BasicNet S.p.A. et al v. Granite Roots LLC et al.
| BasicNet S.p.A., Basic Trademark America Inc. and Basic Trademark S.r.l. |
| Granite Roots LLC and ZG Holdings LLC |
| 1:2021cv04242 |
| May 12, 2021 |
| US District Court for the Southern District of New York |
| Lewis J Liman |
| Trademark |
| 15 U.S.C. § 1114 |
| Plaintiff |
Docket Report
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Filing 22
ORDER SCHEDULING PRE-SETTLEMENT TELEPHONE CONFERENCE: This case has been referred to me for settlement purposes (docket no. 21). A telephone conference will be held on Monday, July 26, 2021 at 2:00 p.m. in advance of a settlement conference. The parties are directed to review Judge Parker's Individual Practices at http://nysd.uscourts.gov/judge/Parker concerning settlement conferences in advance of the call. Counsel for the parties are directed to call Judge Parker's Chambers court conference line at the scheduled time. Please dial (866) 434-5269, Access code: 4858267. SO ORDERED. ( Telephone Conference set for 7/26/2021 at 02:00 PM before Magistrate Judge Katharine H. Parker.) (Signed by Magistrate Judge Katharine H. Parker on 7/2/2021) (vfr)
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Filing 21
ORDER REFERRING CASE TO MAGISTRATE JUDGE. Order that case be referred to the Clerk of Court for assignment to a Magistrate Judge for Settlement. Referred to Magistrate Judge Katharine H. Parker. The parties are directed to contact the chambers of Magistrate Judge Katharine H. Parker. SO ORDERED. (Signed by Judge Lewis J. Liman on 7/2/2021) (va)
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Filing 20
CASE MANAGEMENT PLAN AND SCHEDULING ORDER: All parties do not consent to conducting all further proceedingsbefore a United States Magistrate Judge, including motions and trial. Any motion to amend or to join additional parties shall be filed no later than 7/30/2021. Fact Discovery due by 11/30/2021. Depositions shall be completed by 11/30/2021. Expert Discovery due by 2/11/2022. Deposition due by 2/11/2022. Discovery due by 2/11/2022. Status Conference set for 2/18/2022 at 11:00 AM before Judge Lewis J. Liman.Motions due by 2/25/2022. This case is to be tried to a jury. The parties have conferred and their present best estimate of the length of trial is 3 days. (Signed by Judge Lewis J. Liman on 7/1/2021) (va)
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ORDER: Parties are to take notice through this order and as noted during the Initial Pretrial Conference that the Court modifies the COVID-19 protocols in the Case Management Plan and Scheduling Order to include "By letter, either side may move for a deposition to be taken in person rather than remotely." (HEREBY ORDERED by Judge Lewis J. Liman) (Text Only Order) (mf)
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| Minute Entry for proceedings held before Judge Lewis J. Liman: Case Management Conference held on 7/1/2021 by Telephone Conference. Emily Poler present by telephone for Plaintiffs. Michelle Schindler present by telephone for Defendants. Case management plan approved. Parties to be referred to Magistrate Judge for settlement purposes. Post-Discovery Status Conference set for February 18, 2022 at 11:00AM before Judge Lewis J. Liman. (mf) |
| Filing 19 PROPOSED SCHEDULING ORDER. Document filed by Granite Roots LLC, ZG Holdings LLC..(Ferguson, Matthew) |
| Set/Reset Hearings: Case Management Conference set for 7/1/2021 at 03:30 PM before Judge Lewis J. Liman. (mf) |
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ORDER: The Case Management Conference scheduled for July 1, 2021 is MOVED to 3:30PM. The hearing will proceed remotely by telephone and parties are directed to dial into the Court's teleconference line at 888-251-2909 and use access code 2123101. (HEREBY ORDERED by Judge Lewis J. Liman) (Text Only Order) (mf)
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Filing 18
ORDER granting #17 Motion for Michelle Kramer to Appear Pro Hac Vice (HEREBY ORDERED by Judge Lewis J. Liman)(Text Only Order) (epb)
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| >>>NOTICE REGARDING PRO HAC VICE MOTION. Regarding Document No. #17 MOTION for Michelle Kramer Schindler to Appear Pro Hac Vice . Motion and supporting papers to be reviewed by Clerk's Office staff.. The document has been reviewed and there are no deficiencies. (wb) |
| Filing 17 MOTION for Michelle Kramer Schindler to Appear Pro Hac Vice . Motion and supporting papers to be reviewed by Clerk's Office staff. Document filed by Granite Roots LLC, ZG Holdings LLC. (Attachments: #1 Affidavit affidavit of Michelle K. Schindler, #2 Text of Proposed Order Proposed Order for admission Pro Hac vice of Michelle K. Schindler).(Ferguson, Matthew) |
| >>>NOTICE REGARDING DEFICIENT MOTION TO APPEAR PRO HAC VICE. Notice to RE-FILE Document No. #15 MOTION for Michelle Kramer Schindler to Appear Pro Hac Vice . Filing fee $ 200.00, receipt number CNYSDC-24692089. Motion and supporting papers to be reviewed by Clerk's Office staff... The filing is deficient for the following reason(s): missing Certificate of Good Standing from Supreme Court of Illinois, Wisconsin and Colorado;. Re-file the motion as a Motion to Appear Pro Hac Vice - attach the correct signed PDF - select the correct named filer/filers - attach valid Certificates of Good Standing issued within the past 30 days - attach Proposed Order.. (wb) |
| Filing 16 ANSWER to Complaint. Document filed by Granite Roots LLC, ZG Holdings LLC..(Ferguson, Matthew) |
| Filing 15 FILING ERROR - DEFICIENT DOCKET ENTRY - MOTION for Michelle Kramer Schindler to Appear Pro Hac Vice . Filing fee $ 200.00, receipt number CNYSDC-24692089. Motion and supporting papers to be reviewed by Clerk's Office staff. Document filed by Granite Roots LLC, ZG Holdings LLC. (Attachments: #1 Affidavit affidavit of Michelle K. Schindler, #2 Text of Proposed Order Proposed Order for admission Pro Hac vice of Michelle K. Schindler).(Ferguson, Matthew) Modified on 6/21/2021 (wb). |
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Filing 14
ORDER granting #13 Letter Motion for Extension of Time (HEREBY ORDERED by Judge Lewis J. Liman)(Text Only Order) (Liman, Lewis)
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| Filing 13 LETTER MOTION for Extension of Time addressed to Judge Lewis J. Liman from Matthew C. Ferguson, Attorney for Defendants dated June 4, 2021. Document filed by Granite Roots LLC, ZG Holdings LLC..(Ferguson, Matthew) |
| Filing 12 NOTICE OF APPEARANCE by Matthew Conor Ferguson on behalf of Granite Roots LLC, ZG Holdings LLC..(Ferguson, Matthew) |
| Minute Entry for proceedings held before Judge Lewis J. Liman: Telephonic Show Cause Hearing held on 5/20/2021 in re: (dkt. #4) Plaintiffs Proposed Order To Show Cause With Emergency Relief and (dkt. #5) Plaintiffs Motion for Preliminary Injunction. Emily Poler present by telephone for Plaintiffs. Michelle Schindler and Matthew Ferguson present by telephone for Defendants. Court reporter present by telephone. Parties notified the Court that they have reached agreement with respect to the Preliminary Injunction. Case Management Conference set for July 1, 2021 at 3:00PM before Judge Lewis J. Liman. (mf) |
| Set/Reset Hearings: Case Management Conference set for 7/1/2021 at 03:00 PM before Judge Lewis J. Liman. (mf) |
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Filing 11
ORDER granting #5 Motion for Preliminary Injunction. Finding that there is good cause for an injunction and upon the parties' consent, it is HEREBY ORDERED that Defendants, their officers, agents, servants, employees, and attorneys and all other persons in active concert or participation with the same, see Fed. R. Civ. P. 65(d)(2), are enjoined during the pendency of this action from (1) selling any products bearing the trademarks registered under U.S. Reg. Nos. 4549705 and 5906625 (the "Marks"); (2) holding themselves out as authorized to offer, sell or otherwise distribute products bearing the Marks; (3) using the URL brikousa.com; or (4) permitting any of their affiliates, agents, representatives, members, managers from doing the same. This order is entered without prejudice to a motion by Defendants to vacate the injunction and without any admission by the Defendants as to liability. The Clerk of Court is respectfully directed to close the motion at Dkt. No. 5. SO ORDERED. (Signed by Judge Lewis J. Liman on 5/20/2021) (va) Modified on 5/21/2021 (va).
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| Set/Reset Hearings: Show Cause Hearing set for 5/20/2021 at 03:00 PM before Judge Lewis J. Liman. (mf) |
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ORDER: The Order to Show Cause Hearing scheduled for tomorrow, May 20, 2021 is MOVED to 3:00PM. Plaintiff's counsel is directed to notify Defendants of the change in time. (HEREBY ORDERED by Judge Lewis J. Liman) (Text Only Order) (mf)
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| Filing 9 LETTER MOTION for Extension of Time or to Deem Service Sufficient addressed to Judge Lewis J. Liman from Emily A. Poler dated May 17, 2021. Document filed by Basic Trademark America Inc., Basic Trademark S.r.l., BasicNet S.p.A.. (Attachments: #1 Exhibit Ex. A (Affidavit of Service), #2 Exhibit Exhibit B (Email chain)).(Poler, Emily) |
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Filing 8
ORDER TO SHOW CAUSE: It is ORDERED, that the above named defendants show cause before a motion term of this Court telephonically, by dialing (888) 251-2909 and using access code 2123101, on Thursday May 20 at 2:00 p.m. thereof, or as soon thereafter as counsel may be heard, why an order should not be issued pursuant to Rule 65 of the Federal Rules of Civil Procedure and 15 U.S.C. 1116(a) enjoining the defendants during the pendency of this action from (1) selling any products bearing the trademarks registered under U.S. Reg Nos. 4549705 and 5906625 (the "Marks"); (2) holding themselves out as authorized to offer, sell or otherwise distribute products bearing the Marks; (3) using the URL brikousa.com; or (4) permitting any of their affiliates, agents, representatives, members, managements from doing the same; and it is further ORDERED that personal service of a copy of this order and annexed affidavits upon the defendants or their counsel on or before May 14 at 5:00 p.m. shall be deemed good and sufficient service thereof. Show Cause Hearing set for 5/20/2021 at 02:00 PM before Judge Lewis J. Liman. (Signed by Judge Lewis J. Liman on 5/13/2021) (va)
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| Filing 7 RULE 7.1 CORPORATE DISCLOSURE STATEMENT. Identifying Corporate Parent BasicNet S.p.A. for Basic Trademark America Inc., Basic Trademark S.r.l.. Document filed by Basic Trademark America Inc., Basic Trademark S.r.l., BasicNet S.p.A...(Poler, Emily) |
| Filing 6 ELECTRONIC SUMMONS ISSUED as to Granite Roots LLC, ZG Holdings LLC..(gp) |
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Filing 10
ORDER granting #9 Letter Motion for Extension of Time or to Deem Service Sufficient. Plaintiffs have filed a motion to deem service effected. Dkt. No. 9. Plaintiffs have presented the Court with the affidavit of their process server, who avers that she completed service upon the property manager at one of the two addresses provided for notice in the license agreement between Plaintiffs and Defendants. The property manager indicated that she would inform Jarka Duba, who signed the license agreement as the Managing Director of Granite Roots LLC and as the CEO of ZG Holdings. Plaintiffs have also furnished the Court with email correspondence between themselves and Mr. Duba, who indicated the he would pick up the documents today. Based upon these facts, the Court finds that Defendants have been properly served. The Clerk of Court is respectfully directed to close the motion at Dkt. No. 9. SO ORDERED. (Signed by Judge Lewis J. Liman on 5/17/2021) (vfr)
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| Filing 5 MOTION for Preliminary Injunction . Document filed by Basic Trademark America Inc., Basic Trademark S.r.l., BasicNet S.p.A.. (Attachments: #1 Declaration of F. Maso, #2 Declaration of E. Poler, #3 Exhibit Exhibit A (License Agreement), #4 Exhibit Exhibit B (Press Release), #5 Exhibit Exhibit C (Word Mark), #6 Exhibit Exhibit D (Incomplete Circle Mark), #7 Exhibit Exhibit E (October 2020 Letter), #8 Exhibit Exhibit F (February 2021 Letter), #9 Exhibit Exhibit G (April 16, 2021 Email), #10 Exhibit Exhibit H (April 30, 2021 Email), #11 Exhibit Exhibit I (Screenshots), #12 Exhibit Exhibit J (April 2021 Letter)).(Poler, Emily) |
| Filing 4 PROPOSED ORDER TO SHOW CAUSE WITH EMERGENCY RELIEF. Document filed by Basic Trademark America Inc., Basic Trademark S.r.l., BasicNet S.p.A...(Poler, Emily) Proposed Order to Show Cause to be reviewed by Clerk's Office staff. |
| Filing 3 REQUEST FOR ISSUANCE OF SUMMONS as to Granite Roots LLC and ZG Holdings LLC, re: #1 Complaint,,. Document filed by Basic Trademark America Inc., Basic Trademark S.r.l., BasicNet S.p.A...(Poler, Emily) |
| Filing 2 CIVIL COVER SHEET filed..(Poler, Emily) |
| Filing 1 FILING ERROR - DEFICIENT DOCKET ENTRY - FILED AGAINST PARTY ERROR - COMPLAINT against BasicNet S.p.A., Basic Trademark America Inc., Basic Trademark S.r.l.. (Filing Fee $ 402.00, Receipt Number ANYSDC-24529024)Document filed by BasicNet S.p.A., Basic Trademark America Inc., Basic Trademark S.r.l.. (Attachments: #1 Exhibit Exhibit A - License Agreement, #2 Exhibit Exhibit B - Marks, #3 Exhibit Exhibit C - October 2020 Letter, #4 Exhibit Exhibit D - February 2021 Letter, #5 Exhibit Exhibit E - April 16, 2021 Email, #6 Exhibit Exhibit F - April 30, 2021 Email, #7 Exhibit Exhibit G - Screenshots from Brikousa.com).(Poler, Emily) Modified on 5/12/2021 (gp). |
| ***NOTICE TO ATTORNEY REGARDING PARTY MODIFICATION. Notice to attorney Emily Alexandra Poler. The party information for the following party/parties has been modified: ALL PLAINTIFFS. The information for the party/parties has been modified for the following reason/reasons: party role was entered incorrectly;. (gp) |
| ***NOTICE TO ATTORNEY REGARDING CIVIL. CASE OPENING STATISTICAL ERROR CORRECTION: Notice to attorney Emily Alexandra Poler. The following case opening statistical information was erroneously selected/entered: Nature of Suit code 190 (Contract: Other). The following correction(s) have been made to your case entry: the Nature of Suit code has been modified to 840 (Trademark). (gp) |
| Case Designated ECF. (gp) |
| ADD PARTY FOR PLEADING. Defendants/Respondents Granite Roots LLC, ZG Holdings LLC added. Party added pursuant to #1 Complaint,,.Document filed by Granite Roots LLC, ZG Holdings LLC. Related document: #1 Complaint,,..(Poler, Emily) |
| ***NOTICE TO COURT REGARDING PROPOSED ORDER TO SHOW CAUSE WITH EMERGENCY RELIEF. Document No. #4 Proposed Order to Show Cause With Emergency Relief was reviewed and approved as to form. (km) |
| Magistrate Judge Katharine H. Parker is so designated. Pursuant to 28 U.S.C. Section 636(c) and Fed. R. Civ. P. 73(b)(1) parties are notified that they may consent to proceed before a United States Magistrate Judge. Parties who wish to consent may access the necessary form at the following link: #https://nysd.uscourts.gov/sites/default/files/2018-06/AO-3.pdf. (gp) |
| CASE OPENING INITIAL ASSIGNMENT NOTICE: The above-entitled action is assigned to Judge Lewis J. Liman. Please download and review the Individual Practices of the assigned District Judge, located at #https://nysd.uscourts.gov/judges/district-judges. Attorneys are responsible for providing courtesy copies to judges where their Individual Practices require such. Please download and review the ECF Rules and Instructions, located at #https://nysd.uscourts.gov/rules/ecf-related-instructions..(gp) |
| ***NOTICE TO ATTORNEY REGARDING DEFICIENT PLEADING. Notice to Attorney Emily Alexandra Poler re: Document No. #1 Complaint,,. The filing is deficient for the following reason(s): All of the parties listed on the pleading were not entered on CM ECF (Defendants missing). Docket the event type Add Party to Pleading found under the event list Complaints and Other Initiating Documents... (gp) |
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