospitals web site,

changed the internet hosting company and directed the hospitals domain

names into a new hosting company under his sole control without any

authorization to do so. Sanderson made a copy of St. Lukes website, hired

someone to make some minor changes and shortly after he resigned from the

hospital and opened up his own practice and relaunched the web site and

directed the domain names to his own internet hosting companys server.

Certainly, there is no comparison here to Darrell, and in fact, Ms. Weiss

analogy of what willful behavior and bad faith is proves that there is

absolutely no reason to punish Darrell.

Grigor has not produced one case on point. Darrells brief, Joint and

Special Appendix and Exhibits, supported by trial testimony, case law and the

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entire record makes it clear error for any Jury or Court to determine that

Darrell acted in bad faith and violated 1125(d).

Richard, Barbara and Darrell still argue that this is a junk lawsuit,

concocted to harass and retaliate against the Rubens. Darrell believes that his

use of the alleged infringing mark was a mere token use that was lawful,

innocent an in fair use. Darrell has put forth clear and concise arguments

and case law that the term Hampton Locations is functional and should be re

classified as generic or at the least be determined that Grigors mark has not

acquired secondary meaning as of July 8, 1999. Any finding that Hamptons

Locations has acquired secondary meaning would be in total disregard of any

previous decisions or what has been established by the Second Circuit to

prove distinctiveness of a mark. An erroneous finding in this case would

contradict all the law established by the various Appellate Circuits as well as

with the U.S. Supreme Court.

U.S.C. 15 1117 of the Lanham Act and U.S.C 28 1927 provides that

the Court in exceptional cases may award reasonable attorney fees to the

prevailing party. Grigor has failed to tell this Court that Richard, Barbara and

Darrell have a motion pending in the District Court for their attorney fees.

The Second Circuit has held that the standard for the award of attorneys fees

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to a prevailing defendant is the same as to a prevailing plaintiff. Conopco,

Inc. v. Campbell Soup Co., 95 F.3d 187, 194-95 (2d Cir.1996), Nothing ...

indicates that a different standard should apply for prevailing plaintiffs and

prevailing defendants. The general rule is that the prevailing party in a

multi-claim case which includes both Lanham Act and non-Lanham Act

counts should be entitled to attorney fees only for work expended in

prosecuting or defending the Lanham Act counts. However, if the claims

are so intermingled that the factual basis and the legal theories are

essentially the same; the court may award all of the prevailing party's attorney

fees, making no deduction for the Lanham Act counts. The Rubens motion

in District Court is based on the fact that allof Grigors five intermingled

claims were summarily dismissed against Barbara, three of the five claims

were summarily dismissed against Richard and Darrell and the Jury dismissed

the remaining two claims as to Richard, and one of the remaining claims as to

Darrell which left only the one claim against Darrell, which is now before this

Court on appeal.

The District Courts attorney fee motions are not before this Court nor

has any decision been rendered. Upon the resolution of this Appeal, or as

soon as this Court requests, Darrell, Richard, Barbara Rubens will move this

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https://web2.westlaw.com/find/default.wl?tf=-1&rs=WLW9.10&referencepositiontype=S&serialnum=1996205367&fn=_top&sv=Split&referenceposition=194&findtype=Y&tc=-1&ordoc=2006520484&mt=SecondCircuit&db=506&utid=1&vr=2.0&rp=%2ffind%2fdefault.wl&pbc=FF4EFDEFhttps://web2.westlaw.com/find/default.wl?tf=-1&rs=WLW9.10&referencepositiontype=S&serialnum=1996205367&fn=_top&sv=Split&referenceposition=194&findtype=Y&tc=-1&ordoc=2006520484&mt=SecondCircuit&db=506&utid=1&vr=2.0&rp=%2ffind%2fdefault.wl&pbc=FF4EFDEFhttps://web2.westlaw.com/find/default.wl?tf=-1&rs=WLW9.10&referencepositiontype=S&serialnum=1996205367&fn=_top&sv=Split&referenceposition=194&findtype=Y&tc=-1&ordoc=2006520484&mt=SecondCircuit&db=506&utid=1&vr=2.0&rp=%2ffind%2fdefault.wl&pbc=FF4EFDEFhttps://web2.westlaw.com/find/default.wl?tf=-1&rs=WLW9.10&referencepositiontype=S&serialnum=1996205367&fn=_top&sv=Split&referenceposition=194&findtype=Y&tc=-1&ordoc=2006520484&mt=SecondCircuit&db=506&utid=1&vr=2.0&rp=%2ffind%2fdefault.wl&pbc=FF4EFDEFhttps://web2.westlaw.com/find/default.wl?tf=-1&rs=WLW9.10&referencepositiontype=S&serialnum=1996205367&fn=_top&sv=Split&referenceposition=194&findtype=Y&tc=-1&ordoc=2006520484&mt=SecondCircuit&db=506&utid=1&vr=2.0&rp=%2ffind%2fdefault.wl&pbc=FF4EFDEF


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Court to determine that this is an exceptional case based on the

circumstances and lack of any evidence supporting this unnecessary,

vexatious, and meritless lawsuit and for the oppressive conduct of Grigor and

her husband attorney and Ms. Weiss for the having knowledge of and the

orchestration of threats on the Rubens family and their witness Mr. Lee

Davis. And based on the fact that this junk lawsuit was initiated for

retaliation and for the sole purpose of harassing the Rubens and tying them

up in extensive and costly litigation.

POINT IV

GRIGORS ARGUMENT THAT DARRELL DID NOT PRESENT ADEFENSE CASE MUST FAIL

Grigors argument, that because Darrell did not present any defense

case the Jury verdict is hardly surprising. This argument fails. There was no

need to burden the Court or the Jury with repetition of the main case. Grigor

and her witnesses were adequately cross examined and impeached. Darrell

and Richard, were called as witnesses in the main case, entered exhibits into

evidence and adequately refuted any and all claims. Grigor failed to present a

Prima Facie Case, and Defendants made a proper 50A Motion. It was clear

error on the part of the Court to deny such motion.

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POINT V

THERE WAS SUCH INSUFFICIENT EVIDENCE THAT THE JURYVERDICT HAD TO BE BASED ON SHEER CONJECTURE AND

SURMISE AND JUDGE HURLEYS DENIAL OF DARRELLS 50 BMOTION WAS CLEAR ERROR.

The Jury Verdict was based on such a lack of evidence that it had to be

based on pure conjecture and surmise. For a Jury to find that Grigors mark

acquired Secondary Meaning based on such a thread bare evidence shows

that they could not have understood the heavy burden of proof that Grigor

needed to show. It had to be error for Judge Hurley to rule that Hamptons

Locations is a descriptive mark and not generic and it must be clear error that

Judge Hurley did not reverse the Jurys determination that Hamptons

Locations had acquired Secondary Meaning as of July 8, 1999 nor vacate the

Jurys Verdict that found that Darrell violated 1125(d). Judge Hurleys

finding is inconsistent with any previous decision of the Second Circuit

including the finding of Judge Hurley himself in Lemme v. NBC, Inc. 472 F.

Supp. 2d 433, a very similar case, which he dismissed on a Motion for

Summary Judgment on February 1, 2007, just a few days after the Jury

findings in this case at bar, (Darrells brief p. 42-43), To uphold the Jurys

Verdict and the denial of Darrells 50B Motion would turn this junk lawsuit

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into one of the most important and adverse decisions the Circuits have seen

and would defy the legislative intent of the ACPA. It would open up the

floodgates of frivolous trademark actions and give trademark owners a sword

to slaughter the innocent with and would totally change the necessary and

determined standards of burden of proof required to substantiate a finding of

secondary meaning. It would also give functional terms an undeserved

monopoly to trademark owners and eradicate the American dream of free

enterprise.

POINT VI

THE DECISION OF JUDGE HURLEY TO DISMISS RICHARD,BARBARA AND DARRELLS COUNTERCLAIM SHOULD BE

REVERSED.

As stated in the Rubens brief, p. 53-60, there are good and valid

reasons for these counterclaims. It is evident that this abuse of process

continues, p. 58, 3 of Grigors brief, and it would be a mockery of justice if

Grigor and her agents were able to continue to use the judicial system in such

an oppressive way and not let the Rubens family have their day in Court.

Grigor and her agents abuse of process continues to this day and certainly this

abuse conforms to the necessary three elements that are to be pled. The

Rubens were Pro Se litigants when they pled their counterclaims and when

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they were dismissed, and now this Court has the option to afford some degree

of flexibility in allowing them to demonstrate the validity of their claims.

CONCLUSION

WHEREFORE, Barbara, Richard and Darrell respectfully request

this Court to reinstate their counterclaims. Darrell respectfully requests this

Court to reverse the January 24, 2007 decision of Judge Hurley that classified

Grigors mark descriptive and to classify Hamptons Locations as a generic

mark and upon such classification order the cancellation of the registration of

such mark. In the event that this Court finds that the mark is not generic then

Darrell respectfully requests this Court to find that Hamptons Locations has

not acquired secondary meaning as of July 8, 1999 and upon such

determination order the cancellation of the registration of such mark. It is

further respectfully requested that the one Jury Verdict that was decided on

January 29, 2007 and entered as the Clerks Judgment in a Civil Case on

January 30, 2007 that determined that Darrell violated 1125(d) and awarded

Grigor a statutory award of $1,000.00 be reversed and vacated and for this

Court to reverse the denial of Judge Hurleys 50B Motion, along with such

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further relief as this Court deems just and proper including award Rubens

attorney fee motion for the undertaking of this appeal and grant Rubens

Motion for sanctions for this baseless and frivolous lawsuit.

Dated October 21, 2009

Respectfully Submitted:

_____________________________Michael B. RonemusRonemus & Villensky112 Madison AvenueNew York, NY 10016212-779-7070E-mail: [email protected]

To: Patricia Weiss, Esq.Sag Harbor Shopping Cove75 Main StreetP.O. Box 751Sag Harbor, NY 11963-0019
mailto:[email protected]:[email protected]

Documents

Defendants Reply Brief on Appeal