Patsy's Italian Rest., Inc. v. Patsy's Inc. , 676 F. App'x 24 ( 2017 )

16-0405-cv
Patsy’s Italian Rest., Inc. v. Patsy’s Inc.
UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT
SUMMARY ORDER
RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A
SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS GOVERNED
BY FEDERAL RULE OF APPELLATE PROCEDURE 32.1 AND THIS COURT=S LOCAL RULE 32.1.1.
WHEN CITING A SUMMARY ORDER IN A DOCUMENT FILED WITH THIS COURT, A PARTY
MUST CITE EITHER THE FEDERAL APPENDIX OR AN ELECTRONIC DATABASE (WITH THE
NOTATION ASUMMARY ORDER@). A PARTY CITING A SUMMARY ORDER MUST SERVE A COPY
OF IT ON ANY PARTY NOT REPRESENTED BY COUNSEL.
At a stated term of the United States Court of Appeals for the Second Circuit, held
at the Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New
York, on the 19th day of January, two thousand seventeen.
PRESENT: REENA RAGGI,
DENNY CHIN,
RAYMOND J. LOHIER, JR.,
Circuit Judges.
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PATSY’S ITALIAN RESTAURANT, INC.,
Plaintiff-Counter-Defendant-Appellee,
v. No. 16-0405-cv
PATSY’S INC., I.O.B. REALTY, INC.,
Defendants-Intervenors-Counter-Claimants-Appellants,
ANTHONY BANAS, d/b/a PATSY’S and d/b/a PATSY’S
PIZZERIA TRATTORIA IMPAZZIRE, ALLAN ZYLLER,
doing business as PATSY’S PIZZA TRATTORIA doing
business as PATSY’S, AL & ANTHONY’S PATSY’S,
INC., BSZ REALTY CORP.,
Defendants-Counter-Claimants,
AARON WARSHAW,
Special Master.
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APPEARING FOR APPELLANTS: REBECCA J. STEMPIEN COYLE (Paul
Grandinetti, on the brief), Levy & Grandinetti,
Washington, D.C.
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APPEARING FOR APPELLEE: NORMAN H. ZIVIN, Cooper & Dunham LLP,
New York, New York.
Appeal from a judgment of the United States District Court for the Eastern District
of New York (Ramon E. Reyes, Jr., Magistrate Judge).1
UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED,
AND DECREED that the judgment entered on January 12, 2016, is AFFIRMED.
Defendants Patsy’s Inc. and I.O.B. Realty, Inc. appeal from an order adopting the
report and recommendation of Special Master Aaron Warshaw, denying cross contempt
motions for violations of the district court’s September 9, 2008 injunction and rejecting
defendants’ request to cancel plaintiffs’ registration of the PATSY’S OF NEW YORK
mark as a sanction because the use of that mark was beyond the scope of the injunction.
We review the district court’s denial of a contempt motion for abuse of discretion, which
is not evident here. See Marcel Fashions Grp., Inc. v. Lucky Brand Dungarees, Inc., 779
F.3d 102, 111 (2d Cir. 2015).
Much judicial ink has already been spilled on the parties’ successive and
protracted disputes, see, e.g., Patsy’s Italian Rest., Inc. v. Banas, 658 F.3d 254 (2d Cir.
2011); Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209 (2d Cir. 2003); Patsy’s
Italian Rest., Inc. v. Banas, 508 F. Supp. 2d 194 (E.D.N.Y. 2007), the history of which
the district court characterized as “labyrinthine,” Patsy’s Italian Rest., Inc. v. Banas, 575
F. Supp. 2d 427, 433 (E.D.N.Y. 2008). As such, we assume the parties’ familiarity with
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The parties consented to the magistrate judge’s jurisdiction pursuant to 28 U.S.C. § 636.
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the facts and procedural history of this case, which we reference only as necessary to
explain our decision to affirm.
“To establish contempt for failure to obey a court order, the movant must show
that (1) the order the [alleged] contemnor failed to comply with is clear and
unambiguous, (2) the proof of noncompliance is clear and convincing, and (3) the
[alleged] contemnor has not diligently attempted to comply in a reasonable manner.”
Marcel Fashions Grp., Inc. v. Lucky Brand Dungarees, Inc., 779 F.3d at 111 (alterations
in original) (internal quotation marks omitted). “An injunction is sufficiently clear and
unambiguous if it leaves ‘no doubt in the minds of those to whom it was addressed . . .
[about] precisely what acts are forbidden.’” CBS Broad. Inc. v. FilmOn.com, Inc., 814
F.3d 91, 98 (2d Cir. 2016) (quoting Drywall Tapers & Pointers v. Local 530, 889 F.2d
389, 395 (2d Cir. 1989)).
In Marcel Fashions Group, this court concluded that a motion for contempt failed
the first requirement because an injunction forbidding the use of the “Get Lucky” mark
did not clearly and unambiguously preclude use of the “Lucky Brand” mark. See Marcel
Fashions Grp., Inc. v. Lucky Brand Dungarees, Inc., 779 F.3d at 111 (explaining that “on
its face, the [governing] injunction said nothing about Lucky Brand’s use of the ‘Lucky
Brand’ marks . . . [but rather,] [i]t enjoined Lucky Brand only from using Marcel’s ‘Get
Lucky’ mark, or colorable imitations thereof”).
Similarly, here, the decretal language of the injunction enjoined the parties from
“using the mark PATSY’S alone in any advertising, signs, menus or anything similarly
associated with their establishments.” Patsy’s Italian Rest., Inc. v. Banas, 575 F. Supp.
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2d at 473 (emphasis added). Although the district court, elsewhere in its opinion,
affirmatively “order[ed] [] Plaintiffs [to] . . . refer to their restaurant services using the
mark PATSY’S ITALIAN RESTAURANT, and Defendants [to] . . . refer to their
pizzeria services using the mark PATSY’S PIZZERIA,” id. at 471, that affirmative order
is not clearly exclusive in light of decretal language merely precluding the use of
“PATSY’S alone.” Because the injunction does not clearly and unambiguously preclude
use of the PATSY’S OF NEW YORK mark, we identify no abuse of discretion in the
district court’s conclusion that the PATSY’S OF NEW YORK mark “is beyond the scope
of the present litigation, and therefore it[s registration] should not be cancelled at this
time” for contempt. App’x 830.
We have considered defendants’ remaining arguments and conclude that they are
without merit. Accordingly, the district court’s January 12, 2016 judgment is
AFFIRMED.
FOR THE COURT:
CATHERINE O’HAGAN WOLFE, Clerk of Court
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