07-0486

________________________________________________________________________

IN THE

FOR THE SECOND CIRCUIT

HAMPTONS LOCATIONS, INC., and

NANCY GRIGOR,
Plaintiff-Appellee

-against-

RICHARD RUBENS, BARBARA RUBENS, and

DARRELL RUBENS, each individually and doing
business as HAMPTON LOCATIONS,

Defendants-Appellants,
____________

ON APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF NEW YORK

BRIEF FOR DEFENDANTS-APPELLANTS

______________________________________________________________________________

RONEMUS & VILLENSKY

112 MADISON Avenue, 2nd Floor
New York, New York 10016
(212) 779-7070

Attorneys for Defendant-Appellant

 TABLE OF CONTENTS

TABLE OF AUTHORITIES …………………………………………………..i

PRELIMINARY STATEMENT ………………………………………………1

JURISDICTIONAL STATEMENT …………………………………………...2

STATEMENT OF ISSUES PRESENTED FOR REVIEW …………………...2

STATEMENT OF THE CASE ………………………………………………..4

STATEMENT OF FACTS …………………………………………………….9

PROCEDURAL HISTORY…………………………………………………..14

SUMMARY OF ARGUMENT ………………………………………………17

ARGUMENTS ……………………………………………………………….21

POINT I

THE DISTRICT COURT ERRED WHEN IT DETERMINED THAT

THE MARK HAMPTONS LOCATIONS WAS DESCRIPTIVE…………...22

POINT II

BOTH THE JURY AND THE DISTRICT COURT ERRED IN

DETERMINING THAT GRIGOR’S MARK ACQUIRED
SECONDARY MEANING AS OF JULY 8, 1999…………………………...29
⁄⁄⁄⁄⁄⁄
POINT III

THE JURY ERRED IN FINDING THAT DARRELL VIOLATED

1125(D) OF THE LANHAM ACT AND THE DISTRICT COURT
ERRED IN NOT VACATING THE VERDICT .............................................38
 A. No Evidence Was Presented That Proved That Darrell Was
The Authorized Licensee Of The Domain Address
www.hamptonlocations.com ………………………………………….38

B. No Evidence Was Presented That Darrell Acted In Bad Faith

When He Replied To The Cease And Desist Letter…………………...40

C. Darrell Had Reasonable Grounds To Believe That Use the

Alleged Infringing Domain Address Was A ‘Fair Use And
Lawful’…………………………………………………………………50

POINT IV

THE DISTRICT COURT ERRED WHEN IT FAILED TO DISMISS

ALL CLAIMS AGAINST ALL DEFENDANTS ON SUMMARY
JUDGMENT………………………………………………………………….51

POINT V

THE DISTRICT COURT ERRED WHEN IT FAILED TO GRANT A

50A MOTION AND ALLOWED THIS CASE TO GO TO A JURY……….52

POINT VI

THE DISTRICT COURT ABUSED ITS DISCRETION WHEN

IT DISMISSED BARBARA, RICHARD AND DARRELL RUBENS
COUNTERCLAIMS…………………………………………………………53

CONCLUSION ………………………………………………………............60

CERTIFICATE OF COMPLIANCE ………………………………………...62

 TABLE OF AUTHORITIES

Diesel v. Town of Lewisboro, 232 F.3d 92, 103, ………………………………….3

This is Me, Inc. v. Taylor, 157 F.3d 139, 142……………………………………...3

Abercrombie & Fitch, 537 F.2d at 9………………………………………………23

American Cyanamid Corp. v. Connaught Lab., Inc., 800 F.2d 306………………25

Thompson Med. Co., Inc., 753 F.2d at 216………………………………………..25

Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. B.E. Windows Corp.,
937 F. Supp. 204…………………………………………………………………..26

Bristol-Myers Squibb Co. v. McNeil P.P.C., Inc., 973 F.2d 1033, 1040 …………29

Centaur Communications, Ltd. v. A/S/M Communications, Inc.,

830 F.2d 1217, 1221………………………………………………………………29

20th Century Wear Inc., v. Sanmark Stardust Inc., 747 F.2d 81, 90
470 U.S. 1052……………………………………………………………………..29

Ralston Purina Co. v. Thomas J. Lipton. Inc., 341 F. Supp. 129, 134……………29

Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844……………...30

LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 78 ……………………………...30

RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058, 1059……………………...30

Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 84 ……………………30

Anti-Monopoly, Inc. v. General Mills Fun Group, 611 F.2d 296,300 …………....30

CES Publishing Corp., 531 F.2d at 13…………………………………………....30

Holzapfel's Compositions Co. v. Rahtjen's Am. Composition Co

183 U.S. 1, 9, 22 S.Ct. 6, 8-9, 46 L.Ed. 49………………………………………..31

i
W.T. Rogers Co. v. Keene, 778 F.2d 334, 339 ……………………………………31

Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 59 S. Ct. 109, 83 L.Ed. 73….31

Spang v. Watson, 92 U.S.App.D.C, 266, 205 F. 2d 703,346,

346 U.S. 938, 74 S.Ct. 378, 98 L.Ed. 426 ………………………………………..31

Blisscraft of Hollywood v. United Plastic Co., 189 F.Supp. 333 , 294 F.2d 694…31

McGregor-Doniger, Inc. v. Drizzle, Inc. 599 F. 2d 1126, 1133…………………..31

Sunrise Home Juices, Inc. v. Coca-Cola Co., 220 F. Supp. 558, 559, 561…….....32

Roselux Chemical Co. v. Parsons Ammonia Co., 299 F.2d 855,862,…………….32

Ives Laboratories, Inc. v. Darby Drug Co., 455 F.Supp. 939 (E.D.N.Y.),
aff'd, 601 F.2d 631………………………………………………………………...35

Streetwise Maps, Inc. v. Vandam. Inc., 159 F.3d 739, 744 ………………………35

Ideal World Mktg., Inc., 15 F.Supp.2d at 244, aff'd, 182 F.3d 900……………….35

Plus Products v. Plus Discount Foods, Inc., 722 F.2d 999, 1006………………...37
Allied Maintenance Corp. v. Allied Mechanical, Inc., 42 N.Y.2d 538, 399
N.Y.S.2d 628, 369 N.E.2d 1162, 198 U.S.P.Q. 418, 422 ………………………...37

Exquisite Form Industries, Inc. v. Exquisite Fabrics of London,

378 F. Supp. 403, 410……………………………………………………………..37

Harlequin Enterprises, Ltd. v. Gulf & Western Corp., 644 F.2d 946…………….37

RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058 ……………………………37

P.F. Cosmetique, S.A. v. Minnetonka, Inc., 605 F. Supp. 662……………………37

Cuisinarts, Inc. v. Robot-Coupe Int. Corp., 580 F.Supp. 634, 638.............................41

TakeCare Corp. v. Takecare of Oklahoma, Inc., 889 F.2d 955, 957……………...41

Dessert Beauty, Inc. v. Fox 568 F.Supp.2d 416…………………………………..41

ii
Something Old, 1999 WL 1125063, at *7………………………………………...41

Wonder Labs, Inc. v. Procter & Gamble Co., 728 F.Supp. 1058, 1064………….41

Lemme v. NBC., Inc. 472 F.Supp.2d 433 E.D.N.Y, 2007………………………...42

Playtex Prods., Inc., 390 F.3d at 166; cf. Lang, 949 F.2d at 584 ………………...43

Lang, 949 F. 2d at 584………………………………………………………….....43

www. Pharmaceutical Co., 984 F.2d at 575………………………………………43

KP Permanent Make-Up v. Lasting Impressions, Inc. 15 U.S.C…………………47

Emergency One, Inc. v. Am. FireEagle, Ltd., 228 F.3d 531, 536 ……………….50

Lucent Info. Mgmt., Inc. v. Lucent Tech., Inc., 986 F.Supp. 253, 259……………50

In re Fanelli, 263 B.R. 50, 58 (Bankr.N.D.N.Y.2001) …………………………..54

Boguslavsky v. Kaplan, 159 F.3d 715, 719 (2d Cir.1998))……………………….54

Traguth v. Zuck, 710 F.2d 90, 95 (2d Cir.1983)………………………………….54

Horton v. Trans World Airlines Corp., 169 F.R.D. 11, 16 (E.D.N.Y.1996),…….54

iii
 STATUTES

15 U.S.C. §1125(d) …………………………………………1,16,19,20,42,44,46,53

15 U.S.C.A. § 1051………………………………………………………………..,22

15 U.S.C. § 1052(f)……………………………………………………………,,,,,,29

15 U.S.C. ¶1127 ………………………………………………………………..,,,,50

REFERENCE

Restatement (Third) of Unfair Competition § 14 comment a, at 57………………23

Ralph H. Folsom & Larry L. Teply, Trademarked Generic Words

89 Yale L.J 1323, 1328-29 ……………………………………………………….31

Google ……………………………………………………………………………28

Yahoo …………………………………………………………………………….28

iv
UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT
_________________________________________
HAMPTONS LOCATIONS, INC., and
NANCY GRIGOR, Docket No 07-0486
Plaintiffs, Appellees

-against-

RICHARD RUBENS, BARBARA RUBENS, and

DARRELL RUBENS, each individually and doing business
As HAMPTON LOCATIONS,

Defendants, Appellants
_________________________________________x

PRELIMINARY STATEMENT

Appellant Darrell Rubens appeals from the decision of Judge Hurley which

determined on January 24, 2007 that the mark Hamptons Locations is descriptive

and not generic, and one Jury verdict entered on January 30, 2007 that found that

Darrell violated §1125(d) of the Lanham Act and awarded Plaintiff $1000.00 in

statutory damages. Darrell also appeals the June 4, 2009 denial of his of his 50B

motion.

Appellants Barbara, Richard and Darrell appeal the decision of Judge Hurley

dated February 17, 2004 which dismissed Rubens’ counterclaims.

1
 JURISDICTIONAL STATEMENT

The District Court had jurisdiction pursuant to the Lanham Act.

Darrell’s appeal is from the January 24, 2007 decision of Judge Hurley, a

Jury Verdict entered on January 30, 2007 and the denial of Darrell’s 50B Motion

entered on June 23, 2009. A Notice of Appeal was timely filed on February 12,

2007.

Barbara, Richard and Darrell’s appeal from an interlocutory order of Judge

Hurley dated February 17, 2004. A Notice of Appeal was timely filed on March 8,

2004.

Amended Notice of Appeal was filed on June 23, 2009 which merges all of

appeals.

STATEMENT OF ISSUES PRESENTED FOR REVIEW

The District Court determined that the mark Hamptons Locations is not

generic. Appellee’s (“Grigor”) mark refers to the general class or category of her

services and this term Hamptons Locations is so useful to businesses offering the

same services that no amount of money poured into promoting customers'

association of generic terms with a particular source can justify depriving

competing companies of the right to call their services by its name.

2
 Because the Court classified Hamptons Locations descriptive, the Jury was

given the task to determine if the mark had acquired Secondary Meaning as of July

8, 1999. The Jury finding that it had acquired Secondary Meaning is in complete

disregard of the established requirements set by existing case law which states that

when a mark is deemed descriptive it is considered a ‘weak’ mark and Plaintiff has

a ‘heavy burden’ in producing a preponderance of evidence to show it had acquired

secondary meaning. The scant evidence presented by Grigor failed to meet this

‘heavy burden’ and the Jury finding was not consistent with the lack of evidence

presented at trial. The 2nd Circuit has consistently held that when there is such a

complete absence of evidence supporting the verdict and when the jury's findings

and the result could only be of sheer surmise and conjecture and that reasonable

and fair minded men could not arrive at a verdict against the moving party, then

the judgment must be vacated. See Diesel v. Town of Lewisboro, 232 F.3d 92, 103,

“A reversal of a judgment from a Jury verdict may be granted if the evidence is

such that, without weighing the credibility of the witnesses or otherwise

considering the weight of the evidence, there can be but one conclusion as to the

verdict that reasonable persons could have reached." This is Me, Inc. v. Taylor, 157

F.3d 139, 142.

The District Court on February 17, 2004, erred on summary judgment when

it dismissed Rubens’ counterclaims stating that Defendants did not plead with the

3
necessary particularity to make a prima facie case of abuse of process. Rubens’

were representing themselves and Courts have consistently found that Pro se

litigants should be afforded every reasonable opportunity to demonstrate that they

have a valid claim, and, even when a litigant confuses various legal theories, the

courts will scrutinize the claim to determine whether the facts alleged would

support a different theory.

Did the district court err when it determined that the mark Hamptons
Locations was not generic?

Did the Jury err in determining that the mark Hamptons Locations acquired
secondary meaning as of July 8, 1999 and did the District Court err in
upholding that determination?

Did the Jury err when they determined that Darrell acted in bad faith and
violated §1125(d) of the Lanham Act and awarded statutory damages of
$1000.00 and did the District Court err in not vacating the jury’s verdict?

Did the District Court err when it failed to dismiss all claims against all
Defendants on summary judgment?

Did the District Court err when it failed to grant Darrell’s 50a motion and
allowed this case to go to a jury?

Did the District Court err when it dismissed Rubens’ counterclaims?

STATEMENT OF THE CASE

This action by Grigor should have never been brought in Southampton

Justice Court, where it originated, let alone the U.S. District Court. Grigor’s claims

4
had no basis in fact or law and were malicious and vexatious claims against the

Rubens’ family. The hostility started as a dispute between Grigor and Richard for

overtime due for the June 13, 2000 photo shoot. Grigor paid Richard $2,500.00 for

the use of his Hamptons home but the overtime was never paid. Michael Griffith,

(“Griffith”) husband and attorney for Grigor’s Hamptons Locations got outraged

that Richard was calling his wife for payment of overtime and arguments ensued.

Animosity surrounding this photo shoot gave Grigor the opportunity to twist facts

and abuse the Court system for retaliation against the Rubens’ family.

Richard and Barbara’s son, Darrell and his friends were exploring a

prospective business venture to offer summer rentals of Hampton homes on the

internet. They searched Network Solutions and found two names, Hampton

Locations and Virtual Hamptons, which were both indicative of their new idea and

on the advice of three of his partners, (who were attorneys), one of Darrell’s

friends on July 8, 1999 registered the alleged infringing domain

www.hamptonlocations.com under the corporation DSNY. After approximately

one year, and much research, Darrell and his partners abandoned their venture,

(A-194)

Darrell’s parents, Barbara and Richard are in the interior and architectural

design business since 1970 and their corporation (Messardiere) Design Quest, Ltd.

5
has a web site under the domain name www.dqny.com.1 Design Quest’s web site

has a home page with tabs. The design work is displayed under a portfolio tab,

biographies of Barbara and Richard are under the designer tab and under the

location tab is their Hamptons home which has been offered for location shoots

since 1984,2 (A-202).

In April of 2000, after Darrell and his business partners abandoned their

venture, Darrell (thinking the domain www.hamptonlocations.com was indicative

of his parents Hampton location), decided to link this domain address to his parents

www.dqny.com website, (A-212). He searched Yahoo for location companies that

listed under Hampton Locations and sent out a few e-mails April 13, 2000, which

stated; “we rent our house out for photo film and commercial shoots, how can we

list with you”, (E-46). As a result of this e-mail Grigor called Richard and booked

the June 13, 2000 photo shoot at his Hamptons location. Richard was paid

$2,500.00 but was never paid the overtime, (A-205).

Grigor claims she wanted to list Richard’s Hamptons home and alleges that

it was not Darrell’s e-mail that had her call Richard for the photo shoot but instead

she alleges that she left her business card taped to the door of his (summer)

1
Dqny is not to be mistaken or confused with DSNY
2
The location page has information and contact numbers for Richard Rubens

6
residence3 in the winter months of 1998, 1999, alleges that someone arranged for

her to go to the Rubens’ home in 1999, and alleges she took photos then for her

portfolio.4 Grigor claims she met Barbara & Richard at that time, but not Darrell.

However, Grigor gave conflicting testimony and presented evidence at trial that

she took these photos around May 22, 2000, (E-56), (A-276). Richard testified that

he met Grigor for the first time at the June 13, 2000 photo shoot which she had

arranged at his home, (A-207) The District Court, without any evidence or

testimony from Grigor to support its conclusion, states in its decision of the 50B

motion, (E-172) that;

”the jury could have disbelieved him (Darrell) and inferred his prior
knowledge based on the fact that his parents met with Grigor about her
business just days before DSNY registered the offending name suggesting
that one or both of Darrell’s parents communicated Plaintiff’s domain name
to Darrell. At the very least the jury could have inferred that Darrell knew of
plaintiff’s domain name in April, 2000 when he sent Grigor the e-mail”.

This far fetched and totally unsupported conclusion of the Court was

certainly not consistent with any evidence or existing law or why the Lanham Act

was enacted.

On June 25, 2000, after a dispute between Richard and Griffith, Grigor’s

attorney Roomian sent a Cease and Desist letter to Darrell (E-47) Darrell

immediately consulted his business partners, attorneys and close friends. Eddie and

3
Because it is a summer residence the home is closed from fall to spring and unoccupied as
with most summer homes in the Hamptons.
4
There is no date on any of these photos which were all pieced together.

7
Jimmy Wang and Chris Spuges advised Darrell and helped him draft a letter in

response, (A-217)) stating among other things, that Darrell was not the owner of

the domain name, (E-49). Roomian never replied to Darrell. (A-224)

On July 21, 2000 Griffith called Richard and threatened him and his family

regarding the alleged infringing domain name and a few days later, (A-231).

Richard had Darrell remove the link to the Design Quest web site.5 (A-228)

Richard subsequently offered the domain address to Griffith but Griffith

demanded that Richard pay him money before he would take the URL. Richard

refused to pay him money, (A-230)

On August 3, 2000 Grigor represented by Griffith, who had no knowledge or

facts to base any action on, sued Richard and Darrell in Southampton Justice Court

even though there was no use of the domain address, A-(260).

On August 17, 2001, while the action was still pending in Justice Court,

Grigor brought this action in District Court against Darrell, Richard and Barbara

falsely claiming, among other things, that the alleged infringing name was in use

and asking for an injunction6, (A-26). Grigor did this knowing the domain registry

had expired on July 9, 2001 and was available for anyone to purchase it from

Network Solutions.

5
The link was removed less than 30 days after Darrell received the Cease & Desist letter.
6
Grigor sued for injunctive relief even though she owned the name in controversy and on
September 30, 2005.Judge Hurley dismissed Grigor’s Count 2 in her complaint as moot..

8
 STATEMENT OF FACTS

1. Barbara and Richard are husband and wife and Darrell is their son.

2. Barbara and Richard are Interior and Architectural designers since 1970 and

principles of Messardiere Design Quest, Ltd.

3. Richard and Barbara designed and built their Hamptons home in 1983 and

reside in their New York location as well as their Hamptons location.

4. Darrell is a commercial real estate broker since 1995 and lives and works in

New York City.

5. Barbara and Richard have had location shoots in their business showroom

and New York residence since the 1970’s.

6. The Hamptons home is a showplace for Barbara and Richard’s design

talents and it has been used since 1984 for location shoots.

7. The Hamptons home along with other design accomplishments of Barbara

and Richard are on the corporation’s web site, www.dqny.com.

8. The opening page of www.dqny.com displays the name Design Quest, Ltd.

(A-202)

9. Grigor’s date of first use of her mark is December 31, 1994. (E-2)

10. Grigor is the owner and sole employee of a small location company, located

in her home in the Hamptons, which features locations in the Hamptons.

9
11. Michael Griffith (Griffith) is Grigor’s husband, corporate attorney and agent

for Hamptons Locations.

12. Grigor first registered her domain address on October 27, 1998 but did not

create any web site until sometime in 1999.

13. The alleged infringing domain address was registered by DSNY on July 8,

1999, (E-45)

14. This domain address was abandoned approximately July 24, 2000, less than

30 days after the Cease and Desist letter.

15. Richard offered the alleged infringing name to Griffith but Griffith refused

the name without Richard paying Griffith money, (A-230)

16. On March 3, 2001, one year after DSNY registered the domain Grigor

applied for a trademark to the USPTO, (E-2).

17. September 7, 2000 the USPTO refused registration of Hamptons Locations

because the mark was geographically descriptive. (E-28)

18. March 7, 2001 Grigor responded to the USPTO’s refusal and submitted a

declaration of distinctiveness, (E-30)

19. April 31, 2001 Grigor’s mark was refused again based on likeliness of

confusion, (E-38).

20. July 24, 2001 Grigor responded to the May 31, 2001 refusal and deleted

Class 36 and 42, (E-42).

10
21. August 20, 2002, (three years after the alleged infringing domain address

was registered and one year after its registration had expired the mark

Hampton Locations was granted protection under Class 35 and 41. but was

not afforded any protection for providing or renting of houses for the

entertainment industry. Grigor’s registration stated; “No claim is made to

the exclusive right to use “Locations”, apart from the mark”, (E-1).

22. In June of 1999, Darrell and his attorney/friends had an idea to use the

internet, which was in its infancy, to offer discounted fees for Hampton

summer rentals, (A-194).

23. They wanted a name that would be indicative of the world renown

Hamptons and searched Network Solutions, and came up with the

availability of two domain addresses, www.virtualhamptons.com and

www.hamptonlocations.com which were descriptive of their proposed

venture, (A-194)

24. On July 8, 1999, one of the group, not Darrell, registered the domain

www.hamptonlocations.com. under the corporation DSNY, (E-45).

25. This domain sat dormant for almost a year while Darrell and his friends

researched their proposed business venture.

26. After some time Darrell and his partners decided to abandon their venture

On April 8, 2000 Darrell linked the domain name to his parent’s interior

11
 design web site www.dqny.com to describe his parent’s home, which was

featured under the location tab. Darrell did this innocently in thinking he

would help his parents in offering their home to location companies,

(A-212).

27. Darrell, used Yahoo to look up companies that had Hampons locations and

on April 13, 2000 e-mailed a few of these companies, including Grigor in

hopes of having these location companies add his parent’s home to their

data base, (A-212)

28. Darrell’s e-mail said; “we rent our house out for photo film and commercial

shoots. How can we list with you?” (E-46). As a result of this e-mail Grigor

was directed to the Design Quest web site and subsequently called Richard

Rubens and booked a location shoot for June 13, 2000 at his Hamptons

location.

29. This shoot was booked by Grigor for a men’s underwear company and

Grigor agreed to pay Richard $2,500.00 plus overtime. Grigor paid the

$2,500.00 but not overtime even though she collected it from her client,

(A-205).

30. Richard made several requests for payment and arguments ensued between

Griffith and Richard.

12
31. These arguments were blown out of proportion and Griffith threatened and

demanded monies from Richard, (E-5),(E-51),(A-231). These arguments

became the underlying basis for Grigor’s retaliation and these baseless

claims against the Rubens’ family.

32. On June 25th, 2000, twelve days after the shoot, Darrell received a Cease &

Desist letter from Grigor’s trademark attorney Roomian, (E-30).

33. Darrell immediately consulted his three attorney partners, (A-217) and

replied to this letter on June 27, 2000, (E-49). Roomian never responded to

Darrell, (A- 226)

34. On July 21, 2000, Grigor and her husband called Richard and threatened

that if he did not turn over the domain address “he (Griffith), being an

experienced attorney would make Richard regret this by not only causing

Richard to loose business, but by making sure that Richard would be tied up

with extensive and expensive litigation”. These threats were responded to by

Richard’s letter dated July 21, 2000, (E-51).

35. Days after that phone call (and within 30 days after the receipt of the Cease

& Desist letter) Richard had the link removed (A-226,228) and the

registration expired on July 8, 2001.

36. Richard offered to give Griffith the domain address; however, Griffith

refused it without Richard giving him money. This statement by Griffith

13
 was taped by Richard and on stipulation of the parties was transcribed and

read in Court, (A-230).

37. There was never a web site www.hamptonslocations.com. The domain

address was never graphically displayed or was any business conducted

under it, (A-235). It was a link to www.dqny.com for less than 90 days.

(A-226, 228).

38. Even though the web address was abandoned and there was no use of the

domain, on August 3, 2000, Richard and Darrell were “served” with a

Complaint in Southampton Justice Court claiming violation of Trademark

Law and the Consumer Protection Act..

39. On August 17, 2001 while the Justice Court action was still pending,

Richard, Barbara & Darrell were served with the District Court complaint,

(E-26)

40. Barbara was joined in the law suit since Grigor learned that Barbara owned

the Hamptons home.7

41. This process was maliciously served at the Rubens’ Hampton home while

Barbara Koppel was filming a locations scene for ABC’s TV show “The

Hampton’s”.

7
The action against Barbara was dismissed on Summary Judgment.

14
 42. On May 9th, 2002, one day before the scheduled trial in Southampton Justice

Court, Griffith called Darrell and Darrell being afraid of what Griffith

would threaten him with called his parents and returned Griffith’s call with

his parent’s listening in.

43. Richard recorded the threatening remarks made by Griffith, however, the

Court, even though it agreed Griffith threatened Darrell, (A-236), only

permitted the portion of this conversation that proved that Richard had

offered the alleged infringing domain to Griffith but Griffith would not take

it unless Richard paid Griffith money. The full recording exemplifies

Griffith’s demeanor, his malicious tactics and proves how Griffith

demanded money and threatened the Rubens’ family on several occasions.

(E-5) (A-41 Counterclaims).

44. On May 10th, 2002, Grigor, on the first day of trial, withdrew her claim in

Southampton Justice Court with prejudice.

45. www.hamptonslocations.com, had been available for anyone, including

Grigor to purchase from Network Solutions since July of 2001, prior to the

District Court action and one year prior to the trial date in Justice Court. 8

8
This clearly shows Grigor’s Bad Faith, NOT Darrell’s. It also shows how Grigor did not
care about the domain address in controversy, just the retaliation against the Rubens’
since this alleged domain address was not only offered to Griffith but was available for
Grigor to purchase directly from network Solutions for $35.00.

15
46. It was not until May 12, 2002 did Grigor purchased the alleged infringing

domain address.

47. Grigor’s claims were based on the importance of this domain address but

Grigor testified she was too busy to purchase it for 10 ½ months after it was

available, (A-237)

48. On September 20, 2006 Barbara started an action for cancellation with the

USPTO which is still pending, on the grounds Hamptons Locations is

generic or if it is found to be descriptive it is not distinctive and has not

acquired secondary meaning

49. The underlying trial was commenced in District Court on January 16, 2007.

50. On completion of trial Judge Hurley denied Appellant’s 50A Motion and

on January 24, 2007 determined that the mark Hamptons Locations was

descriptive, (A-241).

51. On January 29, 2007 the Jury returned one verdict finding that Hamptons

Locations had acquired secondary meaning as of July 8, 1999 and found

Darrell violated §1125(d) of the Lanham Act and awarded Grigor statutory

damages of $1000.00, (A-167,169).

52. Darrell made a 50B motion and Judge Hurley denied Darrell’s Motion on

June 4, 2009, 2 ½ years after the jury verdict, (A-172).

16
 PROCEDURAL HISTORY

53. August 3, 2000, Richard and Darrell were “served” with a Complaint in

Southampton Justice Court.

54. August 14, 2001 a Complaint was filed in District Court against Barbara,

Richard & Darrell, (A-26)

55. May 10th, 2002, Grigor on the first day of trial in Justice Court, withdrew

her claim with prejudice.

56. May 17, 2002, a Motion to Dismiss and to award sanctions was made by

Richard, Barbara and Darrell

57. December 17, 2002, Judge Hurley granted Rubens’ Motion to Dismiss

Counts 3 & 4 and denied dismissal of Count 1, 2, and 5.

58. February 3, 2003 Answer to Complaint and Counterclaims by Barbara,

Richard and Darrell,

59. September 8, 2003 Motion for Summary Judgment by Barbara, Richard and

Darrell

60. February 17, 2004 Judge Hurley denied Rubens’ Motion for Summary

Judgment and granted Plaintiff’s Motion to Dismiss Rubens’ Counterclaims.

61. March 4, 2004 Notice filed by Rubens’ for Interlocutory Appeal as to

dismissal of counterclaims

17
62. January 5, 2005 Motion for Summary Judgment by Richard, Barbara and

Darrell

63. On September 30, 2005 Judge Hurley, granted in part the Rubens’ motion

for summary judgment, dismissed Grigor’s Count 2 for injunctive relief as

moot and dismissed all claims against Barbara and Richard and the Court

found that Grigor presented no evidence that Darrell trafficked in or

registered the domain name; thus the only issue presented to the jury was

whether Darrell used the domain name, (A-51)

64. On October 11, 2005 a Motion for Reconsideration was filed by Darrell,

(A-76).

65. October 17, 2005 Grigor filed a Motion for Reconsideration opposing

dismissal of Barbara and Richard.

66. May 25, 2006 Judge Hurley denied Darrell’s Motion for Reconsideration,

reversed Richard’s dismissal and affirmed Barbara’s dismissal, (A-88).

67. September 20, 2006 Barbara filed an action with the USPTO for

cancellation of Grigor’s mark .

68. January 24, 2007 Judge Hurley determined that the mark Hamptons

Locations was descriptive, (A- 241).

18
69. January 29, 2007 the Jury found that Hamptons Locations had acquired

secondary meaning as of July 8, 1999 and found Darrell violated §1125(d)

of the Lanham Act and awarded Grigor statutory damages of $1000.00..

70. June 4, 2009 Judge Hurley denied Darrell’s 50 B motion.

It is the determination of Judge Hurley that Hamptons Locations was not

generic and the Jury finding that Grigor’s mark had acquired secondary

meaning as of July 8, 1999 along with the one Jury verdict that found that

Darrell violated §1125(d) of the Lanham Act and awarded Grigor $1000.00 in

statutory damages along with the denial of Darrell’s 50B Motion that Darrell

appeals from.

Appellants Barbara, Richard and Darrell appeal from the February 4, 2004

decision of Judge Hurley that dismissed their counterclaims.

SUMMARY OF ARGUMENT

71. The District Court erred when it held that Grigor’s mark was not generic.

Both the geographical name Hamptons and the word locations are generic

and when put together it becomes a generic term which describes the very

genus of services being offered. Even if this generic term had become

identified with a first user, it cannot be afforded protection since it would

19
 grant the owner of the mark a monopoly, since a competitor could not

describe his goods or services as he should.

72. The Jury verdict that Grigor’s mark Hamptons Locations had acquired

secondary meaning as of July 8, 1999, that Darrell had violated §1125(d) of

the Lanham Act and awarded Grigor statutory damages had to be based on a

complete failure of the jury to understand the complexity of trademark law

and the Court’s limited jury charge which did not explain the ‘heavy burden

of proof’ necessary for Grigor to prove that her mark was distinctive and

had acquired secondary meaning and therefore, could have only been based

on sheer conjecture and surmise.

73. Grigor failed to offer any evidence to support any finding that Darrell was

the ‘authorized licensee” of the alleged infringing domain address.

74. Grigor failed to produce any evidence to support any finding to establish the

necessary requirements to conclude that Darrell acted in bad faith and had

violated of §1125(d) of the Lanham Act.

75. The evidence presented was insufficient, unsubstantiated and unsupported

and was contradicted by Grigor herself and therefore, the Jury Verdict could

have only been the result of sheer surmise and conjecture or complete

misunderstanding.

20
 76. The Court erred in denying Darrell’s 50(b) Motion when it failed to address

Darrell’s arguments that Grigor’s mark is generic and when it strayed from

the requisite ‘burden of proof’ and ‘preponderance of evidence’ set down

throughout the circuits to support a finding that a geographically descriptive

mark acquired secondary meaning. Judge Hurley’s decision was based on

such scant, insufficient, improper, conflicting and unsupported evidence that

it is clearly in error.

77. The Court erred when it determined, without any evidence that Darrell may

have intended to divert consumers from Plaintiff’s website to his own9

78. It was error that Judge Hurley did not dismiss the underlying action it its

entirety on summary judgment, since Grigor’s claims were based on such de

minimis evidence.

79. Judge Hurley erroneously dismissed Rubens’ counterclaims when he did not

afford the degree of flexibility that Courts have constantly given to Pro Se

litigants so that they can demonstrate the validity of their claims.

ARGUMENTS

To succeed in a Lanham Act suit for trademark infringement, Grigor had

two obstacles to overcome: she must prove that her mark is entitled to protection

9
Darrell never had any website.

21
and, even more important, that the use of her mark by Darrell would likely cause

confusion. 15 U.S.C.A. § 1051. In this action Grigor failed to prove either. Judge

Hurley should have dismissed the underlying action it its entirety on summary

judgment since Grigor’s claims were based on such de minimis evidence that they

were insufficient to raise triable issues. It was error for Judge Hurley not to have

dismissed all claims and grant Defendants’ 50A motion on the grounds that Grigor

failed to present a prima facia case.

POINT I

THE DISTRICT COURT ERRED WHEN IT DETERMINED THAT THE MARK

HAMPTONS LOCATIONS WAS DESCRIPTIVE

Judge Hurley erred when he failed to determine that Grigor’s mark is

generic and instead ruled on January 24, 2007 that Hamptons Locations is

descriptive, (A- 241). The court in its denial of Darrell’s 50B motion failed to

address Darrell’s claim that Hamptons Locations is generic. “Generic marks” are

those consisting of words identifying the relevant category of goods or services;

they are not at all distinctive and thus are not capable of being afforded protection

under any circumstances, 15 U.S.C.A. § 1051.

Hamptons Locations is a generic term, and as between descriptive and generic

words and terms, conventional wisdom holds that generic terms, which refer to the

general class or category of the product and or service, are so useful to businesses

22
selling the same services that no amount of money poured into promoting

customers' association of generic terms with a particular source can justify

“depriving competing manufacturers of the product of the right to call an article by

its name.” Abercrombie & Fitch, 537 F.2d at 9. As to descriptive terms, “[a] person

cannot, by mere adoption and use, obtain exclusive rights in words that describe

the attributes of the goods, services, or business to which the words are applied”

for the simple reasons that prospective purchasers are likely to understand such

terms in their descriptive sense rather than as an indication of source and that the

terms are likely to be useful to competing manufacturers. See Restatement (Third)

of Unfair Competition § 14 comment a, at 57.

Because the common, and geographically descriptive mark Hamptons

Locations is made up of the geographically descriptive and generic name,

Hamptons and a generic word, Locations, that together form a functional and

geographically descriptive generic term, (that must be used by competitors to

describe their hamptons locations), the District Court should have determined that

Hamptons Locations is generic and cannot be afforded protection against

infringement. The name Hamptons is generic since it has become renowned all

over the world and is synonymous with and the common name for a group of

upscale resort villages on the eastern end of Long Island, New York. Location is a

generic word which is also highly descriptive. It is this generic term that

23
immediately names the exact nature of Plaintiffs’ services and the places from

which the services of Hamptons Locations emanate, (E-28). Therefore, Hamptons

Locations is incapable of being afforded any protection against infringement under

the Lanham Act. To allow trademark protection, for geographically descriptive,

functional and generic terms, i.e., names which describe the genus of goods or

services being sold, even when these have become identified with a first user,

would grant the owner of the mark a monopoly, since a competitor could not

describe his goods or services as he should.

Because the mark Hamptons Locations is generic it cannot be a source

indicator, nor can it ever be distinctive or ever be capable of gaining secondary

meaning.

The generic or descriptive label attaches to words that comprise the ordinary

language. It embraces terms which derive from nomenclature that has become the

public domain and which are employed to identify a particular thing by its given

name. Such terms cannot be appropriated or monopolized. Generic and descriptive

words, terms and phrases and their usage belong to all who wish to speak the

language. No single user may corner the market of particular terms of everyday

speech to serve private purposes, to the exclusion of other persons who may seek,

at the risk of potential liability to one who laid claim to words of common

currency, to avail themselves of ordinary language to refer to an article by its

24
publicly accepted name. See American Cyanamid Corp. v. Connaught Lab., Inc.,

800 F.2d 306. For these reasons, the common law did not extend validity or

protection to trademarks based on generic terms and did not afford protection to

descriptive marks that had not acquired a secondary meaning irregardless of how

far the use of the name may have prospered in marketing a particular product and

publicly associating it with its maker. A word, term or phrase, even if it does not

start out as generic over time, may very well be deemed generic and lose its

protection. Hamptons Locations is comprised of ordinary words only borrowed or

adapted rather than created, and belongs in the public domain and cannot be

appropriated to merchandise or services exclusively with the products of one

particular seller. Other potential entrants share an interest in using such words in

connection with the advertisement and sale of goods or services and it would be

unconstitutional to foreclose them from using these descriptive terms to label their

products. See, Thompson Med. Co., Inc., 753 F.2d at 216.

The exclusive appropriation of plain speech for trade purposes hampers

market entrance and restrains the equal access of a competitor to shared idiom by

which to brand a vying product in terms that describe its contents and qualities or

advertise its merits. The Court stated; “We should be wary of a result that

diminishes the language, that depletes the stock of common terms in general

circulation and dwindles the richness of expression by placing an undue burden on

25
the right of the public to the freest use of common words”. As the 2nd Circuit has

ruled the standards are not to make judgments that infringe upon what rightfully

belongs to all, the bar should be set high, and the test should be made more

exacting. Any ambiguities or doubts in this regard should be resolved in favor of

broader, rather than narrower, access and circulation of words and terms in the

public domain. See Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v.

B.E. Windows Corp., 937 F. Supp. 204, “aggressive efforts by the circus to assert

rights to foreclose any use of the term “The Greatest [ ] on Earth, even against non-

competitors, based on its longstanding use of “The Greatest Show on Earth”, ruled

unsuccessful).10 The genericness doctrine prevents trademarks from serving as the

substitutes for patents, and protects the public right to copy any non-patented,

functional characteristic of a competitor's product. 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.

Instead the law grants a monopoly over a phrase only if and to the extent it is

necessary to enable consumers to distinguish one producer's goods from others and

even then only if the grant of such a monopoly will not substantially disadvantage

competitors by preventing them from describing the nature of their goods.

10
The simple fact that Barbara and Richard own a house in the Hamptons would make
their house a Hamptons Location, and they would have a need to describe it as such to the
public as well as location companies.

26
Accordingly, if a term is necessary to describe a product characteristic that a

competitor has a right to copy, a producer may not effectively preempt competition

by claiming that term as its own. When no commonly used alternative effectively

communicates the same functional information, the term that denotes the product is

generic. If we held otherwise, a grant of trademark status could effectively prevent

a competitor from marketing a product with the same characteristic despite its right

to do so. To be a valid trademark, a mark must not only be source-denoting, but it

must also be nonfunctional.

In the underlying action Darrell’s parents, Richard and Barbara have a home

in the Hamptons which they have always displayed under a portfolio tab on

www.dqny.com, as one of their design projects, as well as under a location tab to

show their own Hampton Location, which they offer to location companies. Grigor

admits she has many competitors and that it is fine for them to use Hamptons

Locations to describe their locations in the Hamptons, (A-242) Many of Grigor’s

competitors advertise and list themselves in Google and Yahoo under Hamptons

Locations, ie; www.hollyliproductions.com, advertises and has a link to her web

site in Google under Hamptons Locations, www.jennylandleyproductions.com

advertises in Google as great Hampton Locations which links her web site in which

she advertises all her Hamptons Locations. www.locationmanagement.com has a

web site that lists all his Hamptons Locations under Hampton Locations.

27
www.premierelocations.com advertises in Google as Hamptons Premiere Locations

which links her web site in which she describes her Hamptons Locations as

Hamptons Locations, (E-59). www.shelterislandhideaway.com advertises in

Google to promote photo shoots as Hamptons Locations. The list is endless and

growing since Hamptons Locations is a common functional generic term and

almost all location and production companies, which are direct competitors with

Grigor and have locations in the Hamptons, find it is necessary to describe their

locations as Hampton(s) locations. Real estate companies in the Hamptons, which

sell properties, or offer their properties as rentals, locations for entertainment and

events, describe their properties as Hampton Locations, ie.

www.hamptonsinternational.com advertises on Google as having Hamptons

Locations. Even though non competitive with Grigor, well known restaurants such

as Bobby Van’s, gourmet food stores, such as Citarelli, well known eyeglass

stores, such as Solstice, and many others alike in the Hamptons use the common

term Hamptons Locations to describe their products, services and or locations. On

Google and Yahoo, as of July 6, 2009, there are over 86,000,000 that used both the

words hamptons and locations and over 129,000 that used the exact term hamptons

locations to describe their product or service. The term Hamptons Locations is

common, functional and generic and cannot possibly be a source identifier and is a

necessary term for the public to use and cannot be afforded exclusivity.

28
 As a matter of law, Hamptons Locations is generic.

POINT II

BOTH THE JURY AND THE DISTRICT COURT ERRED IN DETERMINING

THAT GRIGOR’S MARK ACQUIRED SECONDARY MEANING AS OF JULY
8, 1999

Even if for some reason this Court determines that Grigor’s mark is

descriptive, Grigor failed to put forth sufficient proof at trial that her mark had

acquired secondary meaning as of July 8, 1999. See 15 U.S.C. § 1052(f).

Secondary meaning attaches if "the consuming public primarily associates the

mark with a particular source." Bristol-Myers Squibb Co. v. McNeil P.P.C., Inc.,

973 F.2d 1033, 1040 (citing Centaur Communications, Ltd. v. A/S/M

Communications, Inc., 830 F.2d 1217, 1221). Six factors have been identified to

help establish secondary meaning. They are advertising expenditures; consumer

studies linking the mark to a source; unsolicited media coverage of the product;

sales success; attempts to plagiarize the mark; and the length and exclusivity of the

mark’s use. See, Centaur Communications, Ltd., Supra. While each factor does

not have to be proved and no single factor is determinative (id.), plaintiff must

satisfy a "heavy" burden because proof of secondary meaning entails vigorous

evidentiary requirements. 20th Century Wear Inc., v. Sanmark Stardust Inc., 747

F.2d 81, 90, 470 U.S. 1052, quoting Ralston Purina Co. v. Thomas J. Lipton. Inc.,

341 F. Supp. 129,134.

29
 A mark acquires secondary meaning when its primary significance in the minds

of the consuming public is the producer rather than the product ie, the public must

associate the product with a particular source. Centaur Communications, supra,

830 F.2d at 1221. Although we have suggested a number of factors that may be

weighed in determining the existence of secondary meaning, see Centaur

Communications, supra, The crucial question is whether the public is moved to

buy a product because of its source. Id. “To establish secondary meaning, a

producer must show that, in the minds of the public, the primary significance of a

product feature or term is to identify the source of the product rather than the

product itself. “Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844;

LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 78 ; RJR Foods, Inc. v. White Rock

Corp., 603 F.2d 1058, 1059. To be a valid trademark, a mark must not only be

source-denoting, but it must also be nonfunctional. Ideal Toy Corp. v. Plawner

Toy Mfg. Corp., 685 F.2d 78, 84 (noting that trademark law must “avoid affording

undeserved patent protection”); Anti-Monopoly, Inc. v. General Mills Fun Group,

611 F.2d 296, 300; CES Publishing Corp., 531 F.2d at 13 (noting that trademark

law must not “grant the owner of the mark a monopoly”).This fundamental

principle of trademark law that a trademark is not a patent and does not grant a

monopoly of production gives rise to a corollary maxim that where the nature of a

new product can be expressed in only one way, a manufacturer may not trademark

30
the words necessary to describe the product. Holzapfel's Compositions Co. v.

Rahtjen's Am. Composition Co., 183 U.S. 1, 9, 22 S.Ct. 6, 8-9, 46 L.Ed. 49

refusing to grant protection to “the only name by which it was possible to

describe” the product); W.T. Rogers Co. v. Keene, 778 F.2d 334, 339 (noting that

trademark protection should be denied when a manufacturer tries to monopolize

the few words that can be used to describe the product); Ralph H. Folsom & Larry

L. Teply, Trademarked Generic Words, 89 YALE L.J. 1323, 1328-29 “When no

name other than the trademarked word is available to the public or competitors to

indicate the type or class of service”

The doctrine of secondary meaning requires not only that the mark have a

subordinate meaning, but also that the primary significance of the mark in the

minds of the consumers is the identification of the producer, not a designation of

the product. See, Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 59 S. Ct. 109,

83 L.Ed. 73 ; Spang v. Watson, 92 U.S.App.D.C. 266, 205 F.2d 703, 346 U.S. 938,

74 S.Ct. 378, 98 L.Ed. 426 ; Blisscraft of Hollywood v. United Plastic Co., 189

F.Supp. 333 , 294 F.2d 694 .

The usual standard of review of a district court's finding on this issue of

secondary meaning is whether it is clearly erroneous. See McGregor-Doniger, Inc.

v. Drizzle, Inc., 599 F.2d 1126, 1133.

31
 Grigor put forth insufficient evidence to prove that Hamptons Locations had

acquired secondary meaning as July 8, of 1999. Grigor has presented no evidence

of having commissioned customer studies, conducted interviews or gathered focus

groups to test name recognition and consumer association linking the Hamptons

Locations marks to it. Grigor presented no evidence of advertising expenditures.

Grigor’s alleged sales were not sufficient to support a finding of secondary

meaning. Sunrise Home Juices, Inc. v. Coca-Cola Co., 220 F. Supp. 558, 559, 561

“comparatively limited sales” of $30,000 in 1952 to $600,000 in 1963 insufficient

to show secondary meaning); Roselux Chemical Co. v. Parsons Ammonia Co., 299

F.2d 855, 862, ($3 million in sales in one year insufficient to show secondary

meaning). Grigor does not come close to meeting the substantial level of sales

volume required for a showing of secondary meaning. Furthermore, the fact is that

Grigor’s declared sales of $294,000 for 1999 on her application to the USPTO for

distinctiveness, (E-30), are now questionable since at trial Grigor produced and

testified to an almost identical uncertified plain piece of paper which now showed

her sales in 1999 to be $129,246.30, (A-253,257)11. The mere showing of

conflicting, unsupported, unsubstantiated and meager sales figures is certainly

insufficient evidence to support a finding of secondary meaning and even though

11
All other figures on Grigor’s sales sheet that she had at trial EXCEPT the $129,246.30 in sales
for 1999 were all the same as the one she had declared to the USPTO.

32
the district court can not weigh the credibility of the witnesses clearly this

unreliable evidence of minimal sales does not prove secondary meaning.

Judge Hurley wrongly decided Darrell’s 50B motion when he determined

that Grigor’s production of only four small newspaper articles was enough to

support a finding that the mark Hamptons Locations gained secondary meaning

prior to July 8, 1999, (E-36, 53, 54, & 55,). It was impossible to determine from

the sparse submissions and unsupported evidence whether any news coverage, in

fact, had been unsolicited. But it is without doubt that these publications do not

address the relevant group of consumers. In fact, the sophisticated market of

advertisers and or production companies that could do business with Grigor are

companies that are foreign to the Hamptons and would usually not have access to

local publications and therefore, there are no relevant group of consumers that

these articles would address.

E-54, a small blurb from the New York Post dated April 14, 1994, states

“The new biz is called Hamptons Location”. This article is certainly not substantial

in showing of secondary meaning since Grigor’s application to the USPTO for

distinctiveness declares that the first use of her mark was December 31, 1994 and

this article predates her first use so it must be disregarded. Furthermore, Grigor’s

mark was not even correctly spelled in this article. E-55 consists of one article

33
dated July 22, 1994 in Dan’s Papers, a small local Hamptons’ newspaper with a

circulation in 1994 of about 84,000. In that article, the mark Hamptons Locations

was not even mentioned and furthermore, this article predates the first use of her

mark and also must be disregarded. However, in this article, the generic name

“Hamptons” was referred to on numerous occasions; “The “Hamptons”! A magical

name that conjures up scenes of lavish living in grand manors, beautiful beaches

and carefully cultured countryside” The article refers to Grigor, herself, as a

resident of the “Hamptons” The third article presented at trial is (E-53), an article

dated April 3, 1997 which was published in another Hamptons small local

newspaper The East Hampton Star, which also had a circulation only in East

Hampton. In this article Grigor states she “works out of a cramped office in what

used to be the den of her house…and she doesn’t yet have a computer” This along

with the trial testimony that she first started to learn how to use a computer in

1998-1999 rebuts her statement; “And I get tons of e-mails…from people that

read the articles” Grigor’s own admissions state that the purpose of this article was

for homeowners to call her to list their house. Since homeowners are not

consumers that want to use her services, the article has no relevance to

distinctiveness or acquiring secondary meaning. The next article dated June 24,

1998, (E-36), is a small blurb from a local weekend movie guide and again has no

relevance in offering proof of secondary meaning. These four little articles are the

34
only media coverage put forth by Grigor in a desperate attempt to meet the ‘heavy

burden’ of proof for secondary meaning. Clearly this evidence is insufficient and

does not meet the ‘preponderance of evidence’ required that has been established

by the courts to determine that the mark Hamptons Locations has acquired

secondary meaning. Grigor produced no evidence to support any advertising

expenditures. She did not produce any consumer surveys and failed to demonstrate

that her mark had acquired secondary meaning which would identify her as a

source indicator. See Ives Laboratories, Inc. v. Darby Drug Co., 455 F.Supp. 939

(E.D.N.Y.), aff'd, 601 F.2d 631.

Grigor alleges that her mark has been used in commerce since December 31,

1994, (E-2), however, there is no magical time regarding length of use and

exclusivity, which renders a mark sufficiently exclusive. The Second Circuit has

advised that whatever the length of use by one party, use of part or all of a mark by

third parties weakens the mark’s overall strength. See Streetwise Maps, Inc. v.

Vandam. Inc., 159 F.3d 739, 744, Ideal World Mktg., Inc., 15 F.Supp.2d at 244,

aff'd, 182 F.3d 900. The evidence before the Court and as enumerated in Darrell’s

Point I, indicates that the generic and geographically descriptive term Hampton

Locations is used by many other competitors, (E-59), (A-213). These competitors

use this same necessary and functional term to describe their Hamptons locations

in order to compete in the same marketplace for the same services, specifically the

35
Hamptons and specifically for Hamptons locations. Therefore, Grigor’s use has

been anything but exclusive. Numerous examples were brought to the Court’s

attention of third party usage of the term Hamptons Locations in scouting and

production markets, as well as, other markets. Grigor has failed to prove

exclusivity, (E-59), (A- 242).

Grigor’s husband, offers testimony about how well known his wife is and

says “…Literally every time we go out for dinner, every restaurant owner I think

on the east end knows Nancy that we have been to”, (A-265) This alone shows

how no reasonable trier of fact, should not have relied on such a foolish statement

to determine any finding of Hamptons Locations being a source identifier or in

determining ‘good will’

The scant production of evidence presented by Grigor, and addressed by

Judge Hurley in his decision of Darrell’s 50B motion, clearly shows that both the

Jury and the District Court erred since it is evident that Grigor has not met her

‘heavy burden’ of proof or that any reasonable person could determine, that the

‘consuming public’ associates the Hamptons Locations mark with a single source

or that Grigor’s mark had acquired secondary meaning as of July 8, 1999.

Hamptons Locations is comprised of ordinary words and is coexisting with

third party usage, and therefore it cannot be said to be associated by prospective

36
purchasers with a particular source. See Plus Products v. Plus Discount Foods,

Inc., 722 F.2d 999, 1006 Third party usage also undermines Plaintiff's claim of

secondary meaning. See, e.g., Allied Maintenance Corp. v. Allied Mechanical, Inc.,

42 N.Y.2d 538, 399 N.Y.S.2d 628, 369 N.E.2d 1162, 198 U.S.P.Q. 418, 422

(noting numerous other phone directory listings in denying exclusivity); Exquisite

Form Industries, Inc. v. Exquisite Fabrics of London, 378 F. Supp. 403, 410.

Trademark law is very complex. A claim that is based on mere inference,

where for 8 years Grigor has never put forth any documentary evidence, (including

at trial), but instead has kept this action going on mere baseless accusations is

questionable at best. The question surrounding secondary meaning should have

been decided by the court on prior summary proceedings or at least on Darrell’s

50A motion. Secondary meaning with such insufficient evidence is contrary to any

finding of the Second Circuit. The Jury finding of secondary meaning could have

only been the result of jury confusion or sheer surmise and conjecture. Therefore,

this Court must hold that plaintiff’s mark did not acquired secondary meaning as of

July 8, 1999. See, e.g., Harlequin Enterprises, Ltd. v. Gulf & Western Corp., 644

F.2d 946; RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058; P.F. Cosmetique,

S.A. v. Minnetonka, Inc., 605 F. Supp. 662.

37
 POINT III

THE JURY ERRED IN FINDING THAT DARRELL VIOLATED 1125(D) OF

THE LANHAM ACT AND THE DISTRICT COURT ERRED IN NOT
VACATING THE VERDICT

The jury erroneously and without any evidence found Darrell in violation of

U.S.C. 15 ¶1125(d) of the Lanham Act and awarded Plaintiff $1,000.00 in

statutory damages. This Jury verdict was not supported by any facts, testimony or

evidence and must have been based on pure conjecture and surmise. The District

Court erred when it failed to grant Darrell’s 50 B motion. Darrell was not the

licensee and there was no proof of any bad faith of Darrell’s.

A. No Evidence Was Presented That Proved That Darrell Was The Authorized
Licensee Of The Domain Address www.hamptonlocations.com

According to ¶1125(d) a person shall only be liable for using a domain

address if that person is the domain name registrant or that registrant’s authorized

licensee. On September 30, 2005 Judge Hurley, granted in part the Rubens’ motion

for summary judgment and dismissed Grigor’s Count 2 for injunctive relief as

moot and dismissed all claims against Barbara and Richard and the Court found

that Plaintiffs presented no evidence that Darrell trafficked in or registered the

domain name; thus the only issue to present to the jury was whether Darrell used

the domain name. On Grigor’s Motion for Reconsideration the Court affirmed

Barbara’s dismissal and reversed Richard’s. The Court at trial determined that the

38
registrant owner of the domain name www.hamptonslocations.com was DSNY.

The Jury was charged that Darrell could not be found to have violated the ACPA

unless Plaintiffs had proven that Darrell “was an authorized licensee of DSNY”.

The Court held that Grigor had the burden to prove that Darrell or Richard were

the authorized licensee of the alleged infringing domain address, however there

was no evidence presented that Darrell was the authorized licensee. Darrell

testified that he did not purchase the domain address, he did not register it, he was

not an officer, or on the Board of Directors or an agent of DSNY and there was no

testimony or evidence presented to counter Darrell’s testimony. In fact, to the

contrary, Grigor only testified at trial (6 ½ years after she commenced litigation

against the Rubens), “I don’t know who obtained the domain name. I don’t know.

It was DSNY,” (A- 258) and her husband testified that he believed that Darrell was

not the owner of the alleged infringing web address, (A-260). Grigor failed to

prove who was the authorized licensee of DSNY and therefore, the Jury finding

against Darrell was pure conjecture and surmise and Judge Hurley erred in not

vacating the judgment.

The District Court erred in its decision on the 50B Motion when they stated

on page 16 that “Darrell was clearly involved in the development, launching and

operation of the web site”. However, the District Court was mistaken since there

was never any web site under the alleged infringing domain name. This Court, as a

39
matter of law, should reverse the Jury’s finding that Darrell Rubens violated §

1125(d) of the Lanham Act.

B. No Evidence Was Presented That Darrell Acted In Bad Faith When He

Replied To The Cease And Desist Letter

Grigor by her own admissions at trial, and the admissions of Roomian, (A-

238), prove that neither Grigor or Roomain made a reasonable inquiry12 into

DSNY, the registered owner of the domain name www.hamptonlocations.com.

Grigor admits that “sometime around February 2000” she knew that the registered

owner of the domain name was DSNY and that is all. (A-258), With this lack of

knowledge and lack of reasonable inquiry, it was Grigor who acted in bad faith by

directing her attorney to send a Cease and Desist letter to Darrell and it was her

attorney Roomian who acted in bad faith when he failed to contact DSNY, or

investigate Grigor’s allegations of infringement and by Roomian’s own admissions

he did not even go to the address www.hamptonlocations.com to see what it was,

or if in fact it infringed and who was the person he should contact, (A-267).

Darrell in good faith, consulted three attorneys, Jimmy Wang, Eddie Wang

and Chris Spuges, good friends and his business partners, when he received the

Cease and Desist letter from Roomian and they advised Darrell in drafting the

12
Ms. Grigor went to Network Solutions WHO IS and found that DSNY was the registered
owner of the domain name www.hamptonlocations.com and even though she saw all necessary
contact information she failed to even try to contact DSNY.

40
immediate letter in response, (A-217), Cuisinarts, Inc. v. Robot-Coupe Int. Corp.,

580 F.Supp. 634, 638. (“[I]f a client seeks qualified counsel's advice in a timely

manner, … receives counsel's opinion and then acts upon it, surely the Chancellor

must pause before branding the client as a willful, deliberate, fraudulent

commercial thief ....”) TakeCare Corp. v. Takecare of Oklahoma, Inc., 889 F.2d

955, 957. Darrell replied to Roomain’s letter and said among other pertinent things

that he was not the owner of the domain name, Roomian still did not make any

reasonable inquiry and in bad faith he did not respond back to Darrell’s letter or

contact him as per Darrell’s request.

Judge Chin in Dessert Beauty, Inc. v. Fox 568 F.Supp.2d 416, S.D.N.Y.,

2008, said the “failure to completely abandon the use after receiving a cease and

desist letter is insufficient to support an allegation of bad faith” as a matter of law.

Something Old, 1999 WL 1125063, at *7; see also Wonder Labs, Inc. v. Procter &

Gamble Co., 728 F. Supp. 1058, 1064, (failure to abort advertising campaign upon

receipt of cease and desist letter) “is absolutely no proof that the defendant acted in

bad faith to capitalize on the plaintiff's trademark”). Notice of Fox's trademark

rights-either by her trademark registration or the cease and desist letters. “Does not

preclude use of the words contained in registered mark in their …descriptive

sense,” Wonder Labs, supra, especially when it is believed that its use was

descriptive, see Something Old, supra. In the underlying action within 30 days

41
after receiving the Cease and Desist letter, the link of the alleged infringing domain

address was removed from the Design Quest web site and sat dormant till the URL

expired July 8, 2001.Even though the Cease and Desist letter was complied with,

Grigor sued Darrell and Richard in Southampton Justice Court and then Grigor

compounded her frivolous, vexatious and malicious abuse and sued Darrell,

Richard and Barbara in August, 2001 in District Court even though Grigor owned

the domain name in dispute.

U.S.C. 15 ¶1125(d)(ii) states that bad faith intent described under

subparagraph (A) shall not be found in any case in which the court determines that

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

domain name was a fair use or otherwise lawful. There was no evidence that

Darrell’s alleged ‘use’ was with intent of benefiting commercially from the mark.

There was no evidence that proved Darrell’s alleged ‘use’ of the mark was ‘use’ as

defined by the Lanham Act. Courts have consistently held that bad faith needs to

proven by the preponderance of the evidence.

Judge Hurley, in Lemme v. NBC., Inc. 472 F.Supp.2d 433 E.D.N.Y, decided

on February 01, 2007, to grant summary judgment to defendant (American Dreams

vs. American Dream) just a few days after Darrell’s Jury verdict in the underlying

action. In Lemme v. N.B.C., Judge Hurley notes; “prior knowledge of Plaintiff's

mark, without more, does not create an inference of bad faith. See Playtex Prods.,

42
Inc., 390 F.3d at 166; cf. Lang, 949 F.2d at 584 (“[A]doption of a trademark with

actual knowledge of another's prior registration of a very similar mark may be

consistent with good faith.”). Judge Hurley went on to state, “In any event, the

undisputable evidence reveals that NBC … began using its title in May 2002, prior

to Plaintiff's filing for registration in July 2002, and prior to actual registration,

which occurred in 2003. Thus, NBC could not have had notice of Plaintiff's

registration, or the filing, prior to its use of the title “American Dreams” because

its use preceded both dates. Further, there is no evidence to even suggest that NBC

was aware of Plaintiff's show at all prior to launching its own program. In fact,

NBC contends otherwise”. Judge Hurley further stated; “Good faith can be found if

a defendant selected a mark which reflects the product's characteristics, requested a

trademark search or relied on the advice of counsel.” See www. Pharmaceutical

Co., 984 F.2d at 575.

In the underlying action, the facts are very similar, the action involved the

difference of an ‘s’ in the mark, but more importantly it involved an alleged

infringing domain address registered on July 8, 1999, prior to Plaintiff's filing for

registration in March 3, 2000 and prior to actual registration, on August 20, 2002

Grigor’s mark was denied registration on three different occasions from 2001 until

the registration August 20, 2002, over 3 years after registration of the alleged

infringing domain and over 2 years after the removal of the link. As with NBC,

43
there is no evidence to show that Darrell was aware of Grigor’s mark, in fact

Darrell contended otherwise and testified that he innocently linked this domain

address because it was indicative of his parents own Hampton location which they

offered since 1984 to location companies. At trial no evidence was offered to

dispute Darrell’s testimony that he acted in good faith.

According to the statute, determining whether a person has a bad faith intent

described under §1125 (d) subparagraph (A), a court should have considered the

following;

a) The Court in its September 30, 2005 Decision (A-51) already determined

there was no evidence that Darrell “trafficked in”.

b). There was no evidence presented by Grigor that Darrell ever offered to

sell the domain name to the mark owner. The evidence demonstrated that

Grigor’s husband, (Griffith) would not accept the alleged infringing web

address, but instead demanded money. After Griffith claimed not to remember

what he had said to Darrell in that conversation, upon stipulation of the parties,

the Court allowed that part of the conversation between Darrell and Griffith to

be read into evidence, (A-230), Griffith stated;

‘A year ago, I said give me the name, and he said –

` (referring to Richard Rubens) - he'd give me the name,
but he won't give me the money”.

44
 c).There was no evidence presented that Darrell intended to divert

consumers from the mark owner's online location to a site accessible under the

domain name that could harm the goodwill represented by the mark, for

commercial gain or with the intent to tarnish or disparage the mark, by creating

a likelihood of confusion as to the source, sponsorship, affiliation, or

endorsement of the site. (A-286-291)

d).There was no evidence presented that there was any false contact

information of the domain name’s registrant, DSNY and there was indication

that Darrell had registered any other names with a pattern of such conduct.

However, Plaintiff by her own admissions at trial, and the admissions of

Roomian, Grigor’s trademark attorney, (A-267), prove that neither Grigor or

Roomain made a reasonable inquiry13 into DSNY. Grigor admits that “sometime

around February 2000” she knew that the registered owner of the domain name

was DSNY. With no reasonable inquiry, it was Grigor who acted in bad faith

when she directed her attorney to send a Cease and Desist letter to Darrell and it

was her attorney. Roomian who acted in bad faith when he failed to contact

DSNY, (A-267), or investigate Grigor’s allegations of infringement and by

Roomian’s own admissions he did not even go to the address

13
. Grigor went to Network Solutions WHO IS and found that DSNY was the registered owner of
the domain name www.hamptonlocations.com and even though she saw all necessary contact
information she failed to even try to contact DSNY.

45
www.hamptonlocations.com to see what it was, if in fact it infringed and who

was the person he should contact. When Darrell replied immediately to

Roomian’s letter, (E-49), and said among other pertinent things that he was not

the owner of the domain name, Roomian still did not make any reasonable

inquiry and in bad faith he did not reply back. Therefore, it is unreasonable to

believe that Darrell acted in bad faith.

e).There was no evidence presented nor was any claim made that Darrell

ever caused the registration of other alleged infringing domain names.

f).There was no evidence presented that Darrell‘s alleged ‘use’ of the web

address www.hamptonlocation.com was not “fair use” and no evidence was

presented that such alleged ‘use’ was not an ‘innocent’ and ‘lawful’ belief that

this common descriptive and generic term described his parent’s home, which

since 1984, (10 years before Grigor became a location company), has always

been made available to scouting companies as a Hampton location.

(g). It is undisputed that the domain address www.hamptonlocations.com

was registered by DSNY on July 8, 1999 which was prior to the enactment of

the Anticybersquatting Section 1125(d) of the Lanham Act and almost one year

prior to Grigor’s application to the USPTO for registration. It is undisputed that

Grigor first submitted an application to the USPTO for registration of her mark

on March 7, 2000 and her mark was refused registration until August 20, 2002.

46
 Therefore, it would be impossible for anyone to know that Grigor could have a

mark even if they conducted a trademark search.

The United States Supreme Court held in KP Permanent Make-Up Inc v.

Lasting Impression, Inc. 543 U.S. 111 (2004), that fair use and good faith is when

a mark is used to describe the goods or services of such a party, or their

geographical origin. Justice Souter stated; “Congress would not have wanted to

give a defendant a useless defense; that would be like giving the defendant a gun

only after the plaintiff has already hoarded all the ammunition for it”. Therefore, in

the underlying action any reasonable person would conclude that any registration

or use had to be “innocent” and “fair use” and should have never been the subject

of an infringement suit.

h).There was no evidence presented nor was any claim ever made by

Grigor that Darrell had prior knowledge of the name Hamptons Locations before

he innocently sent Grigor an E-mail, in good faith, stating “We rent our house for

photo, film and commercial shoots. How can we list with you? Please look at our

house at www.hamptonlocations.com.” At trial, Griffith confirmed that the intent

of Darrell’s E-mail was to try and do business with his wife, (A-282). Darrell also

testified that was his intent and that he had no knowledge of Grigor or Hamptons

Locations and explained how he innocently found companies that all used

Hamptons Locations to describe their location services and how he sent Grigor an

47
e-mail by just clicking on her ‘contact us’ link, (A-212), Darrell testified that he

never met Grigor prior to Southampton Justice Court. Richard testified that he had

never seen any business card14 of Grigor and that the first time he ever met her was

on June 13, 2000 when she was at his home for the photo shoot she had booked

directly with him the night before. The only logical conclusion is that Darrell was

acting in good faith by offering his parent’s Hampton home to Grigor so she could

list it in her inventory and make money by offering it to her clients. On February 5,

2005 Grigor, submitted an affidavit and a card file folder, marked Exhibit 3, in

opposition to Rubens’ Motion for Summary Judgment. Grigor declared this card

file folder dated May 22, 2000 was prepared immediately after taking photos at the

Rubens’ house. At trial she introduced this folder and again testified to the May 22,

2000 date, (E-56), (A-276). This date is almost one year after the July 8, 1999

registration by DSNY of the alleged infringing name and one month after she

received the e-mail from Darrell. Grigor’s testimony alone proves that Darrell had

no knowledge of Grigor’s mark, therefore no reasonable interpretation of the facts

could conclude that Darrell acted in Bad Faith.

i).There was no evidence presented by Grigor that Darrell acted in “Bad

Faith”, with the specific intent to “Get a Free Ride” in the marketplace based on

Grigor’s efforts.

14
Interesting enough there was never a business card produced in discovery through document
requests and the only thing that was produced at trial was a photo copy and not an actual card.

48
 j). There was no evidence presented that Darrell proffered from or had any

intentions to proffer from the alleged infringing domain address.

k).There was no evidence that Darrell caused purchasers to be confused or

deceived as to the origin of the subject services. In fact, the Court determined

that Grigor did not prove any damages as to business lost, or established any

profits gained by Darrell, there was no evidence of customers or that potential

customers confused or deceived, (A-285) or was there any evidence to show that

there was a loss of good will, (A-291). Based on this determination, the Court

not only erred in not summarily dismissing all claims but it erred when allowing

Grigor to elect statutory damages under 1125(d) without the finding of any

damages whatsoever, (A-284). The Lanham Act was not created to give a

Plaintiff a sword to choose statutory damages when there are damages at all

Darrell believed he had a lawful right to this functional term and to for the

Court to determine otherwise is erroneous.

l). Judge Hurley ruled on September 30, 2005 on Summary Judgment, and

stated such again in his decision on Darrell’s 50B Motion, “thus the only issue

presented to the jury was whether Darrell “used” the domain name”. The

Lanham Act defines "use" as "the bona fide use of a mark in the ordinary course

of trade, and not made merely to reserve a right in a mark." 15 U.S.C. ¶1127.

The Second Circuit has held that ‘use’ does not include mere token use.

49
 Emergency One, Inc. v. Am. FireEagle, Ltd., 228 F.3d 531, 536 (4th Cir.2000).

See also, Silverman, at 47-48 holding sporadic licensing of mark for non-

commercial purposes was not a use under the Lanham Act. Furthermore,

advertising alone is not sufficient to constitute use unless it reaches a substantial

portion of the public. Lucent Info. Mgmt., Inc. v. Lucent Tech., Inc., 986 F.Supp.

253, 259, aff'd, 186 F.3d 311. Here there was no advertising and mere token use.

Therefore, there was no ‘use’ of www.hamptonlocations.com and without ‘use’

there is no violation of the Lanham Act.

C. Darrell Had Reasonable Grounds To Believe That Use the Alleged

Infringing Domain Address Was A ‘Fair Use And Lawful’

Bad faith intent under 1125(d) under subparagraph (A) cannot be found in any

case that the person believed and had reasonable grounds to believe that any ‘use’

of the domain name was a “fair use or otherwise lawful”. There was no evidence

presented to counter that Darrell innocently sent Grigor an e-mail to list his

parent’s house with her for location shoots. In fact Grigor’s husband confirms this

when asked (referring to the e-mail), what did you understand it to be? Griffith

replied, “That he was trying to do business with my wife”, (A-282). Grigor

testified that Darrell’s e-mail was not to steal business from her. Even Grigor’s

trademark attorney understood that Darrell’s e-mail was just to offer a house to

scouting agencies. These intentions of Darrell’s were not only clear throughout

summary proceedings in this underlying action but were clear throughout trial and

50
there was no evidence or testimony to support any reason to believe other than

Darrell had a lawful right to link the generic and geographically descriptive

domain address to his parents’ Design Quest web site to simply describe their

home in the Hamptons as a Hampton Locations. Judge Hurley was made aware on

previous motions that there was never a web site www.hamptonlocations.com and

there was no evidence that Darrell ever created one, therefore it was erroneous for

Judge Hurley to deny Darrell’s 50 B Motion by erroneously determining that

Darrell had created such a web site.

POINT IV

THE DISTRICT COURT ERRED WHEN IT FAILED TO DISMISS ALL

CLAIMS AGAINST ALL DEFENDANTS ON SUMMARY JUDGMENT

There is something peculiar when the District Court fails to dismiss all of

Grigor’s frivolous claims against Defendants from the onset. It is transparent when

reviewing the trial transcript of Grigor and Griffith and earlier proceedings and

motions for summary judgment and decisions of Judge Hurley that there has never

been one scintilla of evidence presented by Grigor to substantiate any of the

holdings of the Court. In order not to burden this Court with the full record on

motions to dismiss and summary proceedings, the following is an example of why

the District Court should have dismissed this action and should have never let it go

to trial; Decisions of Judge Hurley on Summary Judgment dated September 30,

51
2005, (A-51.), Motion for Reconsideration by Defendants October 11, 2005, (A-

76), Decision on Motion for Reconsideration May 25, 2006, (A-88). The history of

this case, Appellant’s Brief, Joint Appendix and the trial transcript will show that

Grigor’s claims are baseless and without merit.

POINT V

THE DISTRICT COURT ERRED WHEN IT FAILED TO GRANT A 50A

MOTION AND ALLOWED THIS CASE TO GO TO A JURY

Judge Hurley determined that Grigor did not prove any damages as to

business lost, or established any profits gained by Rubens, (A-284-291), and that

there was no indication that any customers or potential customers were confused or

deceived (A-288) or was there any evidence to even show that there was a loss of

good will, (A-291). Based on these determinations, the Court should have granted

Defendants’ 50A motion and never allowed this action to go to a jury. The District

Court allowing Grigor to choose statutory damages based on its finding of no

damages is improper. Here there was no intent to cause harm, no harm, no

damages and no need for any deterrent. For the District Court to simply allow

plaintiff to choose statutory damages when there are absolutely no damages

violates due process, would permit unjust enrichment, and is unconstitutional, and

would give rise to further frivolous, vexatious and retaliatory trademark

infringement litigations. The fact that there was no evidence to support any of

52
Grigor’s claims shows that the Jury’s verdict was sheer conjecture and surmise.

Unbeknown to the Jury, the finding that Darrell acted in bad faith gave Grigor her

last weapon of retaliation. This weapon was the attorney fee clause of §1125(d) of

the Lanham Act where a finding of bad faith gives rise in ‘exceptional’ cases to a

possible finding of Darrell’s responsibility for Grigor’s attorney’s fees and taxable

costs.. This final retaliation, which appears to be the incentive for these frivolous

claims of Grigor’s has now continued to tie Darrell up with more motion practice

and legal fees in defending against Grigor’s attorney Weiss’ claim of over

$100,00015 in legal fees and taxable costs in what Grigor is now ironically claiming

to be an “exceptional” case.

Therefore, as a matter of law the Jury finding that Darrell violated §1125 (d)

of the Lanham Act and awarded Grigor $1000.00 in statutory damages must be

vacated.

POINT VI

THE DISTRICT COURT ABUSED ITS DISCRETION WHEN IT DISMISSED

BARBARA, RICHARD AND DARRELL RUBENS COUNTERCLAIMS

Appellants, Barbara, Richard and Darrell, while acting Pro Se authored

counterclaims against Plaintiff for Abuse of Process and Extortion. The District

15
Griffith, in hopes that the Court would allow attorney fees for the Justice Court action submitted a bill for $37,000
for allegedly representing his wife in a court that only had a jurisdictional limit of $3,000, however Judge Hurley
would not allow cross examination of Griffith or Grigor to discredit this bill and or his testimony, (A-283)

53
Court abused its discretion when finding that Appellants did not plead with the

necessary particularity to make a prima facie case of abuse of process.

The tort of abuse of process has three essential elements: (1) regularly issued

process compelling the performance or foreclosure of some prescribed act; (2) an

intent to do harm without excuse or justification; and (3) the person using the

process must be seeking some collateral advantage or corresponding detriment to

the plaintiff which is outside the legitimate ends of process.

The Courts have constantly held that a pro se litigant is generally afforded

some degree of flexibility in demonstrating the validity of its claim. See In re

Fanelli, 263 B.R. 50, 58 (Bankr.N.D.N.Y.2001) (citing Boguslavsky v. Kaplan,

159 F.3d 715, 719 (2d Cir.1998)). Moreover, “implicit in the right to self-

representation is an obligation on the part of the court to make reasonable

allowances to protect pro se litigants from inadvertent forfeiture of important rights

because of their lack of legal training.” Id. (citing Traguth v. Zuck, 710 F.2d 90, 95

(2d Cir.1983)). The Second Circuit has held that the Court should accord pro se

litigants deference to satisfy the minimal pleading required to satisfy the strictures.

Pro se litigants are afforded every reasonable opportunity to demonstrate that they

have a valid claim, and, even when a litigant confuses various legal theories, the

courts will scrutinize the claim to determine whether the facts alleged would

54
support a different theory. See Horton v. Trans World Airlines Corp., 169 F.R.D.

11, 16 (E.D.N.Y.1996), (“Pro se litigants are held to a more lenient standard than

professional counsel”). Pleadings of Pro se litigants should be read liberally and

interpreted “to raise the strongest arguments that they suggest”

In this underlying action, the Rubens’ were representing themselves in 2003

when they asserted their counterclaims of Abuse of Process and Extortion and they

should be afforded every reasonable opportunity to demonstrate that they have

valid claims. The Rubens have confused various legal theories and asserted two

counterclaims which should have been combined as one under Abuse of Process.

The claim of extortion, (not yet recognized in New York in a civil action as a tort),

included in Abuse of Process is the unjustified collateral advantage which Grigor,

through her husband, Griffith as attorney in the Justice Court action and co-counsel

in the underlying action, was seeking as a detriment, which is outside of the

legitimate ends of process. Since 2003 Grigor has continued to abuse process and

the legal system.

Richard, Barbara and Darrell maintain that their abuse of process claim is not

based on the mere filing of a summons and complaint, but rather is grounded on

improper and unlawful use of judicial process in various courts to not only harass

and threaten the Rubens family but to also harass and threaten their witnesses and

to wrongfully demand monies.

55
 Process is abused when it is used to harass, and prosecution of an action may be

actionable as an abuse of process claim when the plaintiff's objective is to achieve

some collateral objective unrelated to the administration of justice.

Grigor has abused process by instituting an action against Darrell and Richard in

Justice Court that was totally without merit and was instituted so that the objective

of this action would be to harass, threaten and achieve a collateral objective by

wrongfully demanding money through theories that have no legal basis. This

action was dropped by Grigor after 2 years, on the first day of trial, after malicious

and abusive and threatening phone calls were made to Richard and Darrell Rubens,

These calls threatened, among other things, that Griffith, (Grigor’s attorney and

husband) would see that Richard would not get a three day location shoot which

paid approximately $3,000.00 per day and that Richard would lose business in

offering his home to location companies and that Griffith would tie Richard up in

expensive, extensive litigation, (E-51).

Grigor has abused process by instituting the underlying action against Barbara

Richard and Darrell in District Court, since this action was totally without merit or

a legal basis. The object of the prosecution of this action was to continue to cause

injury by harassing and threatening the Rubens’ with a series of baseless law suits

against the Rubens’ and their witness Mr. Davis. Grigor did such in an attempt to

achieve a collateral objective by wrongfully demanded monies.

56
 Griffith’s threats of false legal claims and demands for money16 were recorded

by Richard when Griffith called and threatened Darrell the night before Grigor

withdrew all her claims in Justice Court (with prejudice). Griffith made these

threats to obtain collateral advantage and unjust enrichment, (E-5). Griffith

admitted on this recording that Richard had offered him the domain address

www.hamptonlocations.com, but that Richard “a year ago ”refused to pay Griffith

the money he had demanded, (which was before Grigor started this baseless action

in District Court). Grigor and Griffith have continually abused process by lying to

the Court and holding Richard, in the action by falsely stating that Richard wanted

money for the alleged infringing domain address.

On May 10, 2002, in Justice Court, Griffith acting as attorney for his wife,

threatened Rubens’ witness, Lee Davis in hopes of intimidating him and

preventing him from testifying on behalf of the Rubens’ and to also cause Richard

and Barbara to loose business. Mr. Davis is a competitor of Grigor who is a film

producer and location scout who offers the Rubens’ house for locations shoots,

thereby, Mr. Davis causing Rubens’ financial loss, (A-99).

On May 15, 2002, a few days after Mr. Davis appeared to be a witness for

Rubens in Justice Court, Grigor abused process, by wrongfully issuing a subpoena

to Mr. Davis, on a non party, in order to take his deposition in the underlying

16
Even Judge Hurley deemed the tape recording as threatening and determined that it was the
basis for defendants’ extortion counterclaim .(A-236)

57
action. The purpose of this subpoena was solely to intimidate Mr. Davis and use

abusive tactics to harass him in hopes to quash his future testimony on behalf of

the Rubens and in hopes that Davis would now avoid Richard and thereby, Richard

would loose location shoots and in turn suffer financial losses. This subpoena was

quashed by Mr. Davis’ attorney. See letter of Michael Ronemus to Judge Hurley

dated April 6, 2005, (A-101).

On June 1, 2004 Grigor abused process by issuing a subpoena to Darrell’s boss

Jeffrey Winick, a non party with no involvement in this underlying action, in order

to harass him.. The transcript of this deposition was given to the District Court to

show how Grigor harassed Winick and why the deposition was improper, (A-101).

Grigor abused process by having the Court compel Darrell to have his

deposition taken in the District Courthouse on June 28, 2004 and then her attorney,

Ms. Weiss did not appear. This appeared to be done to cause Darrell to miss work

and cause anguish and loss of income. The Court sanctioned Grigor in not allowing

any discovery from Darrell, (A-94).

On March 22, 2005 Griffith, abused process by suing Rubens’ witness, Mr.

Davis for defamation in Easthampton Justice Court based solely on Davis’

February 25, 2005 affidavit made in support of Rubens’ Motion for Summary

Judgment in the District Court. The affidavit stated that Griffith threatened him

financial harm if he would testify for the Rubens’. Griffith sued Davis, knowing, as

58
an attorney, that affidavits in judicial proceedings are given ‘absolute privilege”.

This issuing of process was done maliciously to harass Davis and cause him

expense of hiring legal representation in order for him to fend off Griffith’s

abusive tactics. Griffith was attempting to quash Davis’ testimony as a witness for

the Rubens and to punish Davis for the objection that Davis previously made to the

USPTO on the registration of Griffith’s wife’s mark.17 See letter of Michael

Ronemus to Judge Hurley dated March 23, 2005, (A-96) and Motion dated March

28, 2005, (A-113).18 This action in Easthampton Justice Court was summarily

dismissed.

On May 13, 2006 Griffith, after having his defamation suit dismissed in

Easthampton Justice Court, abused process again by suing Richard Barbara and

their witness, Lee Davis in The Supreme Court of New York, County of Suffolk

for the same affidavit of Mr. Davis. This issuing of process was to cause additional

injury by maliciously harassing and threatening the Rubens for collateral

advantage and to harass Mr. Davis by using abusive methods and to continue to try

and quash Mr. Davis’ testimony. See letter of Michael Ronemus to Judge Hurley

dated May 15,2006, (A-112). This action was also summarily dismissed.19

17
Davis’ objection was made in accordance with the rules of the USPTO.
18
Judge Hurley did not respond to the letters or Motion of Mr. Ronemus.
19
Judge Hurley did not respond to the Motion of Mr. Ronemus.

59
 For the aforementioned reasons, the documented evidence proves that Grigor

and her husband/agent/attorney, Michael Griffith caused this abuse of process.

Therefore, Appellants’ counterclaims have an excellent likelihood of success on

the merits and should be reinstated.

CONCLUSION

WHEREFORE, Appellants, Barbara, Richard and Darrell Rubens

respectfully request this Court to reinstate their counterclaims. Appellant Darrell,

respectfully requests this Court to reverse the decision of the District Court that

classified Appellee’s 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 Grigor’s mark has not acquired

secondary meaning as of July 8, 1999 and upon such a determination order the

cancellation of the registration of such mark. It is further respectfully requested

that the one jury verdict that determined that Darrell violated §1125(d) of the

Lanham Act and awarded Appellee a statutory award of $1000.00 be reversed and

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 CERTIFICATE OF COMPLIANCE

This brief complies with the type-volume limitation of Fed. R. App. P. 32 (a)

(7) (B) because;

This brief contains 13,833 words, excluding the parts of the brief exempted

by Fed. R. App. P. 32(a) (7) (B) (iii).

This brief complies with the typeface requirements of Fed. R. App. P 32(a)

(5) and the type style requirements of Fed. R. App. P32 (a) (6) because:

This brief has been prepared in a proportionally spaced type space using

Microsoft Word Office XP Processing Program using 14 point Times New Roman.

Dated: August 5, 2009

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