World Trade Centers Association, Inc. v. The Port Authority of New York and New Jersey
Plaintiff: World Trade Centers Association, Inc.
Defendant: The Port Authority of New York and New Jersey
Case Number: 1:2015cv07411
Filed: September 18, 2015
Court: US District Court for the Southern District of New York
Office: Foley Square Office
County: New York
Presiding Judge: Laura Taylor Swain
Nature of Suit: Trademark
Cause of Action: 15 U.S.C. ยง 44
Jury Demanded By: None
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Date Filed Document Text
May 23, 2019 Opinion or Order Filing 254 MEMORANDUM AND ORDER: re: 230 MOTION for Reconsideration re; 222 Memorandum & Opinion, filed by The Port Authority of New York and New Jersey, 228 MOTION for Reconsideration re; 222 Memorandum & Opinion, filed by World Trade Centers As sociation, Inc. For the foregoing reasons, the Court denies WTCA's motion for reconsideration and grants the Port Authority's motion. The Court's grant of summary judgment in WTCA's favor dismissing the aspect of the Port Authorit ys Fourth Counterclaim that seeks to cancel the federal service mark as abandoned through uncontrolled licensing is vacated and that claim is reinstated. This case remains referred to Magistrate Judge Lehrburger for general pre-trial management. This Memorandum Opinion and Order resolves Docket Entry Nos. 228 and 230. SO ORDERED. (Signed by Judge Laura Taylor Swain on 5/23/2019) (ama)
December 18, 2018 Opinion or Order Filing 222 MEMORANDUM OPINION AND ORDER: re: 162 CROSS MOTION for Summary Judgment and Opposition to Motion for Partial Summary Judgment filed by The Port Authority of New York and New Jersey, 146 MOTION for Partial Summary Judgment filed by World Trade Ce nters Association, Inc. For the foregoing reasons, the Court partially grants Defendant's motion for summary judgment. Plaintiff's complaint is dismissed in its entirety. Defendant is granted summary judgment on its counterclaims for non-in fringement (1st Counterclaim) and non-breach of the licensing agreements (2nd Counterclaim), and is granted summary judgment on its 3rd Counterclaim with respect to its right to use the WORLD TRADE CENTER or WTC trademarks affixed to goods in connect ion with the NYWTC without interference by Plaintiff. The Court denies Defendant's motion for summary judgment with respect to its counterclaims for cancelation of Plaintiff's federal service mark registration (4th Counterclaim); injunction against Plaintiff's pending intent to use trademark registration application (5th Counterclaim); and breachof the 1986 Assignment and the 2001 Letter by Plaintiff (6th Counterclaim), Defendant's motion is also denied as to the balance of i ts 3rd Counterclaim for a declaration of ownership of the WTC and WORLD TRADE CENTER trademark and its ownership of and right to use the service marks at the NYWTC without interference from WTCA. Plaintiff's motion for summary judgment is grante d in part. The portion of Defendant's 3rd Counterclaim that seeks a declaration that Defendant owns the WTC service marks and is free to use them without WTCA's interference dismissed. The portion of Defendant's 4th Counterclaim that s eeks the cancelation of Plaintiff's federal service mark on the basis that it provided a false date of first use to the PTO is also dismissed. Defendant's defense of sovereign immunity (9th Affirmative Defense) is stricken with respect to i ts federal law claims (Claims for Relief 1 and 2) and the 9th Affirmative Defense is also stricken insofar as it relates to Plaintiff's claim for a declaration (Claim for Relief 7) that the 1986 License and 2006 Agreement bind the Port Authority to refrain from using the relevant trademarks on goods without WTCA's permission. Defendant's 5th Affirmative Defense with is stricken insofar as it asserts that Plaintiff's state registrations are invalid and that its federal registr ations are invalid because they were procured by fraud regarding the date of their first use. Plaintiff's motion for summary judgment is denied insofar as it seeks judgment in Plaintiff's favor on its 6th Claim for Relief for breach of cont ract and dismissal of Defendant's counterclaims for non-breach of the license agreements (2nd Counterclaim), and an injunction against Plaintiff's pending trademark application (5th Counterclaim). Plaintiff's motion for summary judgmen t is also denied insofar as it seeks dismissal of the balance of Defendant's 3rd Counterclaim with respect to Defendant's ownership of the WTC trademarks and Defendant's right to use the WORLD TRADE CENTER or WTC trademarks in connecti on with the NYWTC without interference by Plaintiff, and insofar as it seeks dismissal of the aspect of Defendant's 4th Counterclaim that is based on Defendant's contention that Plaintiff fraudulently represented to the PTO that no party ha d a superior right to use the federal service mark. Plaintiff's motion for summary judgment is denied to the extent it seeks to strike Defendant's prior use defense (7th Affirmative Defense), its sovereign immunity defense with respect to s tate law claims for injunctive relief (9th Affirmative Defense), and its 5th Affirmative Defense insofar as that defense rests on the assertion that Plaintiff fraudulently represented to the PTO that no other party had a superior right to use the mar k. By separate order, Defendant will be directed to show cause as to why its 6th Counterclaim should not be dismissed and why the 3rd Counterclaim, to the extent that it seeks a declaration that the Port Authority owns the WORLD TRADE CENTER and WTC marks used on goods in connection with the NYWTC, should not be dismissed for lack of subject matter jurisdiction. The claims remaining for trial are: (1) Defendant's counterclaim for cancelation of Plaintiff's federal service mark registra tion as procured by fraud, to the extent that counterclaim rests on Defendant's contention that Plaintiff falsely affirmed that it was aware of no other entity with a superior right to use the mark (4th Counterclaim); and (2) Defendant's co unterclaim seeking an injunction against the prosecution of Plaintiff's federal trademark applications (5th Counterclaim). This case remains referred to Magistrate Judge Lehrburger for general pre-trial management. The parties are directed to m eet with Judge Lehrburger promptly to discuss settlement. The final pre-trial conference is scheduled for February 8, 2019 at 10:30 a.m. (Docket Entry No. 221.) The parties are directed to confer and make submissions in advance of the conference in accordance with the pre-trial scheduling order. (Docket Entry No. 43.) This Memorandum Opinion and Order resolves Docket Entry Nos. 146 and 162. SO ORDERED. (Signed by Judge Laura Taylor Swain on 12/18/2018) (ama)
April 25, 2018 Opinion or Order Filing 214 ORDER ADOPTING REPORT & RECOMMENDATION adopting 213 Report and Recommendation, denying 181 Motion for Sanctions filed by The Port Authority of New York and New Jersey. The Court has reviewed Magistrate Judge Lehrburger's April 2, 2018 Report and Recommendation (the "Report") (docket entry no. 213) which recommends that Defendant's motion for sanctions for spoliation (docket entry no. 181) be denied. No objections to the Report have been received. In reviewing a report and recommendation, a district court "may accept, reject, or modify, in whole or in part, the findings or recommendations made by the magistrate [judge]." 28 U.S.C.A. § 636(b)(1)(C) (LexisNexis 2017). "I n a case such as this one, where no timely objection has been made, a district court need only satisfy itself that there is no clear error on the face of the record." Johnson v. New York University School of Education, No. 00 Civ. 8117, at *1, 2003 WL 21433443 (S.D.N.Y. June 16, 2003). The Court has reviewed carefully Magistrate Judge Lehrburger's thorough Report and Recommendation and finds no clear error. The Court therefore adopts the Report in its entirety for the reasons stated therein. Accordingly, Defendant's motion for sanctions is denied. This Order resolves docket entry no. 181. (Signed by Judge Laura Taylor Swain on 4/25/2018) (mro)
December 15, 2016 Opinion or Order Filing 94 MEMORANDUM OPINION AND ORDER: re: 15 MOTION to Dismiss Count I of the Complaint filed by The Port Authority of New York and New Jersey. For the foregoing reasons, Defendants motion to dismiss WTCA's trademark infringement claim is denied. This Memorandum and Order resolves docket entry number 15. The final pretrial conference is rescheduled to July 21, 2017, at 11:00 a.m., and the related deadlines are modified accordingly. (See docket entry no. 43, 4-9.). SO ORDERED. (Signed by Judge Laura Taylor Swain on 12/15/2016) (ama)
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Plaintiff: World Trade Centers Association, Inc.
Represented By: Elizabeth Rozon Baksh
Represented By: Bruce Roy Millar Ewing
Represented By: Fara S. Sunderji
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Defendant: The Port Authority of New York and New Jersey
Represented By: Leon Medzhibovsky
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