07 0486 Joint Appendix

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
JOINT APPENDIX
______________________________________________________________________________
RONEMUS & VILLENSKY

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

TABLE OF CONTENTS OF APPENDIX
DOCKET ENTRIES …………………………………………………………………….......A - 1
COMPLAINT ……………………………………………………………………….............A -26
ANSWER & COUNTERCLAIMS………………………………………………………….A -39
DECISION OF JUDGE HURLEY ON DISMISSAL OF DEFENDANTS’

COUNTERCLAIMS
Dated February 17, 2004……………………………………………………………..A-44
DECISION OF JUDGE HURLEY ON DEFENDANT’S MOTION FOR

SUMMARY JUDGMENT
Dated September 30, 2005 …………………………………………………..............A-51
,
DEFENDANTS’ MOTION FOR RECONSIDERATION OF DENIAL
OF SUMMARY JUDGMENT AS TO DARRELL RUBENS
Dated October 11, 2005 ……………………………………………………………..A-76
DECISION OF JUDGE HURLEY ON PLAINTIFF’S MOTION FOR

RECONSIDERATION
Dated May 25, 2006……… …………………………………………………………A-88
DOCKET ENTRY 132

July 20, 2004 Order of Judge Wall to Sanction Grigor & Deny Plaintiff to
Depose Darrell………………………………………………………………………..A-94
DOCKET ENTRY 174

March 23, 2005 Letter of Michael Ronemus to Judge Hurley with Exhibits………...A-96
DOCKET ENTRY 179

April 6, 2005 Letter of Michael Ronemus to Judge Hurley with Exhibits…………..A-101
DOCKET ENTRY 187

May 15, 2006, Letter of Michael Ronemus to Judge Hurley which includes
March 28, 2006 Letter Motion with Exhibits ……………………………………….A-112
JURY CHARGE …………………………………………………………………………….A-137
VERDICT SHEET …………………………………………………………………………..A-167
ENTRY OF JUDGMENT …………………………………………………………………..A-171
i
50B MOTION ……………………………………………………………………………….A-172
TRIAL TRANSCRIPT OF DARRELL RUBENS

Page # 555,556, 557,558,559,561,562,563 ………………………………………….A-194

Page # 706,707,708…………………………………………………………………..A-202
TRIAL TRANSCRIPT OF NANCY GRIGOR

Page # 528,529………………………………………………………………………A-205
TRIAL TRANSCRIPT OF RICHARD RUBENS

Page # 871,935,936,951,952…………………………………………………………A-207

Page # 572,573,574,717,718…………………………………………………………A-212

Page # 564, 565, 566,567,568,709, 710………………………………………...........A-217
TRIAL TRANSCRIPT OF ROBERT ROOMIAN

Page # 473-474………………………….…………………………………………...A-224

Page # 719,720……………………………………………………………………….A-226

Page # 888,889………………………………………………………………………..A228
TRIAL TRANSCRIPT OF MICHAEL GRIFFITH

Page # 1065…………………………………………………………………………..A-230

Page # 953,54,55,56 …………………………………………………………………A-231

Page # 958…………………………………………………………………………...A-235
TRIAL TRANSCRIPT OF JUDGE HURLEY

Page # 730……………………………………………………………………………A-236

Page # 311,312,313,314,395…………………………………………………………A-237

Page # 1082…………………………………………………………………………..A-241
ii
TRIAL TRANSCRIPT OF NANCY GRIGOR AND DARRELL RUBENS
Page # 215,216,217,518,519,520,521,522,712,713,714…………………………….A-242

Page # 487,488,489,490………………………………………………………..........A-253

Page # 382 …………………………………………………………………………..A-257

Page # 509,510………………………………………………………………………A-258
TRIAL TRANSCRIPT MICHAEL GRIFFITH

Page # 1012, 1013, 1014, 1015, 1016 ………………………………………………A-260

Page #:975,976………………………………………………………………………A-265
TRIAL TRANSCRIPT OF ROBERT ROOMAIN AND NANCY GRIGOR

Page # 308,500, 429 - 434, 469 …… ……………………………………………….A-267
TRIAL TRANSCRIPT GRIGOR

Page #327-331, 503,504………………………………………………………..........A-276

Page # 1025…………………………………………………………………………..A-283

Page # 260,279,1098 -1104………………………………………………………….A-284

Page # 280, 283-300…………………………………………………………………A-292

Page # 493……………………………………………………………………………A-311
iii
Case: 2:01-cv-05477-DRH-WDW
A-1
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APPEAL
U.S. District Court
Eastern District of New York (Central Islip)
CIVIL DOCKET FOR CASE #: 2:01−cv−05477−DRH−WDW
Hamptons Locations, et al v. Rubens, et al Date Filed: 08/14/2001

Assigned to: Senior−Judge Denis R. Hurley Date Terminated: 01/30/2007
Referred to: Magistrate William D. Wall Jury Demand: Plaintiff
Demand: $0 Nature of Suit: 840 Trademark
Cause: 15:1125 Trademark Infringement (Lanham Act) Jurisdiction: Federal Question
Plaintiff
Hamptons Locations, Inc. represented by Patricia A. Weiss
P.O. Box 751
Sag Harbor, NY 11963−0019
631−725−4486
Fax: 631−725−0295
Email: pwesqsag@aol.com
LEAD ATTORNEY
ATTORNEY TO BE NOTICED
Plaintiff
Nancy Grigor represented by Patricia A. Weiss
(See above for address)
LEAD ATTORNEY
V.
Defendant
Richard Rubens represented by Sam P. Israel
1 Liberty Plaza, Office 2330
New York, NY 10006
212−201−5345
Fax: 212−201−5343
Email: smisrael@aol.com
TERMINATED: 10/22/2004
LEAD ATTORNEY
Michael B. Ronemus
Ronemus &Vilensky
112 Madison Avenue
New York, NY 10016
212−779−7070
Fax: 212−686−2490
Email: mike.ronemus@ronvil.com
Defendant
Barbara Rubens represented by Sam P. Israel
TERMINATED: 09/30/2005 (See above for address)
LEAD ATTORNEY
Michael B. Ronemus
Defendant
A-2
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Darrell Rubens represented by Darrell Rubens
each individually and doing business as 284 Mott Street
Hampton Locations New York, NY 10012
PRO SE
Sam P. Israel
LEAD ATTORNEY
Michael B. Ronemus
Counter Claimant
Richard Rubens represented by Richard Rubens
4439 Douglas Avenue
Bronx, NY 10471
917−733−4200
PRO SE
Sam P. Israel
LEAD ATTORNEY
Counter Claimant
Barbara Rubens represented by Barbara Rubens
TERMINATED: 09/30/2005 4439 Douglas Avenue
Bronx, NY 01047
PRO SE
Sam P. Israel
LEAD ATTORNEY
Counter Claimant
Darrell Rubens represented by Sam P. Israel
LEAD ATTORNEY
V.
Counter Defendant
Hamptons Locations, Inc. represented by Patricia A. Weiss
LEAD ATTORNEY
Counter Defendant
Nancy Grigor represented by Patricia A. Weiss
LEAD ATTORNEY
A-3
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Date Filed # Docket Text

06/29/2009 Electronic Index to Record on Appeal sent to US Court of Appeals. For docket
entries without a hyperlink, contact the court and we'll arrange for the document(s)
to be made available to you. 147 Order on Motion for Discovery,,,,, 246 Motion to
Set Aside Verdict, 94 Order, 260 Notice of Appeal, 161 Motion for Summary
Judgment, 148 Pretrial Conference − Interim, 237 Affidavit, 99 Scheduling Order,
233 Motion for Attorney Fees, 251 Letter, 158 Motion for Reconsideration, 257
Order on Motion to Set Aside Verdict, 243 Response in Opposition to Motion, 201
Trial Brief, 167 Reply to Response to Motion, 153 Pretrial Order, 175 Letter, 213
Proposed Jury Instructions, 198 Proposed Jury Instructions, 166 Response in
Opposition to Motion, 152 USCA Mandate,, 229 Notice of Appeal, 183 Response
in Opposition to Motion,, 194 Letter, 184 Notice (Other), Notice (Other), 232
Motion for Attorney Fees, 173 Letter, 157 Letter, 165 Affidavit in Opposition to
Motion, 245 Response in Support of Motion,,, 168 Reply to Response to Motion,
231 Motion to Set Aside Verdict, 185 Reply to Response to Motion, 176 Affidavit
in Opposition to Motion, 239 Affidavit in Opposition to Motion,, 191 Motion for
Extension of Time to File, 250 Letter,, 225 Order, 216 Exhibit, 212 Jury Trial −
Held, 259 Exhibit, 226 Jury Verdict, 202 Trial Brief, 154 Letter, 155 Letter, 208
Letter, 236 Motion for Taxation of Costs, 172 Letter, 206 Settlement Conference,
159 Response to Motion, 127 Order on Motion to Compel, 200 Proposed Jury
Instructions, 256 Letter, 204 Jury Trial − Held, 196 Motion for Hearing, 174
Letter, 217 Exhibit, 149 Order, 235 Motion for Taxation of Costs, 242 Response in
Opposition to Motion, 238 Motion for Taxation of Costs, 252 Status Report, 156
Order, 160 Reply to Response to Motion, 109 Order, 189 Pretrial Conference −
Final, 182 Motion for Reconsideration,, 179 Letter, 187 Letter, 203 Jury Trial −
Begun, 205 Motion in Limine, 129 Order on Motion for Reconsideration, 215 Jury
Trial − Completed, 234 Motion for Attorney Fees,,, 164 Affidavit in Opposition to
Motion, 195 Motion for Extension of Time to File, 247 Motion for Attorney Fees,
254 Exhibit, 258 Status Report, 210 Jury Trial − Held, 224 Clerk's Judgment, 132
Order, 177 Letter, 193 Proposed Pretrial Order, 211 Proposed Jury Instructions,
197 Trial Brief, 207 Jury Trial − Held, 169 Notice (Other), Notice (Other), 178
Letter, 181 Motion for Reconsideration, 151 Exhibit List, 248 Motion for Taxation
of Costs, 170 Notice (Other), Notice (Other), Notice (Other), 209 Jury Trial −
Held, 227 Motion for Attorney Fees, 107 Order, 150 Letter, 255 Status Report, 139
Order on Motion to Compel, 119 Motion Hearing, Terminate Motions,,,,,,,, 214
Proposed Jury Instructions, 253 Letter, 163 Response in Opposition to Motion, 230
Order, 186 Reply to Response to Motion, 249 USCA Order, 228 Motion to
Dismiss Case as Frivolous, 180 Order on Motion for Summary Judgment, 162
Letter, 188 Order on Motion for Reconsideration,,,,, 244 Response in Opposition to
Motion, 192 Motion for Extension of Time to File, 199 Proposed Voir Dire, 171
Letter, 126 Order on Motion to Compel, 240 Affidavit in Opposition to Motion,,
190 Motion for Extension of Time to File (Romano, Daniel) (Entered: 06/29/2009)
06/23/2009 260 NOTICE OF APPEAL by Barbara Rubens. Appeal Record due by 7/2/2009.
(Ronemus, Michael) (Entered: 06/23/2009)
06/10/2009 259 EXHIBIT to the 258 Status Report filed by Darrell Rubens (Michael Ronemus)
(Fagan, Linda) (Entered: 06/11/2009)
06/10/2009 Incorrect Case/Document/Entry Information. Document 260 APPEAL OF
MAGISTRATE'S DECISION, filed on 6/10/09 has been deleted. (The document
was an exhibit to the 259 STATUS REPORT, wich was subsequently deleted from
the docket. The Court will re−file document 260 as an EXHIBIT to the 258
STATUS REPORT, and the document will be re−numbered to 259 . All
corrections have been made.) (Fagan, Linda) Modified on 6/12/2009 (Fagan,
Linda). (Entered: 06/11/2009)
06/10/2009 Incorrect Case/Document/Entry Information. Document 259 STATUS REPORT,
filed on 6/10/09 has been deleted. (The document was a duplicate to the 258
STATUS REPORT. (All corrections have been made.) (Fagan, Linda) (Entered:
06/11/2009)
06/05/2009 258 STATUS REPORT by Darrell Rubens (Ronemus, Michael) (Entered: 06/05/2009)
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06/04/2009 ORDER REFERRING MOTION: 235 MOTION for Taxation of Costs Pursuant to
Fed.R.Civ.P. 54 and Local Rule 54.1 (NOTICE OF MOTION) filed by Hamptons
Locations, Inc., Nancy Grigor, 238 First MOTION for Taxation of Costs filed by
Darrell Rubens, Richard Rubens, Barbara Rubens, 233 Second MOTION for
Attorney Fees filed by Darrell Rubens, Richard Rubens, Barbara Rubens, 234 First
MOTION for Attorney Fees Pursuant to Fed.R.Civ.P. 54(d)(2)(B) (pursuant to 15
U.S.C. 1117(a), the Lanham Act)First MOTION for Attorney Fees Pursuant to
Fed.R.Civ.P. 54(d)(2)(B) (pursuant to 15 U.S.C. 1117(a), the Lanham Act)First
Fed.R.Civ.P. 54(d)(2)(B) (pursuant to 15 U.S.C. 1117(a), the Lanham Act) filed by
Hamptons Locations, Inc., Nancy Grigor, 232 First MOTION for Attorney Fees
filed by Darrell Rubens, Richard Rubens, Barbara Rubens. (See 257 Order.) (
Ordered by Senior Judge Denis R. Hurley on 6/4/2009.) Motions referred to
William D. Wall. (Fagan, Linda) (Entered: 06/05/2009)
06/04/2009 257 ORDER: Defendant Darrell Ruben's motion to set aside the jury verdict 231
pursuant to Rule 50(b) is DENIED. See attached Memorandum and Order. The
parties' motions for attorneys fees and costs are respectfully referred to Magistrate
Judge Wall. Ordered by Senior Judge Denis R. Hurley on 6/4/2009. (Entered:
06/04/2009)
05/14/2009 256 Letter Exhibits to Defendant post trial motion by Richard Rubens (Ronemus,
Michael) (Entered: 05/14/2009)
05/13/2009 255 STATUS REPORT by Darrell Rubens (Ronemus, Michael) (Entered: 05/13/2009)
05/13/2009 254 EXHIBIT of Plaintiff's Post Trial Motion by Darrell Rubens. Related document:
253 Letter filed by Nancy Grigor. (Ronemus, Michael) (Entered: 05/13/2009)
05/13/2009 253 Letter to Judge Hurley dated May 13th, attaching letter dated May 12th,
concerning response to May 7th docket order requesting that courtesy copies of
certain cited exhibits be sent directly to Chambers by Nancy Grigor (Weiss,
Patricia) (Entered: 05/13/2009)
05/07/2009 ORDER: The parties are hereby directed to submit courtesy copies to Chambers of
any trial exhibits cited in their briefs in support of their post−trial motions on or
before May 13, 2009. Ordered by Senior Judge Denis R. Hurley on 5/7/2009.
(Hurley, Denis) (Entered: 05/07/2009)
04/13/2009 252 STATUS REPORT by Richard Rubens (Ronemus, Michael) (Entered: 04/13/2009)
05/15/2008 251 Letter by Richard Rubens (Ronemus, Michael) (Entered: 05/15/2008)
05/12/2008 250 Letter to Judge Hurley regarding Plaintiffs' pending motions for attorneys fees and
costs following the January 2007 Clerk's Judgment by Hamptons Locations, Inc.
(Attachments: # 1 Exhibit Judge Irizarry's April 10, 2008 decision in
#07−CV−1473, "Protection One Alarm Monitoring, Inc." case, 2008 WL 1795321,
which is recently decided precedent regarding calculation of 15 USC 1117(a)
attorneys fees in an EDNY federal trademarl cyberpiracy case) (Weiss, Patricia)
(Entered: 05/12/2008)
04/02/2007 249 ORDER of USCA as to 229 Notice of Appeal filed by Darrell Rubens; A motion or
motions of the type specified by Rule 4(a)4 of the Federal Rules of Appellate
Procedure having been filed in this matter, and now pending before the district
court, the above numbered and entitled appeal is hereby stayed to await final
disposition of said motion(s). (Carine, Sandra) (Entered: 04/09/2007)
03/26/2007 Motions terminated, docketed incorrectly: 248 First MOTION for Taxation of
Costs Reply filed by Darrell Rubens, Richard Rubens, Barbara Rubens.(The
document should have beenfiled as a Reply, and the Court will address the
document as such. All corrections have been made.) (Fagan, Linda) (Entered:
03/27/2007)
03/26/2007 Motions terminated, docketed incorrectly: 247 First MOTION for Attorney Fees
Reply filed by Darrell Rubens, Richard Rubens, Barbara Rubens.(The document
should have been filed as a Reply, and the Court will address the document as
such. All corrections have been made.) (Fagan, Linda) (Entered: 03/27/2007)
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03/26/2007 Motions terminated, docketed incorrectly: 246 First MOTION to Set Aside Verdict
Reply filed by Darrell Rubens, Richard Rubens, Barbara Rubens. (The document
should have been filed as a Reply, and the Court will address the document as
such. All corrections have been made.) (Fagan, Linda) (Entered: 03/27/2007)
03/26/2007 248 REPLY to pltffs' Objections to Tax Costs by all defendants. (Ronemus, Michael)
Modified on 3/27/2007 (Fagan, Linda). (Entered: 03/26/2007)
03/26/2007 247 REPLY to pltffs' Opposition to Defts' Motion for Attny Fees /I> by all defendants.
(Ronemus, Michael) Modified on 3/27/2007 (Fagan, Linda). (Entered: 03/26/2007)
03/26/2007 246 REPLY in further Support to Deft's Motion Non Obstante Verdicto by all
defendants. (Ronemus, Michael) Modified on 3/27/2007 (Fagan, Linda). (Entered:
03/26/2007)
03/12/2007 245 RESPONSE in Support re 234 First MOTION for Attorney Fees Pursuant to
U.S.C. 1117(a), the Lanham Act) entitled "Plaintiffs' Reply To Defendant Darrell
Rubens' 'Opposition to Plaintiffs' Motion For Attorney Fees and Costs' Pursuant to
15 U.S.C. 1117(a)" filed by all plaintiffs. (Weiss, Patricia) (Entered: 03/12/2007)
03/10/2007 244 RESPONSE in Opposition re 238 First MOTION for Taxation of Costs entitled
"Plaintiffs' Objections To Defendants' Requests To Tax Costs Pursuant To
Fed.R.Civ.P. 54 &Local Rule 54.1" filed by all plaintiffs. (Weiss, Patricia)
(Entered: 03/10/2007)
03/09/2007 243 RESPONSE in Opposition re 231 First MOTION to Set Aside Verdict entitled
"Plaintiffs' Memorandum of Law in Opposition to Defendant Darrell Rubens'
Motion for Judgment Non Obstante Verdicto" filed by all plaintiffs. (Weiss,
03/09/2007 242 RESPONSE in Opposition re 233 Second MOTION for Attorney Fees, 232 First
MOTION for Attorney Fees entitled "Plaintiffs' Memorandum of Law in
Opposition to Defendants' Motion for Attorneys Fees and Costs" filed by all
plaintiffs. (Weiss, Patricia) (Entered: 03/09/2007)
03/05/2007 240 AFFIDAVIT in Opposition re 234 First MOTION for Attorney Fees Pursuant to
U.S.C. 1117(a), the Lanham Act) filed by all defendants. (Ronemus, Michael)
(Entered: 03/05/2007)
03/05/2007 239 AFFIDAVIT in Opposition re 235 MOTION for Taxation of Costs Pursuant to
Fed.R.Civ.P. 54 and Local Rule 54.1 (NOTICE OF MOTION), 236 Second
MOTION for Taxation of Costs −− Plaintiffs' Bill of Costs In Support of Plaintiffs'
Request To Tax Costs Pursuant to Fed.R.Civ.P. 54 and Local Rule 54.1 [NB: This
is the Bill of Costs in support of Docket #235]Second MOTION for Taxation of
Costs −− Plaintiffs' Bill of Costs In Support of Plaintiffs' Request To Tax Costs
Pursuant to Fed.R.Civ.P. 54 and Local Rule 54.1 [NB: This is the Bill of Costs in
support of Docket #235] filed by all defendants. (Ronemus, Michael) (Entered:
03/05/2007)
03/05/2007 238 First MOTION for Taxation of Costs by all defendants. (Ronemus, Michael)
(Entered: 03/05/2007)
03/02/2007 241 TRANSCRIPT of Trial held on 1/29/07 before The Honorable Denis R. Hurley,
United States District Judge. Court Reporter: Perry Auerbach 100 Federal Plaza
Cenral Islip, New York 11722 (631) 712−6103. (Fagan, Linda) (Entered:
03/06/2007)
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03/01/2007 237 AFFIDAVIT/AFFIRMATION re 235 MOTION for Taxation of Costs Pursuant to
Fed.R.Civ.P. 54 and Local Rule 54.1 (NOTICE OF MOTION) Patricia Weiss,
Esq.'s Affidavit in Support (with exhibits) &Certificate of Mailing by Hamptons
Locations, Inc. (Weiss, Patricia) (Entered: 03/01/2007)
03/01/2007 Incorrect Document Text Information. The event (motion) selected when filing
document # 236 was incorrect. The docket text for doc. # 236 has been modified to
specify that the document is plaintiffs' bill of costs in support of the # 235 motion.
(Mahon, Cinthia) (Entered: 03/01/2007)
03/01/2007 Motions terminated, docketed incorrectly: 236 Second MOTION for Taxation of
Costs . This document is not a motion it is Plaintiffs' Bill of Costs In Support of
Plaintiffs' Request To Tax Costs Pursuant to Fed.R.Civ.P. 54 and Local Rule 54.1
(NB: This is in support of Docket #235) filed by Hamptons Locations, Inc. and
Nancy Grigor. (Mahon, Cinthia) (Entered: 03/01/2007)
02/28/2007 236 Plaintiffs' Bill of Costs In Support of Plaintiffs' Request To Tax Costs Pursuant to
Fed.R.Civ.P. 54 and Local Rule 54.1 [NB: This is the Bill of Costs in support of
Docket #235] by all plaintiffs. (Weiss, Patricia) Modified on 3/1/2007 (Mahon,
Cinthia). (Entered: 02/28/2007)
02/28/2007 235 MOTION for Taxation of Costs Pursuant to Fed.R.Civ.P. 54 and Local Rule 54.1
(NOTICE OF MOTION) by all plaintiffs. (Weiss, Patricia) (Entered: 02/28/2007)
02/13/2007 234 First MOTION for Attorney Fees Pursuant to Fed.R.Civ.P. 54(d)(2)(B) (pursuant
to 15 U.S.C. 1117(a), the Lanham Act) by all plaintiffs. (Attachments: # 1 Affidavit
of Patricia Weiss, Esq. In Support of Plaintiffs' Morion For Attorneys Fees and
Related Costs Pursuant to FedRCivP 54(d)(2)(B)# 2 Exhibit Exhibits "Retainer
Invoice" through Invoice #7 (which runs throughs August 10, 2003)# 3 Exhibit
Invoices #8 to #10A (which runs through December 11, 2004)# 4 Exhibit Invoice
#11 to Invoice #15 (which runs through February 12, 2007)# 5 Exhibit Composite
Exhibit re Trademark attorney Robert G. Roomian, Esq.'s attorneys fees and
charges related to this matter# 6 Exhibit Invoice of PJL Reporting for trial
transcript charges ($6,848.19)) (Weiss, Patricia) (Entered: 02/13/2007)
02/12/2007 Electronic Index to Record on Appeal sent to US Court of Appeals. For docket
entries without a hyperlink, contact the court and we'll arrange for the document(s)
to be made available to you. 147 Order on Motion for Discovery, 94 Order, 161
Motion for Summary Judgment, 148 Pretrial Conference − Interim, 99 Scheduling
Order, 233 Motion for Attorney Fees, 158 Motion for Reconsideration, 201 Trial
Brief, 167 Reply to Response to Motion, 153 Pretrial Order, 175 Letter, 213
Proposed Jury Instructions, 198 Proposed Jury Instructions, 166 Response in
Opposition to Motion, 152 USCA Mandate, 229 Notice of Appeal, 183 Response
in Opposition to Motion, 194 Letter, 184 Notice (Other), Notice (Other), 232
Motion for Attorney Fees, 173 Letter, 157 Letter, 165 Affidavit in Opposition to
Motion, 168 Reply to Response to Motion, 231 Motion to Set Aside Verdict, 185
Reply to Response to Motion, 176 Affidavit in Opposition to Motion, 191 Motion
for Extension of Time to File, 225 Order, 216 Exhibit, 212 Jury Trial − Held, 226
Jury Verdict, 202 Trial Brief, 154 Letter, 155 Letter, 208 Letter, 172 Letter, 206
Settlement Conference, 159 Response to Motion, 127 Order on Motion to Compel,
200 Proposed Jury Instructions, 204 Jury Trial − Held, 196 Motion for Hearing,
174 Letter, 217 Exhibit, 149 Order, 156 Order, 160 Reply to Response to Motion,
109 Order, 189 Pretrial Conference − Final, 182 Motion for Reconsideration, 179
Letter, 187 Letter, 203 Jury Trial − Begun, 205 Motion in Limine, 129 Order on
Motion for Reconsideration, 215 Jury Trial − Completed, 234 Motion for Attorney
Fees, 164 Affidavit in Opposition to Motion, 195 Motion for Extension of Time to
File, 210 Jury Trial − Held, 224 Clerk's Judgment, 132 Order, 177 Letter, 193
Proposed Pretrial Order, 211 Proposed Jury Instructions, 197 Trial Brief, 207 Jury
Trial − Held, 169 Notice (Other), Notice (Other), 178 Letter, 181 Motion for
Reconsideration, 151 Exhibit List, 170 Notice (Other), Notice (Other), Notice
(Other), 209 Jury Trial − Held, 227 Motion for Attorney Fees, 107 Order, 150
Letter, 139 Order on Motion to Compel, 119 Motion Hearing, Terminate Motions,
214 Proposed Jury Instructions, 163 Response in Opposition to Motion, 230 Order,
186 Reply to Response to Motion, 228 Motion to Dismiss Case as Frivolous, 180
Order on Motion for Summary Judgment, 162 Letter, 188 Order on Motion for
Reconsideration, 192 Motion for Extension of Time to File, 199 Proposed Voir
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Dire, 171 Letter, 126 Order on Motion to Compel, 190 Motion for Extension of
Time to File (Duong, Susan) (Entered: 02/14/2007)
02/12/2007 233 Second MOTION for Attorney Fees by all defendants. (Ronemus, Michael)
(Entered: 02/12/2007)
02/12/2007 232 First MOTION for Attorney Fees by all defendants. (Ronemus, Michael) (Entered:
02/12/2007)
02/12/2007 231 First MOTION to Set Aside Verdict by Darrell Rubens. (Ronemus, Michael)
(Entered: 02/12/2007)
02/12/2007 230 ORDER re 228 (Request for Pre−motion Conference): Briefing Schedule set;
request to hold motions for attorneys' fees denied. See attached Order for details.
Ordered by Judge Denis R. Hurley on 02/12/07. (Hurley, Denis) (Entered:
02/12/2007)
02/12/2007 229 NOTICE OF APPEAL by Darrell Rubens. Filing fee $ 455, receipt number
2230335.Appeal Record due by 2/22/2007. (Ronemus, Michael) (Entered:
02/12/2007)
02/09/2007 Motions terminated, docketed incorrectly: 228 Proposed MOTION to Dismiss Case
as Frivolous filed by Darrell Rubens. (Entered: 05/20/2008)
02/08/2007 ORDER terminating 227 Motion for Attorney Fees &request to tax costs,
requesting that the Court dispense with pre−motion conference so that Plaintiffs
can file such motions/requests within the time periods established by FedRCivP 54
filed by Hamptons Locations, Inc., Nancy Grigor. (See 2/8/07 Order.) (Fagan,
Linda) (Entered: 05/14/2009)
02/08/2007 Motions terminated, docketed incorrectly: 228 Proposed MOTION to Dismiss Case
as Frivolous filed by Darrell Rubens. (The document should have been filed as a
Letter request, and the Court will address the document as such. All corrections
have been made.) (Fagan, Linda) (Entered: 02/09/2007)
02/08/2007 228 LETTER re: Request that motions for attorney's fees, both by counsel for pltffs and
defts be held until there is a determination on defts' motion to vacate the one cause
of action which the jury found for pltff. (Ronemus, Michael) Modified on 2/9/2007
(Fagan, Linda). (Entered: 02/08/2007)
02/08/2007 ORDER re 227 : The Court hereby waives its pre−motion conference requirement
with regard to Plaintiffs' proposed motion for attorneys' fees. Plaintiffs shall file
their motion in compliance with Federal Rule of Civil Procedure 54(d)(2)(B) and
shall include detailed contemporaneous time records. Defendants shall file
opposition papers within 20 days of receipt of Plaintiffs' moving papers; Plaintiffs
may file reply papers within 10 days of receipt of Defendants' opposition papers.
Plaintiffs are hereby advised that any request to tax costs shall be directed to the
Clerk of the Court. Ordered by Judge Denis R. Hurley on 2−8−07. (Hurley, Denis)
(Entered: 02/08/2007)
02/07/2007 227 Proposed MOTION for Attorney Fees &request to tax costs, requesting that the
Court dispense with pre−motion conference so that Plaintiffs can file such
motions/requests within the time periods established by FedRCivP 54 by all
01/30/2007 226 VERDICT SHEET. (Fagan, Linda) (Entered: 01/30/2007)
01/30/2007 225 SUSTENANCE ORDER for 1/29/2007 jury lunches.. Ordered by Judge Denis R.
Hurley on 1/30/2007. (Best, Patricia) (Entered: 01/30/2007)
01/30/2007 224 CLERK'S JUDGMENT in favor of Hamptons Locations, Inc. and Nancy Grigor
against Darrell Rubens. Ordered by Judge Clerk of Court on 1/30/2007. (Best,
01/30/2007 223 TRANSCRIPT of Trial held on 1/26/07 before Judge The Honorable Denis R.
Hurley, United States District Court Judge, and a jury. Court Reporter: Paul J.
Lombardi, RMR, CRR 100 Federal Plaza − Suite 1180 Central Islip, New York
11722. (Fagan, Linda) (Entered: 01/30/2007)
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01/30/2007 222 TRANSCRIPT of Proceedings held on 1/24/07 before Judge The Honorable Denis
R. Hurley, United States District Court Judge, and a jury. Court Reporter: Paul J.
Lombardi, RMR, CRR 100 Federal Plaza − Suite 1180 Central Islip. (Fagan,
United States District Court Judge, and a jury. Court Reporter: Paul J. Lombardi,
RMR, CRR 100 Federal Plaza − Suite 1180 Central Islip, New York 11722.
United States District Judge, and a jury. Court Reporter: Paul J. Lombardi, RMR,
CRR 100 Federal Plaza − Suite 1180 Central Islip, New York 11722. (Fagan,
01/30/2007 217 COURT EXHIBIT II. (Fagan, Linda) (Entered: 01/30/2007)
01/30/2007 216 COURT EXHIBIT I. (Fagan, Linda) (Entered: 01/30/2007)
01/30/2007 215 Minute Entry for proceedings held before Denis R. Hurley : Jury Trial completed
on 1/29/2007 (Court Reporter Perry Auerbach.) (Best, Patricia) (Entered:
01/30/2007)
01/28/2007 214 Proposed Jury Instructions by Darrell Rubens (Ronemus, Michael) (Entered:
01/28/2007)
01/27/2007 213 Proposed Jury Instructions by Hamptons Locations, Inc. (Weiss, Patricia) (Entered:
01/27/2007)
01/26/2007 212 Minute Entry for proceedings held before Denis R. Hurley : Jury Trial − charge
conference held on 1/26/2007 (Court Reporter Paul Lombardi.) (Best, Patricia)
(Entered: 01/26/2007)
01/25/2007 211 Proposed Jury Instructions by Hamptons Locations, Inc. (Weiss, Patricia) (Entered:
01/25/2007)
01/24/2007 210 Minute Entry for proceedings held before Denis R. Hurley : Jury Trial held on
1/24/2007 (Court Reporter Paul Lombardi.) (Best, Patricia) (Entered: 01/24/2007)
01/23/2007 208 Letter from Patricia Weiss to United States District Judge Hurley, dated 1/21/07 re:
To state that "What Mr. Griffith communicated in his May 2002 telephon
coversation, should be inadmissible under Rule 408." (Fagan, Linda) (Entered:
01/23/2007)
01/21/2007 Motions terminated, docketed incorrectly: 205 First MOTION in Limine (3 page
Letter Motion concerning Defendants' "audiotape excerpts" of May 2002
telephonic communications by Hamptons Locations, Inc.'s counsel Michael
Griffith, Esq.)First MOTION in Limine (3 page Letter Motion concerning
Defendants' "audiotape excerpts" of May 2002 telephonic communications by
Hamptons Locations, Inc.'s counsel Michael Griffith, Esq.) filed by Hamptons
Locations, Inc., Nancy Grigor. (Mahon, Cinthia) (Entered: 05/20/2008)
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01/21/2007 Motions terminated, docketed incorrectly: 205 First MOTION in Limine (3 page
Letter Motion concerning Defendants' "audiotape excerpts" of May 2002
telephonic communications by Hamptons Locations, Inc.'s counsel Michael
Griffith, Esq.)First MOTION in Limine (3 page Letter Motion concerning
Defendants' "audiotape excerpts" of May 2002 telephonic communications by
Hamptons Locations, Inc.'s counsel Michael Griffith, Esq.) filed by Hamptons
Locations, Inc., Nancy Grigor. (The document should have been filed as a Letter
request, and the Court will address the document as such. All corrections have been
made.) (Fagan, Linda) Modified on 5/19/2008 to modify the term date to a date
after the motion was filed. (Mahon, Cinthia). (Entered: 01/22/2007)
01/21/2007 205 Letter re: motion in limine (3 page Letter Motion concerning Defendants'
"audiotape excerpts" of May 2002 telephonic communications by Hamptons
Locations, Inc.'s counsel Michael Griffith, Esq.) by all plaintiffs. (Weiss, Patricia)
Modified on 1/22/2007 (Fagan, Linda). Modified on 1/22/2007 (Fagan, Linda).
(Entered: 01/21/2007)
01/11/2007 206 Minute Entry for proceedings held before William D. Wall : Settlement Conference
held on 1/11/2007 (Talbott, Thomas) (Entered: 01/22/2007)
01/05/2007 202 TRIAL BRIEF Plaintiffs' Statement with Regard to Damages by Hamptons
Locations, Inc., Nancy Grigor (Weiss, Patricia) (Entered: 01/05/2007)
01/05/2007 201 TRIAL BRIEF Plaintiffs' Pretrial Memorandum by Hamptons Locations, Inc.,
Nancy Grigor (Weiss, Patricia) (Entered: 01/05/2007)
01/05/2007 200 Proposed Jury Instructions by Hamptons Locations, Inc., Nancy Grigor (Weiss,
01/05/2007 199 Proposed Voir Dire by Hamptons Locations, Inc., Nancy Grigor (Weiss, Patricia)
(Entered: 01/05/2007)
01/05/2007 198 Proposed Jury Instructions by Darrell Rubens (Ronemus, Michael) (Entered:
01/05/2007)
01/05/2007 197 TRIAL BRIEF by Darrell Rubens (Ronemus, Michael) (Entered: 01/05/2007)
01/05/2007 ELECTRONIC ORDER: The settlement conference scheduled for 1/12/07 is
re−scheduled to 1/11/07 at 3:00. Ex parte settlement statements must be faxed by
1/10/07. Ordered by Judge William D. Wall on 1/5/07. (Disbrow, Sandra)
(Entered: 01/05/2007)
01/05/2007 ELECTRONIC ORDER granting 196 Motion for settlement conference. The
conference has been scheduled for January 12, 2007 at 10:00 a.m. in courtroom
820 of the federal courthouse in Central Islip. Parties shall fax a written statement
of their respective settlement positions ex parte, to chambers at (631)712−5725, by
January 11th. Ordered by Judge William D. Wall on 1/5/07. (Disbrow, Sandra)
(Entered: 01/05/2007)
01/04/2007 196 Letter MOTION for Hearing (actually, a joint motion for a pre−trial settlement
conference with Magistrate Judge Wall, as directed by Judge Hurley, requesting
January 12th conference) by all plaintiffs. (Weiss, Patricia) Modified on 5/16/2008
(Fagan, Linda). Modified on 6/29/2009 (Romano, Daniel). Modified on 6/29/2009
(Romano, Daniel). (Entered: 01/04/2007)
12/22/2006 ORDER granting 195 : The parties are hereby given an extension to January 5,
2006 to submit proposed requests to charge, voir dire requests, and trial
memoranda. The trial will proceed as scheduled for January 16, 2007. Ordered by
Judge Denis R. Hurley on 12−22−06. (Hurley, Denis) (Entered: 12/22/2006)
12/21/2006 195 First MOTION for Extension of Time to File jury instructions and memo of law on
damages and in response to Defendants' December 19, 2006 letter motion (#194)
to adjourn the trial date by all plaintiffs. (Weiss, Patricia) Modified on 5/16/2008
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(Fagan, Linda). (Entered: 12/21/2006)

12/20/2006 194 Letter requesting adjournment of Trial by Richard Rubens. (Ronemus, Michael)
(Entered: 12/20/2006)
09/19/2006 ENDORSED ORDER re 192 Letter MOTION for trial adjournment. The
applicaton is GRANTED and the trial is rescheduled for January 8, 2007 at 9:30
am.Proposed requests to charge and voir dire are to be filed by December 22, 2006.
. Ordered by Judge Denis R. Hurley on 9/19/2006. (Best, Patricia) (Entered:
09/19/2006)
09/15/2006 193 Proposed Pretrial Order by Darrell Rubens. (Ronemus, Michael) (Entered:
09/15/2006)
09/13/2006 Motions terminated, docketed incorrectly: 192 Letter MOTION for Extension of
Time to File filed by Darrell Rubens, Richard Rubens, Barbara Rubens. (Mahon,
Cinthia) (Entered: 05/20/2008)
09/13/2006 Motions terminated, docketed incorrectly 192 Letter MOTION for Extension of
Time to File trial filed by Richard Rubens, Barbara Rubens, Darrell Rubens. (The
document should have been filed as a Letter request, and the Court will address the
document as such. All corrections have been made.) (Fagan, Linda) (Entered:
09/14/2006)
09/13/2006 192 Letter re: Request for Extension of Time to File trial by all defendants. (Ronemus,
Michael) Modified on 9/14/2006 (Fagan, Linda). (Entered: 09/13/2006)
09/06/2006 Motions terminated: 191 First MOTION for Extension of Time to File pre trial
order filed by Richard Rubens, Barbara Rubens, Darrell Rubens. (See 9/6/06
Order.)( Ordered by Judge Denis R. Hurley on 9/6/06.) (Fagan, Linda) (Entered:
09/11/2006)
09/06/2006 ORDER re 191 (Letter Request for Extension of Time to File Pre−Trial Order):
Upon consideration of Defendant's request, said request is granted; the deadline for
filing the joint pre−trial order is extended until Sept. 15, 2006. No further
extensions shall be granted absent good cause shown. SO ORDERED by Judge
Denis R. Hurley on 09/06/06. (Hurley, Denis) (Entered: 09/06/2006)
09/01/2006 191 First MOTION for Extension of Time to File pre trial order by all defendants.
(Ronemus, Michael) Modified on 5/16/2008 (Fagan, Linda). (Entered: 09/01/2006)
08/04/2006 ORDER re 190 : the parties' request for an extension is granted. The updated
pre−trial order shall be filed on or before September 1, 2006. Ordered by Judge
Denis R. Hurley on 8−4−06. (Hurley, Denis) (Entered: 08/04/2006)
08/01/2006 Motions terminated, docketed incorrectly: 190 MOTION for Extension of Time to
File an updated pretrial order, because Defendants' counsel has been ill and
unavailable filed by Hamptons Locations, Inc., Nancy Grigor. (The document
should have been filed as a Letter request, and the Court will address the document
as such. All corrections have been made.) (Fagan, Linda) (Entered: 05/16/2008)
08/01/2006 Incorrect Case/Document/Entry Information. Document 190 Mtion, filed on 8/1/06
has been modified. (The document should have been filed as a LETTER, and the
Court will address the document as such. All corrections have been made.) (Fagan,
08/01/2006 Motions terminated, docketed incorrectly 190 MOTION for Extension of Time to
File an updated pretrial order, because Defendants' counsel has been ill and
unavailable filed by Hamptons Locations, Inc., Nancy Grigor. (Fagan, Linda)
(Entered: 08/02/2006)
08/01/2006 190 LETTER re: Request for Extension of Time to File an updated pretrial order,
because Defendants' counsel has been ill and unavailable by all plaintiffs. (Weiss,
Patricia) Modified on 8/2/2006 (Fagan, Linda). (Entered: 08/01/2006)
06/23/2006 189 Minute Entry for proceedings held before Denis R. Hurley : Final Pretrial
Conference held on 6/23/2006. Jury selection set for October 10, 2006 at 9:30 am.
(Court Reporter Stephanie Drexler.) (Best, Patricia) (Entered: 06/23/2006)
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05/26/2006 ORDER re 187 : The Court is in receipt of Defendants' letter requesting that the
Court issue an order preventing Mr. Griffith from harassing or intimidating Lee
Davis. The Court is unaware of any authority that would permit the relief
requested. Accordingly, as framed, the current request is DENIED. Ordered by
Judge Denis R. Hurley on 5−26−06. (Hurley, Denis) (Entered: 05/26/2006)
05/25/2006 188 ORDER DENYING 181 Darrell Ruben's Motion for Reconsideration and
GRANTING 182 Plaintiffs' motion for reconsideration −− see attached decision.
Upon reconsideration, Richard Rubens' motion for summary judgment is DENIED;
Barbara Rubens' motion for summary judgment remains granted. The Clerk of the
Court is directed to reinstate Richard Rubens as a defendant. The parties are
directed to appear before the Court on June 23, 2006 at 2:00 p.m in Courtroom 930
for a final status conference. At that time, the Court will schedule a date for trial.
Ordered by Judge Denis R. Hurley on 5−25−06. (Hurley, Denis) (Entered:
05/25/2006)
05/19/2006 187 Letter to Judge Hurley by Darrell Rubens. (Ronemus, Michael) (Entered:
05/19/2006)
11/14/2005 186 REPLY to Response to Motion re 182 First MOTION for Reconsideration re 180
Order on Motion for Summary Judgment dated September 30, 2005 filed by all
11/07/2005 185 REPLY to Response to Motion re 182 First MOTION for Reconsideration re 180
Order on Motion for Summary Judgment dated September 30, 2005, 181 First
MOTION for Reconsideration of Defendant's Motion for Summary Judgment filed
by Richard Rubens, Barbara Rubens, Darrell Rubens. (Ronemus, Michael)
(Entered: 11/07/2005)
10/25/2005 ORDER: Defendant is hereby granted an extension on his reply papers to
November 7, 2005 so that he may address any new issues raised in Plaintiffs'
motion for reconsideration, recently filed with the Court. Plaintiffs may submit
reply papers on their motion for reconsideration or before November 14, 2005. The
conference scheduled for November 4, 2005 is hereby adjourned to December 2,
2005 at 3:30 p.m. Ordered by Judge Denis R. Hurley on 10−25−05. (Hurley,
Denis) (Entered: 10/25/2005)
10/24/2005 184 NOTICE by Nancy Grigor re 183 Response in Opposition to Motion,,, 182 First
MOTION for Reconsideration re 180 Order on Motion for Summary Judgment
dated September 30, 2005 Notice of Filing Color Photograph Exhibits In Paper
Form In Connection with the pending motion(s) for reconsideration of the Court's
September 30, 2005 Order on Defendants' Rule 56(b) motion for summary
judgment (Weiss, Patricia) (Entered: 10/24/2005)
10/24/2005 183 RESPONSE in Opposition re 181 First MOTION for Reconsideration of
Defendant's Motion for Summary Judgment and the Sepetmber 30, 2005
Memorandum of Decision and Order (Docket #180, attached hereto as Ex.1) filed
by all plaintiffs. (Attachments: # 1 Exhibit Exhibit #1# 2 Exhibit Exhibit 2# 3
Exhibit Exhibit 3# 4 Exhibit Exhibit 4# 5 Exhibit Exhibit 5# 6 Exhibit Exhibit 6# 7
Exhibit Exhibit 7# 8 Exhibit Exhibit 8# 9 Exhibit Exhibit 9−part 1 (Defendants'
Exs. M &N)# 10 Exhibit Exhibit 9−part 2 (Defendants' Ex. T)# 11 Exhibit Exhibits
10 &11# 12 Exhibit Exhibits 12)(Weiss, Patricia) (Entered: 10/24/2005)
10/17/2005 182 First MOTION for Reconsideration re 180 Order on Motion for Summary
Judgment dated September 30, 2005 by all plaintiffs. (Attachments: # 1 Exhibit
Memorandum of Decision and Order# 2 Exhibit Exhibit 2# 3 Exhibit Exhibit 3# 4
Exhibit Exhibit 4# 5 Exhibit Exhibit 5# 6 Exhibit Exhibit 6# 7 Exhibit Exhibit 7# 8
Exhibit Exhibit 8# 9 Exhibit Exhibit 9 (Defendants' Exhibits M &N)# 10 Exhibit
Exhibit 9 (Defendants' Exhibit T)# 11 Plaintiffs' Notice of Motion For Partial
Reconsideration)(Weiss, Patricia) Modified on 5/16/2008 (Fagan, Linda). (Entered:
10/17/2005)
10/12/2005 ORDER re 181 First MOTION for Reconsideration: Plaintiffs shall serve and file
opposition papers on or before October 24, 2005; Defendant shall serve and file
reply papers, if any, on or before October 31, 2005. Ordered by Judge Denis R.
Hurley on 10−12−05. (Hurley, Denis) (Entered: 10/12/2005)
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10/11/2005 181 First MOTION for Reconsideration of Defendant's Motion for Summary Judgment
by Darrell Rubens. (Ronemus, Michael) Modified on 5/16/2008 (Fagan, Linda).
(Entered: 10/11/2005)
09/30/2005 180 ORDER granting in part and denying in part 161 Motion for Summary Judgment
−− see attached. Ordered by Judge Denis R. Hurley on 9−30−05.(Hurley, Denis)
(Entered: 09/30/2005)
04/06/2005 179 Letter from Michael B. Ronemus to Judge Denis R. Hurley Regarding harassment
matter. (Ronemus, Michael) (Entered: 04/06/2005)
04/04/2005 178 Letter from Patricia Weiss, Esq. to Judge Denis R. Hurley Regarding Plaintiffs'
response in opposition to the March 25, 2005 (pre−motion) letter of Defendants'
counsel Mr. Ronemus which requested an order directed to (non−party) Michael
Griffith, Esq.. (Weiss, Patricia) (Entered: 04/04/2005)
03/29/2005 177 Letter from Michael B. Ronemus to Judge Denis R. Hurley Regarding defamation
action. (Ronemus, Michael) (Entered: 03/29/2005)
03/24/2005 176 AFFIDAVIT in Opposition re 161 MOTION for Summary Judgment [Nancy
Grigor's Notice of Correction of Nancy Grigor's Affidavit In Opposition To
Defendants' Rule 56(b) Motion For Summary Judgment (which was #165),
correcting one sentence with attached 2/13/05 letter from Ms. Weiss to Mr.
Ronemus alerting him of the correction which will be formalized] filed by Nancy
Grigor. (Weiss, Patricia) (Entered: 03/24/2005)
03/24/2005 175 Letter from Patricia Weiss to U.S.D.J. Denis R. Hurley Regarding response to two
letters from Defendants' counsel Mr. Ronemus, explaining that her first and only
experience with ECF has been with this EDNY case when it became mandatory in
August 2004 and Mr. Ronemus suffered no prejudice by the delay in e−filing the
exhibits because his copy was timely sent to him Express Mail, etc.. (Weiss,
03/24/2005 174 Letter from Michael B. Ronemus to Judge Denis R. Hurley Regarding Defamation
suit. (Ronemus, Michael) (Entered: 03/24/2005)
03/23/2005 173 Letter from Michael B. Ronemus to Judge Denis R. Hurley Regarding Plaintiff's
Opposition to Defendant's Motion for Summary Judgment. (Ronemus, Michael)
(Entered: 03/23/2005)
03/22/2005 172 Letter from Michael B. Ronemus to Judge Denis R. Hurley Regarding Scheduling
Order &Later Filings of Patricia Weiss. (Ronemus, Michael) (Entered: 03/22/2005)
03/07/2005 171 Letter from Patricia Weiss to USDJ Denis R. Hurley Regarding explanation as to
the reason for the delay in ECF "filing" of 9 exhibits to Nancy Grigor's Affidavit
and a request that the Court accept them as "timely e−filed" nunc pro tunc to
2/11/05 because they were "timely served" and have now been accepted by the
ECF system which previously did not accept them as a single "attachment" (too
large). (Weiss, Patricia) (Entered: 03/07/2005)
03/06/2005 170 EXHIBITS To Nancy Grigor's Affidavit in Opposition re 161 MOTION for
Summary Judgment, 165 Affidavit in Opposition to Motion Exhibits #2 through #9
to Nancy Grigor's Affidavit (Attachments: # 1 Exhibit #2 (part 1)# 2 Exhibit #2
(part 2)# 3 Exhibit #3# 4 Exhibit #4# 5 Exhibit #5# 6 Exhibit #6 (part 1)# 7 Exhibit
#6 (part 2)# 8 Exhibit #6 (part 3)# 9 Exhibit #7 (part 1)# 10 Exhibit #7 (part 2)# 11
Exhibit #8 (part 1)# 12 Exhibit #8 (part 2)# 13 Exhibit #9 (part 1)# 14 Exhibit #9
(part 2)# 15 Exhibit #9 (part 3)# 16 Exhibit #9 (part 4))(Weiss, Patricia), by
Hamptons Locations, Inc. Modified on 3/7/2005 (Fagan, Linda). (Entered:
03/06/2005)
03/06/2005 169 EXHIBITS to Nancy Grigor's Affidavit in opposition re 161 MOTION for
Summary Judgment, 166 Response in Opposition to Motion, 163 Response in
Opposition to Motion, Exhibit #1 to Nancy Grigor's Affidavit, by Nancy Grigor
(Weiss, Patricia) Modified on 3/7/2005 (Fagan, Linda). (Entered: 03/06/2005)
03/04/2005 168 REPLY to Response to Motion re 161 MOTION for Summary Judgment PART 2
filed by all defendants. (Ronemus, Michael) (Entered: 03/04/2005)
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03/04/2005 167 REPLY to Response to Motion re 161 MOTION for Summary Judgment filed by
all defendants. (Ronemus, Michael) (Entered: 03/04/2005)
02/11/2005 166 RESPONSE in Opposition re 161 MOTION for Summary Judgment Plaintiffs'
Memorandum of Law In Opposition To Defendants' Rule 56(b) Motion For
Summary Judgment filed by all plaintiffs. (Weiss, Patricia) (Entered: 02/11/2005)
02/11/2005 165 AFFIDAVIT in Opposition re 161 MOTION for Summary Judgment Nancy
Grigor's Affidavit In Opposition To Defendants' Rule 56(b) Motion For Summary
Judgment filed by all plaintiffs. (Weiss, Patricia) (Entered: 02/11/2005)
02/11/2005 164 AFFIDAVIT in Opposition re 161 MOTION for Summary Judgment Michael J.
Griffith, Esq.'s Affidavit In Opposition To Defendants' Motion For Summary
Judgment filed by all plaintiffs. (Weiss, Patricia) (Entered: 02/11/2005)
02/11/2005 163 RESPONSE in Opposition re 161 MOTION for Summary Judgment Plaintiffs'
Response To Defendants'Local Rule 56.1 Statement of Material and Undisputed
Facts AND Plaintiffs' Local Rule 56.1 Statement of Additional Disputed Facts That
Preclude Granting of Defendants' Rule 56(b) Motion For Summary Judgment filed
by all plaintiffs. (Weiss, Patricia) (Entered: 02/11/2005)
01/10/2005 162 LETTER dtd January 5, 2005 from Natasha Monellto Judge Hurley re: Enclosed
Notice of Motion, which the paralegal inadvertently did not attach to the Rule 56
(b) Motion for Summary Judgment. (Mierzejewski, Elizabeth) (Entered:
01/11/2005)
01/05/2005 Incorrect Case−Document Information filed. Docket entry 162 filed on 1/5/05 has
been deleted. (Docket entry 162 should have been attached as part of docket entry
#161, and not filed as a separate motion. All corrections have been made. ) (Fagan,
01/05/2005 161 MOTION for Summary Judgment by all defendants. Responses due by 1/6/2005
(Attachments: # 1 DEFENDANTS' MOTION FOR SUMMARY JUDGMENT −
Part I# 2 DEFENDANTS' MOTION FOR SUMMARY JUDGMENT − Part II# 3
DEFENDANTS' MOTION FOR SUMMARY JUDGMENT − Part III)(Ronemus,
Michael) Additional attachment(s) added on 1/6/2005 (Fagan, Linda). Modified on
5/16/2008 (Fagan, Linda). (Entered: 01/05/2005)
12/01/2004 ORDER re 158 First MOTION for Reconsideration filed by Richard Rubens,,
Barbara Rubens,, Darrell Rubens,, 159 Response to Motion filed by Hamptons
Locations, Inc.,, Nancy Grigor,, 160 Reply to Response to Motion filed by Richard
Rubens,, Barbara Rubens,, Darrell Rubens, − Application granted. The Court will
permit Defendants, through counsel, to file a second motion for summary judgment
and sets the following briefing schedule: Defendants shall serve their moving
papers on or before January 7, 2005; Plaintiffs shall serve and file their opposition
papers on or before February 11, 2005; Defendants shall serve their reply papers if
any, and file all papers with the Court, pursuant to the Court's individual rules, on
or before March 11, 2005. Signed by Judge Denis R. Hurley on 12/01/04. (Entered:
12/01/2004)
11/22/2004 160 REPLY to Response to Motion re 158 First MOTION for Reconsideration filed by
all defendants. (Ronemus, Michael) (Entered: 11/22/2004)
11/17/2004 159 RESPONSE to Motion re 158 First MOTION for Reconsideration filed by all
11/16/2004 158 First MOTION for Reconsideration by all defendants. (Ronemus, Michael)
Modified on 5/16/2008 (Fagan, Linda). (Entered: 11/16/2004)
10/26/2004 Endorsed ORDER on 157 Letter. Application denied. The Court has previously
entertained and denied Defts' summary judgment motion. Based on the informaton
provided, the Court denies Defts' request to file a second summary judgment
motion. ( Signed by Judge Denis R. Hurley on 10/26/04.) c/m (Fagan, Linda)
(Entered: 10/27/2004)
10/26/2004 157 Letter from Barbara Rubens to United States District Judge Hurley, dated 10/25/04
re: To request the Court's permission to make a summary judgment motion and to
further ask this Court to ignore Ms. Weiss's baseless request to have this Court
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order Darrell to answer any interrogatories since it would give her the right of
deposing Darrell through written questions. (Fagan, Linda) (Entered: 10/27/2004)
10/26/2004 156 ORDER re 154 Letter, 155 Letter − see attached order granting Mr. Israel's request
to withdraw as counsel. Mr. Israel is directed to serve a copy of this order on all
parties. Signed by Judge Denis R. Hurley on 10/25/04. (Entered: 10/26/2004)
10/22/2004 Incorrect Case−Document Information filed.docket entry Letters filed on 10/22/04
numbered 156 and 157 have been deleted. Aforementioned documents were
duplicate documents of document #155. (Fagan, Linda) (Entered: 10/25/2004)
10/22/2004 155 Letter from Patricia Weiss, Esq. to U.S.D.J. Hurley Regarding Plaintiffs' response
to Mr. Israel's pre−motion letter regarding his motion to withdraw as Defendants'
counsel and Plaintiffs' two related concerns. (Weiss, Patricia) (Entered:
10/22/2004)
10/12/2004 154 Letter from Sam P. Israel to Judge Hurley Regarding pre−motion request. (Israel,
Sam) (Entered: 10/12/2004)
09/10/2004 152 MANDATE of USCA: It is hereby ORDERED that the appellees' motion to
dismiss the appellants' pro se appeal is granted and the appellants' motion for leave
to file an interlocutory appeal is denied. Because the District Court's order did not
finally dispose of all claims in the case, it is interlocutory and not immediately
appealable. It is further ordered that the appellees' motion to stay the entry of a
scheduling order and appellant Richard Rubens' motion to stay the District Court
proceedings are denied as moot as to 98 Notice of Interlocutory Appeal, filed by
Richard Rubens, Barbara Rubens, Darrell Rubens. Copy of mandate sent to
Chambers. USCA# 04−1279−cv. (Duong, Susan) (Entered: 09/13/2004)
09/08/2004 151 Exhibit List , joint pre−trial order by Barbara Rubens.. (Israel, Sam) (Entered:
09/08/2004)
09/08/2004 150 Letter from Sam P. Israel to Judge Denis R. Hurley Regarding requested
conference to discuss defendants' proposed motion for summary judgment. (Israel,
Sam) (Entered: 09/08/2004)
09/08/2004 Original record returned from USCA. USCA# 04−1279−cv. (Duong, Susan)
(Entered: 09/08/2004)
09/03/2004 153 (Proposed) JOINT PRETRIAL ORDER (Attachments: # 1) (Not signed by
Chambers, on 9/3/04)(Fagan, Linda) (Entered: 09/21/2004)
08/31/2004 Judge William D. Wall no longer assigned to case. (Fagan, Linda) (Entered:
09/01/2004)
08/31/2004 149 ORDER The joint pretrial order is accepted for filing and the action is deemed
ready for trial. The action will be tried in accordance with the discretion and trial
calendar of the District Judge. Signed by Judge William D. Wall on 8/31/04.
c/g(Disbrow, Sandra) (Entered: 08/31/2004)
08/31/2004 148 Minute Entry for proceedings held before William D. Wall : Pretrial Conference
held on 8/31/2004. (Disbrow, Sandra) (Entered: 08/31/2004)
07/27/2004 147 ORDER denying without prejudice to renewal 141 Motion for Discovery; denying
as premature in part and moot in part 142 Motion for Discovery; and denying in
part and finding moot in part 144 Motion for Discovery. Signed by JudgeWilliam
D. Wall on 07/27/04. (Hepworth, F.) (Entered: 07/27/2004)
07/27/2004 146 Letter from Barbara Rubens to Judge Wall Regarding Ms. Rubens' July 19th letter
motion. (Hepworth, F.) (Entered: 07/27/2004)
07/27/2004 145 RESPONSE to Motion re 144 Letter MOTION for Discovery to compel PMI
deposition and document disclosure dated July 21, 2004 Letter from counsel for
non−party PMI listing deposition dates and document disclosures, dated July 22,
2004 . (Hepworth, F.) (Entered: 07/27/2004)
07/27/2004 144 Letter MOTION for Discovery to compel PMI deposition and document disclosure
dated July 21, 2004 by Barbara Rubens. (Hepworth, F.) (Entered: 07/27/2004)
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07/27/2004 143 RESPONSE in Opposition re 142 Letter MOTION for Discovery sanctions for
depositions of J. Winick and D. Rubens dated July 20, 2004 filed by Nancy Grigor,
Hamptons Locations, Inc. dated July 22, 2004. (Hepworth, F.) (Entered:
07/27/2004)
07/27/2004 142 Letter MOTION for Discovery sanctions for depositions of J. Winick and D.
Rubens dated July 20, 2004 by Darrell Rubens. (Hepworth, F.) (Entered:
07/27/2004)
07/27/2004 141 Letter MOTION for Discovery to compel document disclosure and for sanctions
dated July 19, 2004 by Barbara Rubens. (Hepworth, F.) (Entered: 07/27/2004)
07/22/2004 134 NOTICE of Appearance by Sam P. Israel on behalf of Barbara Rubens, Darrell
Rubens, Richard Rubens (Talbott, Thomas) (Entered: 07/23/2004)
07/20/2004 132 ORDER pursuant to Rule 16(g) and 37, the court orders plaintiffs be precluded
from taking the deposition of defendant Darrell Rubens. Signed by Judge William
D. Wall on 7/20/04. cf(Talbott, Thomas) Additional attachment(s) added on
7/22/2004 (Talbott, Thomas). (Entered: 07/22/2004)
07/15/2004 Endorsed ORDER on 140 Letter. Application denied. To repeat, all discovery
matters are respectfully referred to Judge Wall. Because, in the Court's perception,
defts have abused their communication privilege (specfically with regard to
telephoning chambers), the Court will no longer permit defts to call chambers.
Should defts violate this order, the Court may impose appropriate sanctions.(
Signed by Judge Denis R. Hurley on 7/15/04. ) c/m(Fagan, Linda) (Entered:
07/26/2004)
07/15/2004 140 Letter from Darrell Rubens to United States District Judge Hurley, dated 7/14/04
re: To request that this Court call a conference with respect to discovery matters.
07/15/2004 139 ORDER granting 135 Motion to Compel to the extent that dft may depose Ms.
Gosein no later than 8/4/04. Mr. Coate shall provide a written statement of the
facts, PMI a formal response to document request. Both served two days prior to
deposition. Signed by JudgeWilliam D. Wall on 7/15/04.cf (Talbott, Thomas)
(Entered: 07/23/2004)
07/14/2004 136 RESPONSE in Support re 135 Letter MOTION to Compel deposition of a
non−party witness filed by Darrell Rubens. (Talbott, Thomas) (Entered:
07/23/2004)
07/13/2004 138 Letter dated 7/12/04 from Mitchell Troyetsky to Magistrate Wall. Re: This office
represents Photographic Management Inc.and William Coate. The subpoena for
Mr. Coate. (Talbott, Thomas) (Entered: 07/23/2004)
07/13/2004 133 Letter from Patricia Weiss to United States District Judge Denis R. Hurley, dated
7/12/04 re: To respond to Deft Barbara Rubens' 7/8/04 facsimile to the Court; and
to oppose Mrs. Rubins' letter motion to postpone her 7/12/04 deposition and to
hold a conference for the purpose of discussing a sua sponte dismissal of this case.
07/12/2004 137 RESPONSE to Motion re 135 Letter MOTION to Compel deposition of a
non−party witness filed by Nancy Grigor, Hamptons Locations, Inc.. (Talbott,
Thomas) (Entered: 07/23/2004)
07/09/2004 135 Letter MOTION to Compel deposition of a non−party witness by Barbara Rubens.
(Talbott, Thomas) (Entered: 07/23/2004)
07/09/2004 Endorsed ORDER on 131 Letter. Application denied. all discovery matters are
respectfuly referred to Judge Wall. Additionally, Defts are not permitted to
circumvent the rules of this Court by faxing documents to the Clerk's office with
instructions to deliver the documents to chambers. The Court will not accept
service of documents in that manner, and if defts violate this order, the Court may
impose appropriate sanctions. ( Signed by Judge Denis R. Hurley on 7/9/04. )
c/m(Fagan, Linda) (Entered: 07/20/2004)
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07/09/2004 131 Letter from Barbara Rubens to Clerk's Office, dated 7/8/04 re: To request that the
Court postpone Barbara Rubens deposition scheduled for 7/12/04; and that the
Court schedule a conference with all parties. (Fagan, Linda) (Entered: 07/20/2004)
07/09/2004 Endorsed ORDER on 130 Letter. Application denied. Defts have not shown that
reconsideration is warranted, see Local Rule 6.3.( Signed by Judge Denis R. Hurley
on 7/9/04. ) c/m eod #130(Fagan, Linda) (Entered: 07/20/2004)
07/09/2004 130 Letter from Barbara Rubens to Clerk's Office, dated 7/8/04 re: To request that the
Court reconsider or allow defts to reargue their motion for summary judgment.
07/09/2004 129 ORDER denying 128 Motion for Reconsideration of 6/21/04 order. Denying
motion to rescind 126 Order of 7/2/04. Deposition of Barbara Rubens shall take
place on July 12, 2004 at 10:00 a.m. as previously ordered by the court. Signed by
Judge William D. Wall on 7/9/04. c/f (Disbrow, Sandra) (Entered: 07/09/2004)
07/09/2004 128 Letter MOTION for Reconsideration re 119 order stated in court by Magistrate
Judge Wall, and to rescind order allowing Mr. Griffith to attend depositions by
Barbara Rubens. (Disbrow, Sandra) Modified on 7/9/2004 (Talbott, Thomas).
(Entered: 07/09/2004)
07/08/2004 127 ORDER denying 123 Motion to Compel without prejudice to renewal upon
compliance with the service provisions of Rule 45. Signed by JudgeWilliam D.
Wall on 7/8/04. c/f (Disbrow, Sandra) (Entered: 07/08/2004)
07/02/2004 126 ORDER denying 124 Motion to exclude nonparty witness Michael Griffith from
defendants' depositions, without prejudice to renewal should Mr. Griffith prove
unable or unwilling to abide by conditions of attendance. Signed by JudgeWilliam
D. Wall on 7/2/04. c/f (Disbrow, Sandra) (Entered: 07/02/2004)
07/02/2004 125 Letter dated 7/2/04 from Richard Rubens to Magistrate Wall. RE: in support of
Barbara Rubens letter motion of 6/29/04 (doc # 124). (Talbott, Thomas) (Entered:
07/02/2004)
06/30/2004 123 Letter MOTION to Compel deposition and production of documents of Mr Coate
by Barbara Rubens. (Talbott, Thomas) (Entered: 07/02/2004)
06/30/2004 122 Letter dated 6/30/04 from Barbara Rubens to Magistrate Wall. RE: response to
plaintiffs counsel not apearing at deposition. (Talbott, Thomas) (Entered:
07/02/2004)
06/30/2004 121 Letter dated 6/28/04 from Patricia Weiss to Magistrate Wall. RE: Apologize for not
appearing at deposition. (Talbott, Thomas) (Entered: 07/02/2004)
06/29/2004 124 Letter MOTION to Compel Mr. Griffith to not appear at depositions other than his
own by Barbara Rubens. (Talbott, Thomas) (Entered: 07/02/2004)
06/23/2004 120 Letter dated 6/23/04 from Darrell Rubens to Magistrate Wall. RE: enclosed is
transcript of Jeff Winick's deposition. (Talbott, Thomas) (Entered: 07/02/2004)
06/21/2004 119 Minute Entry for proceedings held before William D. Wall : Motion Hearing held
on 6/21/2004 re 115 Letter MOTION to Compel the defendants to appear at the
courthouse for their depositions filed by Hamptons Locations, Inc., Nancy Grigor,
117 Letter MOTION to Compel discovery filed by Richard Rubens, Motions
terminated: 115 Letter MOTION to Compel the defendants to appear at the
courthouse for thei depositions filed by Hamptons Locations, Inc., Nancy Grigor,
117 Letter MOTION to Compel discovery filed by Richard Rubens. The
defendants' motion of 6/12/04 is granted as follows. The parties will be deposed at
the Courthouse: Darrell Rubens 6/28/04;Richard Ruben 7/6/04;Barbara Rubens
7/12/04;Nancy Grigor 7/23/04. The defendants motion on 6/14/04 is granted. The
plaintiffs shall serve responses to all pending discovery demands no later than
7/16/04. All factual discovery due 8/20/04. The next pretrial conference 8/31/04 at
10:00 as previously scheduled. The joint pretrial order due at conference. (Talbott,
Thomas) (Entered: 07/02/2004)
06/21/2004 114 ORDER re 112 Letter, 113 Letter. On 2/17/04, the Court issued an order denyng
Defts' motion for summary judgment and granting Pltffs' motion to dismiss Defts'
counterclaims. On 3/10/04, Defts filed a document entitled "Petition for Permission
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to Appeal" ("petition") in the district court Clerk's office. Although Defts filed the
petition in the district court Clerk's office, they addressed it to the United States
Court of Appeals for the Second Circuit. The Clerk's office then forwarded the
petition and the case file to the Second Circuit. This Court was not aware of the
petition until it received a copy of same on 5/13/04. By letter dated 6/7/04, Defts
inquired about the status of the petition, stating that "[i]t seems as if this Petition
has only sat in the box of your Court's clerk's office for several months and has not
been sent to chambers for your permission and or decision>." Apparently, Defts
seek permission from this Court to appeal this Court's decision to the Second
Circuit. Because the Court's 2/17/04 order was not a final order, in order to appeal
that decision this Court must certify the issue to the Second Circuit. To the extent
that the petition is addressed to this Court to certify an appeal to the Second
Circuit, Defts' request is denied because they have not stated adequate grounds for
appeal. Additionally, Defts' request to stay discovery is denied. The Court is also in
receipt of Defts' letter dated 6/14/04, regarding several discovery−related matters.
The Court respectfully refers all discovery matters to Magistrate Judge Wall. (
Signed by Judge Denis R. Hurley on 6/21/04. ) c/m (Fagan, Linda) (Entered:
07/01/2004)
06/16/2004 118 Letter dated 6/14/04 from Richard Rubens to Patricia Weiss. RE: Discovery
demands that were sent on 6/7/04 (Talbott, Thomas) (Entered: 07/02/2004)
06/16/2004 117 Letter MOTION to Compel discovery by Richard Rubens. (Talbott, Thomas)
(Entered: 07/02/2004)
06/16/2004 116 RESPONSE to Motion re 115 Letter MOTION to Compel the defendants to appear
at the courthouse for their depositions filed by Richard Rubens. (Talbott, Thomas)
(Entered: 07/02/2004)
06/16/2004 113 Letter from Richard Rubens to Judge Hurley, dated 6/14/04 re: To advise the Court
of the submission of the enclosed copy of the letter written to Magistrate Judge
Wall along with the documentation provided him in response to Partricia Weiss's
letter to Judge Wall (copy enclosed dated 6/12/04); To request that defts be able to
make a Motion to this Court to compel discovery or in the alternative strike any
reference to any of the documents, evidence or testimony relating to these
unresponsive requests at trial. (Fagan, Linda) (Entered: 07/01/2004)
06/16/2004 112 Letter from Richard Rubins to Judge Hurley, dated 6/7/04 re: To request that all
proceedings be stayed until the hearing and determination of their Petition for
Permissin to Appeal from the Court's decision of 2/17/04. (Fagan, Linda) (Entered:
07/01/2004) (Fagan, Linda) (Entered: 07/01/2004)
06/16/2004 109 ORDER adjourning conference from 6/18/04 to 6/21/04 at 4:00 p.m. Signed by
Judge William D. Wall on 6/16/04. c/f(Disbrow, Sandra) (Entered: 06/16/2004)
06/15/2004 115 Letter MOTION to Compel the defendants to appear at the courthouse for thei
depositions by Nancy Grigor, Hamptons Locations, Inc.. (Talbott, Thomas)
(Entered: 07/02/2004)
06/15/2004 107 ORDER scheduling conference for 6/18/04 at 1:30 p.m. Signed by Judge William
D. Wall on 6/15/04. c/f(Disbrow, Sandra) (Entered: 06/15/2004)
06/14/2004 108 Letter from Patricia Weiss, Esq. to Hon. William D. Wall dated 6/12/04 re:
requesting the Court's assistance in connection with discovery which is to be
completed by 6/30/04. More specifically, I request that the Court order the pro se
defendants to appear at the Courthouse for their depositions as follows: Darrell
Rubens − 6/21/04 at 10 a.m.; Barbara Rubens − 6/22/04 at 10 a.m.; and Richard
Rubens − 6/23/04 at 10 a.m. (Mahon, Cinthia) (Entered: 06/15/2004)
06/08/2004 111 CERTIFICATE OF SERVICE for Subpoena In A Civil Case, filed by Nancy
Grigor, Hamptons Locations, Inc. Jeffrey Winick, 655 Third Avenue, 8th Fl.,
N.Y.C. 10017−5617 (212) 792−2600 served on Jeffrey Winick on 6/1/04. (Fagan,
06/08/2004 110 Letter from Richard Rubens to Patricia Weiss, Esq., dated 6/2/04 re: To advise
pltff's counsel that unless she complies with defts discovery requests, defts will be
forced to make a Motion to Comply and ask the court for appropriate sanctions.
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05/18/2004 106 Letter dtd. 5/13/04 from Richard Rubens to A. Basile confirming information
received by her via telephone re Permission for an Inerlocutory Appeal. (Barhome,
Sydelle) (Entered: 05/20/2004)
05/13/2004 104 USCA Acknowledgment received: index to the record on appeal. USCA#
04−1279. (Duong, Susan) (Entered: 05/13/2004)
05/13/2004 Certified copy of document #103 (Motion for Leave to Appeal) and certified copy
of docket sheet forwarded to US Court of Appeals. Attn: Robert Rodriguez re 98
Notice of Interlocutory Appeal. (Basile, Antonietta) (Entered: 05/13/2004)
04/21/2004 Certified and Transmitted Original Record on Appeal to US Court of Appeals:
including original and 3 copies of the index to the record on appeal, clerk's
certificate and certified copy of docket sheet forwarded to USCA re 98 Notice of
Interlocutory Appeal. Acknowledgment requested. (Basile, Antonietta) (Entered:
04/21/2004)
03/29/2004 99 SCHEDULING ORDER: Final Pretrial Conference set for 8/31/2004 10:00 AM
before Magistrate−Judge William D. Wall. Additional deadlines established.
Signed by Judge William D. Wall on 3/29/04. c/g (Disbrow, Sandra) (Entered:
03/29/2004)
03/29/2004 Minute Entry for proceedings held before William D. Wall : Status Conference
held on 3/29/2004. Patricia Weiss for pltfs; Richard Rubens (pro se), Barbara
Rubens (pro se), Darrell Rubens (pro se). (Disbrow, Sandra) (Entered: 03/29/2004)
03/17/2004 102 Letter dated 3/12/2004 from Helena M. Harris, Intake/Records Manager from
USCA to Appellate Clerk. Regarding: The enclosed Notice of Appeal received
3/10/2004, was mistakenly sent to the Court of Appeals, and transmit it to you for
filing. (Note: Notice of Appeal was filed on 3/10/2004 with EDNY and processed
on 3/11/2004; see document# 98) (Basile, Antonietta) (Entered: 04/23/2004)
03/10/2004 103 MOTION for Leave to Appeal by Barbara Rubens, Darrell Rubens, Richard
Rubens. (Basile, Antonietta) (Entered: 05/12/2004)
03/10/2004 98 NOTICE OF INTERLOCUTORY APPEAL as to 97 Order on Motion to Dismiss,,
Order on Motion for Summary Judgment,, Order on Motion for Sanctions, by
Barbara Rubens, Darrell Rubens, Richard Rubens. Filing fee $ 255, receipt number
12302. Copy of notice of appeal, copy of memorandum &order, court receipt and
certified copy of the docket sheet forwarded to USCA. Copy of notice of appeal
sent to Chambers. Service made by Appellants. (Duong, Susan) (Entered:
03/11/2004)
02/26/2004 94 ORDER: Set conference date. Signed by Judge William D. Wall on 2/26/04.
c/m(Disbrow, Sandra) (Entered: 02/26/2004)
02/17/2004 97 ORDER: Dfts' motion for summary judgment is DENIED. Pltffs' motion to dismiss
dfts' counterclaims is GRANTED. The court hereby refers the matter to USMJ
Wall for expedited discovery. The Court inteds to begin the trial in September
2004. Signed by JudgeDenis R. Hurley on 2/17/04.cm (Motions terminated)
(Lopez, Adriana) (Entered: 03/02/2004)
11/12/2003 87 Letter dated 11/8/03 from Richard Rubens to Mag. Judge Wall re: In response to
your Order dated 11/5/03, defendants would like to inform this Court on 10/7/03,
pior to this Order of the Court, sent the tape in question to the plaintiffs. This tape
was sent as an exhibit to defendants' reply to plaintiffs' opposition to defendants'
Motion for Summary Judgment. (Dachille, Patti) (Entered: 11/24/2003)
11/05/2003 100 ORDER The Court will deny the Plaintiffs' motions for sanctions against the
defendatn, Richard Rubens, for not producing a copy of an audiotape at this time,
without prejudice to renewal if Mr. Rubens is to produce the tape by 11/14/03. If
Mr. Rubens does not do so, the plaintiffs shall notify the court and sanction will be
imposed. . Signed by Judge William D. Wall on 11/5/04. cm(Mierzejewski,
Elizabeth) (Entered: 04/21/2004)
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10/24/2003 96 Letter dtd 10/22/03 from Richard Rubens to USDJ Hurley re: Dfts pray this court
to accept their rule 56.1 statement and grant summary judgment in favor of dfts..
(Lopez, Adriana) (Entered: 03/02/2004)
10/15/2003 95 Letter dtd 10/14/03 from Patricia Weiss to USDJ Hurley re: This is a letter motion
to strike dfts' purported Local Rule 56.1 statement. (Lopez, Adriana) (Entered:
03/02/2004)
10/10/2003 93 Letter from Pro se defendants dtd. 10/7/03 to Mag/Judge Wall, in response to
plaintiff's letter dtd. 9/29/03 in reply to plaintiff's letter in opposition to defts'
cross−motion. (Montero, Edher) (Entered: 11/26/2003)
10/10/2003 86 Letter dtd. 10/7/03 from dfts to Mag. J. Wall pertaining to a Protective Order which
would "protect" dfts from their fear of physical harm for themselves and their
property based on the threats made to them by plfs. (Barhome, Sydelle) (Entered:
11/06/2003)
10/08/2003 84 REPLY TO PLAINTIFFS OPPOSITION to defendants motion for summary
judgment by Barbara Rubens, Darrell Rubens, Richard Rubens Opposition
(Mierzejewski, Elizabeth) (Entered: 10/15/2003)
10/02/2003 83 RULE 56.1 STATEMENT re 75 MOTION for Summary Judgment by Barbara
Rubens, Darrell Rubens, Richard Rubens. (Mierzejewski, Elizabeth) (Entered:
10/15/2003)
10/02/2003 82 LETTER dtd 9/26/03 from Richard Rubens to Ms Weiss Regarding The enclosed
56.1 statement that is now being added to the motion. (Mierzejewski, Elizabeth)
(Entered: 10/15/2003)
10/01/2003 85 Letter dtd. 9/30/03 from Patricia Weiss to Hon. J. Hurley noting enclosure of
copies of Plfs' papers in opposition to Dfts' Rule 56(b) motion for summary
judgment. (Barhome, Sydelle) (Entered: 10/17/2003)
10/01/2003 79 MEMORANDUM in Support re 75 MOTION for Summary Judgment by Richard
Rubens. (Mierzejewski, Elizabeth) (Entered: 10/03/2003)
10/01/2003 78 MEMORANDUM in Opposition re 75 MOTION for Summary Judgment by
Hamptons Locations, Inc.. (Mierzejewski, Elizabeth) (Entered: 10/03/2003)
09/29/2003 92 CERTIFICATION UNDER RULE 26 filed by Barbara Rubens, Darrell Rubens,
Richard Rubens (Montero, Edher) (Entered: 11/26/2003)
09/29/2003 91 Letter from Patricia Weiss dtd. 9/29/03 to Mag/Judge Wall, in opposition to the
defts' cross−motion for a protective order. (Montero, Edher) (Entered: 11/26/2003)
09/29/2003 90 Letter from pro se defendants dtd. 9/26/03 to Mag/Judge Wall Regarding
requesting that court amend their order to include that deft had the right to
cross−motion for protective order. (Montero, Edher) (Entered: 11/26/2003)
09/29/2003 89 Letter from Barbara and Richard Rubens dtd. 9/26/03 to Mag/Judge Wall in
response to plaintiffs' letter motion seeking a protective order and making a
cross−motion. (Montero, Edher) (Entered: 11/26/2003)
09/25/2003 88 Letter MOTION for Sanctions for deft's failure to provide a copy of a videotape of
5/9/03 tele conversation between Darrell Rubens and Michael J. Griffith, Esq.,
filed by Nancy Grigor, Hamptons Locations, Inc.. (Montero, Edher) (Entered:
11/26/2003)
09/23/2003 81 Minute Entry Case called. for proceedings held before William D. Wall : For
Plaintiff: Patricia Weiss, For Defendant: Richard Rubens, Darrell Rubens, Barbara
Rubens. Status Conference held on 9/23/2003. The status conference is adjourned
without a date, pending Judge Hurley's Decision on the Rule 56 Motion. Ms. Weiss
shall contact this Court upon receipt of the decision. Plaintiff may move for
sanctions to this court for defendant's refusal to comply with this Court's orders.
The pretrial conference scheduled for 2/10/03 is also adjourned without a date. So
Ordered cm (Mierzejewski, Elizabeth) (Entered: 10/09/2003)
09/09/2003 80 ORDER vacating the defendant's motion for summary judgment dtd 6/27/03..
Signed by Judge Denis R. Hurley on 9/9/03. cm(Mierzejewski, Elizabeth)
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(Entered: 10/03/2003)
09/08/2003 76 AFFIDAVIT in Support re 75 MOTION for Summary Judgment by Barbara
Rubens, Darrell Rubens, Richard Rubens. (Mierzejewski, Elizabeth) (Entered:
09/17/2003)
09/08/2003 75 MOTION for Summary Judgment by Barbara Rubens, Darrell Rubens, Richard
Rubens. (Mierzejewski, Elizabeth) (Entered: 09/17/2003)
08/19/2003 73 LETTER dtd 8/18/03 from Counsel for Plaintiffs to Judge Hurley Regarding
Request for clarification of the two orders which set two different briefing
schedules for defendants' anticipated Rule 56(b) motion(s).. (Mierzejewski,
08/14/2003 Appeal Record Returned from USCA. USCA# 03−7333. (Duong, Susan) (Entered:
08/20/2003)
08/14/2003 72 MANDATE of USCA as to 40 Appeal − Miscellaneous, filed by Darrell Rubens
Re: It is ORDERED that Appellees' motion to dismiss the appeal is granted and the
appeal is dismissed. The Appellees' motion for costs is denied because they have
failed to show bad faith or vexatious tactics on the part of Appellant. Copy of
mandate sent to Chambers. USCA# 03−7333.(Duong, Susan) (Entered:
08/20/2003)
08/13/2003 ORDER denying the 74 Letter motion that the Court rescind Magistrate Judge
Wall's order. Plaintiff, Richard Rubens, has failed to meet his burden of proof by
showing that Judge Wall's ruling was clearly erroneous or contrary to law.
Plaintiffs application for a protective order is denied as well, with leave to renew
the application before Magistrate Judge Wall.. Signed by Judge Denis R. Hurley on
8/13/03. cm(Mierzejewski, Elizabeth) (Entered: 09/05/2003)
08/13/2003 74 LETTER MOTION dtd 8/12/03 from Richard Rubens to Judge Hurley Regarding
Request that the Court rescind the order of Magistrate Judge Wall to allow
defendants to make a motion for a Protective Order.. (Mierzejewski, Elizabeth)
(Entered: 09/05/2003)
08/05/2003 77 Letter dtd. 8/4/03 from Patricia Weiss to Hon. J. Hurley opposing Richard Rubens'
7/28/03 letter asking the court "to rescind the order of Mag. J. Wall dated 7/17/03,
and if not, allow Richard Rubens and the other two defendants to make a motion
for a protective order. (Barhome, Sydelle) (Entered: 09/30/2003)
08/04/2003 71 LETTER dtd 7/31/03 from Richard Rubens to Judge Hurley Regarding The order
dtd 7/28/03 was previously received on 6/27/03. Based on the first Order of
6/27/03, the defendants, made a motion for summary Judgment and made it
returnable by 9/12/03 as per the instructions.. (Mierzejewski, Elizabeth) (Entered:
08/20/2003)
07/29/2003 70 LETTER dtd 7/28/03 from Richard Rubens to Judge Hurley Regarding Request
that the court rescind the order of Magistrate Judge Wall dated 7/17/03, and if not,
allow a motion to be made for a protective order.. (Mierzejewski, Elizabeth)
(Entered: 08/20/2003)
07/29/2003 69 LETTER dtd 7/28/03 from Richard Rubens to Judge Hurley Regarding Request
that the Court rescind the order of Magistrate Judge Wall dtd 7/17/03, and if not,
allow a motion to be made for a protective order.. (Mierzejewski, Elizabeth)
(Entered: 08/19/2003)
07/28/2003 68 ORDER that the Court sets the following briefing schedule with respect to
Defendants' motion for summary judgment: Defendants shall serve their opposition
papers on or before 9/5/03; Plaintiff shall serve their opposition on or before
10/6/03; Defendants shall serve their reply papers, if any, and file all papers with
the Court on or before 10/20/03. (Signed by Judge Denis R Hurley on 7/28/03) cm
07/01/2003 67 Letter dtd 7/1/03 from Richard Rubens to Judge Wall Regarding The tape that was
made of the Griffith conversation will not be used as evidence and therefore should
not be part of disclosure. As the Court knows, anything that may be used solely for
impeacchment is in no way part of disclosure.. (Mierzejewski, Elizabeth) (Entered:
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08/11/2003)
06/27/2003 65 ORDER that the Court hereby waives the requirement of a pre−motion conference
and sets the following briefing schedule with respect to the Defendants' motion for
Summary Judgment: Defendants shall serve their moving papers on or before
7/31/03; Plaintiffs shall serve their opposition papers on or before 8/29/03;
Defendant shall serve their reply papers, if any, and file all papers with the Court
on or before 9/12/03.. Signed by Judge Denis R. Hurley on 6/27/03. (Mierzejewski,
06/26/2003 66 Letter from Patricia Weiss to Judge Wall Regarding: When Ms. Weiss appeared
before the Court today, she stated that Plaintiffs had filed a motion to dismiss both
of Defendants' counterclaims and mistakenly described them as (1) "abuse of
process" and (2) "defamation". She meant to describe the second counterclaim as
one based upon "extortion" rather than describing it as "defamation."
06/24/2003 64 SCHEDULING ORDER: Final Pretrial Conference set for 2/10/2004 at 11:00 AM
before Magistrate−Judge William D. Wall. Telephone Status Conference set for
9/23/2003 at 02:00 PM before Magistrate−Judge William D. Wall. Discovery of
factual matters due by 12/23/2003. See Order for details as to expert discovery.
Dispositive motions due by 1/20/2004. Motions to join new parties or to amend the
pleadings must be made by 11/18/03. This case should be ready for trial by
2/24/04. Signed by Judge William D. Wall on 6/24/03. c/g.(D'Achille, Patty)
(Entered: 07/09/2003)
06/24/2003 63 Minute Entry for proceedings held before William D. Wall : Initial Conference
Hearing held on 6/24/2003 at 10:00 a.m. Counsel for all sides present. (D'Achille,
Patty) (Entered: 07/09/2003)
06/17/2003 62 Letter from Defendants to Judge Hurley Regarding It is absurd for plaintiffs to
claim they need a transcript of the prior action and that plaintiffs need to conduct
discovery to obtain this transcript. They have had more than one year to obtain this
transcript if they wanted it.. (Mierzejewski, Elizabeth) (Entered: 06/26/2003)
06/11/2003 60 Letter from Patricia Weiss to the Clerk of Court Regarding Enclosed motion to
dismiss with supporting papers of Plaintiff. (Mierzejewski, Elizabeth) (Entered:
06/24/2003)
06/11/2003 56 REPLY in Support re 54 MOTION to Dismiss the Counterclaims by Nancy
Grigor, Hamptons Locations, Inc.. (Mierzejewski, Elizabeth) (Entered: 06/18/2003)
06/11/2003 55 MEMORANDUM OF LAW in support or opposition to Plaintiff's motion to
dismiss counterclaim by , Barbara Rubens, Darrell Rubens, Richard Rubens
(Mierzejewski, Elizabeth) Modified on 6/24/2003 (Mierzejewski, Elizabeth).
(Entered: 06/18/2003)
06/11/2003 54 MOTION to Dismiss the Counterclaims by Nancy Grigor, Hamptons Locations,
Inc.. (Mierzejewski, Elizabeth) (Entered: 06/18/2003)
06/10/2003 61 REPLY MEMORANDUM OF LAW in Further Support of Plfs' Motion to Dismiss
Counterclaims pursuant to Fed. R.Civ.P. 12 &8 by Nancy Grigor, Hamptons
Locations, Inc., to attorneys in this action cc to Hon.J. Hurley (Barhome, Sydelle)
(Entered: 06/25/2003)
06/03/2003 57 Letter dtd. 6/2/03 from Patricia Weiss, Esq. to Hon. J. Hurley stating that for the
foregoing reasons outlined in this letter, Dfts' request to move for summary
judgment should be denied, without prejudice to move for summary judgment at
the completion of all discovery. (Barhome, Sydelle) (Entered: 06/19/2003)
05/21/2003 53 MEMORANDUM in Support of opposition to Plaintiff's motion to dismiss
counterclaim by Nancy Grigor, Barbara Rubens, Darrell Rubens, Richard Rubens.
05/13/2003 ORDER signed by Judge Denis R. Hurley on 5/19/03 re: Application denied
w/leave to renew on the following schedule: Pltfs shall submit a letter brief, w/no
more than five (5) pages, stating why, pursuant to Fed. R. Civ. P. 56(f) and
applicable caselaw, they cannot adequately respond to a motion for summary
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judgment on or before 6/3/03. Defts shall respond on or before 6/17/03. If the

Court does not receive a submission from pltfs on or before 6/3/03, the Court will
waive any pre−motion conference and issue an order requesting the submission of
a motion for summary judgment. c/m. EOD #51.(D'Achille, Patty) (Entered:
05/28/2003)
05/06/2003 50 LETTER dated 5/5/03 from Defendant to Judge Hurley (Mierzewski, Liz)
(Entered: 05/08/2003)
04/29/2003 51 Letter dtd 4/28/03 from counsel for plaintiffs to Judge Hurley re: Request to move
for summary judgment should be denied, without prejudice to move for summary
judgment at the completion of all discovery. (Mierzejewski, Elizabeth) (Entered:
05/13/2003)
04/28/2003 59 Letter from Counsel for Plaintiffs to Judge Hurley Regarding Request to move for
Summary Judgment at the completion of discovery. (Mierzejewski, Elizabeth)
(Entered: 06/23/2003)
04/28/2003 52 Letter dtd 4/28/03 from Counsel for plaintiffs to Judge Hurley re: Request to move
for summary judgment at the completion of all discovery. (Mierzejewski,
04/23/2003 45 Acknowledgment from USCA received re: Index to the record on appeal and
original record [40−1] appeal. USCA# 03−7333. (Duong, Susan) (Entered:
04/23/2003)
04/18/2003 58 Letter dtd 4/18/03 from Counsel for Defendants to Judge Hurley Regarding
Request that the Court adjourn the 5/2/03 scheduling conference until the decision
of the defendant's Rule 56 Summary Judgment Motion is made. (Mierzejewski,
04/16/2003 49 LETTER dated 4/15/03 from Patricia Weiss to Defendants re: Enclosed copies of
Plaintiffs' Notice of motion with supporting papers to dismiss the counterclaims
pursuant to Fed.R.Civ.P. 12 &8. (Mierzewski, Liz) (Entered: 04/29/2003)
04/16/2003 Endorsed order granting [48−1] motion to extend time for the initial conference,
status conference for 10:00 6/24/03 before Magistrate William D. Wall Ms. Weiss
shall serve a copy of this order on all parties( Signed by Magistrate William D.
Wall , on 4/16/03) cm (Mierzewski, Liz) (Entered: 04/28/2003)
04/14/2003 48 Letter MOTION by Hamptons Locations, Nancy Grigor to extend time for the
initial conference , No Motion hearing (Mierzewski, Liz) (Entered: 04/28/2003)
04/03/2003 Certified and transmitted original record on appeal to U.S. Court of Appeals:
including original and 3 copies of the index to the record on appeal, clerk
certificate and certified copy of docket sheet [40−1] appeal . Acknowledgment
requested. (Duong, Susan) (Entered: 04/03/2003)
04/02/2003 46 MEMORANDUM and ORDER, that the Court waives the requirement of a
pre−motion conference and sets forth the following schedule with respect to
Plaintiffs' motion to dismiss: Plaintiffs serve their moving papers on or before
5/5/03. Defendants shall serve their opposition papers on or before 6/6/03.
Plaintiffs shall file their reply, if any by 6/20/03. Failure by any Defendant to
respond to this motion may result in a dismissal of the Counterclaims ( signed by
Judge Denis Hurley , on 4/2/03) cm (Mierzewski, Liz) (Entered: 04/24/2003)
04/02/2003 Endorsed order granting motion for an extension of time to file a notice of appeal (
Signed by Judge Denis Hurley , on 4/02/03) (Duong, Susan) (Entered: 04/03/2003)
03/14/2003 47 NOTICE of Automatic Dislosures pursuant to Fed.R.Civ.P. 26(a)(l)by Hamptons
Locations, Nancy Grigor (Mierzewski, Liz) (Entered: 04/28/2003)
03/14/2003 39 ORDER, set status conference for 10:30 5/2/03 before Magistrate William D. Wall
( signed by Magistrate William D. Wall , on 3/14/03) cm (Mierzewski, Liz)
(Entered: 04/01/2003)
03/13/2003 41 MOTION by Darrell Rubens to extend time to file a notice of appeal , Motion
hearing Motion file stamped: 3/13/03. (Duong, Susan) (Entered: 04/03/2003)
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03/13/2003 40 NOTICE OF INTERLOCUTORY APPEAL of [26−1] order extending time for
Richard And Barbara Rubens to file and serve a motion for reconsideration to
2/10/03. Defendants are to file and serve an answer to the complaint by 2/10/03.
Darrell Rubens has failed to respond to this Court's order dtd 12/17/02 to answer
the complaint and has not requested an enlargement of time to file a motion for
reconsideration. With respect to defendant Darrell Rubens, Plaintffs have leave of
the Court to file a motion seeking a default judgment against him. by Darrell
Rubens Fee Paid $ 105.00 Receipt # 9081. Copy of notice of appeal, copy of order,
court receipt and certified copy of docket sheet forwarded to USCA. Copy of
notice of appeal sent to Chambers. Service made by Appellant. (Duong, Susan)
(Entered: 04/03/2003)
03/11/2003 37 LETTER dated 3/5/03 from Pro se Staff Attorney to Barbara Rubens advising that
the Chief Judge does not oversee cases that are assigned to other district judges and
advising that she should pursue an appeal. (Noh, Kenneth) (Entered: 03/11/2003)
03/11/2003 36 LETTER dated 2/17/03 from Barbara Rubens to USDJ Edward R. Korman re:
missing documents. (Noh, Kenneth) (Entered: 03/11/2003)
02/20/2003 38 LETTER dated 2/17/03 from Darrell Rubens to Judge Hurley re: Request that the
court reconsider the Memorandum and Order and not grant the Plaintiffs request
for default or in the alternative give permission to make a motion to reargue.
(Mierzewski, Liz) (Entered: 03/17/2003)
02/20/2003 35 ORDER, denying motion for reconsideration of the Court's 12/17/02 order ( signed
by Judge Denis Hurley , on 2/20/03) cm (Mierzewski, Liz) Modified on
04/03/2003 (Entered: 02/27/2003)
02/20/2003 34 MEMORANDUM by Hamptons Locations in opposition to the motion for
reconsideration. (Mierzewski, Liz) (Entered: 02/25/2003)
02/10/2003 Endorsed order denying [27−1] motion to extend time to reargue this Court's
Decision/Order of December 2002. Defendant has not file a timely request for
reconsideration or met his burden of establishing good cause for an extension of
the ten day time limit. ( Signed by Judge Denis Hurley , on 2/10/03) cm
02/08/2003 31 MOTION by Richard Rubens, Barbara Rubens, Darrell Rubens to reconsider the
Motion to dismiss , No Motion hearing Motion file stamped: 2/10/03 and
mailed/served: 2/7/03 (Mierzewski, Liz) Modified on 6/24/2003 (Mierzejewski,
Elizabeth). (Entered: 02/19/2003)
02/07/2003 32 MEMORANDUM by Richard Rubens, Barbara Rubens, Darrell Rubens in support
of [31−1] motion to dismiss (Mierzewski, Liz) (Entered: 02/19/2003)
02/05/2003 33 LETTER dated 2/4/03 from Counsel for plaintiffs to Judge Hurley re: Request for a
pre−motion conference on Plaintiffs' Rule 12(b) motion to dismiss the two
counterclaims which are likely intended to be state torts. (Mierzewski, Liz)
(Entered: 02/24/2003)
02/05/2003 27 Letter MOTION by Darrell Rubens to extend time to reargue this Court's
Decision/Order of December 2002 . Also, request that this Court accept the answer
and counterclaim that has been filed on 12/29/02. No Motion hearing (Mierzewski,
Liz) (Entered: 02/12/2003)
02/03/2003 30 LETTER dated 2/3/03 from Barbara Rubens to Judge Wall re: Ms. Rubens is
copying all papers to Judge Hurley and Judge Wall as is Counsel for plaintiff..
02/03/2003 29 LETTER dated 1/29/03 from Richard Rubens to Judge Hurley re: Request that this
Court reconsider their decision not to dismiss the complaint in its entirety so that
this Court can entertain all the papers and motions and documents that should be
considered in their decision. Request that the Court accept the defendant's answer
and counterclaim as timely and to hold a conference to resolve all issues.
(Mierzewski, Liz) Modified on 6/24/2003 (Mierzejewski, Elizabeth). (Entered:
02/19/2003)
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02/03/2003 28 ANSWER to Complaint and COUNTERCLAIM by Richard Rubens, Barbara
Rubens, Darrell Rubens against Hamptons Locations, Nancy Grigor (Mierzewski,
Liz) (Entered: 02/19/2003)
01/29/2003 26 ORDER, extending time for Richard And Barbara Rubens to file and serve a
motion for reconsideration to 2/10/03. Defendants are to file and serve an answer to
the complaint by 2/10/03. Darrell Rubens has failed to respond to this Court's order
dtd 12/17/02 to answer the complaint and has not requested an enlargement of time
to file a motion for reconsideration. With respect to defendant Darrell Rubens,
Plaintffs have leave of the Court to file a motion seeking a default judgment against
him. ( signed by Judge Denis Hurley , on 12/29/03) cm (Mierzewski, Liz) (Entered:
01/30/2003)
01/22/2003 25 LETTER dated 1/21/03 from Counsel for plaintiffs to Judge Hurley re: Request
that the Court deny any motion for reconsideration and any motion for an
enlargement of time to file a motion for reconsideration. (Mierzewski, Liz)
(Entered: 01/30/2003)
01/21/2003 24 LETTER dated 1/17/03 from Richard Rubens to Judge Hurley re: Request for an
enlargement of time to reargue since this Court overlooked certain exhibits and
motions in reaching a decision. (Mierzewski, Liz) (Entered: 01/30/2003)
12/17/2002 23 DECISION &ORDER, 12/17/02 granting in part, denying in part [8−1] motion to
dismiss and for sanctions Dfts' motiom to dismiss Counts l, 2 and 5 is denied as to
Counts 3 and 4. Dfts' applicstaion for Rull sanctions is denied.. Plfs may, file an
amended cmplaint on or before 1/24/03 with respect to the dismissed counts. Plf
shall respond to any such amended complaint consistent with the requirement of
Rule 12 of the Federal Rules of Civil Procedure. (signed by Judge Denis Hurley ,
on 12/17/02) (Barhome, Sydelle) (Entered: 12/20/2002)
10/24/2002 21 LETTER dated 10/21/02 from Barbara Rubens to Judge Hurley re: Request that the
Court dismiss this case as frivolous and sanction the Plaintiff and their attorney
Patricia Weiss. (Mierzewski, Liz) (Entered: 11/05/2002)
10/15/2002 22 LETTER dated 10/17/02 from Counsel for Plaintiff to Judge Hurley re: Request for
a conference. (Mierzewski, Liz) (Entered: 11/05/2002)
10/15/2002 20 LETTER dated 10/17/02 from Counsel for plaintiff to Judge Hurley re: Request for
a conference. (Mierzewski, Liz) (Entered: 10/29/2002)
10/09/2002 19 NOTICE of Notice of Cerificate of Registration (Principal Register)by Hamptons
Locations, Nancy Grigor (Mierzewski, Liz) (Entered: 10/15/2002)
06/06/2002 43 NOTICE of Motion by Barbara Rubens for sanctions. (Mierzewski, Liz) (Entered:
04/03/2003)
06/06/2002 17 LETTER dated 6/6/02 from Barbara Rubens to Judge Hurley re: Enclosed
defendants' reply to plaintiff's opposition to defendant's Amended Enlarged Motion
to Dismiss along with a motion for sanctions. (Mierzewski, Liz) (Entered:
06/27/2002)
06/06/2002 16 AFFIDAVIT by Barbara Rubens in opposition to the [15−1] opposition
memorandum and in support of her reply (Mierzewski, Liz) Modified on
06/27/2002 (Entered: 06/25/2002)
05/30/2002 15 MEMORANDUM by Hamptons Locations, Nancy Grigor in opposition to [8−1]
motion to dismiss and for sanctions (Mierzewski, Liz) (Entered: 06/11/2002)
05/23/2002 14 LETTER dated 5/20/02 from Richard Rubens to Judge Hurley re: Request that the
Court dispose of this matter and impose appropriate sanctions against the plaintiffs
and their attorney, Patricia Weiss who are in complete violation of the Federal
Rules, by bringing a claim which is being presented for improper use since this
claim is solely to harass, abuse and be malicious towards the defendants, is totally
frivolous, and has absolutely no evidentiary support. (Mierzewski, Liz) (Entered:
06/05/2002)
05/20/2002 13 LETTER dated 5/17/02 from Richard Rubens to Judge Hurley re: The enclosed
subpoena should be quashed and this action should be dismissed with maximum
sanctions awarded to defendants and Mr. Griffith "the experienced lawyer" should
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be disbarred. (Mierzewski, Liz) (Entered: 06/04/2002)

05/17/2002 18 MEMORANDUM by Hamptons Locations, Nancy Grigor in opposition to [8−1]
motion to dismiss and for sanctions (Mierzewski, Liz) (Entered: 07/11/2002)
05/17/2002 11 DECLARATION by Barbara Rubens in support of the [8−1] motion to dismiss and
for sanctions (Branciforte, Ralph) (Entered: 05/24/2002)
05/17/2002 10 DECLARATION by Darrell Rubens in support of the [8−1] motion to dismiss and
05/17/2002 9 DECLARATION by Richard Rubens in support of the [8−1] motion to dismiss and
05/17/2002 8 MOTION by Richard Rubens, Barbara Rubens, Darrell Rubens to dismiss and for
sanctions , Motion hearing (Branciforte, Ralph) (Entered: 05/24/2002)
05/15/2002 12 LETTER dated 5/15/02 from Richard Rubens to USDJ Hurley RE: Enclosing a
copy of Defendants' motion to dismiss. (Branciforte, Ralph) (Entered: 05/24/2002)
11/15/2001 7 NOTICE of Case reassignment from Mishler to Judge Hurley. (Mierzewski, Liz)
(Entered: 11/19/2001)
11/02/2001 CASE reassigned to Judge Denis Hurley from Judge Jacob M. Mishler. Parties
notified. (Bowens, Priscilla) (Entered: 11/15/2001)
11/02/2001 6 INTER−OFFICE MEMO from Keith A. Jones, Case Manager &Courtroom
Deputy to The Honorable Jacob Mishler to Edward R. Korman, United States
District Judge dated 11/2/01 Re: Reassignment of: Case No.: Cv−01−05477 (JM);
Case Title: Hamptons Locations, Inc. −v− Nancy Grigor; Reassigned by random
selection: Judge Mishler asserts disqualification in the above matter and requests
reassignment of this case. c/m to Stats. &Judge Korman on 11/2/01 (Fagan, Linda)
(Entered: 11/08/2001)
10/12/2001 44 LETTER dated 10/12/01 from Counsel for defendant to Judge Mishler re:
Response to Plaintiff's memorandum in opposition to Defendant's motion.
10/04/2001 4 MEMORANDUM by Hamptons Locations, Nancy Grigor in opposition to Defts'
Combined Rule 12, Rule 11, And Rule 56 (b) Motion(s) (Fagan, Linda) (Entered:
10/05/2001)
09/20/2001 101 LETTER dtd 9/20/01 from Richard Rubens to Judge Wexler Regarding The
motion to dismiss and impose sanctions should go forward as scheduled.
(Mierzejewski, Elizabeth) Modified on 9/10/2004 (Mahon, Cinthia). (Entered:
04/21/2004)
09/18/2001 5 NOTIFICATION OF CASE REASSIGNMENT by P. Bowens, Statistical Clerk;
That in accordance with the Local Rules, this case has been reassigned by random
to Judge Jacob Mishler for all purposes. That this assignment has been made with
Chief Judge Korman's approval. (Fagan, Linda) (Entered: 10/09/2001)
09/13/2001 42 LETTER dated 9/13/01 from Counsel for plaintiffs to Judge Wexler re: enclosed
briefing scheduled which extends the 10/10/01 return date selected by defendants..
09/13/2001 CASE reassigned to Senior Judge Jacob Mishler from Judge Leonard D. Wexler.
Parties notified. (Bowens, Priscilla) (Entered: 09/18/2001)
08/17/2001 3 RETURN OF SERVICE executed as to Richard Rubens, Barbara Rubens, Darrell
Rubens 8/17/01 Answer due on 9/6/01 for Darrell Rubens, for Barbara Rubens, for
Richard Rubens (Montero, Edher) (Entered: 08/27/2001)
08/14/2001 2 NOTICE of filing an action regarding a trademark (Duong, Susan) (Entered:
08/15/2001)
08/14/2001 1 COMPLAINT filed and summons(es) issued for Richard Rubens, Barbara Rubens,
Darrell Rubens FILING FEE $ 150.00 RECEIPT # 3771 (Duong, Susan) (Entered:
08/15/2001)
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Case 2:01-cv-05477-DRH-WDW Document 180
A-51 Filed 09/30/05 Page 1 of 25
UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NEW YORK
---------------------------------------------------------------X
HAMPTONS LOCATIONS, INC. and NANCY
GRIGOR,
Plaintiffs, MEMORANDUM OF DECISION
AND ORDER
-against- 01-CV-5477 (DRH)(WDW)

DARRELL RUBENS, each individually and
doing business as HAMPTON LOCATIONS,
Defendants.
----------------------------------------------------------------X
APPEARANCES:
PATRICIA WEISS, ESQ.

Attorney for Plaintiffs
P.O. Box 751
Sag Harbor Shopping Cove
Main Street - Suite 12
Sag Harbor, New York 11963-0019
MICHAEL B. RONEMUS, ESQ.

Ronemus & Vilensky
Attorney for Defendants
112 Madison Avenue
HURLEY, District Judge:
Plaintiffs Hamptons Locations, Inc. and Nancy Grigor (“Grigor”) (collectively,
“Plaintiffs”) filed the present action against defendants Richard Rubens (“Richard”), Barbara
Rubens (“Barbara”), and Darrell Rubens (“Darrell”) (collectively, “Defendants”) claiming
damages arising out of Defendants’ use of an allegedly infringing website. Defendants have
moved for summary judgment pursuant to Federal Rule of Civil Procedure 56. For the reasons
that follow, Defendants’ motion is granted in part and denied in part.

A-52 Filed 09/30/05 Page 2 of 25
BACKGROUND
The material facts, drawn from the Complaint and the parties’ Local 56.1
Statements, are undisputed unless otherwise noted. Grigor is the owner, President, and sole
employee of plaintiff Hamptons Locations, Inc., a New York corporation. Since 1994,
Hamptons Locations, Inc. has used the service mark and business name “Hamptons Locations”
and the domain name “www.hamptonslocations.com.”
Hamptons Locations provides and scouts locations for photo shoots, film and
television commercials, videos, and corporate meetings. Essentially, Hamptons Locations is a
“location finder.” (Dep. of Nancy Grigor, dated July 23, 2004 (“Grigor Dep.”), at 4.) After two
failed attempts at registration, the United States Patent and Trademark Office finally accepted
Plaintiffs’ mark for registration on August 20, 2002. Hamptons Locations was granted service
mark protection for “SCOUTING FOR LOCATIONS FOR TELEVISION COMMERCIALS,
CATALOGUES, AND CORPORATE MEETINGS; PRODUCTION OF TELEVISION
COMMERCIALS, IN CLASS 35”; and for “ENTERTAINMENT BASED LOCATION
SCOUTING, NAMELY, SCOUTING FOR LOCATIONS FOR PHOTOSHOOTS, MOTION
PICTURE FILMS, MAGAZINES, PARTIES, AND VIDEOS; MOTION PICTURE FILM
PRODUCTION; VIDEO PRODUCTION, IN CLASS 41.” (Defs.’ Mot. For Summary
Judgment, Ex. Q.) The certificate of registration further states “NO CLAIM IS MADE TO THE
EXCLUSIVE RIGHT TO USE ‘LOCATIONS’, APART FROM THE MARK AS SHOWN.”
(Id.)
Barbara and Richard are husband and wife. Darrell is their son. Barbara and
Richard work for Design Quest, Ltd., an architectural and interior design firm located in New
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York City. They own a home in the Hamptons which they designed and built in 1983 and use
their home as an example of their architectural talents. With the help of their son Darrell, they
developed a website – www.dqny.com – to showcase their services. This website displays
pictures of their Hamptons home and offers the home as a rental for photo shoots.
At this point, the parties’ submission are replete with factual disputes. According
to Grigor, in the winter of 1998-99, she left her business card at the Rubens’ Hamptons home,
requesting that she be contacted about adding their home to her inventory of houses. (Aff. of
Nancy Grigor, dated Feb. 9, 2005 (“Grigor Aff.”) ¶ 13.) She allegedly followed up in the
“Spring of 1999” by leaving a second business card taped to the door. (Id.) Grigor further
claims that “[i]n or around July 1999,” she met with Richard and Barbara and that the Rubens
“acknowledged receipt of Plaintiffs’ business cards left at the house and they said that they had
heard of Plaintiffs’ business.” (Id. ¶ 14.) “To the best of [her] recollection,” this meeting was
“sometime over July 4th weekend,” (id.), or might have “actually occurred a few days later.” (Id.
¶ 15.) That same day, she photographed their Hamptons home with hopes of marketing it for
future photo shoots. (Id. ¶ 14.) Defendants deny meeting Grigor at this time and also deny
receipt of Plaintiffs’ business cards.
Plaintiffs claim that “despite Defendants’ awareness of Plaintiffs’ mark through
business cards left at the house, Defendants caused the registration of the domain name
‘HamptonLocations.com,’ on or about July 8, 1999.” (Id. at ¶ 15.) The only difference between
the domain name and Plaintiffs’ business name, i.e., Hamptons Locations, was the absence of the
letter “s” between the words “Hampton” and “Location.”
According to Defendants, Darrell, together with his friends and without his
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parents’ knowledge, “decided to explore offering Hamptons summer rentals on the internet, at
discount fees.” (Aff. of Richard Rubens, dated Jan. 5, 2005, ¶ 10.) Darrell and his friends used a
company called Network Services to see what domain names were available. (Aff. of Darrell
Rubens, dated Jan. 5, 2005 (“Darrell Aff.”), ¶ 7.) They “decided that the domain name that best
suited [their] venture was www.hamptonlocations.com and one of [Darrell’s] friends purchased
this name through DSNY at Network Solutions” on July 8, 1999. (Id. ¶ 8.) This domain name
remained dormant until April 2000 while Darrel and his friends researched the proposed real
estate business. Eventually, they decided not to pursue this venture.
On April 18, 2000, Darrell decided that the domain name was a good way to
describe his parents’ Hamptons home and allegedly “took it upon himself” to use the domain
name in connection with their house. Because he often helped his parents update their Design
Quest website and because he knew his parents’ home was displayed on that site, he “linked” the
www.hamptonlocations.com website with his parents’ Design Quest Website, www.dqny.com.
In other words, if a person typed in www.hamptonlocations.com, a “link” would re-route that
person to the Design Quest website. He allegedly created this link without telling his parents.
Thereafter, on April 18, 2000, Darrell alleges that he researched location scouting
companies on the internet. He sent e-mails to some of these companies, including one to
Plaintiffs, offering his parents’ home for location shoots. (Id. ¶ 11.) These e-mails directed the
location companies, through the link of www.hamptonlocations.com, to the website of Design
Quest. His e-mail to Plaintiffs stated as follows: “we rent our house out for photo, film and
commercial shoots. How can we list with you? Please look at our house at
www.hamptonlocations.com.” Darrell claims that he had never heard of Plaintiffs prior to
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sending this e-mail. (Id. ¶ 12.)
Grigor admits that she opened Darrell’s email that day but claims that she merely
glanced at it before putting it aside in a pile of other messages. She claims she did not realize at
that time that Darrell’s e-mail referred to the allegedly infringing website. (Grigor Aff. ¶ 47.)
On June 13, 2000, Grigor conducted a photo shoot at the Rubens’ house. (Grigor
Dep. at 37.) She alleges that she arranged for this shoot based on the information she had
already assembled about Richard and Barbara in July 1999. (Id.) Defendants maintain,
however, that she arranged the photo shoot in response to Darrell’s e-mail.
Barbara and Richard contend that they first became aware of the alleged dispute
over the domain name when they pursued Plaintiffs for overtime charges of $937.50, allegedly
due them as a result of the June 13, 2000 photo shoot, which led to a heated dispute between the
parties. On June 25, 2000, Plaintiff’s then counsel wrote a letter to Darrel demanding that he
“cease and desist from the use of the domain name www.HamptonLocations.com” and that he
“arrange for the transfer of its ownership to” Plaintiffs. By letter dated June 27, 2000, Darrell
responded, inter alia, that he was not the owner of the domain name and that the domain name
did not infringe upon Plaintiffs’ mark as it merely contained a portfolio of the Hamptons house
and did not offer location scouting services.
On July 27, 2000, plaintiff Hamptons Locations, Inc. initiated an action in the
Southampton Justice Court, Suffolk County, New York, against Richard, Darrell, and “Hampton
Locations.” Plaintiff withdrew this action with prejudice on May 10, 2002. In the interim,
Plaintiffs filed the instant action on August 13, 2001. Essentially, Plaintiffs allege that
Defendants used the allegedly infringing domain name “www.hamptonlocations.com” for the
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purpose of diverting web browsers to the Design Quest website which resulted in consumer
confusion and a disruption to Plaintiffs’ business. Defendants counter that there was never any
business set up as “Hampton Locations” and that they never received any referrals in the few
months www.hamptonlocations.com was linked to the Design Quest website except from Grigor
for the photo shoot of June 13, 2000. (Richard Rubens Aff. ¶ 21.) In fact, shortly after
Defendants learned of this dispute, they removed the link from the Design Quest website and let
the registry of the domain name expire, which it did on July 8, 2001. Thereafter, on May 12,
2002, plaintiff Hamptons Locations purchased the www.hamptonlocations.com domain name
and remains its owner today.
By Decision and Order dated December 17, 2002, the Court granted in part and
denied in part Defendants’ motion to dismiss the Complaint pursuant to Federal Rule of Civil
Procedure 12(b)(6). The causes of action which survived that motion are alleged violations of
the Lanham Act and a claim for unfair competition.
By Memorandum of Decision and Order dated February 17, 2004, the Court
denied Defendants’ motion for summary judgment and granted Plaintiffs’ motion to dismiss the
counterclaims against them. Defendants, who were proceeding pro se at that time, later retained
present counsel and requested permission to file another motion for summary judgment at the
end of discovery. The Court granted Defendants’ request. Presently before the Court is
Defendants’ second motion for summary judgment.
DISCUSSION
I. Standards for Summary Judgment
Summary judgment pursuant to Federal Rule of Civil Procedure 56 is only
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appropriate where admissible evidence in the form of affidavits, deposition transcripts, or other
documentation demonstrates the absence of a genuine issue of material fact, and one party’s
entitlement to judgment as a matter of law. See Viola v. Philips Med. Sys. of N. Am., 42 F.3d
712, 716 (2d Cir. 1994). The relevant governing law in each case determines which facts are
material; “only disputes over facts that might affect the outcome of the suit under the governing
law will properly preclude the entry of summary judgment.” Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 248 (1986). No genuinely triable factual issue exists when the moving party
demonstrates, on the basis of the pleadings and submitted evidence, and after drawing all
inferences and resolving all ambiguities in favor of the non-movant, that no rational jury could
find in the non-movant’s favor. Chertkova v. Conn. Gen’l Life Ins. Co., 92 F.3d 81, 86 (2d Cir.
1996) (citing Fed. R. Civ. P.56(c))).
To defeat a summary judgment motion properly supported by affidavits,
depositions, or other documentation, the non-movant must offer similar materials setting forth
specific facts that show that there is a genuine issue of material fact to be tried. Rule v. Brine,
Inc., 85 F.3d 1002, 1011 (2d Cir. 1996). The non-movant must present more than a “scintilla of
evidence,” Delaware & Hudson Ry. Co. v. Consolidated Rail Corp., 902 F.2d 174, 178 (2d Cir.
1990) (quoting Anderson, 477 U.S. at 252), or “some metaphysical doubt as to the material
facts,” Aslanidis v. U.S. Lines, Inc., 7 F.3d 1067, 1072 (2d Cir. 1993) (quoting Matsushita Elec.
Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986)), and cannot rely on the
allegations in his or her pleadings, conclusory statements, or on “mere assertions that affidavits
supporting the motion are not credible.” Gottlieb v. County of Orange, 84 F.3d 511, 518 (2d Cir.
1996) (internal citations omitted).
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The district court considering a summary judgment motion must also be “mindful
of the underlying standards and burdens of proof,” Pickett v. RTS Helicopter, 128 F.3d 925, 928
(5th Cir. 1997) (citing Anderson, 477 U.S. at 252), because the evidentiary burdens that the
respective parties will bear at trial guide district courts in their determination of summary
judgment motions. Brady v. Town of Colchester, 863 F.2d 205, 211 (2d Cir. 1988). Where the
non-moving party will bear the ultimate burden of proof on an issue at trial, the moving party’s
burden under Rule 56 will be satisfied if he can point to an absence of evidence to support an
essential element of the non-movant’s claim. Id. at 210-11. Where a movant without the
underlying burden of proof offers evidence that the non-movant has failed to establish her claim,
the burden shifts to the non-movant to offer “persuasive evidence that [her] claim is not
‘implausible.’ ” Brady, 863 F.2d at 211 (citing Matsushita, 475 U.S. at 587).
II. The Instant Action is not Barred by Res Judicata
Citing no authority, Defendants argue that the instant action is barred under the
doctrines of res judicata and collateral estoppel based upon Plaintiffs’ withdrawal of the
Southampton Justice court action with prejudice. This argument is rejected for the reasons
indicated below.
A. The State Court Proceeding
On July 27, 2000, plaintiff Hamptons Locations, Inc. filed an action in the
Southampton Justice Court against Richard, Darrell, and Hampton Locations, asserting claims
for deceptive acts and practices in violation of New York State Business Law and “violation of
state common law and/or trademark law.” (Defs.’ Mot. For Summary Judgment, Ex. F.) On
May 10, 2002, and while the instant action was pending, the parties appeared on the record
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before the state court judge and plaintiffs withdrew all of their claims with prejudice. (Defs.’
Reply, Ex. 6 at 24.) Thereafter, the state court entered an order stating in pertinent part: “On
May 10, 2002 the parties in the above entitled action appeared before this Court ready for trial
and it was stipulated that plaintiff, Hamptons Locations, Inc., by their attorney Michael Griffith
withdraw its entire complaint with prejudice.” (Defs.’ Mot. For Summary Judgment, Ex. I
(emphasis in original).)
During the May 10, 2002 proceeding, counsel for plaintiff Hamptons Locations,
Inc. indicated that with regard to its trademark claims:
[W]e are presently in federal court represented by Patricia Weiss,

local counsel, federal counsel, and we’re assuming that the court
has taken jurisdiction over the federal trademark and the state
trademark claims. In the event that they don’t, we reserve our
right to come back here at a later time to address the state
trademark claims. We assume – we assume that the federal court
will handle, not only the federal claims, but also the state pendant
claims.
(Defs.’ Reply, Ex. 6 at 5.) He further stated that because of the pending federal case, plaintiff
was requesting that the state action be adjourned or stayed “pending jurisdiction being taken by
the federal court.” (Id. at 6.) In that regard, he indicated that he “would have no objection to
withdrawing [the trademark claims], but federal counsel said to just adjourn it here.” (Id. at 21.)
He further explained that federal counsel was informed by the Clerk of the Court in the Eastern
District of New York that the federal case file had been misplaced because his case had been
“bounced around to a couple of different judges,”1 (id. at 7-8), so he was unsure whether the
1
The instant action was initially assigned to Judge Leonard D. Wexler. On September
18, 2001, the case was reassigned to Judge Jacob Mishler and on November 2, 2001, the case
was reassigned to the undersigned.
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federal court would exercise jurisdiction, (id. at 9). Thus, he was “just keeping it pending in the
event that the federal court doesn’t pick it up, which I assume they will.” (Id. at 19-20.) Later in
the proceeding, however, when the judge noted that plaintiff had opposed defendants’ request for
an adjournment and was now itself requesting an adjournment, plaintiff’s counsel indicated that
he would dismiss the trademark claim as well:
THE COURT: So you are withdrawing your action?
[PLAINTIFFS’ COUNSEL]: I withdraw my action.
THE COURT: It’s withdrawn.
[DEFENDANT]: With prejudice, your Honor?
[PLAINTIFFS’ COUNSEL]: I am happy to withdraw it. If there is

a state trademark claim, I can always bring it in Supreme Court
THE COURT: Very good. The action is withdrawn.
[DEFENDANT]: Your Honor, can you rule withdrawn with

prejudice?
THE COURT: Yes.
(Id. at 24.)
B. The Preclusive Effect of the State Court Proceeding
In opposing Defendants’ motion, Plaintiff relies on the Second Circuit’s decision
in Israel v. Carpenter, 120 F.3d 361, 365 (2d Cir. 1997). In that case, plaintiff Donald M. Israel
(“Israel”) sued Daniel E. Carpenter (“Carpenter”) and three corporate defendants for breach of
contract in Massachusetts state court in February 1993. Id. at 363. The next month, Carpenter
caused a corporation wholly owned by him to sue plaintiff and two other corporate defendants,
asserting, inter alia, federal trademark claims, in the Southern District of New York. Id. Israel
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then filed a third-party complaint against Carpenter in the federal action alleging essentially the
same breach of contract claims he had asserted in Massachusetts. Id.
On August 10, 1993, Israel filed a voluntary stipulation of dismissal in the
Massachusetts action that dismissed his claims against Carpenter with prejudice and his claims
against the three corporate defendants without prejudice. Id. Twenty months later, the federal
action was concluded when the district court granted Israel’s motion for summary judgment
dismissing the trademark claims and declined to exercise pendent jurisdiction over Israel’s state-
law claims, thereby dismissing those claims without prejudice. Id.
The lawsuit underlying the appeal was filed in New York State Supreme Court on
March 29, 1995, the day after the first federal action was dismissed. In this third action, Israel
sued Carpenter and another corporate defendant, alleging the same breach of contract claims he
had asserted against Carpenter twice before. Id. After Carpenter removed the case to federal
court, he moved to dismiss Israel’s claims arguing that they were barred by res judicata and
collateral estoppel based upon the with-prejudice dismissal of those claims in the Massachusetts
action. Id.
In reversing the district court’s granting of summary judgment dismissing Israel’s
complaint, the Second Circuit began with a recitation of the general rule that “[o]rdinarily, a
stipulation of dismissal ‘with prejudice’ as to a pending action is unambiguous; like any such
dismissal, it is ‘deemed a final adjudication on the merits for res judicata purposes on the claims
asserted or which could have been asserted in the suit.’” Id. at 365 (quoting NBN Broad., Inc. v.
Sheridan Broad. Networks, Inc., 105 F.3d 72, 78 (2d Cir. 1997)). Thus, “[s]uch a stipulation will
(almost invariably) have preclusive effect notwithstanding a litigant’s post hoc assertion that he
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intended to preserve certain claims.” Id.
Notwithstanding this rule, the court concluded that this “broad principle” did not
apply to the facts of that case. Citing the well-settled rule that state law applies in determining
the preclusive effect of a stipulation of dismissal filed in state court,2 id. at 366, the court found
that Massachusetts law “require[d] inquiry into the intended scope and effect of such a
stipulation,” id. at 366, and thus, the court should “direct its interpretation to the meaning of the
terms of the writing or writings in the light of the circumstances of the transaction.” Id. at 367
(emphasis in original) (citation and internal quotation marks omitted). The court then held that
the circumstance of this case, i.e., “the litigation of two nearly identical lawsuits simultaneously
in two jurisdictions, the stipulated dismissal of one of them with prejudice, and the continued
litigation of the other,” raised a material issue of fact as to the meaning of the stipulation of
dismissal. Id.
Applying Israel to the present action, the Court must determine what effect New
York courts would give the stipulation of dismissal filed by Plaintiffs in the Southampton Justice
Court. The general rule in New York is that a stipulation of discontinuance with prejudice is
afforded res judicata effect and will bar litigation of the discontinued causes of action. See
Dolitsky’s Dry Cleaners, Inc. v. Y L Jericho Dry Cleaners, Inc., 610 N.Y.S.2d 302, 303 (2d
Dep’t 1994). “However, the language ‘with prejudice’ is narrowly interpreted when the interests
of justice, or the particular equities involved, warrant such an approach.” Id.; see also Troy v.
Goord, 752 N.Y.S.2d 460, 461 (4th Dep’t 2002) (“The order of dismissal in the federal action is
2
See also Marvel Characters, Inc. v. Simon, 310 F.3d 280, 286 (2d Cir. 2002) (“New
York law [applies] in determining the preclusive effect of a New York State court judgment.”).
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entitled to res judicata effect where, as here, the circumstances evince that it is on the merits or
with prejudice to relitigation of the discontinued claim, or where the parties otherwise have
indicated that the settlement and discontinuance would have such preclusive effect.”) (emphasis
added); Karniol v. Good Move Trucking, Inc., 722 N.Y.S.2d 143, 143 (1st Dep’t 2001) (“Under
these circumstances, where the inclusion of the words ‘with prejudice’ in the order discontinuing
the prior action may well have been attributable to a unilateral mistake by plaintiffs’ counsel and
contrary to the previously reached understanding of the parties and the court as to the effect of
the discontinuance, the motion court, pending the conduct of discovery respecting the
understanding upon which the discontinuance had been agreed to, properly declined to accord
the discontinuance res judicata effect.”); Singleton Mgmt., Inc. v. Compere, 673 N.Y.S.2d 381,
384 n.1 (1st Dep’t 1998) (“It may be noted that even where the use of such terms as ‘with
prejudice’ or ‘on the merits’ raises a presumption that the stipulation is to be given res judicata
effect in a subsequent action on the same cause of action . . . , a court may always consider
evidence that the parties intended otherwise.”).
Here, the circumstances under which plaintiff Hamptons Locations, Inc withdrew
its state court action compel the conclusion that plaintiff’s withdrawal was not intended to
foreclose prosecution of its claims in this forum. To the contrary, the transcript of these
proceedings clearly indicates that the only reason plaintiff agreed to withdraw its trademark
claims in the state court action was because it intended to pursue these claims in this action,
which was pending at the time plaintiff withdrew its state court case. Any other finding would
work an injustice as it would clearly be contrary to the parties’ intent. See Vega v. State Univ. of
N.Y. Bd. Of Trustees, 67 F. Supp. 2d 324, 335 (S.D.N.Y. 1999) (finding that circumstances and
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plain language of stipulation discontinuing state court action with prejudice indicated that parties
did not intend such stipulation to preclude then-pending federal court action); D’Angelo v. City
of New York, 929 F. Supp. 129, 135 (S.D.N.Y. 1996) (“In light of the fact that the Kings County
action was untenable due to plaintiff’s failure to file a timely notice of claim, the parties, fully
aware that the § 1983 claims were being prosecuted in federal court, stipulated to the dismissal
of the action ‘with prejudice.’ To hold that plaintiff’s § 1983 claims are barred merely because
the phrase ‘with prejudice’ is often equated with ‘on the merits would frustrate the intent of the
parties as well as the purpose of the rules of preclusion as defined under New York law.”).
Thus, the Court finds that plaintiff Hamptons Locations, Inc.’s withdrawal of the state court case
with prejudice does not bar the present action and, accordingly, Defendants’ motion for summary
judgment on this ground is denied.3
III. Plaintiffs’ Anticybersquatting Claim
Plaintiff’s first cause of action alleges that Defendants violated section 1125(d) of
the Lanham Act, also known as the Anticybersquatting Consumer Protection Act (“ACPA”).
“Cybersquatting involves the registration as domain names of well-known trademarks by non-
trademark holders who then try to sell the names back to the trademark owners.” Sporty’s Farm
L.L.C. v. Sportsman’s Mkt, Inc., 202 F.3d 489, 493 (2d Cir. 2000). The ACPA was passed to
3
Unlike the Israel case, the Defendants here did not litigate this case for “twenty
months” before raising the defense of res judicata; rather, they raised it in their first motion to
dismiss, filed on May17, 2002, just one week after Plaintiff withdrew the state court action.
Because Defendants had not sufficiently developed their argument, however, Defendants’
motion was denied. (See Dec. 17, 2002 Decision and Order at 12.) Nonetheless, given that
plaintiff’s intent in withdrawing its state claims is clearly discernable from the state court
transcript, summary judgment dismissing Plaintiffs’ claims based on the stipulation would be
inappropriate.
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protect consumers from this conduct. Id. at 495.
The elements of a claim brought under the ACPA are as follows: (1) Defendants
registered, trafficked in or used a domain name; (2) that was identical or confusingly similar to
Plaintiffs’ mark; (3) Plaintiffs’ mark, at the time Defendants registered their domain name, was
distinctive; and (4) Defendants committed these acts with a bad faith intent to profit from
Plaintiffs’ mark. See 15 U.S.C. § 1125(d)(1)(A). Defendants argue that Plaintiffs cannot raise a
triable issue of fact as to the first and fourth elements. The Court will address Defendants’
arguments in turn.
A. Use of Domain Name
Defendants contend that there is no proof that they “used” the domain name
within the meaning of the statute and that “DSNY,” the apparent registrant of the domain name
www.hamptonlocations.com, is an indispensable party to this action. In response, Plaintiffs
claim there is a question of fact as to “who was the de facto ‘registrant’ of” the domain name.
Section 1125 (d)(1)(A) provides that liability under the ACPA is limited to a
person who “registers, traffics in, or uses a domain name.” 15 U.S.C. § 1125 (d)(1)(A). The
conjunctive “or” clearly indicates that liability can arise from any one of the three listed
activities. See Omega S.A. v. Omega Engineering, Inc., 228 F. Supp.2d 112, 138 (D. Conn.
2002). However, Section 1125(d)(1)(D) expressly provides that a person may not be held liable
for “using” a domain name unless that person “is the domain name registrant or that registrant’s
authorized licensee.” 15 U.S.C. § 1125(d)(1)(D). Section 1125(d)(1)(E) expressly provides that
“the term ‘traffics in’ refers to transactions that include, but are not limited to, sales, purchases,
loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or
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receipt in exchange for consideration.” Id. § 1125(d)(1)(D). Thus, “traffics in” contemplates “a
direct transfer or receipt of ownership interest in a domain name to or from the defendant.” Ford
Motor Co. v. Greatdomains.com, Inc., 177 F. Supp. 2d 635, 645 (E.D. Mich. 2001). Finally,
although the term “registers” as used in this section is not specifically defined,
it has been interpreted to mean a person who presents a domain name for registration, as opposed
to the actual registrar, i.e., the entity which grants and maintains the domain names. See
Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp. 2d 648, 655 (N.D. Tex. 2001).
Here, there is no evidence that Barbara and Richard engaged in transactions of
any of these kind with regard to the disputed domain name at issue and, thus, there is no proof
that they “register[ed], traffic[ked] in, or use[d]” the domain name. The only evidence before the
Court is that Darrell and his friends developed the idea for this website and that “one of
[Darrell’s] friends purchased this name through DSNY,” DSNY being the name listed as the
domain registrant, with an address at 575 Madison Avenue, New York, NY 10022. (Darrell Aff.
¶ 8; see also Aff. of James Whang, dated Feb. 28, 2005; Defs.’ Mot. For Summary Judgment,
Ex. E.) Thus, there is no evidence that Barbara and Richard participated in the registration or
purchase of the domain name or that either of them qualify as DSNY’s “authorized licensee[s].”
For these reasons, the Court is compelled to conclude that Plaintiffs’ ACPA claim as against
Barbara and Richard must fail.
The same cannot be said of Darrell, however. Although the evidence linking
Darrell to DSNY is marginal at best, the Court cannot state as a matter of law that no reasonable
trier of fact could conclude that Darrell was sufficiently linked to DSNY so as subject him to
liability under the ACPA. He was clearly involved in the development, launching, and operation
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of the website and he himself testified that he went to “Network Solutions” with his friends to
see what domain names were available. (Darrell Aff. ¶ 7.) Thereafter, Darrell and his friends
chose www.hamptonlocations.com and “one of [his] friends” purchased the domain name
through DSNY. (Id. ¶ 8.) Although the Court is dismayed, to say the least, at Plaintiffs’ failure
to elicit evidence as to the identity of DSNY and Darrell’s relationship therewith, based on the
evidence the Court does have, the Court is constrained to conclude that a reasonable trier of fact
could circumstantially infer that Darrell was DSNY’s “authorized licensee.” Accordingly, to the
extent Defendants seek summary judgment as to Darrell on this ground, their motion is denied.
B. Bad Faith Intent to Profit From Mark
Defendants argue that there is no evidence to show that any of the Defendants
acted “with a bad faith intent to profit from Plaintiffs’ mark.” See 15 U.S.C. § 1125(d)(1)(A).
The ACPA lists nine factors courts may consider in determining whether a person has acted in
bad faith:
(I) the trademark or other intellectual property rights of the person,

if any, in the domain name;
(II) the extent to which the domain name consists of the legal name
of the person or a name that is otherwise commonly used to
identify that person;
(III) the person's prior use, if any, of the domain name in
connection with the bona fide offering of any goods or services;
(IV) the person's bona fide noncommercial or fair use of the mark
in a site accessible under the domain name;
(V) the person's intent 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, either 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;
(VI) the person's offer to transfer, sell, or otherwise assign the
domain name to the mark owner or any third party for financial
gain without having used, or having an intent to use, the domain
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name in the bona fide offering of any goods or services, or the

person's prior conduct indicating a pattern of such conduct;
(VII) the person's provision of material and misleading false
contact information when applying for the registration of the
domain name, the person's intentional failure to maintain accurate
contact information, or the person's prior conduct indicating a
pattern of such conduct;
(VIII) the person's registration or acquisition of multiple domain
names which the person knows are identical or confusingly similar
to marks of others that are distinctive at the time of registration of
such domain names, or dilutive of famous marks of others that are
famous at the time of registration of such domain names, without
regard to the goods or services of the parties; and
(IX) the extent to which the mark incorporated in the person's domain name registration is or is
not distinctive and famous within the meaning of subsection (c)(1) of this section.
Id. § 1125(d)(1)(B)(I). The statute also provides that “[b]ad 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. Id. § 1125(d)(1)(B)(ii).
Defendants offer evidence in the form of affidavits by Darrell and two of his
attorney-friends that the domain name www.hamptonlocation.com was registered with the intent
to offer summer rentals in the Hamptons at discounted prices. Because Darrell works full time
for a real estate company and his two friends are attorneys, they figured that with their combined
expertise, this might be a profitable venture. After some research, however, they determined that
the larger and more established real estate companies were already providing this service and
that it would not be economically profitable to pursue it. Darrell argues that this evidence
demonstrates that he acted in good faith. Although the Court agrees that this evidence is
probative of his intent, it certainly does not conclusively determine that he acted in good faith.
In fact, because Darrell never actually pursued the alleged real estate venture, a reasonable trier
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of fact could infer that it was never his intent to do so.
In addition, Darrell further argues that the fact that he sent Grigor the e-mail in
April 2000 alerting her to the allegedly infringing website conclusively demonstrates his lack of
bad faith. The Court disagrees. Here, there is evidence, although it is hotly disputed, that
Darrell refused to surrender the website to Plaintiffs without receiving payment for the transfer.
Given that the ACPA was created to prevent the registration of a domain name of the mark of an
established company by a person who later demands money in exchange for relinquishing that
domain name, a reasonable trier of fact could infer that Darrell sent Grigor the e-mail precisely
for that purpose, i.e., to alert her of its existence, so that he could later demand payment for the
name.
Moreover, although Darrell claims that he was unaware of Plaintiffs at the time
www.hamptonlocations.com was registered, a reasonable trier of fact could believe Grigor’s
claims that she met with Darrell’s parents in early July 1999 and that at that time, they
acknowledged receipt of her business cards. This information, coupled with the timing of the
domain name registration which occurred on July 8, 1999, just days after Grigor allegedly met
with Darrell’s parents, could suggest that Darrell had knowledge of Plaintiffs’ mark prior to the
registration of www.hamptonlocations.com. Although prior knowledge of Plaintiffs’ mark does
not, standing alone, constitute bad faith, combined with other factors, Darrell’s prior knowledge
is probative to some degree. In that regard, several of the factors listed in the ACPA weigh in
favor of a conclusion that Darrell had the requisite statutory bad faith. For example, it is clear
that Darrell did not have any intellectual property rights in www.hamptonlocation.com at the
time the domain name was registered; the domain name did not include Darrell’s name or a name
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that is otherwise commonly used to identify Darrell; Darrell never actually used the domain
name for his real estate venture; the possibility that Darrell may have intended to divert
consumers from Plaintiffs’ website to his own and ultimately to the Design Quest site for
commercial gain; and the lack of any evidence as to the identity of DSNY, the domain name
registrant. Accordingly, the Court finds that looking at the totality of the circumstances, there is
a genuine issue of material fact as to Darrell’s intent as that term is defined by the ACPA. See
EMI Catalogue P’ship v. Hill, Holliday, Connors, Cosmopulos, Inc., 228 F.3d 56, 68 (2d Cir.
2000) ( “Because the issue goes to defendants’ intent, it is best left in the hands of the trier of
fact.”) (internal quotation marks and citation omitted); Lang v. Retirement Living Publ’g Co.,
949 F.2d 576, 583 (2d Cir. 1991) (“[i]ssues of good faith are generally ill-suited for disposition
on summary judgment.”).
In sum, Plaintiffs’ anticybersquatting claim is dismissed as to Richard and
Barbara and sustained as to Darrell.
IV. Plaintiffs’ Unfair Competition Claims
Count 5 of the Complaint charges Defendants with unfair competition. As noted
in the Court’s December 17, 2002 Decision and Order, such a claim may be based on state law,
see, e.g., Telford Home Assistance, Inc. v. TPC Home Care Svcs., Inc., 621 N.Y.S.2d 636 (2d
Dep’t 1995), federal law, see, e.g., Champagne v. DiBlasi, 134 F. Supp.2d 310, 314 (E.D.N.Y.
2001), aff’d, 36 Fed. Appx. 15 (2d Cir. 2002), or both.
A Lanham Act claim for unfair competition pursuant to 15 U.S.C. § 1125(a) does
not require proof of a federally registered trademark. See EMI Catalogue P’ship v. Hill,
Holliday, Connors, Cosmopulos, Inc., 228 F.3d 56, 61 (2d Cir. 2000). Instead, such a claim
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requires a plaintiff to show: (1) the false or misleading use of any word, name symbol or device
in connection with goods or service; (2) in interstate commerce; (3) in a manner that is likely to
cause confusion or deception as to, inter alia, affiliation. 15 U.S.C. § 1125(a)(1)(A); see also
Lipton v. Nature Co., 71 F.3d 464, 473 (2d Cir. 1995) (stating § 1125(a)(1)(A) “prohibits any
misrepresentation likely to cause confusion as to the source or the manufacturer of a product);
Champagne, 134 F. Supp. 2d at 314 (setting forth elements of unfair competition claim). In
order to sustain a common-law cause of action for unfair competition through the use of a trade
name, Plaintiffs must establish that the Defendant’s acts “‘constituted an unfair appropriation or
exploitation of any special quality attached to [P]laintiff[s’] name.’” Telford Home Assistance,
621 N.Y.S.2d at 636.
As an initial matter, the Court finds that based upon the present record, there is no
evidence that Barbara or Richard were in any way involved in any use of the
www.hamptonlocation.com site. In that regard, there is no evidence that they participated in its
purchase, its development or its operation. Accordingly, Plaintiffs’ claims of unfair competition
are dismissed as to Richard and Barbara.
As to Darrell, the record demonstrates that he linked the
www.hamptonlocation.com website to the Design Quest website so that a person opening up the
former site would be re-directed to the latter. Although Defendants argue that Plaintiffs have no
evidence that any consumers were actually confused by the website or that as a result thereof,
they were unable to locate Plaintiffs’ website, there is no requirement in the statute that Plaintiff
prove actual confusion. Rather, the standard is whether Defendants’ use of Plaintiffs’ mark is
“likely to cause confusion.” 15 U.S.C. § 1125(a)(1)(A). In that regard, a reasonable consumer
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seeking to use Plaintiffs’ services could have inadvertently typed in Darrell’s domain name and
after being re-directed to the Design Quest site, could have believed that the Rubens’ Hamptons
home was a location being offered by Plaintiffs. Thus, a reasonable consumer could have been
confused as to the source of this location, see Lipton, 71 F.3d at 473, particularly in light of the
fact that the sole purpose of Plaintiffs’ business is to scout such locations.
In addition, to the extent Defendants argue that Plaintiffs’ mark is not entitled to
protection because it is weak or non-distinctive as allegedly demonstrated by the limited
protection it received when it was finally approved by the United States Patent and Trademark
Office for registration, the Court notes that the strength of the mark is just one factor used by
Courts in determining the likelihood of confusion under the Lanham Act. See Polaroid Corp. v.
Polaroid Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961) (listing eight factors to be used in
determining whether or not there is likelihood of confusion).4 Moreover, the fact that Plaintiffs’
mark was accepted for registration by the Trademark Office entitles Plaintiffs to a presumption
that its registered mark is inherently distinctive. See Sporty’s Farm, 202 F.3d at 497. Absent
evidence or argument on any of the other Polaroid factors, and given the presumption of
distinctiveness afforded to Plaintiffs’ mark, Defendants’ motion for summary judgment on this
ground is denied.
Finally, Defendants have not established as a matter of law that they are entitled
4
These factors are: “(1) the strength of plaintiff’s mark; (2) the similarity of the parties’
marks; (3) the proximity of the parties’ products in the marketplace; (4) the likelihood that the
plaintiff will “bridge the gap” between the products; (5) actual consumer confusion between the
two marks; (6) the defendant’s intent in adopting its mark; (7) the quality of the defendant’s
product; and (8) the sophistication of the relevant consumer group.” Polaroid, 287 F.2d at 495.
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to the affirmative defense of “fair use.”5 To come within the fair use defense, Darrell must have
made use of Plaintiffs’ mark “(1) other than as a mark, (2) in a descriptive sense, and (3) in good
faith.” EMI Catalogue, 228 F.3d at 64 (citing 11 U.S.C. § 1115(b)(4)). “The fair use doctrine
permits use of a protected mark by others to describe certain aspects of the user’s own goods.”
Id. The rationale behind the fair use doctrine centers on “the undesirability of allowing anyone
to obtain a complete monopoly on use of a descriptive term simply by grabbing it first.” KP
Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 125 S. Ct. 542, 550 (2004).
Defendants contend that the purchase of www.hamptonlocations.com was a fair
use because it was merely descriptive of the real estate business that was being pursued.
However, Darrell never actually used the domain name for this purpose; therefore, he cannot
claim fair use based merely on an idea.
Next, Defendants assert that insofar as the domain name was used to link internet
users to the Design Quest site, the domain name was merely descriptive of Darrell’s parents’
home which, after all, is located in the Hamptons. Citing no authority, Defendants further
contend that the website was used “other than as a mark” because it merely re-routed an internet
user to the Design Quest website. Thus, Defendants argue, the website merely served as a web
address to “identify the user’s location” and had no content of its own. Absent any authority
adopting this theory, the Court declines to hold as a matter of law that the link set up by Darrell
did not constitute use “as a mark.” See Venetianaire Corp. of Am. v. A & P Import Co., 429 F.2d
1079, 1081 (2d Cir. 1970) (fair use defense unavailable if the name is used as a trade or service
5
To the extent Plaintiffs argue that Defendants waived the affirmative defense of fair use
because it was not raised in their answer, the Court finds that given Defendants’ pro se status at
the time, any failure on their behalf was excused.
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mark.). Moreover, at the very least there is a question of fact as to whether Darrell’s use was
merely descriptive, in a generic sense, of the location of his parents’ home or whether a
trademark use was both effected and intended. This is especially true given that once linked to
the Design Quest website, a consumer would see not just pictures of the house but an offer to
rent the house for photo shoots, which is the primary focus of Plaintiffs’ business.
In sum, Plaintiffs’ claims of unfair competition are dismissed as to Barbara and
Richard. However, because based on the papers submitted, Defendants have not convinced the
Court that Darrell is entitled to judgment as a matter of law, the unfair competition claims are
sustained as to Darrell.
V. Plaintiffs’ Claim for Injunctive Relief
Count 2 of the Complaint seeks injunctive relief pursuant to the Lanham Act “to
prevent a further violation of Plaintiffs’ rights.” (Compl. ¶ 31.) It is undisputed that Plaintiffs
now own the domain name in controversy and have done so since May 12, 2002. Accordingly,
Plaintiffs’ claim for injunctive relief is dismissed as moot. See Bihari v. Gross, 119 F. Supp. 2d
309, 316 (S.D.N.Y. 2000) (finding no basis for injunctive relief where party voluntarily
relinquished domain name).
CONCLUSION
For the foregoing reasons, Defendants’ motion for summary judgment is
GRANTED as to Richard and Barbara Rubens and DENIED as to Darrell Rubens. In addition,
Count 2 of the Complaint, which seeks injunctive relief, is dismissed. The parties are directed to
appear before the Court on November 4, 2005 at 3:00 p.m at Courtroom 930 for a final status
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conference. At that time, the Court will schedule a date for trial.
SO ORDERED.
Dated: Central Islip, N.Y.

September 30, 2005
/s
Denis R. Hurley, U.S.D.J.
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HAMPTONS LOCATIONS, INC. and NANCY
GRIGOR,
Plaintiffs, MEMORANDUM OF DECISION
AND ORDER
-against- 01-CV-5477 (DRH)(WDW)

DARRELL RUBENS, each individually and
doing business as HAMPTON LOCATIONS,
Defendants.
----------------------------------------------------------------X
APPEARANCES:
PATRICIA WEISS, ESQ.

Attorney for Plaintiffs
P.O. Box 751
Sag Harbor Shopping Cove
Main Street - Suite 12
Sag Harbor, New York 11963-0019
MICHAEL B. RONEMUS, ESQ.

Ronemus & Vilensky
Attorney for Defendants
112 Madison Avenue
HURLEY, District Judge:
Plaintiffs Hamptons Locations, Inc. and Nancy Grigor (“Grigor”) (collectively,
“Plaintiffs”) filed the present action against defendants Richard Rubens (“Richard”), Barbara
Rubens (“Barbara”), and Darrell Rubens (“Darrell”) (collectively, “Defendants”) claiming
damages arising out of Defendants’ use of an allegedly infringing website. By Memorandum of
Decision and Order dated September 30, 2005 (the “September 30, 2005 Order”), the Court
granted Barbara’s and Richard’s motion for summary judgment and denied Darrell’s motion for
summary judgment. Both Plaintiffs and Darrell have moved for reargument. For the reasons
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that follow, Darrell’s motion for reargument is denied; Plaintiff’s motion for reargument is
granted. Upon reconsideration, the Court adheres to its original ruling regarding Barbara and
thus, summary judgment as to Barbara is granted. With respect to Richard, however, upon
reconsideration, summary judgment is denied.
BACKGROUND
The background of this case is set forth in the September 30, 2005 Order,
familiarity with which is assumed. Thus, the Court will only state the facts necessary for
disposition of the instant motion.
Grigor is the owner, President, and sole employee of plaintiff Hamptons
Locations, Inc., a New York corporation. Since 1994, Hamptons Locations, Inc. has used the
service mark and business name “Hamptons Locations” and the domain name
“www.hamptonslocations.com.”
On July 8, 1999, a company called “DSNY” registered the domain name
“HamptonLocations.com.” The only difference between this domain name and Plaintiffs’
business name, i.e., Hamptons Locations, is the absence of the letter “s” between the words
“Hampton” and “Location.” Plaintiffs alleged that Defendants, through the name DSNY, caused
the registration of this mark and then tried to sell the domain name back to Plaintiffs in violation
of section 1125(d) of the Lanham Act, also known as the Anticybersquatting Consumer
Protection Act (“ACPA”). Plaintiffs also charged Defendants with unfair competition.
In the September 30, 2005 Order, the Court found that there was no evidence in
the record linking Barbara and Richard to DSNY and therefore dismissed Plaintiffs’ ACPA
claim against them. (Sept. 30, 2005 Order at 16.) As for Darrell, the Court found that
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“[a]lthough the evidence linking Darrell to DSNY is marginal at best, the Court cannot state as a
matter of law that no reasonable trier of fact could conclude that Darrell was sufficiently linked
to DSNY so as subject him to liability under the ACPA.” (Id.) Thus, Darrell’s motion for
summary judgment was denied as to Plaintiffs’ ACPA claim.
With respect to Plaintiffs’ claim for unfair competition, the Court found that
there was no evidence that “Barbara or Richard were in any way involved in any use of the
www.hamptonlocation.com site” and therefore dismissed Plaintiffs’ claims of unfair competition
as against Richard and Barbara. The unfair competition claim was sustained as to Darrell,
however, based, inter alia, on evidence that he used this site.
DISCUSSION
I. Applicable Legal Standard for Reargument
The standard for a motion for reconsideration “is strict, and reconsideration will
generally be denied unless the moving party can point to controlling decisions or [factual] data
that the court overlooked – matters, in other words, that might reasonably be expected to alter the
conclusion reached by the court.” Shrader v. CSX Transp., Inc., 70 F.3d 255, 257 (2d Cir.
1995); see also Arum v. Miller, 304 F. Supp. 2d 344, 347 (E.D.N.Y. 2003) (“To grant such a
motion the Court must find that it overlooked matters or controlling decisions which, if
considered by the Court, would have mandated a different result.”) (citation and internal
quotation marks omitted). “The major grounds justifying reconsideration are ‘an intervening
change of controlling law, the availability of new evidence, or the need to correct a clear error or
prevent manifest injustice.’” Virgin Atl. Airways, Ltd. v. National Mediation Bd., 956 F.2d 1245,
1255 (2d Cir. 1992) (quoting 18 C. Wright, A. Miller & E. Cooper, Federal Practice &
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Procedure § 4478 at 790). Thus, a “party may not advance new facts, issues, or arguments not
previously presented to the Court.” National Union Fire Ins. Co. v. Stroh Cos., 265 F.3d 97,
115 (2d Cir. 2001) (quoting Polsby v. St. Martin’s Press, No. 97 Civ. 690, 2000 WL 98057, at *1
(S.D.N.Y. Jan. 18, 2000)).
II. Darrell’s Motion for Reconsideration is Denied
Essentially, Darrell argues that the Court misapplied the law and the facts by
according too much weight to Plaintiffs’ evidence and either disregarding or not sufficiently
considering Defendants’ evidence. The Court disagrees.
Contrary to Darrell’s contentions, the Court did not “rely” on the evidence
submitted by Plaintiffs; it merely found that based on the record before it, a reasonable trier of
fact could infer that Darrell used the allegedly infringing website and was involved in its
registration. After reviewing Darrell’s arguments made in support of the instant motion, the
Court finds that they are a mere rehashing of the same arguments he made unsuccessfully in
support of his motion for summary judgment. Having failed to show that the Court overlooked
something, made a clear error or committed a manifest injustice, Darrell’s motion for reargument
is denied.
III. Plaintiffs’ Motion for Reargument is Granted
Plaintiffs argue that the Court overlooked evidence that defeats Defendants’
summary judgment motion. Specifically, Plaintiffs point to a letter written by Richard to Grigor
and her husband, dated July 21, 2000, in which Richard states:
I own the internet site Hampton Locations, this site is used for my
Hampton Location, which, as you or anybody else knows, features
only my home and my architectural and interior design service.
My home has been referred to by countless people as a Hampton
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Location since 1983 and I will not capitulate to extortion or other

threats to make me give up the site. Furthermore, I withdraw my
offer to sell you the site.
(Pls.’ Mem. in Supp. of Recons., Ex. 5 (emphasis in original).) Although this letter was attached
to Defendants’ motion for summary judgment as Exhibit D, Plaintiffs made no mention of it in
their opposition papers. The Court is not required to scour the record or the parties’ various
submissions to piece together appropriate arguments. Cf. Waldridge v. American Hoechst Corp.,
24 F.3d 918, 921-22 (7th Cir. 1994) (noting that party contesting summary judgment has duty “to
highlight which factual averments are in conflict as well as what record evidence there is to
confirm the dispute”). Nonetheless, given that this letter was part of the record on Defendants’
motion for summary judgment, this letter was arguably overlooked by the Court in making its
prior determination. Accordingly, to prevent manifest injustice, the Court grants reargument to
consider it. Upon reconsideration, the Court finds that given Richard’s admission that he owns
the website at issue and uses it for his home, the Court’s prior finding that there is no evidence
linking Richard to the use of this site was in error. Moreover, based upon Richard’s statement
that he owns the website, a reasonable trier of fact could certainly infer that Richard was
DSNY’s “authorized licensee” so as to subject him to liability under the ACPA. Accordingly,
the Court holds that upon reconsideration, Richard’s motion for summary judgment as to
Plaintiffs’ ACPA and unfair competition claims is denied.1
1
In support of their motion for reconsideration, Plaintiffs also submitted several new
documents which may imply that Richard was the real registrant and that DSNY was merely a
code name used by Richard to conceal his involvement. It is well-established, however, that a
motion for reconsideration may not be used as a vehicle to introduce new evidence that could
have been presented to the Court in the first instance. See, e.g., National Union Fire Ins., 265
F.3d at 115. Moreover, contrary to Plaintiffs’ contentions, Defendants first raised the issue of
DSNY’s registration of the website in their moving papers on the summary judgment motion.
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With respect to Barbara, Plaintiffs argue that because Barbara actually owned the
home referenced in the July 21, 2000 letter, Richard’s reference to use of the allegedly infringing
website for that Southhampton location was impliedly also a use by Barbara, who resided there
with Richard. (Pls.’ Mem. in Supp. of Recons. at 7.) The Court finds Richard’s statement in this
regard insufficient to create a genuine issue of material fact as to Barbara’s use of the domain
name and her involvement with DSNY. Accordingly, upon reconsideration, the Court adheres to
its original ruling and summary judgment is granted as to Barbara.
CONCLUSION
For the foregoing reasons, Darrell Rubens’ motion for reargument is DENIED
and Plaintiffs’ motion for reargument is GRANTED. Upon reconsideration, Richard Rubens’
motion for summary judgment is DENIED; Barbara Rubens’ motion for summary judgment
remains granted. The parties are directed to appear before the Court on June 23, 2006 at 2:00
p.m in Courtroom 930 for a final status conference. At that time, the Court will schedule a date
for trial.
SO ORDERED.
Dated: Central Islip, N.Y.

May 25, 2006
/s
Denis R. Hurley, U.S.D.J.
Although this issue was further supplemented by Defendants in their reply papers, it is
disingenuous for Plaintiffs to imply that it was first raised therein. In any event, to the extent
Defendants presented supplemental affidavits on this issue in their reply papers, it was within
the Court’s discretion to consider it. See Bayway Refining Co. v. Oxygenated Mktg. and Trading
A.G., 215 F.3d 219, 226-27 (2d Cir. 2000). Accordingly, the Court’s granting of reargument is
based solely upon the July 21, 2000 letter referenced above.
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-------------------------------------------------------------X
HAMPTONS LOCATIONS, INC., et al.,
Plaintiff(s), ORDER
CV 01-5477 (DRH) (WDW)
-against-
RICHARD RUBENS, et al.,
Defendant(s).
-------------------------------------------------------------X
WALL, Magistrate Judge:
By letter application dated June 12, 2004, plaintiffs sought an order setting dates certain
for defendants’ depositions. Plaintiffs’ counsel indicated that such action was warranted due to
defendants’ “evasive and obstructionist conduct, stonewalling, and stall tactics.” The parties
appeared before the court on June 21, 2004 in an attempt to resolve several issues, including this
one. At that conference, the parties were directed to work out deposition dates. After
consultation, the parties proposed four dates for depositions and the court established those dates
by order dated June 21, 2004.
On the first of those dates, June 28, 2004, defendants appeared in the courtroom ready for
the deposition of defendant Darrell Rubens. Plaintiffs’ counsel, Patricia Weiss, was not in the
courtroom at the ordered time and defendants waited for over an hour, to no avail. At that point,
the undersigned entered the courtroom and indicated an intention to bar the taking of defendant
Darrell Rubens’ deposition as an appropriate sanction.
On the afternoon of June 28th, the court received a letter from Ms. Weiss apologizing for
“inadvertently failing to appear” and citing “law office failure of a serious magnitude” and
improper calendaring as her excuse for violating the court’s directive. As defendant Barbara
Rubens notes in her letter of June 30, 2004, Ms. Weiss, a solo practitioner, is the law office. Just
a week before, Ms. Weiss selected the deposition date in the courtroom with her calendar in
hand, and the court, in direct response to her motion seeking dates certain, granted that motion
and ordered the depositions on the dates selected by the parties.
The parties have been amply warned that their conduct could result in the imposition of
sanctions. While precluding a deposition may seem a harsh result, the court finds that it is
warranted after the repeated warnings given to the parties in this contentious litigation, and the
circumstances surrounding Darrell Rubens’ deposition. Accordingly, pursuant to Fed. R. Civ. P.
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16 (g) and 37, the court orders that plaintiffs be precluded from taking the deposition of
defendant Darrell Rubens.
Dated: Central Islip, New York SO ORDERED:

July 20, 2004
______________________________
WILLIAM D. WALL
United States Magistrate Judge
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JURY CHARGE – The Court 1-29-07
THE COURT: If you'd all be seated. Ladies and

18 gentlemen, you will notice that I've provided you with a
19 copy of the charge. In a moment I'm going to read the
20 charge to you. As I do that, you can read along
21 yourselves, you can just listen to me, there's various
22 options.
23 One thing that I would suggest at some point is
24 to put your initials or some other identifying mark on
25 your copy of the charge. And the reason for that is you
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1 may want to mark it up, there may be things that you want
2 to highlight, whatever.
3 Also, when you go back to the jury room you'll
4 take your copy of the charge, but when you leave the room,
5 your copy will stay there, it will be back in the jury
6 room.
7 So the point is, if you leave the room and then
8 you go back, we want to make sure you pick up your own
9 copy. That's why it's a good idea to put your initials on
10 it.
11 You have now heard all the evidence in the case,
12 as well as the final arguments of the lawyers for the
13 parties. I am now going to instruct you on the law. My
14 instructions will be in three parts.
15 First, I will give you instructions regarding
16 the general rules that define and govern the duties of a
17 jury in a civil case such as this. Second, I will
18 instruct you as to the legal elements of the claims in
19 this case. And third, I will give you some general rules
20 regarding your deliberations.
21 Part one, role of the court and the jury. Let
22 us start by defining our respective roles as judge and
23 jury. Your duty, as I mentioned in my opening
24 instructions is to find the facts from all the evidence in
25 this case. You are the sole judges of the facts and it is
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1 for you and you alone to determine what weight to give to
2 the evidence, to resolve such conflicts as may have
3 appeared in the evidence, and to draw such inferences as
4 you deem to be reasonable and warranted from the evidence.
5 Therefore, with respect to any question
6 concerning the facts, it is your recollection of the
7 facts -- not counsels' recollections, as expressed in
8 opening or closing statements, or my recollections if I
9 made any reference to the testimony that controls. My job
10 is to instruct you on the law. You must apply the law in
11 accordance with my instructions to the facts as you find
12 them. If either of the lawyers has stated a legal
13 principals which differs from what I state to you, you
14 must guided solely by my instructions on the law.
15 You must follow all the rules as I explain them
16 to you. You may not follow some and ignore others. Even
17 if you disagree or don't understand the reasons for some
18 of the rules, you are bound to follow them.
19 Since it is your job, not mine, to find the
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20 facts, I have neither expressed nor attempted to intimate
21 an opinion about how you should decide the facts of the
22 case. You should not interpret anything that I have said
23 or done as expression an opinion about the facts.
24 Two, definition of evidence. You must determine
25 the facts in this case based solely on the evidence or
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1 those inferences which can reasonably be drawn from the
2 evidence. I will now instruct you on what the evidence is
3 and how you should consider it. Evidence has been
4 presented to you in the following forms.
5 First, testimony in court. Sworn testimony from
6 the witnesses in the courtroom on direct examination or
7 cross-examination, et cetera. I emphasize that it is the
8 witness' answers that are evidence; the questions asked by
9 the lawyers or myself are not evidence.
10 At times, lawyers may have incorporated into
11 questions a statement which assumed certain facts to be
12 true and then asked the witness if the statement was true.
13 If the witness denied the truth of the statement, and if
14 there was no other evidence introduced to prove the
15 assumed fact was true, then you may not consider it to be
16 true simply because it was contained in a lawyer's
17 question.
18 Exhibits. Exhibits that have been received in
19 evidence by the court are evidence, in that regard you
20 have the right to review any or all of the exhibits during
21 your deliberations.
22 Third, stipulation of facts. A stipulation of
23 facts is an agreement between the parties that certain
24 facts are true. You must regard such agreed facts as
25 true.
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1 Certain other things are not evidence and are to
2 be disregarded by you in deciding what the facts are.
3 First, arguments, statements, or questions by
4 the lawyers or myself. Second, objections to the
5 questions or to the offered exhibits.
6 Speaking of objections, you should also
7 recognize that attorneys have a duty to object when they
8 believe evidence should not be received and therefore you
9 should not hold the fact that an attorney has made
10 objections or anything else the attorneys may have said or
11 done against the attorney's client.
12 Third, do not consider testimony that has been
13 excluded, stricken or that you have been instructed during
14 the course of the trial to disregard.
15 Fourth, anything that I may have said or done is
16 not evidence.
17 Fifth, obviously anything that you have seen or
18 heard outside the courtroom is not evidence.
19 Three; direct and circumstantial evidence. Now
20 that you know what evidence is and is not, you know that,
21 generally speaking, there are two types of evidence;
22 direct and circumstantial. You may use both types of
23 evidence in reaching your verdict in this case. There is
24 no distinction between the two types of evidence. Equal
25 weight may be given to each type.
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1 Direct evidence is the communication of a fact
2 by a witness who testifies to the knowledge of that fact
3 as having been obtained through one of the five senses.
4 So, for example, a witness who testifies to knowledge of a
5 fact because he saw it, heard it, smelled it, tasted it or
6 touched it, is giving evidence which is direct. What
7 remains for you to is to pass upon the credibility of that
8 witness.
9 Circumstantial evidence is evidence which tends
10 to prove a fact in issue by proof of other facts from
11 which the fact in issue may be inferred.
12 A simple example of circumstantial evidence is
13 as follows: Suppose you came to court on a day when the
14 weather was clear and dry. However, after several hours
15 in the courtroom, you observe a person entering the
16 courtroom wearing a raincoat and shaking a wet umbrella.
17 Now, suppose you haven't had the opportunity to look
18 outside during those several hours to see if it is
19 raining. You wouldn't have direct evidence that it had
20 rained, but you might infer that fact from the
21 circumstances that you have observed.
22 In sum, on the basis of reason and experience
23 and common sense, you infer the existence or nonexistence
24 of a fact from one or more established facts. That is all
25 there is to circumstantial evidence.
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1 You are permitted to draw from the facts which
2 you find to be proven such reasonable inferences as would
3 be justified in light of your experience. Inferences are
4 deductions or conclusions which you, the jury, are
5 permitted but not required to draw from the facts which
6 have been established from the evidence in the case. Use
7 your common sense in drawing inference. When drawing
8 inferences you are not permitted to engage in mere
9 guesswork or speculation.
10 Credibility. In deciding what the facts are in
11 this case, you must consider all the evidence that has
12 been offered. In doing this you must decide which
13 testimony to believe and which testimony not to believe.
14 You are the sole judges of the credibility and
15 may choose to disbelieve all or any part of any witness'
16 testimony. In making a decision as to where the truth
17 lies you may take into account any number of factors,
18 including the following:
19 First: The witness' opportunity to see, hear
20 and know about the events he or she described.
21 Second: The witness' ability to recall and
22 describe those events.
23 Third: The witness' manner in testifying.
24 Fourth: The reasonableness of the witness'
25 testimony in light of all the other evidence in the case.
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1 Fifth, whether the witness had any bias or
2 prejudice concerning any party, person or matter involved
3 in the case.
4 Sixth, whether a witness is an interested
5 witness.
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6 A witness is an interested witness if the
7 witness has an interest in the outcome of the case. A
8 party to this action is an interested witness, as would be
9 any other witness may find has a financial or other
10 personal stake in the outcome of the case. An interested
11 witness is not necessarily less credible than a
12 disinterested witness. It is for you to determine whether
13 or not his or her testimony has been colored intentionally
14 or unintentionally by his or her interest. You are at
15 liberty, if you deem it proper under all the circumstances
16 to do so to disbelieve the testimony of such a witness
17 even though it is not otherwise impeached or contradicted.
18 However, you are not required to disbelieve such
19 a witness and may accept all or such part of his or her
20 testimony as you deem reliable and reject such as part as
21 you deem unworthy of acceptance.
22 Seventh: Whether a witness witness' testimony
23 was contradicted by his or her other testimony during the
24 trial or by what the witness said or did on a prior
25 occasion, including what the witness may have indicated at
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1 a deposition before trial or by the testimony of other
2 witnesses or by some other evidence in the record.
3 However, in deciding whether or not to believe a
4 witness bear in mind that people sometimes forget things
5 or become nervous while testifying. An inconsistency or
6 contradiction may be due to an innocent mistake or due to
7 an intentional falsehood. Consider, therefore, whether it
8 has to do with an important fact or a small detail.
9 Also bear in mind that two people witnessing a
10 single event may observe it differently and remember it
11 differently.
12 With respect to a prior inconsistent statement
13 of a trial witness you are instructed that an
14 inconsistency may be utilized by you solely for the
15 purpose of determining the credibility of that witness,
16 subject to the following exception; if the inconsistency
17 appears in a pre-trial deposition then such inconsistent
18 statement may also be considered to the extent you deem
19 appropriate as substantive evidence; in other words, for
20 the truth of the matter asserted in the earlier statement.
21 Eighth: A witness is biased. In deciding
22 whether to believe a witness, you should specifically note
23 any evidence of hostility or affection which the witness
24 may have towards one of the parties. Likewise, you should
25 consider evidence of any other interest or motive that a
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1 witness may have in cooperating with a particular party.
2 It is your duty to consider whether the witness
3 has permitted any bias or interest to color his or her
4 testimony. In short, if you find that a witness is
5 biased, you should view his or her testimony with caution,
6 weigh it with care and subject it to close and searching
7 scrutiny.
8 Ninth: If you find that any witness, including
9 a party, has willfully testified falsely as to any
10 material fact in whole or in part, you may disregard not
11 only that particular statement, but you may also, if you
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12 find it appropriate, disregard all of his or her testimony
13 as not being worthy of belief.
14 Burden of proof: In a civil case such as this,
15 plaintiff has the burden of proving the essential elements
16 of its claims against the defendant you are considering by
17 a fair preponderance of the credible evidence.
18 To establish a claim by a fair preponderance of
19 the credible evidence simply means to prove that something
20 is more likely so than not. So a preponderance of the
21 evidence means the greater weight of the evidence. It
22 does not mean the greater number of witnesses or the
23 greater length of time taken by either side. It means the
24 quality and persuasiveness of the evidence, the weight and
25 effect it has on your minds.
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1 The law requires that, in order for a party who
2 bears the burden of proof as to a particular issue or
3 claim to prevail, the evidence that supports the party's
4 claim must appeal to you as more nearly representing what
5 took place than that evidence opposed to the party's claim
6 if it does not or if it weighs so evenly that you are
7 unable to say that there is a preponderance on either
8 side, then you must resolve the question in favor of the
9 party which does not have the burden of proof.
10 To recapitulate briefly, a preponderance of the
11 evidence means such evidence as when considered and
12 compared with that opposed to it, prowls about your mind a
13 belief that what's sought to be proved is more likely the
14 case than not the case.
15 Six: No sympathy or bias. In determining the
16 issues of fact and rendering a verdict in this case, you
17 should perform your duty with complete impartiality and
18 without bias, sympathy or prejudice as to any party.
19 In reaching your verdict, you are not to be
20 affected by what the reaction of the parties or of the
21 public to your verdict may be, whether it will please or
22 displease anyone, be popular or unpopular or indeed any
23 consideration outside the case as it has been presented to
24 you in this courtroom. The parties expect that you will
25 carefully and impartially consider all the evidence
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1 following the law as it is now being given to you and
2 reach a just verdict regardless of the consequences.
3 Part 2. In this part of the charge you will be
4 instructed on the causes of action contained in
5 plaintiff's complaint. You must consider each cause of
6 action separately and each defendant separately as well.
7 However, for the sake of simplicity I will often use the
8 plural "defendants" in this part of the charge, but
9 remember to consider the question of liability and
10 damages, if you reach that issue, separately as to each
11 defendant as to each cause of action.
12 One: The nature of plaintiffs' claims.
13 Plaintiffs allege in their complaint that defendants have
14 infringed their service mark, Hamptons Locations, in
15 violation of Title 15 United States Code Section 1125
16 subdivision A and D, "by causing confusion, causing
17 mistake, and deceiving as to the affiliations, connection
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18 and association of their services pertinent to 49 East
19 Beach Drive" and by designing and using the internet
20 advertising -- I misread that. Let me try that again.
21 "And by designing and using internet advertising
22 and a registration of a domain for the purpose of
23 attracting plaintiff's customers to its domain, which
24 cyber piracy by defendants violates the Anticybersquatting
25 Consumer Protection Act, ACPA, because defendants
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1 registered a domain name containing a known mark with the
2 intention of diverting traffic to the registrant's site or
3 otherwise achieving financial gain."
4 In addition to the above federal claims, also
5 called Lanham Act claims, defendants are accused of unfair
6 competition under the law of the State of New York. Each
7 of these claims will be discussed beginning with the claim
8 under 15 United States Code Section 1125(a).
9 Two: Service mark infringement claim under 15
10 United States Code section 1125(a). A: Statutory
11 provision. Section 1125(a) provides in pertinent part
12 that: Any person who, on or in connection with any goods
13 or services, or any container for goods, use in commerce
14 any word, term, name, symbol or device, or any combination
15 thereof, or any false designation of origin, false or
16 misleading description of fact or false or misleading
17 representation of fact, which A; is likely to cause
18 confusion, or to cause mistake, or to deceive as to the
19 affiliation, connection or association of such person with
20 another person, or as to the origin, sponsorship or
21 approval of his or her goods, services or commercial
22 activities by another person, shall be liable in a civil
23 action;
24 B, elements of plaintiff's section 1125(a) claim
25 and definitions of a service mark.
1254
1 For plaintiffs to prevail on a claim for service
2 mark infringement under section 1125(a), they must
3 establish each of the following elements by a
4 preponderance of the evidence. First, plaintiffs have
5 established Hamptons Locations as a service mark for the
6 services they provide. Second, defendants used Hampton
7 location in commerce. Third, plaintiffs established the
8 service mark before defendants used the name Hampton
9 Locations to offer the Rubens' home for photo shoots
10 and/or for other services provided by plaintiffs and
11 fourth, defendants used Hampton Locations in a manner
12 likely to cause confusion about the source of the services
13 among a significant number purchasers.
14 Before explaining each of the four
15 aforementioned elements in detail, I will provide you with
16 the definition of a service mark.
17 The term service mark includes any word, name,
18 symbol or guys or any combination thereof, adopted and
19 used by a service provider to identify and distinguish its
20 services, including a unique service, from those provided
21 by others and to indicate the source of the services, even
22 if that source is generally unknown.
23 The main function of a service mark is to
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24 identify and distinguish services as a product of a
25 particular service provider and to protect its goodwill
1255
1 against the sale of another's service as its own.
2 A service mark is also a merchandising symbol
3 that helps a prospective purchaser to select the services
4 the purchaser wants. Service mark signifies that all
5 services bearing the mark derive from a single source and
6 are equivalent in quality.
7 There is, therefore, a public interest in the
8 use of service marks.
9 C -- what I've given to you now is very quickly,
10 the elements that the plaintiff must prove with respect to
11 this 1125(a) and then I've given you the definition
12 explanation concerning the service mark. Now I'm going to
13 review each of the elements in detail. And we'll start
14 under paragraph C which reads first element of section
15 1125(a) claim, protectable mark.
16 The pivotal question for you to decide with
17 respect to the first element of plaintiffs' section
18 1125(a) claim is whether plaintiffs have a legally
19 protectable mark.
20 I instruct you as a matter of law that Hamptons
21 Locations is what is known as a descriptive mark. As
22 such, it is protectable only if, as plaintiffs maintain,
23 the term has acquired distinctiveness in the marketplace
24 as a source indicator for plaintiffs' services, that is,
25 if it has acquired secondary meaning.
1256
1 If, on the other hand, Hamptons Locations has
2 not acquired secondary meaning, as defendants contend,
3 then it is not protectable and this cause of action of
4 plaintiffs necessarily fails.
5 By the term "secondary meaning," the law means
6 that a term that is not inherently distinctive has been so
7 used that its primary significance in the minds of the
8 consuming public is not the service itself, but instead
9 the identification of it with a single source
10 This does not mean the consuming public must
11 know the exact identity of that single source in the sense
12 that it knows the name of the individual or entity
13 providing the service. All that is necessary to establish
14 secondary meaning is that the ordinary consumer associates
15 the term with a single source, regardless of whether the
16 consumer knows with who or what that source is.
17 You must find, therefore, from a preponderance
18 of the evidence that a significant number of the consuming
19 public for such services in the market area involved
20 associates Hamptons Locations with a single source. It is
21 for you to decide how many constitute a significant
22 number, keeping mind that the plaintiff need not prove
23 that all or even a majority of the consuming public
24 understands this secondary meaning.
25 Plaintiffs have a burden of proving secondary
1257
1 meaning. The mere fact that the plaintiffs are using
2 Hamptons Locations or that the plaintiffs began to use it
3 before the defendants used Hampton Location, does not
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4 establish secondary meaning, nor is mere popularity of
5 service sufficient to show secondary meaning.
6 In determining whether Hamptons Locations has
7 acquired secondary meaning, it is appropriate for you to
8 consider any evidence relating to A, the length and manner
9 of its use; B, the nature and extent of advertising and
10 promotion; C, sales volume; D, unsolicited media coverage
11 of the service; E, consumer studies linking the mark to a
12 source; F, attempts to plagiarize the mark; and, G, other
13 efforts made by plaintiffs to promote the connection
14 between Hamptons Locations and plaintiffs.
15 The above listing is not meant to be exhaustive
16 nor is any one factor dispositive. Instead, you should
17 consider the above factors and any others you deem to be
18 appropriate and then, given the totality of the
19 circumstances as you find them to be, determine whether
20 the plaintiffs have proven their first element of their
21 section 1125(a) claim.
22 D, second element of section 1125(a) claim:
23 Defendants use of mark occurred in commerce. Section 1127
24 of Title 15 of the United States Code provides in
25 pertinent part that the term "use in commerce" means the
1258
1 bona fide use of a mark in the ordinary course of trade
2 and not merely to reserve a right in a mark.
3 For purposes of this chapter, a mark shall be
4 deemed to be in use in commerce with respect to services
5 when it is used or displayed in the sale or advertising of
6 services and the services are rendered in commerce.
7 The word "commerce" means, in essence,
8 activities in the marketplace that are subject to
9 regulation by Congress. Alleged incidence of service mark
10 infringement fall within that category.
11 E, third element of section 1125(a) claim.
12 First use by plaintiff: If plaintiffs have established
13 the first element, namely, that Hamptons Locations
14 acquired secondary meaning, and is thus protectable, and
15 the second element namely that the defendants' use of the
16 mark occurred in commerce, then to satisfy the third
17 element, plaintiff must prove that the secondary meaning
18 was in existence before defendants utilized the term
19 Hampton Locations in the marketplace. Otherwise this
20 third element has not been established.
21 Fourth element of section 1125(a) claim.
22 Likelihood of confusion: With respect to this element,
23 you must consider whether defendants's use of Hampton
24 Locations was likely to cause an appreciable number of
25 ordinarily prudent purchasers to be misled or indeed
1259
1 simply confused as to the source of the services in
2 question.
3 I will suggest some factors that you should
4 consider in making this determination.
5 The presence or absence of any particular factor
6 that I suggest should not necessarily resolve whether
7 there was a likelihood of confusion. Because you must
8 consider all relevant evidence in making this
9 determination. As you consider the likelihood of
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10 confusion, you should examine such factors as the
11 following:
12 One: Strength or weakness of the mark. The
13 more the consuming public recognizes plaintiff's mark as
14 an indication of origin of plaintiff's services, the more
15 likely it is consumers would be confused about the
16 defendants' service if defendants used a similar mark.
17 Two: Proximity of the parties' services in the
18 marketplace. If defendants and plaintiffs use their mark
19 with respect to the same or similar services in the same
20 general geographical area there will be a greater
21 likelihood of confusion about the source of the services
22 than otherwise.
23 Three: Similarity of plaintiffs' and
24 defendants' marks, if the overall impression created by
25 the plaintiff's mark is similar to that created by
1260
1 defendants' mark in appearance, sound or meaning, there is
2 a greater chance of likelihood of confusion than
3 otherwise.
4 Fourth: Actual confusion. If defendants' use
5 of their mark has led to actual confusion this strongly
6 suggests a likelihood of confusion. But actual confusion
7 is not required. Even if actual confusion did not occur,
8 defendants' use of the mark still be likely to cause
9 confusion. However, a mere possibility of confusion would
10 be insufficient.
11 Five: Defendants' intent about adopting their
12 mark. If defendants adopted their mark with the intention
13 of capitalizing on plaintiff's reputation and goodwill and
14 resulting confusion in the marketplace, that intention may
15 strongly show a likelihood of confusion.
16 Sixth: Sophistication of the relevant consumer
17 group. Generally the more sophisticated a consumer, the
18 more attention and care will be given to selecting a
19 service; thus, unsophisticated buyers are more likely to
20 be confused and sophisticated buyers are less likely to be
21 so.
22 Seventh: Quality of defendants' services.
23 Under this factor you should look to, one, whether the
24 defendants' services were inferior to plaintiffs', thereby
25 tarnishing plaintiffs' reputation if consumers confuse the
1261
1 two, or, two, whether defendants' service are of equal
2 quality, thus creating a confusion as to the source
3 because of that similarity.
4 Eight: Product lines. If you find that the
5 parties' services differ, you should then consider how
6 likely it is that plaintiffs will begin providing the
7 service for which defendants allegedly were using a
8 confusingly similar mark to plaintiffs. If plaintiffs
9 have an interest in reserving the option to use the mark
10 on services similar to defendants in the future, there is
11 a greater likelihood of confusion. This factor is also
12 called the likelihood that plaintiff will bridge the gap
13 between the services. In addition to the above factors,
14 you should consider any factors you deem appropriate in
15 determining this third element of plaintiffs' section
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16 1125(a) claim, that is, the likelihood of confusion
17 factor.
18 F: Plaintiffs' registration of Hamptons
19 Locations with the United States Patent and Trademark
20 Office. Title 15 of the United States Code section
21 1057(b) provides as follows:
22 B: Certificate as prima facie evidence. A
23 certificate of registration of a mark upon the principal
24 register provided by this chapter shall be prima facie
25 evidence of the validity of the registered mark and of the
1262
1 registration of the mark, of the registrant's ownership of
2 the mark and of the registrant's exclusive right to use
3 the registered mark in commerce on or in connection with
4 the goods or services specified in the certificate,
5 subject to any condition or conditions or limitations
6 stated in the certificate.
7 The term "prima facie evidence" means evidence
8 which if unexplained or uncontradicted is sufficient to
9 satisfy a registrant's burden of proof with respect to the
10 subjects involved; here, subject to the caveat to be
11 provided momentarily, that the term Hamptons Locations has
12 secondary meaning, that plaintiffs are the owner of the
13 mark, and, as such, they have the exclusive right to use
14 the mark in commerce in connection with the services
15 specified in the certificate, hereinafter referred to
16 collectively as the prima facie -- that should read, it
17 reads care, but it should read case. So it would be prima
18 facie case benefits.
19 In this case, however, the certificate for
20 registration for Hamptons Locations was not issued by the
21 patent and trademark office until August 20th, 2002. As a
22 result, the prima facie evidence benefits referenced above
23 have no applicability to any alleged infringing conduct
24 that predates the August 20th, 2002 registration date.
25 However, the prima facie evidence benefits would be
1263
1 applicable to infringing conduct by defendants, if any,
2 that you find occurred after August 20th, 2002; as to such
3 conduct, it would be defendants' burden to rebut or
4 otherwise overcome the prima facie case benefit.
5 So the key idea of that is that if you register
6 a mark with the patent and trademark office, there are
7 certain benefits that flow to the registrant, and among
8 other things, it would indicate that you're the owner of
9 the a mark and you have the exclusive right to the mark
10 within the geographical area designated in the certificate
11 and so forth.
12 That benefit or those benefits here are not
13 applicable to any conduct that occurred prior to the
14 August 20th, 2002 registration date. But after that date,
15 if you find there's any infringing conduct, then those
16 benefits that I've mentioned would be applicable.
17 So what does that mean? That means basically as
18 to those benefits, the burden would be on the defendant to
19 rebut or overcome those. It's the one exception to the
20 idea of the burden of proof. It doesn't shift the burden
21 of proof on the whole cause of action. It just shifts the
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22 burden of proof as to activities that occur after
23 August 20th, 2002 as to the benefits that result from the
24 trademark registration, again, with the patent and
25 trademark office.
1264
1 But that's what that's about.
2 Now we'll go to number G, which is conclusion as
3 to plaintiffs' section 1125(a) claim. If plaintiffs have
4 proven each of the above three elements by a preponderance
5 of the evidence as against the defendant you are
6 considering, your verdict will be for the plaintiffs as to
7 their first cause of action as against that defendant.
8 Otherwise, you must find for that defendant as to that
9 claim.
10 I just want to check one thing. So just bear
11 with me for a second.
12 As you'll see in that sentence, this is on page
13 35, it's about a third of the way down the page after G,
14 it reads plaintiff, it shouldn't have an apostrophe there,
15 but it reads if plaintiffs have proven each one of the
16 three elements, that's a scrivener's error, it would be
17 four, so it would dovetail with what I said previously
18 about the four elements.
19 So at this point we'll shift gears and go to the
20 second federal claim that's been asserted by plaintiffs
21 and that is called cyber piracy prevention claim under
22 Section 1125(d). Firstly we'll discuss the statutory
23 provision, that being what the statute, to wit, Section
24 1125(d) provides at least in pertinent part, and it reads
25 as follows:
1265
1 1-A, a person shall be liable in a civil action
2 by the owner of a mark if without regard to the services
3 of the parties, that person one, small I, has a bad faith
4 intent to profit from that mark; and two, registers,
5 traffics in or uses a domain name that in the case of a
6 mark that is distinctive at the time of the registration
7 of the domain name is identical or confusingly similar to
8 that mark.
9 So that's the relevant statutory language in
10 part. I'll continue. There's more.
11 Under B-I, it reads: In determining whether a
12 person has a bad faith intent, described under
13 subparagraph A, a jury may consider factors such as, but
14 not limited to: One, the trademark or other intellectual
15 property rights of the person, if any, in the domain name;
16 two, the extent to which the domain name consists of the
17 legal name of the person or a name that is otherwise
18 commonly used to identify that person; three, the person's
19 prior use, if any, of the domain name in connection with
20 the bona fide offering of any goods or services; four, the
21 person's bona fide noncommercial or fair use of the mark
22 in a site accessible under the domain name; five, the
23 person's intent to divert consumers from the mark owner's
24 online location to a site accessible under the domain name
25 that could harm the goodwill represented by the mark
1266
1 either for commercial gain or with the intent to tarnish
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2 or disparage a mark by creating a likelihood of confusion
3 as to the source, sponsorship, affiliation, or endorsement
4 of the site; sixth, the person's offer to transfer, sell
5 or otherwise assign the domain name to the mark owner or
6 any third-party for financial gain without having used or
7 having an intent to use a domain name in the offering of
8 any goods or services or the person's prior conduct
9 indicating a pattern of such conduct; seven, the person's
10 provision of material and misleading false contact
11 information when applying for the registration of the
12 domain name, the person's intentional failure to
13 maintained accurate contact information, or the person's
14 prior conduct indicating a pattern of such conduct; eight,
15 the person's registration or acquisition of multiple
16 domain names which the person knows are identical or
17 confusingly similar to marks of others that are
18 distinctive at the time of the registration of such domain
19 names, or dilutive of famous marks of others that are
20 famous at the time of registration of such domain names,
21 without regard to the goods or services of the parties;
22 and ninth, the extent to which the mark incorporated in
23 the person's domain name registration is or is not
24 distinctive and famous within the meaning of subsection
25 (C) (1) of this section.
1267
1 Bad faith -- we're reading from the statute.
2 This is the statute that the Congress passed and these are
3 the factors that the Congress has indicated are relevant,
4 we'll go to the next portion of the statute.
5 Two small I's: Bad faith intent described under
6 subparagraph A shall not be found in any case in which the
7 jury understands that the person believed and had
8 reasonable grounds to believe that the use of the domain
9 name was a fair use or otherwise lawful. D: A person
10 shall be liable for using a domain name under subparagraph
11 A only if that person is the domain name registrant or
12 that registrant's authorized licensee. E: As used in
13 this paragraph the term "traffics in" refers to
14 transactions that include, but are not limited to, sales,
15 purchases, loans, pledges, licenses, exchanges of
16 currency, and any other transfer for consideration or
17 receipt in exchange for consideration. So that concludes
18 the language of the statute.
19 With respect to paragraph 1-A(i) of Section
20 1125(d), you will note that a person cannot violate the
21 statute unless the mark owned by the intended victim is
22 distinctive. Here, as previously explained, the term
23 Hamptons Locations is descriptive and it is not
24 protectable under the law unless plaintiffs establish that
25 the term had at the time acquired distinctiveness in the
1268
1 marketplace, that is, it acquired a secondary meaning as
2 previously explained.
3 Before listing the elements of plaintiffs'
4 Section 1125(d) claim, some preliminary instructions are
5 required. Firstly, you are advised that Section 1125(d)
6 was enacted on November 29, 1999, and is not retroactive.
7 Therefore, since the domain name www.hamptonlocations.com
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8 was registered with Networks Solutions prior to that date,
9 plaintiffs may not rely on the registration in claiming
10 that the defendants violated the statute.
11 However, if plaintiffs have established that the
12 defendant you are considering used the domain name after
13 that date, and the other elements of the statute are
14 satisfied, that defendant may be held liable for damages.
15 You should also take particular note of
16 subparagraph 1-D which provides that "a person shall be
17 liable for using a domain name under subparagraph A only
18 if that person is the domain name registrant or that
19 registrant's authorized licensee."
20 Here, the registrant for www.hamptonlocation.com
21 was DSNY with the address of 575 Madison Avenue, New York,
22 New York. Accordingly, neither of the two defendants may
23 be found to have violated the statute unless plaintiffs
24 have proven that the defendant that you are considering
25 was an authorized licensee of the registrant, i.e., a
1269
1 person authorized by the registrant to perform a
2 particular act or series of acts.
3 And finally, remember that with respect to bad
4 faith that such an intent may not be ascribed to an
5 individual who believed and had reasonable grounds to
6 believe that the use of the domain name was a fair use or
7 otherwise lawful.
8 All right. So at this point we're going to
9 address the elements that the plaintiff must establish
10 with respect to their 1125(d) claim. And each of these
11 elements must be established by a preponderance of the
12 evidence.
13 The elements are: One, the defendant you are
14 considering, used or trafficked in the domain name
15 www.hamptonlocations.com with a bad faith intent to profit
16 from plaintiff's mark; two, at the time that the domain
17 name was acquired, the plaintiffs' mark, Hamptons
18 Locations had acquired secondary meaning as that term was
19 previously defined with respect to plaintiffs' claim under
20 1125(a); and. Three, that the domain name used or
21 trafficked in by the defendant you are considering is
22 confusingly similar to plaintiffs' mark.
23 If the plaintiffs have proven each of the above
24 elements against the defendant that you are considering
25 you must find for plaintiffs against that defendant as to
1270
1 this claim. Otherwise your verdict must be for that
2 defendant as to that claim.
3 Attention will now be turned to plaintiffs'
4 final claim, that being the one based on unfair
5 competition under the law of the State of New York.
6 Plaintiffs claim for unfair competition under
7 New York State common law. Plaintiffs third claim is a
8 claim for unfair competition under New York common law.
9 In order for plaintiffs to prevail on this claim,
10 plaintiffs must establish the following by a preponderance
11 of the evidence:
12 First, that defendants misappropriated the
13 labors and expenditures of plaintiffs in developing their
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14 business. Second, that defendants acted in bad faith,
15 that is, with a specific intent to get a free ride in the
16 marketplace based upon plaintiffs' efforts. And third,
17 the acts of defendants caused purchasers to be confused or
18 deceived as to the origin of subject services.
19 If plaintiffs have proven each element of their
20 claim for unfair competition, then you must find for
21 plaintiffs as to this claim as to the defendant you are
22 considering. If not, you must find for that defendant.
23 Damages. Having completed my instructions to
24 you on the issue of liability, I now turn to the issue of
25 damages.
1271
1 Introduction: If you find that plaintiffs are
2 entitled to recover against one or both of the defendants
3 on either or any of their claims, then you will have to
4 address the issue of damages which is the subject of this
5 portion of the charge.
6 The fact that I am giving you instructions on
7 damages should not be considered by you as an indication
8 that I believe you should find in favor of the plaintiffs
9 on any of their claims. That's entirely up to you. I
10 have to charge you on the law of damages in the event that
11 you find liability.
12 It is for you to decide on the evidence and the
13 law as I have instructed you whether plaintiffs are
14 entitled to recover on any of the claims. If you decide
15 that plaintiffs are not entitled to recover, you should go
16 no further. However, if you decide that plaintiffs are
17 entitled to a recovery, you will then consider the issue
18 of damages.
19 So first, one, damages under 1125(a). Section
20 1117 entitled recovery for violation of rights, provides
21 that a plaintiff who proves an a claim under section
22 1125(a) is entitled to recover one, defendants' profits
23 and any damages sustained by plaintiff hereinafter
24 referred to simply as damages. In those instances where a
25 violation of section 1125(a) has been established, the
1272
1 injured party is not required to prove damages with
2 mathematical precision. Rather, damages can be
3 approximated, assuming there is evidence in the record
4 which provides a reasonable basis for an award. This is
5 particularly true when the uncertainty or difficulty in
6 measuring damages is attributable to the defendant.
7 Nonetheless, a jury is not permitted to
8 determine damages via speculation and surmise. To
9 partially reiterate, there must be sufficient evidence in
10 the record to permit a reasonable estimate. Here, such
11 evidence is lacking. As a result, even if you have found
12 that plaintiffs have established each and every element of
13 their section 1125(a) claim against one or both of the
14 defendants, you are not being asked to consider an award
15 based upon defendants' profits or any damages sustained by
16 plaintiffs, including a diminution in goodwill.
17 Notwithstanding the foregoing, if you find that
18 plaintiffs are entitled to a verdict in accordance with my
19 prior instructions on liability as to this claim, you may
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20 return a verdict for plaintiffs on their section 1125(a)
21 claim and fix the amount of damages in the nominal sum of
22 $1. That's the idea of nominal damages that I believe
23 were referred to during closing arguments.
24 Two, damages with respect to 1125(d). Section
25 1117(d) entitled statutory damages for violation of
1273
1 Section 1125(d) provides that a successful plaintiff may
2 recover either actual damages for profits as previously
3 explained with respect to section 1125(a), or an award of
4 statutory damages in the amount of not less than $1,000
5 and not more than $100,000 per domain name.
6 Here, there is one domain name in issue, to wit,
7 www.hamptonlocations.com. Among the factors that triers
8 of fact have considered in other cases in determining the
9 amount of statutory damages to award are, one, revenues
10 lost by the plaintiff; two, value of the service mark;
11 three, the potential of discouraging a defendant from
12 committing like acts in the future; four, the deterrent
13 effect on others besides the defendant; and, five, the
14 extent of bad faith involved in defendants' conduct.
15 You should consider the above factors in
16 conjunction with any other factors that you deem
17 appropriate in determining the amount of statutory damages
18 to award plaintiffs should you have found that plaintiffs
19 have established their Section 1125(d) claim against
20 either of the defendants.
21 Now, the next sentence reads: Remember to
22 consider each defendant separately, both as to the issue
23 of liability and, if liability is established, as to
24 damages. There's an element of confusion in that portion
25 of the charge. I'm going to read to you the actual
1274
1 statute on 1117(d). At least the relevant portion. It is
2 relatively brief as compared to what I've read to you
3 previously concerning some of these statutes. It reads as
4 follows:
5 If a case involving a violation of Section
6 1125(d) one of this title, the plaintiff may elect and so
7 forth. At any time before final judgment is rendered by
8 the trial court to recover instead of actual damages and
9 profits an award of statutory damages in the amount of not
10 less than $1,000 and not more than $100,000 per domain
11 name.
12 So now the question here is, and I'm going to
13 work this out with the attorneys, but you can start your
14 deliberations, but if and when you get to the question of
15 statutory damages and you will get to the question of
16 statutory damages if you find that the plaintiffs have
17 established each and every element for liability, if you
18 reach that point, you're going to have to stop because we
19 have to resolve this, because there's two ways to look at
20 the statute.
21 One way would be if there's one domain name
22 involved, the maximum statutory damages regardless of how
23 many damages there are would be $100,000. And what would
24 happen under that interpretation if you have two
25 defendants, make it ten defendants, say there's ten
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1275
1 defendants, you find all of them responsible, all of them
2 liable. Basically they'd each be known as jointly and
3 severally liable for any such you would award. That would
4 mean if I one of them would be called upon to answer for
5 the full amount or for some portion of the amount. But we
6 haven't worked that out. I don't want to hold you up
7 while we're doing that. So you'll get a further
8 instruction on that.
9 Then the other interpretation, I think that I've
10 explained it, but maybe I haven't, 1,000 and $100,000, is
11 that the total amount that could be awarded should a jury
12 elect to do so consistent with the Court's charge and the
13 law, regardless of the defendants, or could it be a
14 hundred thousand dollar or $1,000 per defendant. We
15 should get that resolved in relatively short order, I
16 hope. My law clerks are working on it as we speak, in any
17 event, that particular item we haven't resolved as yet.
18 When you do retire to deliberate I am going to
19 give you a verdict sheet and I'm going to put on the
20 verdict sheet -- I'm going to knock out that one portion
21 because we don't have it resolved. So if you get to that
22 question of statutory damages, the question that is on the
23 sheet is in dispute. We're not all in agreement, the
24 attorneys and myself, as to what it means. But by doing
25 it this way you can start your deliberations.
1276
1 We're going to go now to the damages based upon
2 plaintiff's unfair competition claim under New York law.
3 Here again, you are not being asked to award actual
4 damages to plaintiff given the lack of factual predicate
5 for such an award. However, as an explained previously,
6 if you find that plaintiffs have established each element
7 of this claim as to the defendant you are considering, you
8 may then award nominal damages in the amount of $1 against
9 that defendant.
10 Punitive damages as to the New York based unfair
11 competition claim. In a moment I will instruct you on the
12 law of punitive damages. Before doing so, however, you
13 are advised that punitive damages may not be awarded --
14 punitive damages only pertain, I'll explain in a moment
15 what they are, they are the type of damages that a jury in
16 their discretion may award certain -- if certain type of
17 conduct has been established. It's typically egregious
18 conduct, it's very troubling, it's shocking conduct.
19 Now if you get to damages and everything else,
20 if you are considering an award of punitive damages which
21 is addressed to your discretion, you can only consider it
22 as to the New York based claim. You don't have punitive
23 damages for what they call a Lanham Act claim, so as to
24 1125(a) and 1125(d), punitive damages is irrelevant. But
25 should you elect to do so and consistent with the Court's
1277
1 charge, you may consider punitive damages.
2 Therefore, as to this New York State based claim
3 and therefore I will instruct you on the law of punitive
4 damages. First thing that's noted is what I've just said
5 to you, you will consider the question of punitive damages
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6 only in connection with plaintiff's claim of unfair
7 competition under New York State common law.
8 In addition to nominal damages, the law permits
9 the jury under certain circumstances to award plaintiffs
10 punitive damages. You may award punitive damages if
11 plaintiffs prove that defendants' conduct was wanton and
12 reckless, not merely unreasonable.
13 An act is wanton and reckless if it is done in
14 such a manner and under such circumstances as to reflect
15 the utter disregard of the potential consequences of the
16 act on the rights of others. The purpose of the punitive
17 damages is to punish the defendant for shocking conduct
18 and to set an example in order to deter others from
19 committing similar acts in the future. Punitive damages
20 are intended to be an expression of the jury's indignation
21 at that conduct.
22 The awarding of punitive damages is within your
23 discretion -- you are not required to award them.
24 Punitive damages are appropriate only for especially
25 shocking and offensive misconduct. If you decide to
1278
1 award, you must use sound reason in setting the amount, it
2 must not reflect bias or prejudice or sympathy towards any
3 party. But the amount can be as large or small as you
4 believe necessary to fulfill the purpose of punitive
5 damages. In this regard you may consider the financial
6 resources of the defendant when you are considering the
7 amount of punitive damages and you may impose punitive
8 damages against either one of the defendants or against
9 both defendants in the same or different amounts.
10 Five: Avoid double recovery. Should you find
11 for plaintiffs against either or both of the defendant on
12 more than one claim, be careful not to award a double
13 recovery. By way of hypothetical example. If a person
14 was damaged to the extent of $1 but prevailed on five
15 legal theories as to why he was entitled to that $1, the
16 jury would award $1 rather than $5, otherwise the
17 aggrieved party would recover more than he lost.
18 We'll now proceed to the third part of the
19 charge, much of what's in the third part we've already
20 reviewed in preliminary instructions and elsewhere,
21 including earlier in this charge. Keep in mind that
22 nothing that I have said in these instructions is intended
23 to suggest to you in any way what I think your verdict
24 should be. That is obviously entirely up to you.
25 As you know, your obligation is to determine the
1279
1 facts in this case and then to apply the law as I have
2 given it to you based upon the facts as you find them to
3 be. Remember that your verdict must be based solely on
4 the evidence in the case and the law as the Court has
5 given it to you, not on anything else.
6 You will have to select a foreperson. Any one
7 of you can be the foreperson. Obviously the foreperson's
8 vote carries no greater weight than that of any of the
9 other secures. Basically the foreperson's job will be to
10 pen any notes that you may have, we'll go into that in a
11 moment, and then also when you've reached a verdict,
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12 you'll have a verdict sheet and it has a series of
13 questions, and as you'll see they call for yes or no
14 answers, you will complete the verdict sheet consistent
15 with the jury's verdict.
16 Ms. Best will have the same sheet without the
17 answers. Ms. Best will have the uncompleted form before
18 her, she'll ask the questions and the foreperson will
19 answer consistent with how you answer the question. Yes,
20 no, or however it is. That's basically the idea.
21 On the idea of notes, just a couple of things.
22 If you have any question about the law, and that's true of
23 any of you, having the charge before you may help you
24 because it has the listing of the various elements and it
25 has definitions and so forth, but if any of you has a
1280
1 question as to what the law means, what you should do then
2 is you write a note and the foreperson will write it out
3 finally and it will say whatever the question is. Try to
4 be as specific as you can on the question so we don't
5 overkill on the question, but that's not a limit by saying
6 that. I don't mean to limit in any way what you can ask
7 for, you can ask anything if you're unclear on the law.
8 Also, as you know, there's a complete transcript
9 of everything that's been said in the courtroom.
10 Therefore, if you need any portion of the testimony to be
11 reread, that is your right. I know that many of you have
12 taken notes. That's fine. If you are looking at your
13 notes and you can understand your notes, that's fine, but
14 if there's a question you can't read your writing or
15 they're not as complete as you want, if you as a note
16 taker have any questions as to what was testified to, let
17 us know and we'll locate the material in the transcript
18 that will be reread to you as a jury.
19 Also it's important that non-note takers
20 remember that as well because if any non-note taker has
21 any question about what was said, let us know and we'll
22 have it read back. There again, it should be as specific
23 as possible. Otherwise you get more information than what
24 you need.
25 If this was an automobile accident case, by way
1281
1 of example, and one of the jurors wanted to know where
2 Ms. Jones said she was standing when she saw the traffic
3 control change colors, that's basically what you would
4 ask, you would not ask for Ms. Jones' testimony because
5 that would give you more than you want.
6 But having said that, you can have any portion
7 of any witness' reread or you can have all of it reread,
8 any witness' testimony. So again, I don't mean to limit
9 you in any way, I just want to tell you, give you some
10 guidance on how you may want to paper your notes in that
11 regard.
12 As you know, when you have completed a note
13 there's a buzzer inside the jury room, it activates a
14 buzzer inside my office and Ms. Best's office. Ms. Best
15 will come in and get the note, we make copies of the notes
16 and I distribute them to the attorneys and as soon as we
17 have worked out what I believe to be a satisfactory
A-155
18 response to your inquiry we'll call you out and give you
19 the information that you have asked for.
20 As far as the verdict sheet, you all have to
21 agree on each entry on the sheet, in other words, your
22 verdict must be unanimous.
23 Your duty is to reach a fair conclusion from the
24 law and the evidence. When you are in the jury room
25 listen to each other and discuss the evidence and issues
1282
1 in the chase among yourselves. It is the duty of each of
2 you as jurors to consult with one another and to
3 deliberate with a view towards reaching an agreement on a
4 verdict, if you can do so without violating your
5 individual judgment and conscience. While you should not
6 surrender conscientious convictions of what the truth is
7 and as to the weight and effect of the evidence, and while
8 each of you must decide the case for yourself and not
9 merely acquiesce in the conclusion of your fellow jurors,
10 you should examine the issues and the evidence before you
11 with candor and frankness, and with proper deference to
12 and regard for the opinions of each other.
13 You should not hesitate to reconsider your
14 opinions from time to time and to change them if you are
15 convinced after a discussion they are wrong. However, do
16 not surrender an honest conviction as to the weight and
17 the effect of the evidence simply to arrive at a verdict.
18 As noted, the decision you reach must be unanimous; you
19 must all agree on every entry in the verdict sheet.
20 When you have reached a verdict send me a note
21 signed by your foreperson indicating that you have reached
22 a verdict. Don't tell us what the verdict is. Do not
23 indicate what the verdict is and in any of your notes to
24 the Court, don't tell us where you stand; in other words,
25 don't say we have a vote and this is what happened. When
1283
1 you finally have reached a verdict that's when you will
2 let us know.
3 At this the point I have to check with the
4 attorneys at sidebar to see if there's anything that I
5 overlooked. So just bear with us.
6 (Continued on next page.)
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
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24
25
1284
1 (Whereupon, the following occurred at sidebar.)
2 THE COURT: Ms. Weiss, other than what we've
3 discussed on the charge at the charge conference and after
4 the charge conference, are there any other exceptions to
5 the charge?
6 MS. WEISS: No, your Honor. And I apologize if
7 I was having the Court do all the work or as you said --
8 THE COURT: This case is not, factually I don't
9 think this is complicated. Factually, I think this is a
10 very difficult part of the law. When I read that statute
11 to the jury --
12 MR. RONEMUS: I think you read it correctly and
13 I have no objections to the charge as you gave it.
14 THE COURT: The verdict sheet, I am going to
15 provide it to the two of you. My thought is, we'll work
16 on that one remaining item, but I think we should send the
17 verdict sheet in because they may or may not get to that
18 point.
19 MS. WEISS: Right.
20 THE COURT: And at least they can do some work.
21 MR RONEMUS: Right.
22 MS. WEISS: Good.
23 (Continued on next page.)
24
25
1285
1 (Whereupon, the following occurred in open
2 court.)
3 THE COURT: At this point the jury will start
4 their deliberations. You have a copy of the charge
5 obviously. We're going to send in some copies of a
6 verdict sheet which is largely self-explanatory. The only
7 thing that's up in the air, if you reach that question of
8 the statutory damages under section 1117(d), that has to
9 do with the anticybersquatting statute, at that point
10 you're going to have to let us know, send us a note and
11 say we've hit an impasse just on this one item. We're
12 going to be working on that aspect and we'll get it to you
13 as soon as we can.
14 The point is you can start your deliberations
15 and you may or may not reach that point. We'll see what
16 happens. In any event, you can start your deliberations
17 at this point. It's now 4:15. It's been a long day, plus
18 you had to wait when you first got here today. If you
19 decide 5:00, 5:30, 6 o'clock, whatever, we've had enough,
20 we'll come back tomorrow, that's fine, too, let us know.
21 From now on you sort of control the timing and so forth
22 within limits.
23 At this point the jury will retire to
24 deliberate. Thank you.
25 (Whereupon, the jury retired from the courtroom
1286
1 at 4:15 p.m. to commence its deliberations.)
2 THE COURT: At this point we'll be in recess for
3 a couple of minutes. If counsel could approach I can give
A-157
4 you copies of this proposed verdict sheet and again we
5 have that one loose end concerning the statutory damages.
6 But this way you can look it over and obviously I'm
7 amenable to any suggestions, et cetera. But I'll be out
8 in about five minutes on that and then we'll work on that
9 other part.
10 (Recess taken at this point.)
11 (After recess.)
12 THE COURT: Have both sides had a chance to go
13 over the verdict sheet?
14 MS. WEISS: I have, your Honor.
15 THE COURT: Is there a problem other than the
16 one area that we have to discuss?
17 MS. WEISS: Well, maybe a little problem. I've
18 used the word $1 because that's what I thought I was
19 supposed to say. And you used the word nominal.
20 THE COURT: Right.
21 MS. WEISS: And I mention that because the
22 United States Supreme Court has ruled in a case called
23 Goore, G-O-O-R-E versus BMW, which is a case of Dr. Goore
24 in Alabama on scratches to his BMW, blah-blah, that
25 punitive damages have to have some kind of a ratio.
1287
1 THE COURT: I know that. But you know, I can
2 address that. I don't know. The question is the most
3 recent one is Allstate, but there has to be some
4 relationship between any punitive damages and compensatory
5 damages and in Allstate I think they suggested anything
6 above a single multiple, in other words, in double digits,
7 a multiple in double digits might be suspect.
8 Now, if you have nominal damages, that would
9 take me a week to figure out how to charge that, so I
10 thought what I would do is let it go to the jury and I can
11 always adjust it.
12 MS. WEISS: That's fine. But in some cases I
13 read you can award nominal damages like $1 or $10.
14 THE COURT: That's true.
15 MS. WEISS: And 10 would be nominal.
16 THE COURT: That's true. I see what you're
17 thinking about. So that would affect the amount of the
18 punitive damages.
19 MS. WEISS: I think that we've had enough hard
20 issues to tackle in what may be one of the very first
21 Anticybersquatting Consumer Protection Act cases that went
22 to trial here in the Eastern District. With the other
23 issue that we're grappling with now, because sometimes
24 it's one corporation just suing another corporation so you
25 never get beyond the hundred thousand. Here we have two
1288
1 defendants who are individual living people. So we're
2 facing that problem. That's my thought.
3 THE COURT: All right. What are you asking me
4 to do on the verdict sheet? I did say during the charge,
5 I don't know if that helps, but I said $1. I think I said
6 nominal damages in the amount of $1 and I said that's what
7 counsel was referring to, I think, during the summation.
8 MS. WEISS: This is fine except for that one
9 problem that we've discussed, the problem in number seven.
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10 THE COURT: We can't just go over the problem.
11 What do you suggest we do with it, if anything?
12 MS. WEISS: I think that we should change number
13 C -- I think that we should make number seven look more
14 like number nine, if yes, in what amount, and if it turns
15 out in the unlikely probability that this is going to go
16 over a hundred thousand total and, which I doubt, and if
17 it turns out that the law is such that that can't be done,
18 then the Court can just address it in a post-trial motion
19 for remitter, that one.
20 THE COURT: All right. Let me check with the
21 defense. What do you think we should do on this thing?
22 MR. RONEMUS: I think you should leave it as it
23 is since it is consistent with the statute, one domain
24 name, one damages.
25 Also I just want to place on the record, I
1289
1 should have done this before, but with respect to punitive
2 damages, I can't see any evidence that it could ever be
3 considered for punitive damages, but with respect to that
4 claim, I think you have to leave it as you have it,
5 your Honor.
6 THE COURT: All right. We have a note from the
7 jury that says "May we see all documented evidence." So
8 it sounds to me like they want the exhibits and if there's
9 no objection, they'll be sent in.
10 MS. WEISS: No objection.
11 THE CLERK: Is this evidence?
12 MS. WEISS: Yes.
13 MR. RONEMUS: Yes.
14 THE COURT: On the question of nominal damages,
15 my thought at this point is to leave it the way it is.
16 The verdict sheet's sole purpose is to assist the jury to
17 report its verdict. It should dovetail with the charge.
18 It should never be inconsistent with the charge.
19 In the charge, there was no objection to this
20 portion of it, I basically indicated that nominal damages
21 is $1. I've seen charges where they say an amount not to
22 exceed $7, there's different ways to do it. But that's
23 not the way I elected to do it and there was no objection.
24 Now, let's assume that the jury awards nominal
25 damages and they award punitive damages under the state
1290
1 based claim. Under that circumstance, I would think that
2 the matter could be appropriately addressed in a
3 post-verdict motion in the sense I don't believe that, for
4 instance, in the Supreme Court decision of Goore and
5 Allstate and so forth that this would be any magical
6 significance to the multiplier, if it's $1 or $7, that's
7 nominal damages and that's one factor that the Court would
8 have to consider in determining whether the punitive
9 damage award was excessive.
10 So I think that we ought to just leave that the
11 way it is.
12 Did you want to say something on this?
13 MS. WEISS: No.
14 THE COURT: That's what I'm going to do with
15 that.
A-159
16 MS. WEISS: I just wanted to -- I mean, I
17 thought this was the right time to at least give that some
18 thought and the Court has.
19 THE COURT: Yes. I just want to place on the
20 record because it's been raised, and it has to do with the
21 cybersquatting, anticybersquatting statute, and it was an
22 interesting question. It had to do with 1125(d). The
23 issue is whether the Court should charge use in commerce
24 with respect to that particular count; in other words,
25 that would be one of the elements that the plaintiff would
1291
1 be -- plaintiffs would be required to establish. And I
2 indicated that I didn't think that should be done and I
3 didn't change the charge.
4 I'd like to go over some of the rationale behind
5 that approach. Firstly, there's no question for the
6 statute to pass muster, that would be 1125(d), that there
7 has to be some nexus between interstate commerce, I would
8 think, and the activity which has been prohibited by the
9 Congress. Thus, we know, for instance, in, I don't know
10 if I have the text out here or I do, the definition of
11 commerce, which is in 1127 of Title 15 of the United
12 States Code defines commerce as meaning, in essence, that
13 which the Congress has authorized to regulate by way of
14 activity in the marketplace.
15 So I think that you do need interstate commerce.
16 But we had speculated on this. Should that be charged to
17 the jury. Plaintiff voiced the opinion that basically the
18 Congress has spoken and the Congress believes they have
19 the authority -- they have the authority, for instance,
20 just to make registration in and of itself a violation of
21 the act.
22 However, we do know that the Court has an
23 obligation to make sure that it has subject matter
24 jurisdiction to entertain a particular action. I imagine
25 an argument could be made, this pertains to subject matter
1292
1 jurisdiction. Until it does, then obviously the Court
2 would have an obligation to address the issue anytime it
3 is raised, which could be post verdict.
4 But let's assume it doesn't go to subject matter
5 jurisdiction. Still it would seem to me we ought to try
6 to get it right the first time. It seems to me, I'll
7 mention why, if you take the facts in this case which are
8 uncontroverted and that would be the acquisition of the
9 domain name Hampton Location, what was subsequently done
10 with that name, that the activity involved as a matter of
11 law necessarily involves commerce. So what I'm saying is
12 there's no reason to charge use in commerce to this jury
13 as to 1125(d) because it seems to me, as a matter of law,
14 that element has clearly been established.
15 There are two cases I'd just like to place on
16 the record in that regard. Again, this is not written in
17 stone because I haven't had a chance to review it today.
18 I think we should leave the charge the way it is because I
19 feel comfortable with it, but the two cases are the
20 Planned Parenthood Federation of America against Bucci,
21 which is B-U-C-C-I, 1997 WL 133313, that's the Southern
A-160
22 District of New York case decided by Judge Wood, it was
23 decided in 1997. And I should also note that that opinion
24 or that decision was affirmed by the Second Circuit in
25 1998, with the citation being 152 F. 3d 920. And in that
1293
1 decision under the -- it's actually on page 3 of the
2 decision, and it's under the caption "Whether the Lanham
3 Act is Applicable," she has a lengthy discussion
4 concerning the necessary interrelationship between the
5 internet and interstate commerce.
6 And her decision is cited in a later case by one
7 of her fellow judges in the Southern District of New York,
8 in a case of Spotlight -- OBH, Inc. against Spotlight
9 Magazine, 86 F. Supp. 2d 176, and in that case decision
10 under the portion labeled "use in commerce," there's a
11 similar discussion about the internet and how the internet
12 by its very nature involves use in commerce and for that
13 proposition the judge in the second case, the Spotlight
14 case, cites Judge Wood's decision earlier mentioned.
15 So I think by way of synopsis, and we can
16 revisit this if any timely motion which is not
17 procedurally flawed is presented to the Court, should
18 there be a plaintiffs' verdict, but it seems to me at
19 least at this juncture that what we did is the appropriate
20 thing, what I did is the appropriate thing, and so we'll
21 leave it at that at this point.
22 Again, this is not meant to foreclose any future
23 argument that may be raised. I feel very comfortable with
24 that. The basic idea being as a matter of law the
25 evidence we have here says interstate commerce is
1294
1 sufficiently sufficient to oppose the statute. The
2 Court's recognizing in this area that the interstate
3 commerce clause has not been interpreted as strictly as
4 some may feel it should be.
5 I think what we ought to do, I'll send in this
6 verdict sheet to the jury.
7 MR. RONEMUS: Before you do that, I'd just like
8 to make a statement for the record.
9 THE COURT: Yes, sir.
10 MR RONEMUS: I was reading the case that you
11 cited, Monday January 22nd, discussing use in commerce,
12 and that's the --
13 THE COURT: Judge Swaine's decision?
14 MR. RONEMUS: Yes. Which states the right to a
15 particular mark grows out of its use, not for its
16 adoption, rights to a service mark arise from quote, "use
17 in commerce of the mark in connection with services and
18 use in commerce is determined on a case-by-case basis
19 considering the totality of circumstances surrounding the
20 alleged use of the mark." It cited cases, and finally it
21 says the Lanham defines use in commerce as the bona fide
22 use of a mark in the ordinary course of trade and not made
23 merely to deserve a right in mark.
24 And one more sentence, the talisman stick test
25 is whether the mark was used in a manner sufficiently
1295
1 public to identify or distinguish the marked goods in an
A-161
2 appropriate segment in the public mind as those of the
3 adopter of the mark.
4 To me that seems to state that there has to be
5 use in commerce and it seems to be a question made for the
6 jury on a case-by-case basis. So I submit it should be
7 submitted to the jury.
8 THE COURT: That's fine. The reason that I put
9 the use in commerce in and you raised the point was
10 because in part of the fine explanation provided in Judge
11 Swaine's decision which addresses, I believe, section
12 1125(a). I don't think she specifically addresses the
13 internet. There's no question that you have to have use
14 in commerce. I agree in that. I agree that interstate
15 commerce has to be involved. But it seems to me on the
16 undisputed facts we have here what we have about the
17 internet and the link and so forth, that's all undisputed
18 and that constitutes use in commerce. In my humble
19 judgment. Again, not written stone. We'll see what
20 happens.
21 Here is the question from the jury: "We would
22 like to see the newspaper articles Re: Nancy Grigor, one,
23 the New York Post, two, Dan's Papers, three, Hampton's
24 Gazette."
25 Some of those, like Dan's Papers may not be in
1296
1 evidence, I'm not sure any of them are, but the
2 application that was sent down by the trademark attorney
3 to the patent and trademark office, that would be the
4 second one, I think, maybe the third. That has some of
5 these, I think, doesn't it or does it?
6 The question is: Are these in evidence and if
7 so, where are they?
8 MS. WEISS: I believe, your Honor, I believe I
9 moved them into evidence. I believe I did and I gave the
10 Court a copy. I believe they're like 94, 95 and 96, but
11 can we take the Court's copies?
12 THE COURT: Usually -- the Court's copies are
13 all marked up. What did we send into the jury? If
14 they're in there, we can just tell them where they are.
15 Or if we don't remember where they are, we'll get them
16 back and we'll take a look. But I don't keep the
17 exhibits, though. I don't have anything that you can send
18 into the jury.
19 MS. WEISS: I didn't bring by copies up here.
20 THE COURT: No. It isn't even that. Didn't we
21 send everything into the jury? That's the evidentiary
22 base. If everything that was sent into the jury, all the
23 documentary evidence, that's the universe and then we have
24 to just indicate where it is. And if we need to, we can
25 get those back. It's unusual, but we can do it.
1297
1 You think it's in evidence, right?
2 MS. WEISS: I do.
3 THE COURT: Okay. But you just don't remember
4 which the exhibit number is.
5 MS. WEISS: I think they're 94, 95 and 96. So
6 I'm concerned maybe, Mr. Ronemus, did you hold them up to
7 the jury?
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8 MR. RONEMUS: They were on the table when I came
9 in this morning.
10 THE COURT: I will take a look. But as I say, I
11 don't keep an official record. I'll see if I have 94, 95
12 and 96.
13 MS. WEISS: I think they're in that area.
14 THE COURT: There's one that went in on Dan's
15 Papers, I'm just going through this as I'm sitting here.
16 Dan's Papers, there's one that went in as Plaintiff's
17 Exhibit 78, it's entitled "How to Find the Perfect
18 Location for Insiders in the Know." I don't know if
19 that's the one they're talking about? I'll show you what
20 I have. As I say, we can get the ones from the jury.
21 Do you want me to do that?
22 MS. WEISS: That's one. 78 is one, yes. The
23 East Hampton Star it should be, not the Hampton Gazette.
24 It's the East Hampton Star, and it has her picture on it.
25 THE COURT: That's 69.
1298
1 MS. WEISS: So I apologize for saying the wrong
2 numbers in the 90 series.
3 THE COURT: But as far as those two are
4 concerned, we'll go over the other one in a moment, New
5 York Post, but those are before the jury now, they were in
6 the stack that counsel agreed were exhibits?
7 MS. WEISS: We believe that they were. But I
8 didn't put them in order just now, your courtroom deputy
9 with.
10 THE COURT: We can do that. The last one is the
11 New York Post, that's the one about Cindy Adams.
12 MS. WEISS: Yes.
13 THE COURT: That's 74. What I can do on that, I
14 have those three, I'll tell them that -- let me check, but
15 it is my understanding these were received in evidence.
16 Is that agreed?
17 MS. WEISS: Yes.
18 MR. RONEMUS: Yes.
19 THE COURT: I'll tell them that these three
20 articles, and here are the numbers and they should be
21 included among the ones that were sent in.
22 MR. RONEMUS: They should be.
23 THE COURT: If they're not, let us know. That's
24 the first thing.
25 Then the other thing is I'm going to have to
1299
1 tell the jury on the charge about that one line where I
2 say, which is a little confusing, where it says consider
3 each defendant separately both as to liability and
4 damages. That's an accurate statement of the law but it's
5 not accurate where I put it under the statutory damage
6 section, because that's confusing.
7 MR. RONEMUS: I'm sorry, I'm not sure what
8 you're intending to do there.
9 THE COURT: I need a copy of the charge, which
10 is what plaintiff's counsel I think raised, is that one
11 portion of the charge is confusing because I asked
12 plaintiffs' counsel what's the basis for your belief that
13 under 1117(d) that there could be an award of, within the
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14 statutory range, as to each of the two, totally,
15 defendants, and under that portion of the charge I say
16 they consider each defendant and each one separately. I
17 want to explain to them that's fine, you should do that.
18 But on the damages, you can't award more than the
19 statutory amount or less should you find liability.
20 MS. WEISS: Your Honor, assuming the award comes
21 back and let's just say $10,000 the way that you have it.
23 MS. WEISS: Would that be then a joint and
24 several judgment?
25 THE COURT: It depends on how they check off the
1300
1 verdict sheet. I asked them has the plaintiff established
2 that cause of action, 1125(d), as to Richard Rubens, as to
3 Darrell Rubens, so if they checked off yes as to both, it
4 would be joint and several against the two of them. If it
5 was only as to one of them, they would so indicate and
6 that person would be liable. The other would not be in
7 damages.
8 MS. WEISS: I'm thinking perhaps, going back to
9 your example of ten defendants in the case.
11 MS. WEISS: It might not be fair to force them
12 to combine 1,000 and 9,000.
13 THE COURT: No. They don't apportion it.
14 That's why I originally hesitated on this apportionment.
15 Because let's assume they found both were responsible and
16 one was a minor participant and the other one was a major
17 participant, should there be some kind of apportionment,
18 the Second Circuit said there shouldn't be. It is a
19 copyright case, the name of the case is Fitzgerald
20 Publishing against Bailer Publishing, 807 F. 2d 1110.
21 This is under the copyright, this is a copyright case. As
22 we know there's some parallels between the trademark and
23 patent, and in this case it talks about there must some
24 apportionment, first they mention the arguments of the
25 party who was raising the argument that there should be
1301
1 apportionment, they said you have to set aside the
2 verdict, there is no apportionment and yet one of the
3 factors you told them is deterrence. Different
4 individuals may need a different level of deterrence. In
5 any event, the circuit said no, there's no problem. So
6 that's the basis for it.
7 MS. WEISS: I see.
8 THE COURT: I don't know if I placed the site on
9 the record. It's 807 F. 2d 1110. That's a Second Circuit
10 decision of 1986. And the discussion is labeled Award of
11 Statutory Damages. That's in quotes, Award of Statutory
12 Damages, and that discussion begins at page 1116 of the
13 decision.
14 MR RONEMUS: I think it seems to me you have
15 spent quite a bit of time talking about statutory damages
16 and punitive damages which, to me, seems like you're
17 hinting the jury should reach those, even though you said
18 they should not. I think any further discussion of that
19 is going to muddy the waters rather than clarify. So I
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20 would object to any further instruction on the issues.
21 THE COURT: Yes, sir. I am going to instruct
22 them though concerning the last sentence that appears
23 under the caption "damages with respect to Section
24 1125(d)" because as it's presently configured, I think it
25 is misleading and it would cause a problem for the jury.
1302
1 That's done over the objection of the defense.
2 MR RONEMUS: What page is that?
3 THE COURT: It's on page 49.
4 MS. WEISS: Has the jury been given their
5 verdict sheet?
6 THE COURT: Yes. We crossed out that one, I'll
7 check with Ms. Best but that's what I asked be done.
8 MR. RONEMUS: I just request that you state to
9 them again that because I'm discussing this doesn't mean
10 you should reach that.
11 THE COURT: I will do that.
12 MR RONEMUS: Thank you.
13 (Whereupon, the jury entered the courtroom at
14 5 o'clock p.m.)
15 THE COURT: If you'd all be seated, please.
16 Firstly, ladies and gentlemen, with respect to
17 the verdict sheet, the verdict sheet will not be modified.
18 It is what it is. So you can use this verdict sheet.
19 Now, in the charge, there is one portion that I
20 want to clarify and I will tell you where it is. It's
21 firstly under the caption "damages with respect to Section
22 1125(d)," that's on page 48. That's where it begins. So
23 it will be on page 48. Then if you go to the end of that
24 section, the damages with respect to Section 1125(d), the
25 end of that or that section is concluded on page 49, right
1303
1 before the number three, you'll see that. The last
2 sentence reads: Remember to consider each defendant
3 separately, both as to the issue of liability and, if
4 liability is established, as to damages. And we had a
5 preliminary discussion about that before. As you know, if
6 plaintiff has established each and every element of the
7 1125(d) claim, that's that anticybersquatting claim, then
8 you would go to the question of damages and then the item
9 of damages that's before you is the so-called statutory
10 damages.
11 So first you have to find the liability. Let's
12 assume you've done that. Now you're into the damages
13 area. The statute provides that the maximum amount of
14 damages that can be awarded is $100,000, if you find a
15 violation, and the minimum is $1,000, if you find a
16 violation. But here is what's important. The way that
17 I've worded that last sentence it sounds like assuming
18 you've found, again, this is purely a hypothetical, I
19 don't know if you'll find that way, I don't know if you'll
20 get to that in the verdict sheet or the charge, or the
21 verdict sheet, let's assume you found hypothetically that
22 the -- found that the plaintiff found by a fair
23 preponderance of the evidence, the 1125(d), the
24 anticybersquatting statute, and assume you found that
25 against both defendants. Then the question is would you
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1304
1 say should I award a thousand dollars against each, so
2 that would be $2,000 or at the end of the spectrum
3 $100,000 against each for a total of $200,000. The way
4 that I've worded that sentence where I tell you to
5 consider each defendant separately as to damages, it might
6 suggest that you can total them. You can't.
7 If you get the statutory damages, if you find
8 one individual responsible, that the plaintiff has
9 proven -- plaintiffs have proven their case against one
10 defendant, let's assume that happens, then you would
11 determine what would be the appropriate item of statutory
12 damages, it can be anywhere from one to $100,000.
13 Let's assume you found, hypothetically that you
14 found both of them, that plaintiff had proven a case
15 against both of them and now you're into this statutory
16 damages, you would still just come up with one number. It
17 would be a thousand dollars, it could be $100,000. But
18 you wouldn't total them. You wouldn't say well, there's
19 two defendants, just as you wouldn't say if there were ten
20 defendants you found $1,000 or the amount of statutory
21 damage and you say there's ten defendants, we'll just
22 multiply it by ten, you can't do that.
23 Congress has said that the maximum damages, not
24 per defendant, it says per domain name, it's agreed in the
25 case that there's one domain name. That language I have
1305
1 there is sort of stock language and it's certainly true
2 you have to consider each defendant separately on the
3 issue of liability.
4 And on the verdict sheet you'll see, you'll be
5 asked individually as to each of the defendants under
6 1125(d), it will say with respect to 1125(d) has the
7 plaintiff proven their case and then it says A, as against
8 Richard Rubens, yes, no. As against Darrell Rubens, yes,
9 no. So you're checking off there who you find liable, if
10 anyone. So it will work out. I think when you read the
11 verdict sheet you'll understand it better.
12 The point is, we're not changing the verdict
13 sheet but that one line could have caused a situation
14 where in my hypothetical you said, all right, I find a
15 thousand dollars and now I'm multiplying it by ten, for
16 10,000, that's why I wanted to bring you out. That's my
17 fault. Not the attorneys. That's mine.
18 If you have any questions on that obviously or
19 anything else in the charge let me know and we'll do our
20 best to answer it.
21 One other thing I am required to mention that's
22 very important. We've just spent quite a bit of time
23 going over statutory damages. I did that because there
24 was an ambiguity in the charge that I provided to you.
25 But you have to remember that that doesn't mean that this
1306
1 portion of the charge is any more important than any other
2 part. You may not even get to that point. You may or may
3 not, I have no idea, that's up to you. But the fact that
4 I brought you out here and I've gone through statutory
5 damages, I'm doing that just to try to eliminate the
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6 ambiguity that I created. It's not because it's any more
7 important or any less important than that part of the
8 charge, it's just that I needed to clarify it. That's
9 what I've endeavored to give to you. There's nothing
10 special about this part of the charge at all.
11 In sum, the verdict sheet stands as it is,
12 again, it's just an aid to you in reporting your verdict
13 and then on page 49, that last line that appears right
14 above the number three on page, you have to view that
15 consistent with what I've said. You really don't -- I
16 don't want to belabor it too much. I think I've made the
17 point. But if you have any questions on that or anything
18 else, let me know.
19 Is there any need for counsel to approach the
20 bench?
21 MR RONEMUS: No.
22 THE COURT: Thank you. You can continue your
23 deliberations.
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Document 224 Filed 01/30/2007 Page 1 of 1
AO 450 (Rev. 5/85) Judgment in a Civil Case

W44444444444444444444444444444444444444444444444444444444444444444444
44444444U
--------------------------------------------------------------X
HAMPTONS LOCATIONS, INC., and JUDGMENT IN A CIVIL CASE
NANCY GRIGOR CV-01-5477 (DRH)
V.

DARRELL RUBENS, each individually and doing
business as HAMPTON LOCATIONS
-------------------------------------------------------------X
X Jury Verdict. This action came before the Court for a trial by jury. The issues have been
tried and the jury has rendered its verdict.
Decision by the Court. This action came to trial or hearing before the Court. The issues
have been tried or heard and a decision has been rendered.
The Court having granted summary judgment as to defendant, BARBARA RUBENS;

and the jury having found that the Plaintiffs, HAMPTONS LOCATIONS and NANCY GRIGOR
have failed to establish their claims against defendant, RICHARD RUBENS, and established their
claim against defendant, DARRELL RUBENS, on the federal claim pursuant to §1125(d) of the
Lanham Act,
IT IS HEREBY ORDERED AND ADJUDGED that the Plaintiffs, HAMPTONS

LOCATIONS and NANCY GRIGOR take from defendant, DARRELL RUBENS, the sum of
$1000.00 as the jury award for statutory damages, and take nothing from defendants, BARBARA
RUBENS and RICHARD RUBENS..
The case is dismissed with prejudice and the Clerk is directed to close this case.
Dated: JANUARY 30, 2007 ROBERT C. HEINEMANN

Central Islip, New York CLERK OF THE COURT
By: PATRICIA BEST
Deputy Clerk
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(Page # 555,556, 557,558,559,561,562,563)
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D. Rubens - Direct/Ms. Weiss
555
1 Do you know when that Web site was registered?
2 A. By Nancy or --
3 Q. No.
4 Hamptonlocations.com with the registrar listed
5 as DSNY, do you know when that was first registered?
6 A. Back in I believe June 1999, pre-summer of 1999. But
7 I'd have to check my notes for the correct date.
8 THE COURT: Provide him with his notes.
9 (Document handed to the witness.)
10 A. 7/8, 1999.
11 MR. RONEMUS: Is there a problem if he just
12 keeps the notes there?
13 THE COURT: No. It isn't. When you're asked a
14 question, Mr. Rubens, what I'd like you to do is if you
15 can answer the question without looking at the notes,
16 fine, just answer it. If you can't, just indicate I have
17 to look at the notes and pick up the notes right in front
18 of you and then answer.
19 MR. RONEMUS: They're not in front of him,
20 that's the problem.
21 THE COURT: We're going to put them in front of
22 him. Otherwise we're going to spend an hour with people
23 marching back and forth. That's a waste of time.
24 (Document handed to the witness.)
25 Q. Okay.
A-195
556
1 So earlier you gave the date as June 1999 and
2 now you realize it's July, '99; is that correct?
3 A. Correct.
4 Q. Okay.
5 And were you involved in any way in the
6 registration of the domain hamptonlocations.com in July of
7 '99?
8 A. Which version? Repeat the question, please.
9 Q. Were you involved in any way in the registration of
10 the domain name hamptonlocations.com in 1999?
11 A. I did not purchase it, no.
12 Q. Were you involved in any way?
13 A. Was I involved? I was part of the discussion,
14 correct, yes.
15 Q. What discussion and with whom?
16 A. Basically a year before it was purchased, my friends
17 and I, we were discussing different business ventures and
18 we were discussing a possibility of starting a long-term
19 summer rental Web site on the internet, the internet just
20 started and we figured we'd rent houses in the summer for
21 your own personal use in the summertime and we know a lot
22 of people didn't do that so we wanted to create a virtual
23 Hamptons Web site where people anywhere around the world
24 can go to look at summer homes, not for photo shoots, but
25 for summer or to buy a house or something like that. So

A-196
557
1 that was the beginning of the conversation on why it was
2 purchased.
3 Q. And who are these friends that you were speaking to
4 in 1998, you're saying?
5 A. It was, I think the idea probably came up a good year
6 before that. I remember a couple of friends were there.
7 Good friend of mine Chris Spuches, S-P-U-C-H-E-S; friend
8 Jimmy Wang or James Wang, and his brother Eddie Wang. And
9 I think at that time there could have been some other
10 people there but I don't remember, but I remember all of
11 our girlfriends at that time were there. They were kind
12 of helping us out with some of the stuff.
13 Q. Actually, you said a moment ago a year before, and I
14 thought that I had asked you about 1998, which is a year
15 before 1999, so I don't know if you're referring to 1997
16 or 1998 or 1999.
17 So, can you clarify that and I'll say that you
18 did tell us that July 8, 1999 is the registration date?
19 A. That was the date, correct.
20 Q. So when you say a year before, you mean that you were
21 having conversations with your friends Chris and James
22 in --
23 A. I don't remember the date when we were having the
24 discussions but I know it was a long time before then. It
25 was probably, I don't know, six months, a year before.

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558
1 Q. And what prompted the registration of
2 hamptonlocations.com on July 8, 1999?
3 A. After we had a couple of meetings to try to figure
4 out how we were going to do this business, one, we
5 realized the internet was just starting, Web sites were
6 just being formed, there were very few Web sites at that
7 time. This was pre-Google, Google wasn't around at that
8 time. There were only a couple of ways to get to it. And
9 we figured we needed some kind of descriptive name to
10 describe the houses that we will be renting and showcasing
11 for summer rentals in the Hamptons.
12 I remember one of the names was the virtual
13 Hamptons or virtual Hamptons. Some kind of variation of
14 that. One was the hamptonlocations.com before this.
15 Q. What is Chris' profession?
16 A. He's an attorney.
17 Q. At that time how long had he been practicing law?
18 A. Practice? I don't know.
19 Q. Is he admitted to the bar?
20 A. Yes, he is.
21 Q. And how about James, what is his profession?
22 A. He's a -- he's a banker. But an attorney who passed
23 the bar.
24 Q. And what's your profession?
25 A. I am a real estate agent in New York City. I lease

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559
1 buildings, I lease retail space in New York City,
2 long-term lease; 10 years, 20 years, 30 years.
3 Q. So what exactly happened to get the name registered?
4 Did someone e-mail or contact Network Solutions?
5 A. I don't know if they contacted Network Solutions, but
6 I believe one of our girlfriends at that time was given
7 the task to purchase the domain names that we agreed upon.
8 Q. Do you know which girlfriend?
9 A. No.
10 Q. And how did this girlfriend decide to put DSNY, just
11 those four letters, as the name of the registrant for
12 something that you say that you and Chris and James were
13 doing together?
14 A. The way I remember it, at that time the only way to
15 register through Network Solutions is you needed to fill
16 out a corporate name, as well as a mailing address and
17 location and we were talking about forming a corporation
18 specifically for this purpose.
19 And at that time I believe it was -- we had a
20 couple of attorneys in the room and they were saying
21 there's no need to file for a corporation right now, let's
22 just use -- it kind up came up we were thinking about what
23 corporation to put under, we didn't want to go through the
24 expense of setting up a corporation because we didn't know
25 if this idea would take off and I think sometime during

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561
1 was DSNY, why not put all the information down so if
2 anyone wants to contact us they know where to get in touch
3 with us.
4 Q. Did you take any steps to see the actual corporate
5 address for Decorators Services of New York, Inc.?
6 A. Can you repeat the question?
7 Q. Did you look into -- did you look into seeing what
8 the actual corporate address was for Decorators Services
9 of New York --
10 A. No, I did not.
11 Q. (Continuing.) -- Inc., I will say.
12 And did you check to see if Decorators Services
13 of New York, Inc. was still a viable corporation?
14 A. All I know is somebody said we need a corporate name
15 to put on, we put in there, we didn't do any checking
16 whatsoever.
17 Q. And your partners in there were Chris and James, two
18 attorneys; is that correct, at the time?
19 A. Repeat the question?
20 Q. And at the time had you made that decision without
21 checking, your two partners were both attorneys; is that
22 correct?
23 A. Are you asking if I checked with DSNY or checked with
24 my partners who were attorneys?
25 Q. At the time -- let me make this question easier

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1 because it's late for all of us.
2 At this time when the domain name was purchased,
3 with the registrant listed as DSNY, just those four
4 letters, do you know if either Chris or James checked to
5 see if this corporate entity you spoke of, Decorators
6 Services of New York, Inc. was still a viable, functioning
7 corporation in New York?
8 A. I think that you asked that question, no, we didn't
9 do any research into the corporation.
10 Q. Now, you were here for Mr. Ronemus' opening
11 statement; is that correct?
12 A. Yes.
13 Q. And Mr. Ronemus referred to Decorator Services of New
14 York as a shell corporation, did you hear that?
15 A. I did not hear him say shell corporation. I'm very
16 familiar with corporations because I do real estate and I
17 know every corporations --
18 Q. Okay.
19 Do you know if there was ever any stock issued,
20 any stock issued for the corporation Decorator Services of
21 New York, Inc.?
22 A. No.
23 Q. And do you know if there was an agent for service of
24 process for Decorator Services of New York, Inc.?
25 A. Other than knowing DSNY, Inc. or Corp. or anything, I

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1 knew nothing about it. Just know it was a vacant name,
2 that's it.
3 Q. And did you discuss anything to do with the corporate
4 entity with James Wang, an attorney?
5 A. Repeat that?
6 Q. Did you discuss the formation of a corporate entity
7 with James Wang, who is an attorney?
8 A. Yeah, they advised not to start a new corporation
9 until we realized our idea would actually work and maybe
10 one day in hopes to make money.
11 Q. And did your idea or your -- so it was just an idea;
12 is that correct?
13 A. Correct.
14 Q. And did you and James and Chris have any written
15 agreement as between yourselves what would happen?
16 A. I don't remember. I tried looking for records,
17 couldn't find any of them.
18 Q. Did the three of you have or have any -- do you
19 recall any written agreement?
20 A. I don't recall a written agreement.
21 Q. And was there ever an e-mail address for --
22 associated with this domain name?
23 A. No, there was not.
24 Q. And did you ever ask or tell your father about the
25 use of what you say is the corporation DSNY as the

(Page # 706,707,708)
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D. Rubens - Cross/Mr. Ronemus

706
1 THE COURT: You already answered his question.
2 Next question.
3 BY MR. RONEMUS:
4 Q. Is there text surrounding where she put that arrow on
5 that page?
6 A. Yes, just basically the HTML code telling it that
7 it's all capitals, that it's in an Ariel font and the size
8 and that's it.
9 Q. So you never used the metatag to try to highlight
10 Hampton Locations or Hamptons Locations in your parents'
11 web page?
12 A. Never. It just has these words inside the web site.
13 Q. I'll ask you to explain exhibit 122 which is your
14 parents' interior design web page?
15 THE COURT: I'm not going to have him just
16 explain an exhibit. You'll have to ask questions.
17 BY MR. RONEMUS:
18 Q. Tell us what that is, first of all?
19 A. This is a printout of my parents' web site DQNY.com.
20 This was printed out 7/5/04, but it's pretty much the same
21 as what it's always been.
22 Q. When you say a printout, what do you mean a printout
23 of a web site?
24 A. Somebody, I guess the plaintiffs, went from page to
25 page of the web site and every page they clicked and
A-203

707
1 printed out a page.
2 Q. So how many pages, at that time, were there in your
3 parents' web site?
4 A. They didn't print out all the portfolios of their
5 design work. Without counting them, it's about 30 pages
6 in here.
7 Q. Can you refer to that exhibit and show us what one
8 would find when they went to your parents' interior design
9 web site?
10 A. The first page would be the home page and then
11 there's a bar that's been cut off a little but it has
12 home, portfolio, designers location and contact us.
13 On the top, this is like where the page name is
14 DQNY. On the bottom it shows the files that the pages
15 were kept at.
16 So the first page is www.DQNY and then as you go
17 further the file names get a little bit longer, more
18 complicated. I don't know how to make them more condense.
19 Q. What are the different tabs or locations that someone
20 can go to in that web site?
21 A. There's one location tab which would basically bring
22 you to the location page. Give me a second to find it.
23 It would bring you to the location page that
24 had -- actually I realized today that has an S on this
25 version that was printed.

A-204

708
1 Q. When you say a location page, what is the location
2 page at that time in your parents' web site, what was the
3 purpose of that?
4 A. If you go to this page 1, it leads to another sub
5 page that has more information on the house they built in
6 the Hamptons. It has tabs on it such as sunsets,
7 interior, exterior, location, tear sheets and I believe
8 it's cut off here. It would either say availability or
9 contact list.
10 Q. Other than the location page, what other pages were
11 contained within the web site?
12 A. The other pages that were contained in the web site,
13 as I said, the home page that talks about their interior
14 design talents, a portfolio which at that time probably
15 had a couple if I had to guess 10 pages with maybe 50
16 photos on each house they designed, and a designer page.
17 It's in here. It has a picture of my mother and father
18 and it just gives a background when they started their
19 interior design business 20 years ago and the location
20 page and then a contact list.
21 MR. RONEMUS: Thank you.
22 (The witness resumes the stand.)
23 BY MR. RONEMUS:
24 Q. At any time, Darrell, have you been involved as a
25 locations scout or involved in a locations scouting

(Page # 528,529)
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A-205
Grigor - Cross/Mr. Ronemus

528
1 bill is, but it looks like I billed $900.
2 Q. So you billed $900 for overtime. You don't have a
3 copy of the bill that you sent to that company?
4 A. It was around. I don't know where it is now.
5 Q. Do you have a file that pertains to this rental on
6 that day that contains anything other than that manila
7 folder?
8 A. That's it.
9 Q. That's your entire file and the bill you sent for the
10 overtime was with that manila folder, but now you don't
11 know where you put it?
12 A. It was here. It was in here. I don't know where it
13 is now.
14 Q. Other than the bill for overtime, was there anything
15 else that you kept with that file that you don't have now?
16 A. What I usually do is I keep the FedEx. If I FedEx, I
17 keep the receipt for the FedEx. That will go in the
18 envelope. Any kind of receipts or anything, it would just
19 go into the envelope and I write down the numbers and
20 everything.
21 Q. You don't have any FedEx receipts or any other type
22 of receipts?
23 A. Yes. I had one. It was here. I don't know where it
24 is now. It was here.
25 Q. So after Mr. Rubens indicated that you owed him for

A-206

529
1 the overtime, and you sent a bill to the company and they
2 paid you for the overtime, did they pay you what you
3 billed them?
4 A. I shot at another house so they paid me monies for
5 that, too.
6 What was the question?
7 Q. Did they pay you the money that you billed them for
8 the overtime?
9 A. Yeah, I believe they did.
10 Q. And you kept that money, correct?
11 A. Yes, I did.
12 Q. Now, at some point, did you have a second
13 conversation with Mr. Rubens, Richard Rubens?
14 A. I can't remember.
15 Q. You don't remember any other conversations you had
16 with him following that conversation about the overtime
17 you just told us about?
18 A. It's been so many years ago, I don't really remember.
19 Q. Didn't you testify on direct that you were on the
20 telephone with him and your husband got on the telephone?
21 Do you remember when you told us that last week?
22 A. Yes, we were on the phone, but that was after I
23 realized that he was part -- I had all the Rubens' names
24 together and I called him to see if he had anything to do
25 with this site. But I don't know if I talked with him in

(Page # 871,935,936,951,952)
A-207
A-207
R. Rubens/Direct-Weiss
871
1 A. I never saw a business card of Hamptons Locations,
2 Mrs. Nancy Grigor Griffith.
3 Q. At no time?
4 A. At no time.
5 Q. Do you see one there on Exhibit 18, sir?
6 A. I'm not sure if this is a business card.
7 Q. Would you please take a look at that orange and black
8 card that we have marked as Exhibit 171.
9 I'm holding up a copy.
10 A. Oh, this?
11 Q. Right.
12 Did you ever see anything that looked like that
13 prior to court today?
14 A. No.
15 Q. Now, sir -- I'm sorry.
16 Did you have something to add?
17 A. No.
18 Q. Yesterday we were talking about the Black Book, and
19 your listing in the Black Book for a magnificent house,
20 and home.
21 And I wanted to ask you a couple of questions
22 about that. We have marked that for identification as
23 Plaintiff Exhibit 90.
24 MS. WEISS: I don't think it has been admitted
25 yet into evidence, your Honor.

A-208
R. Rubens/Cross-Ronemus
935
1 Q. Could you say approximately how frequently you have
2 done that over those years?
3 A. In total?
4 Q. Just an average per year.
5 Whatever your best estimate is, how often you
6 have done it --
7 A. Well, sometimes we do, like, two shoots a season.
8 It's mostly seasonal.
9 It's a seasonal house. We close the house as
10 soon as it gets cold, and we open it as soon as it gets
11 warm.
12 And some seasons we do a couple shots, and some
13 seasons we do six or more shoots.
14 Q. Did you hear Ms. Grigor testify that she taped a card
15 to your home sometime, I believe, in 1998?
16 A. No.
17 Q. Did you ever find a card of --
18 A. Excuse me.
19 There was a day when Ms. Griffith was on the
20 stand and I wasn't here.
21 I was having car problems.
22 Q. Okay.
23 Are you aware that Ms. Grigor has given evidence
24 in this case that she went to your Southampton home and
25 taped a card to your home at some point in time?

A-209
936
1 A. I'm aware that they were alleging something like
2 that.
3 Q. Have you ever seen a card of Ms. Grigor's taped to
4 your home?
5 A. Absolutely not.
6 Q. Since the time your home was built, have people taken
7 photographs of your home?
8 A. Yes.
9 Q. And approximately how frequently would you say people
10 photograph your home?
11 A. Very frequently.
12 Q. And for what purposes is that done?
13 A. Sometimes people come over by boat and they just take
14 pictures of the house.
15 We are very flattered. It's a unique house, and
16 we have a lot of people coming over taking photographs.
17 Q. Have you had other location scouts come to your home
18 and take photographs?
19 A. Yes.
20 Q. Have you filmed documentaries at your home, or have
21 documentaries been filmed at your home?
22 A. No.
23 Q. And television commercials, if you know?
24 A. I believe so.
25 Yes.
A-210
951
1 2000, when you first learned about it, that Darrell had
2 used the name DSNY for that domain name?
3 A. No, I didn't.
4 Q. At any time between July of 1999, when Ms. Grigor
5 claims she was at your house and took photographs, and
6 June 12th of 2000, when she called and said she had a
7 shoot for the next day, did you ever speak to Nancy Grigor
8 at any time between those two dates?
9 A. No.
10 Q. Is that right, June 12th was the phone call when you
11 were on your way driving back to the city, June 12th of
12 2000?
13 A. Yes, you are right.
14 Q. And the shoot was the next day?
15 A. The 13th.
16 Q. Okay.
17 Had you ever met her before her phone call to
18 you on June 12th?
19 A. No.
20 Q. Had she ever arranged any shoots at your home at any
21 time before June 13th of 2000?
22 A. No.
23 Q. Had anyone ever called you and said that they were
24 looking at your house based upon a book that was provided
25 to them by Ms. Grigor at any time before the date of that

A-211
952
1 shoot?
2 A. No.
3 Q. Has anyone ever told you that they saw the book
4 that's in evidence here that Ms. Grigor claims she made?
5 Has anybody ever told you that they saw that
6 book?
7 A. No.
8 Q. Let's talk about your letter you wrote to
9 Mr. Griffith and the plaintiff on July 21st.
10 Do you have that letter in front of you?
11 A. Yes.
12 MR. RONEMUS: Your Honor, may I just show it to
13 the jury as he reads it?
14 THE COURT: Yes.
15 What exhibit is this?
16 MR. RONEMUS: Exhibit 39.
17 BY MR. RONEMUS:
18 Q. Could you read that letter to the jury.
19 A. Sure.
20 First of all, it's on my letterhead, Richard

(Page # 572,573,574,717,718)
A-212
A-212
. Rubens - Direct/Ms. Weiss
572
1 say two days before I decided to hook up Hampton Locations
2 to go directly to DQNY.com.
3 Q. Why did you do that?
4 A. Why? Because I always try helping my parents out
5 with their Web site. They designed a beautiful house in
6 Southampton in 1982. I was looking always to help them,
7 and I figured, you know, what Hampton locations describes
8 their house in the Hamptons so it would be a lot easier
9 sending that link to a location company to say hey, look
10 at our house in the Hamptons, it's a location in the
11 Hamptons that you can use in your portfolio. That's what
12 my thinking was behind that.
13 Q. Did you ever create a full Web site, an actual Web
14 site for www.hamptonlocations.com?
15 A. No, I did not. It was merely a link.
16 THE COURT: I didn't hear the last part.
17 THE WITNESS: It was just merely a link, it was
18 a link set up.
19 Q. So is your testimony that you began using it as a
20 link just a day or -- on or about April 18th?
21 A. The day or two before I sent Nancy the e-mail how can
22 we list with you, yes.
23 Q. Would you please look at that exhibit?
24 A. I got it all up here.
25 Q. You do?
A-213
573
1 A. I've seen it 101 times.
2 Q. Okay.
3 Calling your attention to Exhibit 20, at that
4 time you knew that there was a company called Hamptons
5 locations, didn't you?
6 A. No, I did not.
7 Q. Did you know that there was a Web site called
8 www.hamptonslocations.com?
9 A. I saw it after the fact, when I did a Yahoo search I
10 was searching for -- I think I first started searching for
11 scouting agencies and there was so many of them so I
12 narrowed it down to Hampton scouting agencies or
13 Hampton -- even locations scouting agencies. I think at
14 that time by doing all the focus in the Yahoo search
15 before Google, it narrowed down to like four, five sites
16 that came up as doing location shoots in the Hamptons or
17 scouting agencies in the Hamptons.
18 From there I quickly navigated from the link to
19 the e-mail and that's how I got the e-mail address.
20 Did I realize that when I sent it in to info at
21 hamptonslocations.com, I don't even think that I was
22 looking for that. Because I was just looking for
23 locations.
24 Q. On the day you e-mailed it you knew that there was a
25 Web site called hamptonslocations.com?

A-214
574
1 A. I really didn't look at her Web site. You basically
2 click on the link when you do a Yahoo search, the links at
3 that time were very long, I saw many exhibits, even on the
4 bottom of this there's a lot of links. It was HDP dot
5 portfolio. It went on for a long time. Her page was like
6 a four-page Web site. I saw "please list your location,"
7 "what is your contact," it was info at
8 hamptonslocations.com.
9 Q. Well, I notice -- so what you're saying, I'm sorry,
10 let me --
11 A. I can explain.
12 When I went to Jenny Lang's Web site and her Web
13 site says Hamptons locations and has a portfolio of
14 Hamptons locations do I look up in the URL and look to
15 check to see what their domain name is no, I go and see
16 the Web site, I don't look at what the domain name is, not
17 many people type in www dot. I click on a link, I got to
18 the web sites, and I did not check on the link on the top.
19 Q. So how do you explain that that e-mail says CC
20 DQNY.com?
21 A. Whenever I send out stuff relating to my parents'
22 business I will always do a blind CC or a CC.
23 Q. Let me show this to the jury as well, if I may.
24 And how did you know to send it to the blind
25 copy to H-A-M-P-T-O-N-L-O-C?
A-215
717
1 that indicate to you?
2 A. That indicates the day it was printed. It could have
3 been opened before, but it was definitely printed on
4 4/21/00.
5 Q. Tell us how you first discovered Nancy Grigor and
6 decided to send her that e-mail on April 18?
7 A. I'm sorry, repeat the question.
8 Q. How did you first discover the existence of
9 Ms. Grigor or her company and decided to send her that
10 e-mail on April 18?
11 A. I figured I would try to help out my parents a
12 little.
13 Their web site was DQNY which stands for Design
14 Quest, New York, which a lot of people know about.
15 They don't relate Design Quest to a location in
16 the Hamptons.
17 So one day a light bulb went off. I was at
18 work. I said, you know what, I might as well link the
19 hamptonlocation.com to the DQNY web site and let me -- at
20 that time, as I said, I don't think there was Yahoo. I
21 don't think there was Google. I did an internet search
22 maybe through Yahoo. I typed in scouting agencies and
23 came up with thousands of them, narrowed it down to
24 scouting agencies in the Hamptons, came up with a couple
25 of matches and I found the e-mail address and sent it to

A-216

718
1 the contact e-mail address and basically sent an e-mail
2 how can we list with you.
3 Q. When you sent that e-mail to Ms. Grigor, was it your
4 intention to steal her business as a location scout?
5 A. My intent was to send her the e-mail so she could see
6 my parents' house, as it clearly states in the e-mail how
7 can we list with you. Look at our house. How can we list
8 with you.
9 Q. When you were involved with your colleagues in
10 obtaining the domain name hamptonlocations.com, was it
11 your intent at that time to try to take business from
12 Ms. Grigor?
13 A. I didn't even know she was alive or existed.
14 Q. Have you ever at any time involved in this lawsuit
15 before up until today intended to take any business as a
16 locations scout or as a production company from the
17 plaintiff Nancy Grigor?
18 A. Never once.
19 Q. Have your parents ever intended to take any business
20 as a locations scout or a production company from the
21 plaintiff Nancy Grigor at any point in time?
22 THE COURT: Sustained.
23 BY MR. RONEMUS:
24 Q. Now, the hamptonlocations.com was purchased in July
25 of '99, I believe?
(Page # 564, 565, 566,567,568,709, 710)
A-217
A-217
564
1 registered owner of the domain name?
2 A. Well, I did finally tell him after the plaintiff's
3 husband called them up threatening him, he called me to
4 find out what was going on. I didn't even realize this
5 was happening.
6 Q. So is it your testimony that you did not tell your
7 father until after Mr. Griffith, Michael Griffith spoke to
8 your father?
9 A. To the best of my knowledge, yes.
10 Q. Did there come a time when you received a letter from
11 Robert Roomian, the trademark attorney?
12 A. Yes.
13 I saw the letter, I replied to the letter.
14 Q. Okay.
15 And that's what we already have in evidence
16 today; is that correct?
17 A. I got that.
18 Q. How did you get it?
19 A. Fax.
20 Q. I'd like to you take a look at those two documents
21 and identify them.
22 A. The big one or the small one?
23 Q. The small one.
24 A. I have them both here.
25 Q. And which letters are you looking at? Can you tell
A-218
565
1 the Court what the exhibit numbers are?
2 A. Exhibit -- there's a lot of exhibits that are up
3 here. The yellow one?
4 Q. Yes. The yellow tags.
5 A. The yellow one is Exhibit 30 and my letter that I
6 responded to her attorney was on the 31st.
7 MR. RONEMUS: Exhibit Number 31?
8 A. Yeah. Sorry, Exhibit Number 30 and Exhibit Number
9 31.
10 Q. Thank you.
11 Now, before writing that letter that you wrote,
12 did you consult with an attorney?
13 A. I consulted with three attorneys.
14 Q. So, you testified that you received the letter from
15 Mr. Roomian, you responded the same day, and during that
16 day you consulted with three attorneys?
17 A. My best friends who I was partners, who we thought of
18 this idea, they're my best friends, I see them every
19 single day and at that time I don't know if I faxed it
20 over to them or e-mailed, I don't know what the technology
21 was that I faxed them.
22 Q. Who was those three best friends?
23 A. I believe Chris Spuches saw a copy, James Wang saw a
24 copy and Eddie Wang saw a copy.
25 Q. Did you write this letter yourself or did you ask for
A-219
566
1 their input?
2 A. I think that I started to write it myself and then I
3 asked them for some input.
4 Q. And where were they at the time that you asked them?
5 A. I don't remember if it was over the phone. I think
6 actually -- I don't know if it was over the phone or if we
7 saw each other in person.
8 Q. Did you fax it to each of them?
9 A. As I said, I don't remember if I faxed it, e-mailed
10 it. We all live close to each other, so I could have
11 possibly sat down and discussed it.
12 Q. And was Chris working at a law firm at the time?
13 A. No, he was not.
14 Q. Was James working at a law firm at the time?
15 A. No, he was not.
16 Q. Is Eddie Wang a lawyer?
17 A. I believe that he did pass his bar but he's not a
18 lawyer, he's not practicing law.
19 Q. And did -- had you ever been -- let me strike that.
20 Were you familiar with the Anticybersquatting
21 Act of 1999 at the time that you received this letter from
22 Mr. Roomian?
23 A. Not whatsoever.
24 Q. And do you have any reason to believe that Chris or
25 James or Eddie were familiar with that act?

A-220
567
1 A. I don't know what they were taught in law school.
2 Q. And do you know if any of them looked up that act? I
3 mean, looked it up or did any legal research to see what
4 that was all about?
5 MR. RONEMUS: Objection.
7 Q. Do you remember having any meeting with either Chris
8 or James or Eddie personally on this day?
9 A. On the day that I received the letter, I am looking
10 at the dates now, I received the letter it says the 25th,
11 it looks like I wrote the 25th.
12 Did I meet with any of them? I'm sure I know I
13 met with Chris one of the days to go over it.
14 Q. You did one of the days?
15 A. As I said, we lived two blocks from each other.
16 Q. But would you take a look at the dates again, because
17 earlier I thought you testified that you replied the same
18 day?
19 A. No. I said I wrote it the same day.
20 Q. You wrote it the same day?
21 A. Yes.
22 Q. Did you send it out the same day?
23 A. No, I didn't.
24 Q. So you wrote it and then you spoke to Chris after; is
25 that correct?
A-221
568
1 I'm trying to get --
2 A. I don't remember which friend I spoke to first, but I
3 know that I spoke to them about it.
4 Q. Now, at that time who owned the domain name DSNY?
5 A. There was no domain name DSNY.
6 Q. I'm sorry, at that time who owned the domain name
7 hamptonlocations.com?
8 A. DSNY.
9 Q. And who was DSNY?
10 A. A corporation.
11 Q. So is it your testimony that -- and who owned any
12 stock in that corporation?
13 A. You asked that question, I said I don't know.
14 Q. Were Chris or James officers of that corporation?
15 A. No. They were not.
16 Q. And were you an officer of that corporation?
17 A. No, I was not.
18 Q. And were you on the board of directors of that
19 corporation?
20 A. No, I was not.
21 Q. And do you know who the agent for service of process
22 of that corporation was?
23 A. The same question, no, I did not.
24 Q. I'm going to show you something is that we've marked
25 as Plaintiff's 19, so please take a look at this.

A-222

709
1 business?
2 A. Never in my life.
3 Q. Have your parents ever been involved as a locations
4 scout or in the locations scouting business?
5 A. They have never been involved in locations and
6 scouting.
7 Q. Have you ever been involved in productions such as
8 producing commercials or shoots at any different
9 locations?
10 A. No, I have never.
11 Q. Have your parents ever been involved in productions
12 and producing shoots at any locations?
13 A. They're not producers, no.
14 Q. Now, you were asked a question by Ms. Weiss yesterday
15 about the response you gave to Mr. Roomian's letter?
16 A. Yes.
17 Q. And I believe you stated that you spoke to three
18 different attorneys before you sent that letter back to
19 him?
20 A. My three best friends, yes.
21 Q. These are three people there were involved in the
22 venture you explained yesterday?
23 A. Yes, they were.
24 Q. Did you discuss your response to Mr. Roomian's letter
25 with these three attorneys?

A-223

710
1 A. As soon as I got the letter, as I mentioned
2 yesterday, I think it was that day or the following day I
3 consulted with them and they basically said this was total
4 BS.
5 Q. Did they look at the letter that you sent back to
6 Mr. Roomian before you sent it?
7 A. Yes, they did.
8 Q. It's your testimony that after you sent that letter
9 back to Mr. Roomian, you never received any response from
10 him?
11 A. Correct.
12 I even said please feel free to call me and all
13 my contact information was on there.
14 Q. Do you know when your parents first started doing
15 shoots at their home?
16 A. I know they started building in '82 and definitely by
17 the time it was finished in '83 they started having
18 fashion shoots at the house.
19 Q. Have you been present at any of those fashion shoots?
20 A. A couple, yes.
21 Q. Do you know how many shoots they do per year?
22 A. I never really keep track of it. I know there's been
23 some years where they do none, and a couple of years where
24 it's four, five, something like that.
25 Q. What do your parents do for a living?

(Page # 473-474)
A-224
A-224
Roomian - Cross/Mr. Ronemus
473
1 owned nor had a Web site promoting her business.
2 It was not until after Darrell J. Rubens sent
3 e-mails on April 18, 2000, to scouting agencies.
4 Do you see where Mr. Rubens wrote that?
5 A. Yes, I do see it.
6 Q. Do you have any information?
7 A. I have no knowledge of what the homeowners knew or
8 didn't know.
9 Q. Okay.
10 You never spoke to Darrell Rubens, by the way,
11 did you?
12 A. I did not.
13 Q. Or Richard or Barbara Rubens?
14 A. I did not.
15 Q. No. 11, the e-mails attached dated April 18, 2000,
16 clearly stated, quote, we rent our house out for photo,
17 film and commercial shoots. How can we list with you?
18 Please look at our house at www.hamptonlocations.com.
19 That essentially states what he wrote in the
20 e-mail to Ms. Grigor on April 18, 2000.
21 Is that true?
22 A. Yes, it is.
23 Q. Okay.
24 And No. 12, after the e-mail was sent to
25 Ms. Grigor --
A-225
474
1 MR. RONEMUS: Withdrawn.
2 BY MR. RONEMUS:
3 Q. After this e-mail on April 18, 2000, your client
4 called the owners of the house featured in
5 hamptonlocations.com on June 12th and booked a male
6 underwear photo shoot for June 13, 2000.
7 Do you see where he wrote that?
8 A. Yes.
9 Q. And you understand that that's true?
10 A. I understand the circumstances under which that
11 happened, as my client has sprained them to you.
12 Q. And you understand that your client arranged for a
13 shooting to be done at their house on June 13, 2000, as
14 stated in Mr. Rubens' letter.
15 Correct?
16 A. I don't know the exact date.
17 But I know that a shooting did take place there.
18 Q. Okay.
19 Then Mr. Rubens says if you have any further
20 questions, please feel free to call me, sincerely, Darrell
21 Rubens.
22 And you never called him after that, right?
23 A. That's correct.
24 Q. Has your client told you that she started a separate
25 lawsuit in the Southampton justice court against my

(Page # 719,720)
A-226
A-226

719
1 A. Correct.
2 Q. And is it your testimony that it expired two years
3 after that?
4 A. It was a standard two year registration.
5 Q. And you disconnected that address from your parents'
6 web site when?
7 A. It was on or about July 24th.
8 Q. Of?
9 A. 2000.
10 Q. About a year after the web site, the domain name was
11 purchased?
12 A. A year after, approximately, yes.
13 Q. About a little less than three months or so -- a
14 little more than three months after you linked it to your
15 parents' web site?
16 A. Yes. The first link was April and then it was
17 disconnected in July.
18 Q. After it was disconnected in July 2000 -- by the way,
19 why did you disconnect that?
20 A. Why? This. We were being brought into court. We
21 were getting calls threatening us.
22 MS. WEISS: Objection, your Honor.
23 THE COURT: He's already testified to it in
24 part. I'll permit it.
25 He was asked why he disconnected it and he said

A-227
720
1 he was getting calls -- leave it at that -- about the use
2 of the mark. You can develop it.
3 Threat, number one, is a conclusion. And,
4 number two, I don't know how many conversations he had.
5 The objection is sustained as to the term
6 threats and the jury will disregard that.
7 BY MR. RONEMUS:
8 Q. Did you receive -- can you tell us why you
9 disconnected the link from your parents' web site in July
10 without using the word threats?
11 A. My parents told me that Nancy and her husband were
12 absolutely crazy and to get it off now.
13 Q. So your parents asked you to take it off?
14 A. Yes, they did ask me.
15 Q. When they asked you to take it off in July, did you
16 disconnect that link when they asked you to take the off?
17 A. Yeah.
18 I just removed the link. The page was back to
19 its original location page not found.
20 Q. Did you monitor what happened to that link from that
21 time when you disconnected it until the time that the
22 registration with DSNY expired?
23 A. Everything.
24 Q. What did you notice during that approximately one
25 year until that expired in July of 2001?

(Page # 888,889)
A228
A-228
888
1 2000?
2 MR. RONEMUS: I object to what Judith Robbins
3 knew.
5 BY MS. WEISS:
6 Q. Had you communicated to Judith Robbins that there was
7 a Web site www.dqny.com prior to July of 2000?
8 A. Yes.
9 Q. How did you communicate that to Judith Robbins?
10 A. By phone.
11 Q. When did you communicate that to --
12 A. Oh, I'm not sure of the date.
13 Q. Was it shortly after you put up the Web site?
14 A. I'm not sure.
15 Q. Do you know when the Web site www.dqny.com was up and
16 running with photographs?
17 A. I'm not sure.
18 Q. Yesterday, I believe it came up that at a certain
19 point in time you instructed Darrell to disconnect the
20 link that went from the domain name with the -- the domain
21 name Hampton Locations, the one without the S, the domain
22 name that linked over to www.dqny.com.
23 At some point you instructed your son
24 Darrell Rubens to disconnect to link. Is that correct?
25 A. Yes.
A-229
889
1 Q. And when, to the best of your recollection, do you
2 think you gave him those directions?
3 A. It was after the letter.
4 Q. The letter you wrote?
5 A. Yes, the 21st, the letter of the 21st.
6 Q. How long after the letter?
7 A. I'm not sure when he did it.
8 But it was after the argument that promoted the
9 letter.
10 Q. Do you believe it was sometime in July of 2000?
11 A. Yes.
12 Q. End of July, more or less, is what you were thinking?
13 A. I believe so.
14 Q. Okay.
15 MS. WEISS: I'd like to show the witness a
16 document filed in this case called Richard Rubens
17 Declaration in Support and see if he recognizes his
18 signature on this, your Honor.
19 It's from September 4, 2001. It's not an
20 exhibit on our exhibit list, but I did want to find out if
21 this would refresh his recollection, your Honor.
22 May I show it to him and counsel?
23 THE COURT: Yes, you may.
24 MS. WEISS: And I believe it's No. 5 -- pardon
25 me -- No. 9 on the court's docket.

(Page # 1065)
A-230
A-230
Griffith/Redirect-Weiss
1065
1 MR. RONEMUS: Judge, I object. If she's going
2 to read it, read it.
3 THE COURT: Just read it.
4 MS. WEISS: This would be Mr. Griffith speaking.
5 A year ago, I said give me the name, and he
6 said -- meaning Richard Rubens -- he'd give me the name,
7 but he won't give me the money. The end.
8 We have resolved this.
9 THE COURT: That's one way that evidence can be
10 presented by stipulation, both parties agree to something.
11 That's one item of evidence that you will consider with
12 all the other evidence and attach such weight as you deem
13 appropriate.
14 Are there additional questions of Mr. Griffith?
15 MS. WEISS: Yes. Just a couple.
16 REDIRECT EXAMINATION
17 BY MS. WEISS:
18 Q. Mr. Griffith, we were talking about the dates you
19 testified to.
20 You said you talked about your wife taping her
21 Hamptons Locations business cards on the Rubens' house,
22 and you stated winter of '98, and spring of '99.
23 Do you remember that?
24 A. Yes.
25 Q. And then you talked about the time that Nancy and
(Page # 953,54,55,56)
A-231
A-231
953
1 fax and via registered mail. It says, Dear
2 Mr. and Mrs. Griffith, I must tell you that I'm extremely
3 upset about the threats that you made to me today. I do
4 not need anyone telling me, quote, I'm a criminal
5 attorney. I have a location for you for three days for $2
6 or $3,000 a day, but we will not refer your location
7 unless you give up your name Hampton Locations, and not
8 only will you lose business, we will tie you up in
9 expensive -- extensive, expensive litigation, end quotes.
10 While --
11 Q. I'm sorry to interrupt you.
12 Why did you write that?
13 A. I wrote it just to document our phone call that day.
14 Q. Okay.
15 Go ahead.
16 A. I went on to say, well, that sounds like extortion to
17 me. I am in the field of architectural and interior
18 design, and I have been using our showroom location, and
19 our residential locations for film, print, video, or any
20 other type of related situations for a fee since 1972.
21 In 1983, when my Hampton home was built, I
22 continuously offered this unique site as a Hampton
23 location. I deal direct with the user who through various
24 -- I'm sorry, through the various location companies. I
25 own the internet site Hampton Locations. This site is

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954
1 used for my Hampton location which, as you already --
2 which you or anybody else knows, features only my home and
3 my architectural and interior design service.
4 My home has been referred by countless people as
5 a Hampton location since 1983, and I will not capitulate
6 to extortion or other threats to make me give up the site.
7 Furthermore, I withdraw my offer to sell you the site.
8 Q. What did you mean by withdraw your offer to sell the
9 site?
10 A. Well, I was angry and I just formally withdrew the
11 offer that day. I said I would give it to you for $5.
12 Q. That's what you meant when you said you withdrew your
13 offer to sell?
14 A. Yes.
15 Q. Back up in that paragraph you said I own the internet
16 site Hampton Locations.
17 What did you mean by that?
18 A. I didn't mean it technically, like I tell people I
19 own my car, but it actually belongs to the bank to which I
20 lease it from.
21 Q. I'm sorry?
22 Did you consider yourself to be the owner of
23 hamptonlocations.com at that time?
24 A. No.
25 Q. Why did you write that I own the internet site

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955
1 hamptonlocations.com?
2 A. It was written as an angry type of letter and it was
3 just a short version of the long story.
4 Q. Had you ever considered yourself an owner of that
5 domain name since its inception in July of '99, until its
6 expiration in July of '01?
7 A. Never.
8 Q. Okay.
9 Just continue reading, please.
10 A. I offered to work with you in harmony. I advise you
11 that we do not in any way compete with each other, or are
12 we in any way doing the same thing.
13 We cannot cause you any financial hardship, but
14 you, in turn, can and possibly have caused us to lose fees
15 from shoots you have chosen not to give to us, such as a
16 shoot that you have threatened us with.
17 Therefore, it is you, not us, that have caused
18 damages. Do not forget that it was our e-mail to you that
19 introduced you to our location last year -- which is a
20 typographical error.
21 Q. What are you referring to there?
22 A. The famous e-mail of Darrell to Mrs. Griffith.
23 Q. And that's April 18th of 2000?
24 A. Right.
25 Q. So several months before this letter?

A-234
956
1 A. Correct.
2 Q. Okay.
3 A. Don't forget that it was our e-mail to you that
4 introduced you to our location last year --
5 Q. Hang on.
6 Just start at that bottom paragraph.
7 A. Well, that's a mistake.
8 Last year is a mistake.
9 Q. Okay. I'm sorry.
10 Go ahead.
11 A. And has led to the recent one-day shoot on June 13,
12 2000.
13 This shoot was to pay us $2,500 plus overtime.
14 As of this writing, there is a small balance on the
15 overtime still due. I strongly suggest that you rethink
16 your position on this matter.
17 In the meantime, I will keep my ear to the
18 ground, as they say, so please do not interfere with any
19 contractual or potential contractual relations.
20 Q. And what did you mean by that?
21 A. Well, because Mr. Griffith also threatened to call
22 location companies and tell them that we don't have
23 permits to do shoots and different things like that.
24 Q. Did you ever receive a response from Mr. Griffith or
25 Ms. Grigor to this letter?

(Page # 958)
A-235
A-235
958
1 house was in good condition.
2 Q. At any time, have you ever had a business card which
3 said Hampton Locations?
4 A. No.
5 Q. Have you ever had any letterhead or stationery or
6 envelopes that said -- when I say you, I'm talking about
7 you or Darrell or Barbara.
8 A. I understand.
9 Q. Any letterhead or stationery or envelopes which said
10 Hampton Locations?
11 A. No.
12 Q. Have you ever had any bank accounts under
14 A. No.
15 Q. Did you ever make any profits, whatsoever, from any
16 business that was referred to you from the domain name
18 A. No.
19 Q. Or any shoots ever referred to you through that
20 domain name?
21 A. No -- yes.
22 Q. Who was that?
23 A. Ms. Griffith.
24 Q. And that's referring to the e-mail that Darrell
25 wrote?
(Page # 730)
A-236
A-236
SIDE BAR 1-23-07 THE COURT
730
1 Now, the $2,800, we are going to delete that,
2 and the reason we are going to delete that, there will be
3 some reference to a dollar amount, it will just be a
4 dollar amount and the reason we are going to do that is
5 because I don't think the jury should hear that number.
6 I think that runs afoul of the theory, at least,
7 of 408, and it's completely unnecessary -- I shouldn't say
8 completely unnecessary. But it's unnecessary to the
9 reason that this item's being admitted, i.e. to show that
10 at some point during negotiations, Richard Rubens said
11 I'll give you the name. However, I'm not going to pay the
12 amount you are demanding in addition to giving up the
13 name. So I'm going to allow it for that limited purpose.
14 Now, in making this determination, I also looked
15 at the transcript. The transcript speaks for itself. I
16 juxtapositioned the transcript against 408. The advantage
17 to the defendants, if this information is placed before
18 the jury, is basically Mr. Griffith does not come off as a
19 sterling light.
20 He does make some threats which, presumably, are
21 the predicate for the legally extortion counterclaim
22 asserted by the plaintiffs, and the general tenor is bad,
23 plus there are also a number of misrepresentations in the
24 letter as to what the law is, but that's neither here nor
25 there
(Page # 311,312,313,314,395)
A-237
A-237
Grigor/Cross-Ronemus
311
1 July 8, 1999.
2 Correct?
3 A. Yes.
4 Q. So you knew, then, it was going to expire July 8,
5 2001?
6 A. Yes.
7 Q. Did you follow that and purchase that on the day
8 after it expired on July 9, 2001?
9 A. No.
10 Q. But it's your claim that as of that time, July of
11 2001, the Rubens were improperly -- Darrell and Richard
12 Rubens were improperly using that domain name, true, as of
13 the time it expired on July of 2001?
14 A. I believe so.
15 I believe so.
16 Q. Okay.
17 At some point after it expired on July 8, 2001,
18 you then purchased that domain name.
19 Correct?
20 A. Yes.
21 Q. And when was that?
22 A. It was May 12, 2002.
23 Q. So not quite, but almost a year after it expired?
24 A. Yes.
25 Q. So during that ten months, it was out there with no

A-238
312
1 owner.
2 Correct?
3 A. Yes.
4 Q. And it's your testimony that during that ten months
5 it was out there with no owner, if someone typed in by
6 mistake that domain name, they would get something that
7 obviously didn't go to your website, true?
8 A. Could I tell you what happened?
9 Q. Just during that ten months, if someone typed in
10 Hampton Locations looking for you, typed it in by mistake,
11 it certainly wouldn't come to your website?
12 A. No.
13 It didn't -- we didn't do the connection for the
14 website yet.
15 Q. You didn't own it yet.
16 You didn't buy it --
17 A. I didn't buy it -- I didn't know it was available
18 until then.
19 Q. Wait a minute.
20 You knew in February of 2000 it was registered
21 on July 8, 1999?
22 A. Yes.
23 Q. And you knew it was going to expire on July 8, 2001?
24 A. Yes.
25 Q. So you are telling us that you did not know until you
A-239
313
1 purchased it in May of 2002, approximately that ten-month
2 period, you did not know it was available.
3 Is that what you are telling us?
4 A. No.
5 I didn't know it was available. I assumed they
6 still had it because we were in these different lawsuits
7 and we were in court and we were doing all kind of motions
8 and everything --
9 Q. Ms. Grigor, I'm just asking you to please answer the
10 question, if you can.
11 At any time between when it expired on July 8,
12 2001, and when you purchased it in May of 2002, did you go
13 on to that website to determine what the status of that
14 domain name was?
15 A. No.
16 Q. But it's your testimony that you were concerned that
17 people were being misdirected by going on that website by
18 mistake, correct?
19 A. Before that they were going on their website and
20 under construction, and I was in the middle of getting a
21 new designer, a website designer.
22 So I didn't have time to just go constantly
23 looking at the website.
24 Q. Because you knew it was going to expire in July of
25 2001, right, July 8, 2001, you knew that?

A-240
314
1 A. Yes.
2 Q. Is it your testimony you were not concerned about
3 what happened to people who were looking for you but typed
4 in a wrong name between July 8, 2001 and May of 2002, when
5 you purchased it?
6 You were not concerned over that ten-month
7 period?
8 A. Yes, I was.
9 Q. And what efforts did you make, if any, to try to
10 obtain that website for yourself during that ten-month
11 period?
12 A. I left it up to my website people, and she finally --
13 she didn't even know it was available.
14 And when she called me, I called my attorney,
15 and because --
16 Q. Wait a minute. Please. Please.
17 I hate to interrupt you, but I just -- I can
18 only focus on one thing at a time.
19 So it's your testimony you were concerned about
20 something being misdirected to that website during that
21 ten-month period, true, after they -- after it was no
22 longer registered to DSNY?
23 A. Right.
24 Q. And it's your testimony that you left it up to your
25 website person to try to obtain this domain name after it

(Page # 1082)
A-241
A-241
THE COURT January 24, 2007
1082
1 few things, however, which I will not reserve decision on.
2 One of the claims of the defense is whether this is a
3 generic mark. Many times there are factual issues that
4 are involved in whether a mark should be labeled as
5 generic or descriptive and so forth. Here I find as a
6 matter of law, and this is not a generic mark, I find that
7 it is a descriptive mark.
8 A descriptive mark is not entitled to protection
9 unless it has secondary meaning. Secondary meaning in
10 this case is clearly an issue for the jury. I'm going to
11 withdraw that. What I'm going to say is I find that this
12 is not a generic mark. Accordingly, I'm not going to
13 present to the jury the question of whether this is a
14 generic mark.
15 I'm going to tell the jury that it's a
16 descriptive mark. I'll tell the jury it will be their
17 function to determine whether the mark is protectable, due
18 to secondary meaning, in other words, has the mark
19 acquired distinctiveness in the marketplace. And I will
20 tell them that's something for them to decide.
21 The reason I say that now is, this has been
22 discussed before, and I'm going to structure the proposed
23 charge consistent with what I have just said. Also, I
24 think it's worthwhile to say this, although I think we
25 have said this before, as a matter of fact, I know we have

TRIAL TRANSCRIPT OF NANCY GRIGOR AND DARRELL RUBENS
(Page # 215,216,217,518,519,520,521,522,712,713,714)
A-242
A-242
Grigor/Direct-Weiss
215
1 A. I just don't remember the dates of the cases, and
2 there were so many motions and court cases and court
3 documents going back and forth.
4 I just don't remember the exact dates of the
5 court documents.
6 Q. I see.
7 Did there come a time when there were, to your
8 knowledge, any settlement discussions between your
9 attorney, Michael Griffith, and the defendants, Darrell
10 Rubens and Richard Rubens, or either one of them?
13 BY MS. WEISS:
14 Q. Are you familiar with someone named Jenny Landey?
15 A. Yes.
16 Q. And who is Jenny Landey?
17 A. She has a company called Jenny Landey Productions,
18 and she does production and she has some locations.
19 Q. Does she have a website?
20 A. Yes.
21 Q. You visited her website?
22 A. Yes.
23 Q. Can you describe what you have seen on her website?
24 A. She's got some photos of some jobs she's done, and
25 she has different divisions, categories.
Grigor/Direct-Weiss
A-243
216
1 She has Hamptons location, she has New York
2 location, she has, I think, LA location. She has
3 locations throughout the country, and there are different
4 divisions of locations.
5 Q. Do you know what her website says?
6 A. WWW.JennyLandeyProductions.com.
7 Q. Have you seen her advertisements?
8 A. Yes.
9 Q. Is there anything about her particular advertisements
10 that you feel competes with your company, Hamptons
11 Locations?
12 A. Well, she's not taking the name Hamptons.
13 She has her own name, her own website,
14 www.JennyLandeyProductions.com, and she's not using
15 Hampton Locations or Hamptons Locations, or any form of it
16 to direct anybody to her website.
17 She's using her name of her company. So...
18 Q. Okay. I understand.
19 How about Andrew Blatz, are you familiar with
20 Andrew Blatz?
21 A. Yes.
22 Q. And what sort of business is he in?
23 A. Same thing, production, location scouting.
24 Q. What is the name of his company?
25 A. LMI.
Grigor/Direct-Weiss
217
A-244
1 Q. Does that stand for something, those letters?
2 A. I think it's Location Management, Inc.
3 Q. And does he have a website?
4 A. Yes.
5 Q. And have you looked at his website?
6 A. Yes.
7 Q. And does he use phrases like Hamptons Locations or
8 Hampton Locations on his website?

9 9 A. Yes, Hampton Location, he has it into a division of
10
11 10 where -- he has locations in Manhattan. He's got
12
13 11 locations in different divisions of the country.
14
15 12 Q. And as far as you know, does he have any website, or
16
17 13 has he ever had any website that uses the word Hampton
18
19 14 Locations or Hamptons Locations in his website?
20
21 15 A. No.
22
23 16 MR. RONEMUS: Objection.
24
25 17 You mean in the URL, itself, in the domain name
26
27 18 or in the website?
28
29 19 That's not what I'm clear on.
30
31 20 THE COURT: Why don't you make that clearer?
32
33 21 THE WITNESS: They are not advertising my
34
35 22 name --
36
37 23 THE COURT: Wait a minute.
38
39 24 There's no question.
40
41 25 BY MS. WEISS:
A-245
518
1 Google, that's not like a big ad. People have the words
2 in their metatags and search engines. Because she has
3 that division, she comes up. She's not advertising as
4 Hamptons Locations.
5 Q. She's not advertising?
6 A. No, she's not. She's Jenny Landey Productions.
7 Q. Now, Mr. Roomian testified today that -- withdrawn.
8 Are there other location companies who have used
9 the words Hamptons location or Hampton locations, as far
10 as you're aware?
11 A. I don't know.
12 Q. You're not aware of any other location companies who
13 used that term in promoting their business?
14 A. I'm not aware.
15 THE COURT: At this point, ladies and gentlemen,
16 we will take the afternoon recess. Please don't discuss
17 the case. We will see you in 15 minutes.
18 (The jury is excused.)
19 (Recess taken.)
20 (After recess.)
21 THE COURT: If you would resume the stand,
22 please.
23 (The witness, Ms. Grigor, resumes the stand.)
24 (The jury is present.)
25 THE COURT: If everybody would be seated,

A-246

519
1 please.
2 We will continue with the cross-examination.
3 BY MR. RONEMUS:
4 Q. Ms. Grigor, you testified that you're aware that when
5 you get on Jenny Landey's web site, that the words
6 Hamptons locations comes up in her web site, correct,
7 you're aware of that true?
8 A. Yes.
9 Q. And Holly Lee is another location company in
10 competition with you, true?
11 A. I think so. I'm not sure.
12 Q. Well, are you aware that when you got on Holly Lee's
13 web site, that Holly Lee is a location company and uses
14 the words Hamptons locations to promote her services?
15 A. I'm not aware of that.
16 Q. Have you ever typed the word Hamptons location into
17 Google and seen the location companies that come up?
18 A. Mostly me. I don't see -- the last time I Google'd
19 I'm pretty much alive.
20 Q. Let me show you what's been marked as Defendant's
21 Exhibit PP.
22 (Exhibit handed.)
23 Do you see this is a Google search where the
24 words Hamptons locations are typed in as a search?
25 A. That's what it says up on the top left.

A-247

520
1 Q. Do you see your name? In fact, I believe you come up
2 as the first name; is that correct, hamptonslocations.com?
3 A. Yes, I see my name.
4 Q. Do you see the second one down is Jenny Landey
5 Productions, where you type in the words Hamptons
6 locations, do you see her name and web site listed there?
7 A. No. My name is second. I come up second.
8 Q. What's the third one?
9 A. It does say Jenny Landey here, yes.
10 Q. If you search for the words Hamptons locations, it
11 comes up Jenny Landey Productions and she's a location
12 company in competition with yourself; is that correct,
13 ma'am?
14 A. Well, she's in competition, yes.
15 Q. Have you ever sent a cease and desist or had an
16 attorney send a cease and desist letter to Ms. Landey to
17 stop using the words Hamptons locations to promote her
18 business?
19 THE COURT: Asked and answered.
20 MR. RONEMUS: I'm sorry?
21 THE COURT: Asked and answered.
22 BY MR. RONEMUS:
23 Q. On the next page, do you see hollyleeproductions.com
24 comes up when you search under Hamptons locations?
25 A. Where are we looking?

A-248

521
1 Q. Page 2.
2 A. I don't see it.
3 Q. What's the first result on page 2?
4 A. It has my name, Hamptons Locations. That's me.
5 Q. I said page 2.
6 Do you see on page 2 the company Holly Lee
7 Productions comes up when the search for Hamptons
8 locations was performed?
9 A. I see www.hollyleeproductions, and she probably has
10 Hamptons in her search engine somewhere or her metatags,
11 but her name is Holly Lee Productions.
12 Q. Is Holly Lee a company that performed search and
13 locations in the Hamptons?
14 A. I'm not familiar with her.
15 Q. You don't know who Holly Lee Productions is?
16 A. I heard her name, but I don't really know her that
17 well. I just heard the name. I don't know exactly what
18 she does.
19 Q. Is your understanding, based on the fact that her
20 name comes up, that she uses Hamptons locations to promote
21 her company, is that what you testified to?
22 A. On Google?
23 Q. Yes.
24 A. I think this is a search engine. It's not
25 advertising.
A-249

522
1 Q. Is it your understanding that because her name comes
2 up when you search under Hamptons locations, that she
3 promotes herself using that term Hamptons locations?
4 A. Say that again?
5 Q. Do you know whether or not Holly Lee Productions uses
6 the words Hamptons locations to promote her company?
7 A. Well, she might have the words in her metatags to get
8 onto Google.
9 Q. And do you know whether you or an attorney ever sent
10 a cease and desist letter to Holly Lee Productions to stop
11 using the term Hamptons locations?
12 A. Well, I might discuss it with my attorney, but I have
13 never seen this, so I don't know.
14 Again, sir, she is using her name, not my name,
15 her production name. She's not www.hamptonslocations.
16 She is www.hollyleeproductions. She is not my name.
17 THE COURT: The jury will disregard the latter
18 portion of the answer. It's volunteered information.
19 It's not responsive, number one. Number two, it's already
20 been said.
21 BY MR. RONEMUS:
22 Q. When you got on the Rubens' web site, it was Design
23 Quest, that was the name of the web site; is that correct?
24 Yes or no, Design Quest?
25 A. That was the words there, yes.

A-250
712
1 the easiest way to find anything on the internet.
2 Q. Have you performed a Google search on Hamptons
3 Locations or Hampton Locations related to this lawsuit?
4 A. Thousands of times since this lawsuit has started,
5 yes.
6 Q. Why have you done it thousands of times?
7 A. Just to, you know, they're printing out a new exhibit
8 or coming up with some new story, so I wanted to make sure
9 that they didn't do anything either by hijacking our web
10 site or something to change a Google outcome.
11 I wanted to make sure they were always coming
12 up. First all their competitors were there and we had
13 nothing. Nothing wouldn't even come up.
14 I think I dug 500 pages deep on a Google search
15 of Hamptons Locations and I can testify we didn't come up
16 within the first 500. Did I go to the other 500,000? No.
17 Q. When you say they came up, you're talking about the
18 plaintiff's web site came up on a Google search?
19 A. Yes.
20 She's always done a very good job in promoting
21 her business and I think since day one her site would be
22 number one on the hit list, sometimes one and two or even
23 three, yes.
24 Q. And it's your testimony that other location
25 companies, competitors of hers, would come up when you

A-251
713
1 type in Hamptons Locations?
2 A. Many competitors come up. Many locations, scouting
3 competitors come up when you type in any variation of the
4 words Hamptons location.
5 Q. Do you recall any of the names of the competitors as
6 you sit here today?
7 A. I think one was Jenny Landey or something. I know I
8 saw an exhibit floating around here yesterday.
9 Q. When is the last time you did a Google search on
10 Hamptons Locations and the plaintiff's name came up on the
11 first page?
12 A. Last night.
13 Q. Now, you said when you did a Google search on Hampton
14 or Hamptons Locations, DQNY would not come up in the first
15 500 pages?
16 A. The first 500 pages that have probably about 10
17 matches on each page, so we're probably talking about
18 5,000 I never saw, no.
19 Q. What does that mean, wouldn't come up in the first
20 500 pages?
21 A. As the lawsuit's been going on, I wanted to make
22 absolutely sure that, you know, even if we use the word
23 location in a description somewhere that wouldn't even
24 come up near her description.
25 So when I type in any variation of the word

A-252
714
1 Hampton or locations, as I said, she comes up first and it
2 always has her competitors are the first couple of pages
3 and you even have Hamptons locations in central Illinois
4 for Hamptons hotels, car rental companies, everything in
5 the world comes up, but never once did I see or find
6 anything relating to DQNY whatsoever.
7 Q. During the course of this lawsuit over the past six
8 and a half years did Ms. Weiss ever take your deposition?
9 A. She was supposed to. She got a Court order.
10 THE COURT: The answer is yes or no.
11 BY MR. RONEMUS:
12 Q. Just yes or no?
13 A. No.
14 Q. Ms. Weiss asked you yesterday about BCC, or blind
15 carbon copy which at the bottom of the e-mail you sent I
16 believe on April 18 to Ms. Grigor?
17 A. Correct.
18 Q. Can you describe what that indicates?
19 A. Yes.
20 I think this is the first time she understood
21 what it was, because she actually deposed my boss Jeff.
23 This is not responsive. Don't do that. Just
24 answer his question.
25 THE WITNESS: Okay.

(Page # 487,488,489,490)
A-253
A-253
487
1 the witness, Ms. Weiss?
2 If you don't, take it back and show it to her
3 before you show it to the witness.
4 MR. RONEMUS: She just saw it, your Honor.
5 MS. WEISS: Yes, your Honor.
6 I do know.
7 THE COURT: Just so the rule is clear, I think I
8 mentioned this before, perhaps I didn't, but any time an
9 attorney shows a witness an item, he or she should show it
10 to the opposing counsel before it's presented to the
11 witness.
12 The reason for that is, it makes it easier for
13 the other party's counsel to follow the questioning. So
14 I'd ask each of you to do that in the future.
15 MS. WEISS: Thank you, your Honor.
16 BY MR. RONEMUS:
17 Q. Can you tell us, Ms. Grigor, what the income for your
18 company was in 1999?
19 A. $129,000.
20 THE COURT: What does that mean, income?
21 This is the taxes and income, gross receipts?
22 THE WITNESS: I made some notes because if they
23 asked me, I just can't remember all the numbers.
24 So I put them down in case he asked me, I was
25 going to refer to it.

A-254
488
1 THE COURT: Is there a title to that?
2 THE WITNESS: Well, I just put down tax income,
3 you know.
4 THE COURT: All right. That's fine.
5 I didn't know it had the tax income. It has tax
6 income on the top?
7 THE WITNESS: Yes.
8 BY MR. RONEMUS:
9 Q. So that's not the gross income for the company for
10 that year?
11 A. That's -- yeah, I guess that's gross.
12 Q. That's the total income for your company for that
13 year?
14 A. Yes.
15 Q. Yes?
16 A. Yes.
17 MS. WEISS: Your Honor, I'm not sure in terms of
18 gross income or taxable income --
19 BY MR. RONEMUS:
20 Q. I'm talking about the total amount of money that your
21 company made in 1999.
22 Is that the number that's --
23 THE COURT: You are talking about gross
24 receipts?
25 MR. RONEMUS: Gross receipts.

A-255
489
1 THE COURT: This is before the deduction of any
2 expenses and anything else.
3 The gross receipts that your company generated
4 in that year.
5 A. Yes.
6 Q. And what's the total?
7 A. $129,246.30.
8 Q. Did you hear Mr. Roomian testify that you signed a
9 statement submitted in your application for your trademark
10 where you indicated you made $294,000 in 1999?
11 A. I don't remember him saying that.
12 Q. You didn't hear him say that this morning?
13 A. I don't remember.
14 Q. I'm going to show you what's been marked in evidence
15 this morning with Mr. Roomian as Exhibit No. 4, which
16 includes -- well, let me show it to you.
17 MR. RONEMUS: Your Honor, may I question her
18 from here since I only have one copy?
19 THE COURT: Yes.
20 BY MR. RONEMUS:
21 Q. Is that your signature, ma'am?
22 A. Yes.
23 Q. Do you recognize what this document is?
24 A. It's for the trademark.
25 Q. Okay.
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490
1 It states here declaration of acquired
2 distinctiveness?
3 A. Yes.
4 Q. And did you sign that on March 7, 2001?
5 A. Yes.
6 Q. And that was part of your application to obtain a
7 trademark for Hamptons Locations.
8 Is that true?
9 A. Well --
10 Q. Is that true?
11 A. Yes, that's what it is.
12 But this --
13 Q. Ma'am.
14 THE COURT: It's cross-examination.
15 Just answer the question.
17 BY MR. RONEMUS:
18 Q. And did you indicate --
19 THE COURT: Your attorney will be able to ask
20 follow-up questions.
22 BY MR. RONEMUS:
23 Q. Did you indicate here in 1999 your company made
24 $294,534, yes or no?
25 A. Yes.
(Page # 382)
A-257
A-257
Roomian - Direct/Ms. Weiss
382
1 A. As part of her declaration, yes.
2 Q. Is that the declaration of acquired distinctiveness?
3 A. Yes.
4 Q. And for fiscal year 1994, how much -- what is the
5 dollar amount for sales of services that was conveyed to
6 the Patent and Trademark Office?
7 A. $6,200.
8 Q. And how about for 1995?
9 A. $32,320.
11 A. $43,176.
13 A. $126,622.
15 A. $332,831.
16 Q. And what about for 1999?
17 A. $294,531.
18 Q. And did you tell the Patent and Trademark Office how
19 the company's services are advertised?
20 A. Yes, I did.
21 Q. What did you tell them?
22 A. I provided them with the attachments which showed her
23 use on her Web site, and in the various trade directories.
24 And those were the advertisements.
25 Q. So that's where things stood on March 7, 2001.

(Page # 509,510)
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509
1 doing that to try to steal business from your company?
2 A. No, not by that e-mail.
3 Q. Can you tell us why he sent you that e-mail on April
4 18 of 2000, asking to list the house with your company?
5 MS. WEISS: Objection.
7 BY MR. RONEMUS:
8 Q. Are you aware of the role of any of Darrell Rubens'
9 friends or business associates in obtaining the
10 hamptonlocations.com domain name?
11 A. No.
12 Q. Would you say it's important for you to know what the
13 role of other people were in obtaining that domain name
14 before you can accuse Darrell Rubens of trying to take
15 business from your company?
16 A. Would you repeat that?
17 Q. Would you say that it's important for you to
18 understand what the role of other people involved in
19 obtaining that domain name were, before you can come into
20 court and accuse Darrell Rubens of trying to take business
21 from your company?
23 THE COURT: Overruled. I'll permit it. You can
24 answer it.
25 A. I didn't know any other people. I only had Darrell's

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1 name. I didn't know anybody else.
2 Q. My question is, would you say it's important for you
3 to know the roles of other people involved in obtaining
4 the domain name before you accused Darrell Rubens of
5 trying to steal your business?
6 THE COURT: Now, it becomes argumentative.
7 She's endeavored to answer it, and that's her
8 answer.
9 BY MR. RONEMUS:
10 Q. At any point in time did you know that people other
11 than Darrell Rubens were involved in obtaining that domain
12 name?
13 MS. WEISS: Objection to the form of the
14 question.
15 THE COURT: I'll sustain it as to the form.
16 BY MR. RONEMUS:
17 Q. Have you learned, at any time up until today, that
18 anybody other than Darrell Rubens was involved in
19 obtaining the domain name?
20 A. I don't know who obtained the domain name. I don't
21 know. It was DSNY.
22 Q. So you don't know whether anyone else was involved
23 other than Darrell Rubens, is that fair?
24 A. He said that he had partners, but I didn't know who
25 they were.
TRIAL TRANSCRIPT MICHAEL GRIFFITH
(Page # 1012, 1013, 1014, 1015, 1016 )
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Griffith/Cross-Ronemus
1012
1 A. I believe in May of 2002.
2 Q. And do you know how long that domain name was
3 available to be purchased before your wife purchased it?
4 A. No.
5 Q. At any time before your wife purchased it, did you
6 search to determine if that domain name that's the issue
7 of this entire lawsuit was available?
8 A. No.
9 Q. Did you tell your wife that maybe you should find out
10 if that domain name was available so we can now own that
11 domain name, at any time before she obtained it?
12 A. No.
13 Q. Do you know when --
15 BY MR. RONEMUS:
16 Q. Do you know what DSNY is?
17 A. I believe it's Decorator Services of New York.
18 Q. And are you aware that in July of 1999 DSNY was the
19 registrant for the domain name that's the issue in this
20 lawsuit?
21 A. I believe it was.
22 Q. So then are you aware that in July of 2001, their
23 registration expired?
24 A. I believe it did.
25 Q. So it's your testimony that no time between July of
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1 2001 and May of 2002, when your wife purchased it, you
2 made a search to try to determine if that domain name was
3 available.
4 Is that correct, sir?
6 Q. When did hamptonlocations.com first connect into the
7 Design Quest Interior Design and Architectural Web site?
8 A. I don't know.
9 Q. Do you have any understanding at all when that
10 connection was first made?
11 A. No.
12 Q. Before you started the lawsuit in Southampton Town
13 Court for trademark violation, did you have an
14 understanding of when that connection was made?
15 A. No.
16 Q. Do you know how long that domain name
17 hamptonlocations.com connected into the Design Quest
18 Web site?
19 A. No.
20 Q. When you sued --
22 BY MR. RONEMUS:
23 Q. I believe you testified on direct that the suit in
24 the Southampton Justice Court was for trademark violation.
25 A. Common law trademark.
1014
A-262
1 Q. And was it part of your claim that the domain name
2 was connecting into the Design Quest Web site?
3 A. No.
4 Q. Did you know whether at the time you filed that
5 lawsuit that the domain name connected to the Web site?
6 A. No.
7 Q. Did you know whether it connected to the Web site
8 before you started the lawsuit?
9 A. No.
10 Q. So at the time you started the lawsuit, it was your
11 claim that just owning that domain name was a violation of
12 your wife's trademark?
13 A. I can't answer that with a yes or a no.
14 Q. Can you explain what the basis of your claim that
15 Darrell Rubens and Richard Rubens violated your wife's
16 trademark was when you brought that common law trademark
17 claim in the Justice Court?
18 A. Yes, I can.
19 Q. Okay.
20 What is that?
21 A. Mr. Roomian had sent a letter to Darrell telling him
22 to cease and desist, and Mr. Rubens admitted to me on the
23 telephone that he was the -- in the letter, and on the
24 telephone that he was the owner of the Web site,
25 hamptonlocations.com.
1015
1 Q. Okay.
2 Did you have --

A-263
4 Q. Just so I'm clear, the fact that he owned that domain
5 name was the basis of your lawsuit.
6 Is that true?
7 A. No, that he owned it and that he was using it on the
8 internet.
9 Q. How did you know he was using it on the internet when
10 you started that lawsuit?
11 I thought you said you didn't know if it
12 connected to a web page when you started that lawsuit.
13 A. Well, I believe at the time, as I said, I believe
14 that my wife showed me the image of a big white house.
15 Q. But I thought you said that that was sometime in
16 either 2000 or 2001.
17 A. I think I told you before that it was somewhere in
18 the third week of -- or the fourth week of July.
19 Q. So is it your testimony now that when you started the
20 lawsuit in the Southampton Justice Court, you were aware
21 that that domain name, when you typed it this, went to a
22 picture of a big white house on the internet?
23 A. All I know is I saw a big white house.
24 I didn't -- I was not a plaintiff in the
25 lawsuit. I'm the attorney. It's my client who made those
1016
1 allegations.
2 Q. You are the one who drafted the summons and complaint
3 in the Justice Court.

A-264
4 Correct?
5 A. Correct.
6 Q. And, in fact, there were more claims than just a
7 violation of common law trademark.
8 True?
9 A. Correct.
10 Q. In fact, you sued for five separate counts.
11 THE COURT: I don't want to go through these
12 counts.
13 That's a different proceeding.
14 MR. RONEMUS: I understand, but he said --
15 Q. You sued for more than common law trademark, which is
16 what you testified to on direct.
17 Is that true?
19 Q. And at the time that you began that lawsuit on behalf
20 of your wife, you were not aware of whether or not that
21 domain name linked up to anything on the internet?
22 A. I only know what she showed me once, and I know about
23 Mr. Roomian's letter.
24 I know what she told me, and based upon that, I
25 felt that it was a bona fide claim.

(Page #:975,976)
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Griffith/Direct-Weiss
975
1 and that they get the service that they require.
2 Q. That's your understanding of good will.
3 Is that correct?
4 A. Correct.
5 Q. And have you personally observed any good will in
6 connection with Nancy Grigor and Hamptons Locations in the
7 community?
8 MR. RONEMUS: Note my objection.
10 BY MS. WEISS:
11 Q. Mr. Griffith, when you are in the community with
12 Nancy Grigor, do people recognize her?
14 THE COURT: I'll sustain it as to the form.
15 If he's seen people come over and greet her and
16 so forth, that's something he observed.
17 BY MS. WEISS:
18 Q. Mr. Griffith, would you speak into the microphone
19 also for your answers, so our court reporter can hear you.
20 Have you been out with Nancy in places where
21 people have come over to greet her?
22 A. Yes.
23 Nancy's a very well-known figure in the
24 community.
25 Q. And when they greeted her, have there been

A-266
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976
1 discussions about Hamptons Locations?
2 A. All the time.
3 Q. And how frequently would you say that occurs?
4 A. Literally every time we go out for dinner, every
5 restaurant owner I think on the east end knows Nancy that
6 we have been to.
7 Q. And would you say that that -- those types of
8 greetings that you have discussed, and people coming over,
9 occurred prior to February 2000, as well as after February
10 of 2000?
11 A. Yes.
12 Q. I wanted to turn to a conversation that you had on
13 the telephone with Richard Rubens on July 21, 2000.
14 Before doing that, I'd like to show you a letter
15 that's already been marked into evidence, and it's a
16 letter addressed to you, as well as your wife, and I'd
17 like you to take a look at it.
18 Perhaps it will refresh your recollection. Do
19 you see it there?
20 A. Is that Exhibit No. 39? I think it is.
21 Yes.
22 Q. Is Exhibit 39 a letter to you?
23 A. Yes, July 21, 2000.
24 Q. From Richard Rubens?
25 A. Yes, ma'am.
TRIAL TRANSCRIPT OF ROBERT ROOMAIN AND NANCY GRIGOR
(Page # 308,500, 429 - 434, 469)
A-267
A-267
308
1 A. Well, when my website girl was going out to buy these
2 website names, she came back and told me that Hampton
3 Locations was taken.
4 And I said, well, what does that mean, and what
5 do I do? First I said who, who has it? And she told me
6 it was DSNY.
7 Q. And what did you do as far as trying to contact DSNY
8 and telling them that you had what you felt was your
9 domain name?
10 A. Well, it was registered at 575 Madison Avenue, which
11 was a big building.
12 And I didn't think anything of it.
13 Q. Madison Avenue in New York City?
14 A. Yes.
15 Q. Did you write a letter to DSNY at 575 Madison Avenue
16 and tell them that they had what you felt was your domain
17 name?
18 A. Not at that time.
19 Q. Why not?
20 A. Well, they didn't have a site up. They weren't doing
21 the diverting.
22 They just had a name. They just owned the name.
23 I figured they weren't hurting me. They have the name,
24 but they don't have the website up. So I didn't think
25 anything of it.
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500
2 Q. Was it before or after the shooting at the Rubens'
3 house in 2000?
5 Q. Are you aware of any other cease and desist letters
6 that you or your attorney have written to anyone else who
7 you felt was using the name improperly for a locations
8 company?
9 A. No, no one else.
10 Q. Now, you testified, I believe, you first learned
11 about Hampton Locations in February 2000, the web site,
12 the domain name Hampton Locations?
13 A. It was sometime around there, sometime around then,
14 February 2000.
15 Q. And you learned, in or about February of 2000, that
16 it was registered to an entity known as DSNY?
17 A. Yes.
18 Q. Did you ever write or call DSNY and ask them what
19 they were using that domain name for?
20 A. No.
21 Q. Why not?
22 A. My web site person, we didn't think, we didn't think
23 they had any locations company at the time.
24 We knew it was a big building in New York City
25 and it was just four letters.

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1 registration for her mark.
2 Q. Her Hamptons Locations?
3 A. Yes.
4 Q. When did you first learn that someone else had
5 obtained the domain name Hamptonlocations.com?
6 A. That would have been on February 18, 2000.
7 Q. How did you learn that she learned about that --
8 withdrawn.
9 Did she tell you how she learned about that?
10 A. No, she did not.
11 Q. Did you learn that the registrant for that domain
12 name was DSNY?
13 A. Not at that time.
14 Q. When did you first learn that?
15 A. That would have been right before I sent the letter
16 to Mr. Rubens, just a few days before.
17 Q. The letter of?
18 A. June 25, 2000.
19 Q. When you sent your letter on June 25 of 2000, did you
20 realize that Ms. Grigor had, in fact, booked a shooting at
21 a house owned by the defendants within two weeks before
22 your letter?
23 A. Yes, I did.
24 Q. When you learned that DSNY was the registrant for
25 hamptonslocations.com, did you send a letter to DSNY?

A-270

430
1 A. No, I did not.
2 Q. I believe you said you were aware of an address?
3 A. Yes, on the domain listed that was the address
4 information with the domain name register.
5 Q. I believe that's 575 Madison Avenue?
6 A. Yes, that's the one.
7 Q. Is there any reason you didn't send a letter to the
8 owner, the registered owner, of the domain name?
9 A. Because after checking into it further, this was the
10 name and address that we felt or we believed was connected
11 to it.
12 Q. That's Darrell Rubens?
13 A. Yes.
14 Q. Now, when you first applied for the mark, I believe
15 you indicated you applied for several different things.
16 One of them was providing locations for photo
17 shoots, and I'm looking at your exhibit number two which
18 was your original application.
19 A. Okay.
20 Q. Of March 3, 2000?
21 A. Right.
22 I originally applied for all those services that
23 are identified in that application, and I applied all in
24 one class in the hope that I could keep the government
25 filing fees as low as possible.

A-271
431
1 Q. Before I get to that, I'm going to ask you one other
2 thing.
3 You say you first learned in February that
4 somebody else had applied for hamptonlocations.com, yet
5 you did not write your letter until June 25, 2000, true?
7 Q. Did Ms. Grigor, at some point, ask you to write a
8 cease and desist letter, or is that a decision you made?
9 A. No.
10 She had been trying to, I guess, investigate who
11 was behind the use, and it wasn't until right before I
12 wrote the letter that she had the information for me to
13 send it out.
14 Q. When did she first ask you to write the letter you
15 wrote on June 25?
16 A. I'll have to refer to my file for that.
17 Q. Okay.
18 A. March 17, 2000.
19 Q. March 17, 2000, is when she asked you to write the
20 letter?
21 A. No, that's when I wrote to her.
22 We must have been discussing it around that
23 time, because at that time I said to her that my cost to
24 send that letter is $200.
25 Q. So, it's your understanding she had asked you before

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432
1 March 17 of 2000 to send a cease and desist letter?
2 A. Yes, we must have discussed it.
3 Q. Not until sometime immediately before June 25, it's
4 your testimony that she did learn that Darrell Rubens was
5 the person that the letter should be sent to?
6 A. Yes, because I see here I say in my letter we sent a
7 letter concerning legal action to the domain name owner.
8 Q. Did you send one?
9 A. I said in my letter to her that I thought it would be
10 justified to send a letter threatening legal action to the
11 domain name owner.
12 Q. That was March 17 of 2000?
13 A. And, at that time, we weren't certain who it was
14 because we just weren't.
15 Q. At that time you had no idea -- withdrawn.
16 At that time that domain name wasn't even linked
17 to any web site, true?
18 A. My recollection is vague on that. She was the one
19 that was checking up on it, and there was a domain name.
20 Whether it was linked to a workable web site or one that's
21 said under construction, I don't remember.
22 Q. So all you knew, as of March, you didn't know
23 anything about Darrell Rubens at that time, correct?
25 Q. And you did not know that hamptonlocations.com, at

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1 that time, it did not take you to a web site for a home
2 that was owned by the Rubens, true?
3 A. Yes, true.
4 Q. All you knew, at that time, was someone named DSNY
5 had registered for that domain name?
7 Q. And based upon that, she asked you to send a cease
8 and desist letter to the owner of that?
9 A. Later in time after my letter to her of March 17, and
10 it would have been -- at that time it would have been
11 closer to the date that I sent the letter on June 25.
12 Q. So by June 25, it's your testimony that Ms. Grigor
13 had learned that Darrell Rubens was somehow involved with
14 the purchase of this domain name?
15 A. Yes.
16 Q. Did she tell you that she received an e-mail from him
17 on April 18, I believe?
18 A. Oh, yes.
19 Q. And his name was on that e-mail?
20 A. Yes.
21 Q. Now, certainly by April 18, then, she was aware that
22 Darrell Rubens was somehow related to that domain name,
23 true?
25 THE COURT: Overruled. I'll permit it.

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434
1 If you can't answer it as it's phrased, just
2 indicate that you can't answer it.
3 THE WITNESS: I can't answer that question.
4 MR. RONEMUS: Your Honor, may I refer to the
5 e-mail?
6 THE COURT: Yes.
7 BY MR. RONEMUS:
8 Q. This e-mail is in evidence as Plaintiff's Exhibit 20.
9 Did she tell you she received this e-mail from
10 Darrell Rubens on April 18, 2000?
12 THE COURT: Overruled.
13 A. I don't think I got that to attach to my letter until
14 about the time I sent it, because what she told me was
15 that she hadn't had time to go through her e-mails and
16 that was the reason why she hadn't advised me about it
17 beforehand.
18 Q. Did you learn that she had, in fact, opened this
19 e-mail from Darrell Rubens on April 21st of 2000?
20 A. No.
21 Q. Did you see down at the bottom of the e-mail that it
22 was opened on April 21st of 2000?
23 A. No.
24 Q. Do you see that there now?
25 A. Yes.
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1 what he stated in paragraph No. 4 there?
2 THE COURT: Why is it germane what knowledge he
3 has now?
4 Why wouldn't it be what knowledge he had as of
5 the time he wrote the letter?
6 MR. RONEMUS: I'll withdraw that.
7 BY MR. RONEMUS:
8 Q. No. 5, hamptonlocations.com was designed to make
9 scouting agencies aware of its availability, uniqueness
10 and location in the Hamptons, and hopes of scouting
11 agencies listing our house in their database with current
12 photos and information.
13 Did you understand at that time he was offering
14 when he says our house, to scouting agencies, a house to
15 scouting agencies?
16 A. I understand that.
17 Yes.
18 Q. Okay.
19 No. 6, since hamptonlocations.com does not scout
20 for locations, it does not offer the same services as your
21 client.
22 Did you have any evidence at that time other
23 than the e-mail that he wrote on April 18th that Darrell
24 Rubens was involved in scouting for locations?

TRIAL TRANSCRIPT GRIGOR
(Page #327-331, 503,504)
A-276
A-276
327
1 So it's called, yeah -- it's a working form.
2 It's like just where I jot down everything, but I thought
3 you were talking about this.
4 Q. May I see this?
5 A. Sure.
6 Q. So this manila folder, which is Exhibit 182, is that
7 a card folder file that pertained to the Rubens' house?
8 A. Well, I don't call it that.
9 I just call it the -- it's like a notepad card
10 folder, but it's just what I do.
11 I take an envelope like this and I pull it out
12 to take my notes.
13 Q. So other than the photographs, these are the notes --
14 A. I guess you want to call it a card folder, you can
15 call it that.
16 Q. That's what you called it?
17 A. Yes, well --
18 Q. Other than the photographs, is this the only document
19 you had pertaining to the Rubens' house?
20 A. Yes -- other than the address -- my address book with
21 their phone number in it.
22 That's all I had pertaining to them.
23 Q. Now, in your affidavit, you stated that you created
24 this document, which is attached as an exhibit,
25 immediately following the meeting.

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328
1 Do you recall saying that in your affidavit?
2 A. Could I see what I said?
3 Q. Sure.
4 A. Where?
5 Q. Here.
6 A. Okay.
7 This is the folder for the shoot. These are
8 cards, what I use for the shoot, the card folder.
9 Q. Did you see in the affidavit where you swore that you
10 created that card folder file immediately after your
11 visit --
12 A. I'm sorry.
13 You know, I --
14 THE COURT: You have to let him finish the
15 question.
16 THE WITNESS: I'm sorry.
17 THE COURT: Just relax.
18 THE WITNESS: I'm sorry.
19 BY MR. RONEMUS:
20 Q. Do you see in your affidavit where you swore that you
21 created this card folder file, which is attached as an
22 exhibit, immediately following your visit to the Rubens'
23 house, which you testified was in July of 1999?
24 A. Well --
25 Q. Do you see where you signed that?

A-278
329
1 A. I did.
2 But I'm just telling you, first of all --
3 THE COURT: You can't do this. This is
4 cross-examination. He's just asking you do you see where
5 it appears.
6 THE WITNESS: I see where I did say that.
7 Yes.
8 THE COURT: The answer's yes?
9 THE WITNESS: Yes.
10 BY MR. RONEMUS:
11 Q. So you swore in the affidavit that you created
12 this --
13 A. No. No. I'm sorry.
14 I did not create this document. I created this.
15 This is what I created when I left the Rubens' house, the
16 portfolio.
17 When I say card folder, basically I put it in my
18 book, and I put it on a list of my locations. It's like
19 a, you know, this is when I take the booking. This is
20 when I take the booking down.
21 This is --
22 Q. Do you see that document, the manila document
23 attached as Exhibit 3 to your affidavit?
24 A. Yes.
25 I didn't make that --

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330
1 Q. Please. Please. Please. Let me ask you a question.
2 A. All right.
3 Q. Is that your signature, sworn in front of a notary,
4 Patricia Weiss, on February 9, 2005?
5 Is that your signature?
6 A. Excuse me.
7 You are really confusing me, because, first of
8 all --
9 THE COURT: Answer the question.
10 A. That's a signature, but there's a mistake here
11 because that was a booking. This is a booking.
12 THE COURT: We can spend forever doing this, but
13 it doesn't help anybody.
14 I don't have the document in front of me.
16 THE COURT: As I understand it, he's asking if
17 that's your signature which, apparently, was notarized or
18 witnessed by your attorney. That's all he's asking.
19 He's not asking whether there is some error in
20 the document.
21 BY MR. RONEMUS:
22 Q. Is that your signature sworn in front of a notary?
23 A. Yes.
24 Q. And in this affidavit, did you swear that Exhibit 3
25 is a document you prepared immediately after visiting the

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1 Rubens' house?
2 Yes or no?
3 MS. WEISS: Excuse me, your Honor.
4 May I look at what he's showing the witness? I
5 don't have a copy here.
6 THE COURT: Sure.
7 MR. RONEMUS: Yes.
8 THE COURT: You can look.
9 MS. WEISS: And I'm not so sure that's what
10 Exhibit 3 actually refers to.
11 A. Actually --
12 MR. RONEMUS: Judge, can you instruct her not to
13 answer until we have a question.
14 THE COURT: It's late in the day, I know, and we
15 are going to recess shortly.
16 We are trying to make a record of what everybody
17 says. When you have two people speaking at once, it's
18 almost impossible, when you have three, it is impossible.
19 Everybody should just remember that, and calm
20 down.
21 THE WITNESS: Yes, sir.
22 (Whereupon, there was a pause in the
23 proceedings.)
24 MS. WEISS: I'd like to note that he's showing
25 his client's --
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503
2 Q. Do you keep any record of the people you send books
3 to?
4 A. No.
5 I just have certain jobs when I write it down,
6 but I don't remember. I get calls a lot of times.
7 Sometimes they don't book with me so I discard the
8 envelope.
9 Q. So you can't tell us whether you ever sent the book
10 of their home to any other potential clients before this
11 company that did the shooting in June of 2000; is that
12 right?
13 A. No, I can't.
14 That's a modern house. If a client asked for a
15 modern house, I possibly sent it, but I just can't
16 remember.
17 Q. And you have no record of whether you sent it to
18 anybody at any time between when you say you shot the
19 photographs and June of 2000 when the shooting took place;
20 is that accurate?
21 A. I can't remember.
22 Q. Other than the book of photographs which you say you
23 put together, what other type of documentation do you have
24 to reflect when you first had the Rubens' home as a home
25 that you could use for shooting?

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1 A. I don't understand.
2 Q. Do you keep any kind of a notebook or a card list or
3 anything that has the information for their home on it
4 when you first sign up a home?
5 A. Yes, I have an appointment book.
6 Q. So your appointments book tells you when you first
7 sign up a home?
8 A. No. It just has the name, address, telephone number,
9 contact information.
10 Q. But you can't look at your appointment book and
11 determine when you first got a home on your inventory; is
12 that true?
13 A. No. There's no dates on there.
14 Q. So there's nothing you have in this case other than
15 that manila folder dated May 22nd, 2000, that indicates
16 the date that you first obtained the Rubens' home as part
17 of your inventory; is that fair to say?
18 A. I'm not sure of what else I would have.
19 Q. Anything?
20 A. Other than the portfolio?
21 Q. Yeah, whatever, that manila folder dated May 22nd,
22 2000, do you have anything at all relating to the Rubens'
23 home that indicates when they first became a home that was
24 listing with you?
25 A. I don't know. I don't know. I don't know at this

(Page # 1025)
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1 Is that your understanding of what that e-mail
2 said?
3 A. Now I do.
4 At the time I saw it, it was just an E -- I'll
5 withdraw that.
6 You'd have to ask him what his intention was. I
7 can't speak for him.
8 Q. But when you first read it, did you -- what did you
9 understand it to be?
10 A. That he was trying to do business with my wife.
11 Q. And do you recall when it was you first saw that
12 e-mail?
13 A. I don't.
14 Q. Was it --
16 BY MR. RONEMUS:
17 Q. Did you see it on the computer or did you see it
18 someplace else, if you recall?
19 A. I think I saw a printout of it.
20 Q. Okay.
21 Did your wife show it to you or did you see it
22 sitting on the desk or something else?
23 A. I think she showed it to me.
24 Q. Do you know if your wife owns the domain name,
25 hamptonslocations.com?
(Page # 260,279,1098 -1104)
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260
1 THE COURT: That's sustained.
2 Ladies and gentlemen, you have heard what
3 plaintiff believes may have transpired. At some point, if
4 you find liability, then you are going to have to consider
5 damages, and when you consider damages, you are not
6 allowed to speculate.
7 In other words, there has to be some evidence
8 before you with specificity that would permit you to infer
9 that a loss was sustained and why. You can't say, in
10 effect, well, if somebody wanted to reach me and they
11 tried to get on the website and they typed in or mistyped
12 the domain name and got the Hampton Locations, you can't
13 do that.
14 Because why? You can't attach any dollar number
15 to it. You don't know if it's happened or it hasn't
16 happened. That's the idea to it.
17 So I'm going to sustain the objection to it.
18 Again, this is speculation. But I have no problem -- it
19 sounds more like lawyer argument than witness testimony,
20 who testifies as to facts. But I'm not foreclosing you
21 from revisiting the subject, but there has to be some
22 information for the jury to work with, rather than
23 potential or possibilities. That's the problem.
24 In any event, the objection's sustained. So the
25 jury will disregard the portion of the answer about if

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1 www.HamptonLocations, it's a plural name, Locations.com.
2 They are misleading and confusing people and it
3 looks too much -- it's too similar to my name, and if
4 somebody mistypes it and they get their website, if it's a
5 client that's looking for me and they get them, I lose
6 them.
7 If it's a client looking for a big white house
8 and they type in -- they are looking for me and my
9 company, and they type in and mistype, and they get him,
10 and they are looking for a big white house, they are going
11 to book this big white house. So they are going to get
12 him.
13 And, of course, I mentioned earlier about my
14 legal fees and the commission and my expenses. So this
15 has been a long process.
16 Q. Okay.
17 A. But the commissions are really important, and if he's
18 getting all of the people coming to his website, you know,
19 I lose those people plus the future business with those
20 people, and they go directly to him.
21 Q. Okay.
22 That's speculative. Would you agree?
23 THE COURT: You don't have to answer that.
24 That's argumentative. That's more of a matter
25 of law.
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THE COURT
1098
1 before, the issue I'm talking about, which is whether
2 plaintiff has proven any actual damages.
3 The plaintiff has not proven damages in the
4 sense of business lost, nor has plaintiff established
5 profits gained by the defendants as a result of the
6 alleged infringing conduct. Under the circumstances,
7 there's not a sufficient factual predicate for a jury to
8 award actual damages.
9 Therefore, in the charge what I have said is,
10 with respect to the 1125(a) claim, that the jury is not
11 being asked to award damages or the profits, possibly,
12 earned by the defendant because we have no idea what they
13 are.
14 I do tell them that if the plaintiffs have
15 established each and every element of the 1125 claim, that
16 they may award nominal damages. Nominal damages are
17 typically in the amount of $1.
18 Under the Lanham Act, there are no punitive
19 damages allowed. So that's true for the 1125(a) and the
20 1125(d) claims. Under the 1125(d) section, as I indicated
21 earlier, making reference to page 46 of the proposed
22 charge, the plaintiffs have an option. They can seek
23 statutory damages.
24 We had discussed this the other day, to some
25 extent, and I'll place some cases on the record later. I

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THE COURT AT SIDE BAR

1100
1 amended.
2 So, therefore, since plaintiff has demanded a
3 jury trial, this is an issue that goes to the jury even
4 though, as I indicated earlier, a reading of the statute
5 suggests this would be a matter addressed to the court,
6 not to the jury.
7 MS. WEISS: Your Honor, may I ask a question?
8 THE COURT: Let me mention one other thing.
9 Also in the charge, as I'm talking about
10 1125(d), and 1117(d), I think I may have to check the
11 charge because I think in one section I refer to the
12 option, and I refer to 1125(d) as providing the option.
13 That's actually wrong. It's 1117(d) that provides the
14 option.
15 Let me see what else I want to go over. On the
16 question of good will, plaintiffs' position is that there
17 is evidence that raises a factual issue concerning good
18 will, more particularly, diminution in the good will
19 concerning plaintiff's business caused by the activities
20 of the defendants should be placed before the jury as an
21 item of damages.
22 As I recall the evidence, what we have on the
23 issue of good will is essentially that the individual
24 plaintiff's niece endeavored to show the Web site for
25 plaintiff's business to some friends, and was unable to do

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1 so. And the reason she was unable to do so was because
2 she apparently dropped the S in typing in the Web name of
3 Hamptons Locations. When she inserted the name
4 Hampton Locations she basically, as a result of a link,
5 ended up at the DQNY Web site and saw a picture of a big
6 white house.
7 And also, the niece indicated that she saw the
8 screen at one time indicating that the Web site was under
9 construction. And individual plaintiff also testified
10 concerning the subject, and she said that a number of
11 individuals had spoken to her and said that they had
12 similar problems with respect to the Web site.
13 A few observations, though.
14 Firstly, it is my recollection, and I will
15 listen to counsel if I'm incorrect, I don't believe there
16 is any indication that any customers or individuals who
17 could be legitimately considered as potential customers
18 were deceived, or confused is probably a better word, and
19 that that has some impact on the reputation of the
20 business.
21 This, again, is a situation where there is a
22 lack of sufficient specificity to permit the jury to make
23 a reasonable estimate as to the amount of damage. If, in
24 fact, this factual predicate would be sufficient to permit
25 an award for diminution in good will, it would,

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1 sure it's that helpful, but, in any event, it's in 104
2 New York Juror 2d., Trade Regulations Section 284.
3 But the point is, if you think about it, what
4 would the jury do? How would the jury come up with a
5 number? How would they decide what would be the
6 appropriate figure to attach to the diminution to good
7 will. Having said that, I recognize that damages
8 typically are estimated. I recognize, which is saying the
9 same thing in two ways, obviously damages do not have to
10 be determined with mathematical precision, or anything
11 close to mathematical precision.
12 It is also true, to the extent the lack of
13 specificity is attributable to the acts of the defendant,
14 that the courts have to take a fairly liberal approach to
15 this. However, we all know that damages cannot be based
16 on pure speculation.
17 I know that if I were the trier of fact, and
18 that's not necessarily the appropriate standard, I
19 wouldn't know what number to attach. And I severely doubt
20 whether any of the attorneys in the room, free of their
21 advocacy position, could articulate what number should be
22 attached to the supposed diminution of good will. So
23 that's why that hasn't been included.
24 I wanted to go over this at this point because,
25 otherwise, when you read the charge, if I hadn't made

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1 essentially, open the floodgates. More specificity is
2 clearly required.
3 There are just a few items I will place on the
4 record in this regard, but what I said essentially
5 completes my thoughts on that regard, but this question of
6 what you have to prove to create a triable issue of fact
7 concerning good will is at least alluded to, and this
8 would be a CF cite, in a New York case. It's a New York
9 State Court of Appeals case, which case is cited in a
10 Second Circuit case.
11 But, in any event, the case is Electrolux
12 Corporation v Val-Worth Inc., 6 New York 2d., 556, and the
13 relevant language appears on page 990 of that decision.
14 The relevant language from the decision reads, in part,
15 quotes, the damage in the instant case is chiefly to good
16 will and reputation of the plaintiff corporation. Thus,
17 it would seem that the measure of damages would be any
18 loss in business which can be traced directly to
19 respondent's disparagement of the rebuilt Electrolux.
20 This will no doubt be difficult to prove due to
21 the widespread and shifting nature of the injury which is,
22 of course, one of the items dictating injunctive relief,
23 but if the plaintiff is able to prove such damages, it
24 should be given an opportunity to do so. Also, this is an
25 excerpt from New York Juror, I mention this, I'm not so

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1
1104
1 these rulings, you wouldn't know why it's constructed as
2 it is. The point is, I think this will help you, rather
3 than hurt you.
4 You wanted to say something?
5 MS. WEISS: When you said that hasn't been
6 included, does that mean you haven't instructed the jury
7 about good will as a loss?
8 THE COURT: I have instructed them. I said that
9 that issue isn't even before them.
10 I'm saying as a matter of law, this jury cannot
11 determine what amount should be awarded for the loss of
12 good will. It hasn't even been shown there is a loss of
13 good will. In other words, it would be unfair. It would
14 be unfair and a violation of my obligation to
15 appropriately charge a jury to ask them to attach a
16 number.
17 I dare say, you couldn't attach a number, as I
18 said, free of your role as an advocate, because there's no
19 evidence to do it. Basically when all the dust settles,
20 if plaintiff can prove that the cyber squatting statute,
21 and I don't know what election you are going to make, but
22 as I understand it, there is one domain name at issue.
23 MS. WEISS: Yes.
24 THE COURT: And then the jury would be permitted
25 to award anything from $1,000 to $100,000.

(Page # 280, 283-300)
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1 BY MR. RONEMUS:
2 Q. Do you have any proof, ma'am, of $1 that Richard or
3 Darrell Rubens made as a result of anybody who you claim
4 found their interior design website by mistake when they
5 were trying to find Hamptons Locations.com?
6 A. They have had shoots at their house, many shoots. I
7 have seen the shoots at their house during this whole
8 lawsuit.
9 I don't know if they came from my clients or
10 they were people that were misled there, but they have had
11 a lot of shoots at their house.
12 Q. Are you claiming that they are not allowed to have
13 shoots at their house?
14 A. They can have them, but I don't know if they came
15 through my website.
16 I don't know how many people mistyped it.
17 Q. Are you aware -- I'll ask you again -- are you aware
18 of one person who, as a result of apparently mistyping
19 your website, looking for you, landed on their interior
20 design website and, as a result of that, did a shooting
21 which you claim should have resulted in financial income
22 to you, but did not?
23 Just yes or no, are you aware of one person?
24 A. No.
25 Q. Are you aware that to prevail in the case, you have

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1 production page, it's very confusing. It's very
2 misleading that they are having that name. It's too close
3 to my name.
4 Q. So the fact that you were confused is a loss that you
5 feel should be compensated for?
6 Just yes or no?
7 A. Yes.
8 Q. And how much do you feel you should be compensated
9 for your confusion in this case?
10 A. Well, I initially said earlier that, you know,
11 between me, I mean, I'm being honest, this has been six
12 years. He sued me in all these courts.
13 I had to pay for lawyer fees --
14 Q. Ma'am --
15 MR. RONEMUS: Your Honor, can she please respond
16 to the question?
17 THE COURT: I think she is endeavoring to.
18 MR. RONEMUS: I think she is going off into
19 things that are not compensable in this case.
20 MS. WEISS: Subject to my proving, my other
21 evidence that they are compensable.
22 So I think the question --
23 THE COURT: That's fine. I won't comment on
24 that.
25 But I can tell you time spent on court while a

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1 case is going on is not compensable. I could be wrong,
2 but I have been doing this for 25 years, and, again,
3 repetition of an error doesn't make it a nonerror. I
4 understand that.
5 But I never heard anybody claim time spent in
6 court, time spent preparing for court, and so forth,
7 should be subject to compensation. I can understand how a
8 plaintiff would feel that way, but by law, lawyers really
9 don't address that type of situation, and, as you know,
10 there are a number of things the law can do in cases of in
11 sort.
12 Like, for instance, they can issue injunctions
13 and they can say you can't do that anymore, that type of
14 thing. But that's not what we are talking about for
15 reasons that I think are evident based on what's already
16 before the jury.
17 I don't pretend to have all the answers, but as
18 I said to the jury earlier, there has to be some
19 specificity, and the fact that people may have mistyped
20 the website name and ended up on another site, that's --
21 and I can understand to a plaintiff, that's very
22 troubling, and it's troubling for a number of reasons.
23 That doesn't mean that somehow a jury can attach
24 a dollar value to that. Think about that. How are you
25 going to do that? It's a tough task. In my judgment,

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1 it's impossible. You do need some evidence of specifics,
2 jobs that you should have gotten that were lost, that type
3 of thing.
4 But, in any event, I think what we ought to do
5 is just go back to the questioning of the witness. Don't
6 ask her to juxtaposition her answer against the legal
7 standard. That's not appropriate. Just ask her your
8 questions and she'll answer them as best she can and we
9 will leave it at that.
10 Go ahead.
11 MR. RONEMUS: Okay.
12 BY MR. RONEMUS:
13 Q. Just the fact that you are confused, or you have been
14 confused because you went on, perhaps, and you typed the
15 wrong name, you went on their interior design website, how
16 much do you feel the jury should compensate you for your
17 own confusion?
18 A. Well, it's not just that.
19 Q. I'm just talking about that.
20 A. Well, the way you are saying it, you are saying that
21 I'm the only one.
22 But there are other people out there that
23 mistype. And I don't know how many people out there
24 mistyped. I don't know how many people got to their site.
25 Q. When you say you don't know how many, it could be

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1 zero, true?
2 A. I --
3 Q. True?
4 A. I doubt it.
5 Q. Why do you doubt that?
6 A. Because I know people.
7 Especially people that are looking for a white
8 modern house. They are going to go and see this house and
9 book it directly.
10 Q. But isn't it true that you can't tell us the name of
11 one person who told you that they booked a white modern
12 house because they got on the Rubens' website by mistake
13 when they were looking for yours?
14 True?
15 A. True.
16 Q. In fact, isn't it true, ma'am, that you don't know if
17 you have lost any business, whatsoever, as a result of the
18 fact that Darrell Rubens, along with friends, purchased a
19 domain name HamptonLocations.com in 1999?
20 MS. WEISS: Objection, your Honor.
21 It hasn't been established by any proof that
22 Darrell Rubens and friends purchased that website that's
23 in the name of DSNY.
24 We haven't heard from Darrell Rubens --
25 THE COURT: I'll sustain it as to form.

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1 BY MR. RONEMUS:
2 Q. It's true, Ms. Grigor, is it not, that you don't know
3 if you lost any business at all as a result of what you
4 claim the defendants have done wrong in this case?
5 True?
6 A. I had phone calls from clients that got their
7 website.
8 Q. It's true, is it not, that you do not know, cannot
9 prove in this court, that you have lost $1 of business as
10 a result of what you claim the defendants did improper in
11 this case?
12 A. I don't know how much money and how much business I
13 lost.
14 Q. So if you don't know, then you can't prove it?
15 A. How can I find out how many people called him? He's
16 not going to tell me.
17 Q. You are the one that sued him?
18 A. Well --
19 THE COURT: This is getting very argumentative,
20 the last question and answer.
21 Q. Let me ask you this.
22 THE COURT: They will be set aside.
23 BY MR. RONEMUS:
24 Q. Do you remember your deposition where you were asked
25 questions back in July of 2004?

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1 A. Some of it.
2 Q. Do you recall being present with your attorney,
3 Ms. Weiss, and you were questioned by an attorney named
4 Sam Israel on behalf of the Rubens?
5 A. Yes.
6 Q. Do you recall being asked this question and giving
7 this answer, page 55, line 18:
8 Have you lost any business by reason of any
9 actions that have been taxicab by the defendants?
10 Answer: I don't know.
11 THE COURT: So the question is whether you were
12 asked that question and whether you gave that answer.
13 THE WITNESS: I -- maybe. I guess I did.
14 I don't remember -- I didn't read the deposition
15 again. But if it's in there.
16 BY MR. RONEMUS:
17 Q. Well, as you sit here today, can you tell us whether
18 you have lost any business by reason of any actions taken
19 by the defendants?
20 A. No -- I -- no.
21 Q. You can't tell us that you have?
22 A. I don't have -- I don't know how many people got him.
23 I don't know -- I don't have the names. When
24 people were calling me and saying they mistyped, that's
25 six years ago. I didn't write down their names.

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1 I didn't say, well, oh, what's your name, and,
2 you know, I didn't ask these people who they were. So,
3 you know, I didn't think I would be in court for this many
4 years.
5 Q. Well, you started the lawsuit about six years ago.
6 True?
7 A. Yes.
8 Q. So when these people who you tell us now called you
9 and told you they were confused, that was the time you
10 started the lawsuit.
11 Correct?
13 I don't think there has been any dates to
14 establish that.
15 MR. RONEMUS: She just said six years ago.
16 A. Well, the lawsuit was in Southampton Court.
17 Q. 2000?
18 A. Was it 2000?
19 Q. So when these people were calling you six years ago
20 and telling you that they were confused --
21 A. No. No. No.
22 Q. Let me ask the question first, and then you can
23 answer.
24 When you say, as you just told us, that people
25 called you six years ago and told you they were confused
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1 and you didn't write down their name, why didn't you do
2 that if you just started a lawsuit?
3 A. I don't understand the question.
4 Q. Is there any reason you did not write down the names
5 of people who you now tell us called you and told you that
6 they were confused?
7 A. I did not write down their names.
8 I don't know why -- I didn't write them down.
9 Well, no.
10 I'm confused on what you are saying, six years
11 ago. I'm confused on that question.
12 Q. My question confuses you?
13 A. Yes.
14 Could you say it one more time?
15 Q. Is there any reason when people called you and told
16 you they were confused six years ago, as you just
17 testified, you did not write their names down?
18 A. I did not write their names down, but now I'm trying
19 to remember if it was six years ago.
20 I don't remember the dates that these calls
21 came. They came over a period of time, and it was around
22 the time of June, like June 13th. So that was, you know,
23 six years ago, approximately, I guess.
24 Right? Of 2000, I guess.
25 Q. So why didn't you write the names down of these

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1 people who you now tell us told you they were confused?
2 A. This was before. They called me before.
3 Q. Before what?
4 A. The people that were calling me on the phone, it was
5 before I realized, and before I had the lawsuit.
6 This all happened before. I didn't sue
7 Mr. Rubens until later.
8 Q. You sued Mr. Rubens in approximately August of 2000,
9 about two months after the shooting?
10 A. Yes, that's true.
11 Q. Okay.
12 A. And the calls came before that because I was getting
13 some phone calls before.
14 Q. Okay.
15 A. And I was just getting the calls. I didn't write
16 anything down.
17 I didn't have a lawsuit.
18 Q. Well, when you started the lawsuit in Southampton
19 Justice Court, your husband was your lawyer.
20 Right?
21 A. Yes.
22 Q. And did you tell him that people had called you and
23 told you they were confused?
24 A. Yes.
25 Q. And did he suggest to you that maybe you should get

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1 the names of the people that told you this?
2 A. He didn't start the lawsuit until later.
3 This happened much later.
4 Q. I believe you said he started the lawsuit in August
5 of 2000.
6 A. I -- we started the lawsuit after the phone call,
7 after the phone conversation with Mr. Rubens.
8 Q. That was June of 2000.
9 You can look at your document, if it helps you
10 remember.
11 A. Well, the lawsuit with the Southampton lawsuit?
12 I don't remember when that actually took place.
13 Is it here? Here it is. July 27, 2000, it took place.
14 Q. That's the day you started the lawsuit in
15 Southampton?
16 A. The lawsuit was started.
17 Yes.
18 THE COURT: Let me just take judicial notice of
19 this.
20 I'm looking at the original complaint in this
21 court, not Southampton. There has been a reference to
22 this court, I believe. The case here was brought August
23 14, 2001.
24 The way I know that is, as you know, when it's
25 filed, it's stamped.

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1 MR. RONEMUS: Right.
2 BY MR. RONEMUS:
3 Q. So the case in the Justice Court was started about a
4 year before the case in Federal Court.
5 Correct?
6 A. It was started on July 27, 2000.
7 Q. And when you started this lawsuit, you spoke to your
8 husband, who was your lawyer, true?
9 A. Yes.
10 Q. And you told your husband that you had been getting
11 phone calls from people who told you they were confused
12 about this alleged -- about the two different domain
13 names.
14 Correct?
15 A. I believe so.
16 Q. And is there --
18 BY MR. RONEMUS:
19 Q. Did your husband tell you that you should write these
20 people's names down and call them as witnesses to prove
21 that there were, in fact, people who were confused?
23 THE COURT: On what ground?
24 MS. WEISS: Attorney-client privilege, what he
25 told her or what she told him.

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1 THE COURT: I'll sustain it.
2 BY MR. RONEMUS:
3 Q. Did you have discussions with your attorney about
4 whether or not you should -- don't tell us what you said,
5 about whether or not you should write down the names of
6 the people who you now tell us told you they were
7 confused.
8 Did you have discussions?
9 A. We talked about me finding the website. We talked
10 about the conversation with Mr. Rubens, and they weren't
11 going to give back the name.
12 I don't really recall talking too much about the
13 phone calls, actually.
14 Q. So you don't recall whether or not you spoke to your
15 husband/lawyer about the fact that as you now claim people
16 called you and say they were confused.
17 Correct?
18 A. I might have said it, but I don't remember, exactly.
19 I don't remember when.
20 I thought I said it, but I'm not sure.
21 Q. You are not aware of --
23 BY MR. RONEMUS:
24 Q. There is nothing that you know of that the defendants
25 have done in this case that hurt your reputation in the

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1 business community.
2 True?
3 A. Well, I'm feeling that if somebody got his site and
4 they got -- went to his house, you know, I just feel that
5 my reputation, he might have said something about me or
6 done something to my clients.
7 Q. Now, when you say he might have said something about
8 you --
9 A. Well --
10 Q. Let me just finish, and then you can answer.
11 So it true that you are not aware of one person
12 who has told you that your reputation in the business
13 community has suffered as the result of anything that the
14 defendants did in this case?
15 Just yes or no?
16 A. I don't -- say it one more time.
17 Q. Has anybody ever told you that as a result of
18 something that the defendants did in this case, your
19 business reputation has suffered?
20 A. My business reputation -- you mean one person just
21 saying, oh, he's like -- I don't understand, exactly.
22 Q. You don't understand what I'm asking you?
23 A. Say it again.
24 Q. Has anybody ever told you that as the result of
25 something that Darrell or Richard Rubens did in this case

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1 caused your business reputation to suffer?
2 A. I can't recall if anybody said that right now.
3 Q. Now, in fact, when you were testifying about your
4 business, it sounds like you are doing pretty well.
5 I think you said you have 500 houses right now?
6 A. Approximately.
7 Q. And you have expanded from New York, down to Florida,
8 to the Poconos.
9 Anyplace else that you are covering right now?
10 A. The north fork.
11 Q. Back at the time of '99 and 2000, your business was
12 all located in the Hamptons region.
13 True?
14 A. '99 and 2000, mostly Hamptons, yes.
15 Q. So, in fact, you weren't doing any out-of-state
16 business at that time.
17 It was all within New York State?
18 A. Yes.
19 Q. And as far as you know, the Rubens did not conduct
20 any business outside of New York State under the domain
21 name Hampton Locations.com.
22 True?
23 A. Well, the domain name is on the internet.
24 It goes everywhere, right?
25 Q. My question is: Are you aware of any business that

A-307
297
1 they conducted using that domain name outside of New York
2 State?
3 A. You mean, like, other than the Design Quest business?
4 Q. Well, the website took -- during that two-month
5 period, the website took people to the Design Quest site.
6 Right?
7 A. Yes.
8 Q. Are you aware of any business that they performed
9 from using that domain name which you claim they should
10 not have been using during that two-month time period
11 outside of New York State?
12 A. I am not sure.
13 I don't know what jobs they had.
14 Q. Okay. That's your answer.
15 Is it your testimony today that Barbara and
16 Richard Rubens or Darrell Rubens ever acted as location
17 scouts?
18 A. Yes.
19 Q. And what is that based on?
20 A. Based on, you know, the website is plural. They have
21 locations in their website. They had the word Hamptons
22 Locations.
23 And I feel that the fact that they are
24 advertising in the production book, it's misleading that
25 they are doing production and locations, and when you get
A-308
298
1 to their website, you see locations. You see a sign
2 saying Hamptons Locations. So it's misleading and it's
3 confusing.
4 Q. Is your testimony they are not allowed to use
5 Hamptons Locations on their website?
6 A. Yes, they cannot use that.
7 Yes.
8 Q. Why not?
9 A. Well, I mean, they could use it if they are a
10 company, and they are, like, designating a division.
11 But they are using my name on the internet.
12 They are putting www.HamptonLocations.com, and my website
13 is www.HamptonsLocations.com.
14 And I'm saying that it's too confusing and it's
15 very misleading and it's way too close, and they shouldn't
16 be using it.
17 Q. So it's your testimony that that name, Hampton
18 Locations, is your name, when they --
19 A. Well, I --
20 Q. Let me finish it.
21 When they bought it, it's your testimony that
22 that's your name.
23 True?
24 A. Yes.
25 Q. And the DSNY had no right to own that domain name

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1 when it was purchased in 1999.
2 Is that your testimony?
3 A. Correct.
4 They shouldn't have bought -- if they knew I had
5 Hamptons Locations, why would they go and do that? They
6 wanted to have people diverted to their website.
7 They were being sneaky and trying to get people
8 into their website.
9 Q. So that's your understanding of why that domain name
10 was purchased in 1999.
11 True, as they were being sneaky and trying to
12 divert people into the interior design website for Design
13 Quest?
14 A. Well, I --
15 Q. Is that your testimony?
16 A. Yes.
17 Q. And what proof do you have of that, other than your
18 own thoughts about that?
19 A. What, that they were being sneaky?
20 Q. Yes.
21 A. Well, Mr. Rubens wants to be listed with all of the
22 multiple agents out there.
23 Q. When you say Mr. Rubens, you are talking about
24 Richard Rubens?
25 A. Richard Rubens, his house --

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300
1 Q. And when you say he wants to be listed --
2 A. Well, he's listed --
3 Q. Let me just finish, please.
4 A. Okay.
5 Q. He can't get everything down and I ask you to let me
6 finish the question and I'll let you answer, as long as
7 you are answering my question. Is that fair enough?
8 You understand? Just say yes or no?
9 A. Yes.
10 Q. Okay.
11 It's your testimony that Richard Rubens wants to
12 be with all the location companies out there.
13 Is that what you are telling us?
14 A. He wants to be listed -- he is listed with a
15 multiple -- he's on a multiple listing.
16 Q. Is there something wrong with that?
17 A. No, nothing.
18 Q. Is there something about that that bothers you?
19 A. No.
20 Q. Is that, in your mind, being sneaky -- let me finish
21 -- is that in your mind being sneaky that Mr. Rubens is
22 listed with another location company?
23 A. No, it's being sneaky using my name and going to his
24 site. If he wants to go to Jenny Landey, go to Jenny
25 Landey Production and take away from her business.

(Page # 493)
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rigor - Cross/Mr. Ronemus
493
1 He's my corporate attorney.
2 Q. And as your corporate attorney, did you authorize him
3 to start a lawsuit in the Southampton Justice Court in
4 July of 2000?
5 A. Yes.
6 Q. Now, your husband has not -- has your husband
7 represented you in this case, the federal case?
8 Or has Ms. Weiss been your attorney the entire
9 time?
10 A. Ms. Weiss is my attorney.
11 But my husband has been, you know, helping out
12 and assisting.
13 Q. So your husband has acted as your attorney in this
14 case as well?
15 A. I would say so, yes.
16 He's my corporate attorney. He's been, you
17 know, talking to me and helping me.
18 Q. Now, are you aware that your husband submitted a bill
19 for the Southampton Justice Court in the amount of
20 $37,000?
21 A. Yes.
22 Q. Did you pay him that amount for the representation in
23 that case?
25

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07-0486

FOR THE SECOND CIRCUIT

HAMPTONS LOCATIONS, INC., and

RICHARD RUBENS, BARBARA RUBENS, and

ON APPEAL FROM THE UNITED STATES DISTRICT COURT

RONEMUS & VILLENSKY

Attorneys for Defendant-Appellant

DOCKET ENTRIES …………………………………………………………………….......A - 1

COMPLAINT ……………………………………………………………………….............A -26

ANSWER & COUNTERCLAIMS………………………………………………………….A -39

DECISION OF JUDGE HURLEY ON DISMISSAL OF DEFENDANTS’

DECISION OF JUDGE HURLEY ON DEFENDANT’S MOTION FOR

DECISION OF JUDGE HURLEY ON PLAINTIFF’S MOTION FOR

DOCKET ENTRY 132

DOCKET ENTRY 174

DOCKET ENTRY 179

DOCKET ENTRY 187

JURY CHARGE …………………………………………………………………………….A-137

VERDICT SHEET …………………………………………………………………………..A-167

ENTRY OF JUDGMENT …………………………………………………………………..A-171

TRIAL TRANSCRIPT OF DARRELL RUBENS

TRIAL TRANSCRIPT OF DARRELL RUBENS

TRIAL TRANSCRIPT OF NANCY GRIGOR

TRIAL TRANSCRIPT OF RICHARD RUBENS

TRIAL TRANSCRIPT OF DARRELL RUBENS

TRIAL TRANSCRIPT OF DARRELL RUBENS

TRIAL TRANSCRIPT OF ROBERT ROOMIAN

TRIAL TRANSCRIPT OF DARRELL RUBENS

TRIAL TRANSCRIPT OF RICHARD RUBENS

TRIAL TRANSCRIPT OF MICHAEL GRIFFITH

TRIAL TRANSCRIPT OF RICHARD RUBENS

TRIAL TRANSCRIPT OF RICHARD RUBENS

TRIAL TRANSCRIPT OF JUDGE HURLEY

TRIAL TRANSCRIPT OF NANCY GRIGOR

TRIAL TRANSCRIPT OF JUDGE HURLEY

TRIAL TRANSCRIPT OF NANCY GRIGOR

TRIAL TRANSCRIPT OF ROBERT ROOMIAN

TRIAL TRANSCRIPT OF NANCY GRIGOR

TRIAL TRANSCRIPT MICHAEL GRIFFITH

TRIAL TRANSCRIPT OF MICHAEL GRIFFITH

TRIAL TRANSCRIPT OF ROBERT ROOMAIN AND NANCY GRIGOR

TRIAL TRANSCRIPT GRIGOR

TRIAL TRANSCRIPT OF MICHAEL GRIFFITH

TRIAL TRANSCRIPT OF JUDGE HURLEY

TRIAL TRANSCRIPT OF NANCY GRIGOR

TRIAL TRANSCRIPT OF MICHAEL GRIFFITH

Hamptons Locations, et al v. Rubens, et al Date Filed: 08/14/2001

Date Filed # Docket Text

(Fagan, Linda). (Entered: 12/21/2006)

(Fagan, Linda) (Entered: 06/29/2004)

judgment on or before 6/3/03. Defts shall respond on or before 6/17/03. If the

be disbarred. (Mierzewski, Liz) (Entered: 06/04/2002)

UNITED STATES DISTRICT COURT

RICHARD RUBENS, BARBARA RUBENS, and

PATRICIA WEISS, ESQ.

MICHAEL B. RONEMUS, ESQ.

HURLEY, District Judge:

Plaintiffs Hamptons Locations, Inc. and Nancy Grigor (“Grigor”) (collectively,

Rubens (“Barbara”), and Darrell Rubens (“Darrell”) (collectively, “Defendants”) claiming

that follow, Defendants’ motion is granted in part and denied in part.

and the domain name “www.hamptonslocations.com.”

television commercials, videos, and corporate meetings. Essentially, Hamptons Locations is a

mark protection for “SCOUTING FOR LOCATIONS FOR TELEVISION COMMERCIALS,

CATALOGUES, AND CORPORATE MEETINGS; PRODUCTION OF TELEVISION