Sandawana Holdings, Ltd. v. Henry Dunay (2d Cir. Appeal, Initial Documents)

Case: 12-84 Document: 12-1 Page: 1 01/21/2012 503910 2 UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT
CIVIL APPEAL PRE-ARGUMENT STATEMENT (FORM C)

1. SEE NOTICE ON REVERSE. Case Caption: 2. PLEASE TYPE OR PRINT. District Court or Agency: 3. STAPLE ALL ADDITIONAL PAGES Judge:
SANDAWANA HOLDINGS, LTD.,! ! Plaintiff-Appellee,! ! v.! ! HENRY DUNAY,! Defendant-Appellant.! !
U.S. Dist. Ct. S.D.N.Y.

Date the Order or Judgment Appealed from was Entered on the Docket:
Alvin K. Hellerstein
District Court Docket No.:
December 14, 2011

Date the Notice of Appeal was Filed:
11 Civ. 2712 (AKH)

Is this a Cross Appeal? 9 Yes Fax No.:
January 9, 2012
Attorney(s) for Appellant(s): 9 Plaintiff 9 Defendant Counsels Name: Address: Telephone No.:
No 9
E-mail:
Charles Colman, Charles Colman Law, PLLC! ! 1776 Broadway, FL 21, New York, NY 10019-2002! ! Phone: 917-515-5875 / Fax: 917-534-6294 / E-mail: cc@charlescolmanlaw.com
Attorney(s) for Appellee(s): 9 Plaintiff 9 Defendant
Counsels Name:
Address:
Telephone No.:
Fax No.:
E-mail:
Peter L. Berger, Levisohn Berger LLP! ! 11 Broadway, Suite 615, New York, NY 10004! ! Phone: 212-486-7272 / Fax: 212-486-0323 / E-mail: pberger@llbl.com
Has Transcript Been Prepared?
Electronic! ! TBD Index! ! Transmitted! ! Via ECF ; Add. A

has 11/14/11 transcript
Approx. Number of Transcript Pages:
Number of Exhibits Appended to Transcript:
Has this matter been before this Circuit previously? If Yes, provide the following: Case Name: 2d Cir. Docket No.:
9 Yes
9 No
TBD
Reporter Citation: (i.e., F.3d or Fed. App.)
ADDENDUM A: COUNSEL MUST ATTACH TO THIS FORM: (1) A BRIEF, BUT NOT PERFUNCTORY, DESCRIPTION OF THE NATURE OF THE ACTION; (2) THE RESULT BELOW; (3) A COPY OF THE NOTICE OF APPEAL AND A CURRENT COPY OF THE LOWER COURT DOCKET SHEET; AND (4) A COPY OF ALL RELEVANT OPINIONS/ORDERS FORMING THE BASIS FOR THIS APPEAL, INCLUDING TRANSCRIPTS OF ORDERS ISSUED FROM THE BENCH OR IN CHAMBERS. ADDENDUM B: COUNSEL MUST ATTACH TO THIS FORM A LIST OF THE ISSUES PROPOSED TO BE RAISED ON APPEAL, AS WELL AS THE APPLICABLE APPELLATE STANDARD OF REVIEW FOR EACH PROPOSED ISSUE. PART A: JURISDICTION 1. Federal Jurisdiction 9 9 U.S. a party Federal question (U.S. not a party) 9 Diversity 9 Other (specify): 9 9 Final Decision Interlocutory Decision Appealable As of Right 2. Appellate Jurisdiction 9 9 Order Certified by District Judge (i.e., Fed. R. Civ. P. 54(b)) Other (specify):
In dispute
IMPORTANT. COMPLETE AND SIGN REVERSE SIDE OF THIS FORM.
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Case: 12-84 B: Document: 12-1DISPOSITION Page: 2 PART DISTRICT COURT

1. Stage of Proceedings
9
01/21/2012 503910 (Check as many as apply)

3. Relief
Damages: 9
2. Type of Judgment/Order Appealed 9 Default judgment 9 Dismissal/FRCP 12(b)(1) lack of subj. matter juris. 9 Dismissal/FRCP 12(b)(6) failure to state a claim 9 Dismissal/28 U.S.C. 1915(e)(2) frivolous complaint 9 Dismissal/28 U.S.C. 1915(e)(2) other dismissal 9 9 9 9 9 9 9 9 9 Dismissal/other jurisdiction Dismissal/merit Judgment / Decision of the Court Summary judgment Declaratory judgment Jury verdict Judgment NOV Directed verdict Other (specify): All orders
9 9
Pre-trial During trial After trial
Injunctions: 9 Permanent 9
Sought: $ Granted: $ Denied: $
9 Preliminary 9 Denied
PART C: NATURE OF SUIT (Check as many as apply)

1. Federal Statutes 9 Antitrust 9 Bankruptcy 9 Banks/Banking 9 Civil Rights 9 Commerce, 9 Energy 9 Commodities Other (specify): 9 5. Other 9 9 9 9 Forfeiture/Penalty Real Property Treaty (specify): Other (specify): 9 9 9 9 9 9 9 Communications Consumer Protection Copyright 9 Patent Trademark Election Soc. Security Environmental 9 9 9 9 9 9 Freedom of Information Act Immigration Labor OSHA Securities Tax 2. Torts 9 Admiralty/ Maritime 9 Assault / Defamation 9 FELA 9 Products Liability 9 Other (Specify): 3. Contracts 9 Admiralty/ Maritime 9 Arbitration Commercial 9 9 Employment 9 Insurance 9 Negotiable Instruments 9 Other Specify 4. Prisoner Petitions 9 9 9 9 9 Civil Rights Habeas Corpus Mandamus Parole Vacate Sentence Other
Mislabeled
6. General 9 Arbitration 9 Attorney Disqualification 9 Class Action 9 Counsel Fees 9 Shareholder Derivative 9 Transfer
7. Will appeal raise constitutional issue(s)? 9 9 No Yes Will appeal raise a matter of first impression?
Yes 9
9 No
1. Is any matter relative to this appeal still pending below?
Yes, specify:
Judge retains jurisdiction
9 No
2. To your knowledge, is there any case presently pending or about to be brought before this Court or another court or administrative agency which: No (A) Arises from substantially the same case or controversy as this appeal? 9 Yes 9 (B) Involves an issue that is substantially similar or related to an issue in this appeal? 9 Yes
9
No
If yes, state whether 9 A, or 9 B, or 9 both are applicable, and provide in the spaces below the following information on the other action(s):
Case Name: Name of Appellant: Docket No. Citation: Court or Agency:
1/17/11
Date:
Signature of Counsel of Record: /s/
Charles E. Colman
NOTICE TO COUNSEL
Once you have filed your Notice of Appeal with the District Court or the Tax Court, you have only 14 days in which to complete the following important steps: 1. Complete this Civil Appeal Pre-Argument Statement (Form C); serve it upon all parties, and file it with the Clerk of the Second Circuit in accordance with LR 25.1. 2. File the Court of Appeals Transcript Information/Civil Appeal Form (Form D) with the Clerk of the Second Circuit in accordance with LR 25.1. 3. Pay the$455 docketing fee to the United States District Court or the $450 docketing fee to the United States Tax Court unless you are authorized to prosecute the appeal without payment. PLEASE NOTE: IF YOU DO NOT COMPLY WITH THESE REQUIREMENTS WITHIN 14 DAYS, YOUR APPEAL WILL BE DISMISSED. SEE LOCAL RULE 12.1.
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UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT CIVIL PRE-ARGUMENT STATEMENT (FORM C) ---------------------------------------------------------------X X Docket No. 12-84 SANDAWANA HOLDINGS LTD., X X Plaintiff-Appellee, X X -v.X X HENRY DUNAY, X X Defendant-Appellant. X X ---------------------------------------------------------------X ADDENDUM A TO FORM C (1) A BRIEF, BUT NOT PERFUNCTORY, DESCRIPTION OF THE NATURE OF THE ACTION; AND (2) THE RESULT BELOW The result below is that the District Court, following its entry of an August 16, 2011 Consent Order (attached as Exhibit B), unconstitutionally purported to retain jurisdiction over the 11 Civ. 2712 action for enforcement purposes and thereafter issued, on November 21, 2011, a void, legally flawed, and factually erroneous Summary Order (attached as Exhibit C; supporting reasoning, including improper sua sponte findings of fact, contained in November 14, 2011 proceeding, a transcript of which is attached as Exhibit D) stating, inter alia, that the Court shall find Defendant in contempt unless he assigns the henrydunay.net domain name and all other internet accounts bearing his name to Plaintiff by November 22, 2011. On December 5, 2011, Defendant-Appellant filed a MOTION to Vacate the August 16, 2011 and November 21, 2011 Orders of the Court and for Dismissal of This Action, Or, in the Alternative, for a Stay Pending Appeal (Notice of Motion attached as Exhibit E; Memorandum of Law in Support of Motion attached as Exhibit F.) However, 1
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the Court granted only some of the request sought in the Motion, committing legal error by refusing to grant the requested relief in full. (See December 14, 2011 ORDER terminating Motion to Vacate, attached as Exhibit A.) Thus, the nature of the action in this appeal is from the December 14, 2011 Order entered by the U.S. District Court for the Southern District of New York (Exh. A), refusing (1) to vacate all orders issued in the case Sandawana Holdings, Ltd. v. Dunay, 11 Civ. 2712 (AKH), on the basis of a lack of subject-matter jurisdiction, and thereafter dismiss the action; or (2) in the alternative, to vacate all orders issued in 11 Civ. 2712 following the District Courts entry of a Consent Order on August 16, 2011 (Exh. B), on the basis that the District Courts entry of the Consent Order had exhausted any subjectmatter jurisdiction it may have had up to that point, and was not constitutionally authorized to close the file except for enforcement, as it purported to do (see Exh. B at 4, emphasis added); or (3) in the alternative, to fully vacate the District Courts November 21, 2011 Summary Order (Exh. C) and the November 14, 2011 courtroom proceedings supporting that Order (Exh. D). (Defendant does not appeal the portion of the District Courts December 14, 2011 Order denying his request for a stay pending appeal.) (3) A COPY OF THE NOTICE OF APPEAL AND A CURRENT COPY OF THE LOWER COURT DOCKET SHEET On January 9, 2011, Defendant-Appellant timely filed his Notice of Appeal in 11 Civ. 2712 (AKH) / Case No. 12-84; a copy of that Notice of Appeal is attached as Exhibit G. A copy of the current docket in the lower court is attached as Exhibit H. (4) A COPY OF ALL RELEVANT OPINIONS/ORDERS FORMING THE BASIS FOR THIS APPEAL, INCLUDING TRANSCRIPTS OF ORDERS ISSUED FROM THE BENCH OR IN CHAMBERS.
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The relevant Orders and (where applicable) Supporting Transcripts which Defendant appeals are set forth in attached Exhibits A, B, C, and D. Further, as Defendant challenges the District Courts subject-matter jurisdiction over the entire 11 Civ. 2712 action, from the moment the action was first filed, the entire docket whose substantive contents should be vacated is attached as Exhibit H.
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ADDENDUM B TO FORM C THE ISSUES PROPOSED TO BE RAISED ON APPEAL, AS WELL AS THE APPLICABLE APPELLATE STANDARD OF REVIEW FOR EACH PROPOSED ISSUE Issues to Be Raised on Appeal Defendant-Appellant submits the following list of general issues to be raised on appeal, in compliance with the requirements of Form C. Defendant reserves the right to amend and supplement these issues and to state with greater particularity the issues (Issues or Questions) presented by this appeal in his Brief:
1.
Did the District Court err in failing to dismiss, sua sponte and/or in response to
Defendant-Appellants December 5, 2011 Motion (Exhs. E, F), a case that, despite Plaintiffs characterization of the action as one for trademark infringement and claimed invocation of federal-court jurisdiction under 28 U.S.C. 1331 and 1338, was and continues to be, in substance, a breach of contract action between non-diverse parties?
2.
Regardless of the answer(s) to Question 1, did the District Court err in purporting
to retain subject-matter jurisdiction over the action after entering a Consent Order that included instructions to the Clerk close the file except for enforcement, when the only thing left to be enforced was a settlement contract between non-diverse parties that had merely been rendered a Consent Order via the Courts endorsement, where (a) the Court has at no point specified the length of time it would or will retain the purported enforcement jurisdiction; and/or (b) the Court has at no point specified how it would or will determine whether any enforcement-related dispute arising in the future falls within
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the scope of the Consent Order; and/or (c) the Court did not, at the time of entry, indicate how it would resolve a dispute as to the scope of the Consent Order, should such a dispute arise; and/or (d) the Court did not, at the time of entry, indicate how it would resolve any substantive issues later deemed to fall within the scope of the Consent Order, including but not limited to factual disputes; and/or (e) a federal district court exceeds its constitutional and/or statutory authority when it purports to retain enforcement jurisdiction in a non-class action setting (cf. policy rationale for contrary rule in class actions, In Re Am. Express Fin. Advisors Sec. Litigation, 10-3399, 2011 U.S. App. LEXIS 22209, at *50-*51 (2d Cir. Nov. 3, 2011)), over a settlement agreement (whether or not endorsed and thereafter described as a Consent Order) between two non-diverse parties, that could not, on its own, confer federal subject-matter jurisdiction?
3.
Regardless of the answers to Questions 1 and 2, did the District Court err in
refusing to vacate in full its November 21, 2011 Summary Order (Exh. C) and the courtroom proceedings partially embodying and supporting that Order, which took place on November 14, 2011 (Exh. D), based on (a) Fed. R. Civ. P. 60(a)s authorization of a District Court, on a motion or on its own, with or without notice, to correct a mistake arising from oversight or omission whenever one is found in a judgment, order, or other part of the record; and/or (b) Fed. R. Civ. P. 60(b)(1) authorizes a court to grant relief from a final judgment, order, or proceeding for, inter alia, mistake; and/or (c) Fed. R. Civ. P. 60(b)(3), based on Plaintiff-Appellees misrepresentations and/or misconduct, either on its own or through its agents (including counsel); and/or (d) Fed. R. Civ. P. 60(b)(6), for Any Other Reason That Justifies Relief; on this record, which reveals
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errors in both the Courts procedure (such as improper sua sponte fact-finding at the November 14, 2011 proceeding) and in its substantive legal and factual conclusions?
4.
Regardless of the answers to Questions 1, 2, and 3, did the District Court err in
terminating Defendant-Appellants December 5, 2011 Motion to Vacate (Exhs. E, F) via its December 14, 2011 Order (Exh. A), in which it summarily ruled that [t]he Court has jurisdiction for trademark infringement actions pursuant to 28 U.S.C. 1338, when Plaintiff-Appellee had not yet submitted briefing, evidence, or other material in support of the Courts exercise of subject-matter jurisdiction in the case, in light of the Supreme Courts edict in Kokkonen v. Guardian Life Ins. Co., 511 U.S. 375, 377 (1994) (and this Courts instruction in Mathirampuzha v. Potter, 548 F.3d 70, 85 (2d Cir. 2008)) that a party invoking federal jurisdiction has the burden of proving that such jurisdiction exists? Applicable Standards Of Review On Appeal Issues 1 and 2 Because Issues 1 and 2, above, raise questions about the propriety of the District Courts exercise of federal subject-matter jurisdiction in this action, this Court reviews the challenged rulings de novo. See Burda Media, Inc. v. Viertel, 417 F.3d 292, 298 (2d Cir. 2005); Thomas v. iStar Fin., Inc., 652 F.3d 141, 148 (2d Cir. 2010).
Issue 3 As for the various subparts of Issue 3, this Court [g]enerally . . . review[s] questions of law de novo [and] questions of fact for clear error[.] Robert Lewis Rosen Assocs. v. Webb, 473 F.3d 498, 503 (2d Cir. 2007) (citing Benjamin v. Fraser, 343 F.3d
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35, 43 (2d Cir. 2003) and Munafo v. Metro. Transp. Auth., 381 F.3d 99, 105 (2d Cir. 2004)). But where, as here, the Appellant challenges the District Courts very exercise of fact-finding power (such as the lower courts sua sponte and unconstitutional fact-finding at the November 14, 2011 proceeding, Exh. D), the clear error standard is inappropriate. While this Court has sometimes stated that it review[s] Rule 60 challenges for abuse of discretion, Niederland v. Chase, 425 Fed. Appx. 10, 11, 10-3657, 2011 U.S. App. LEXIS 10840, at *1-*2 (2d Cir. May 25, 2011), that standard is inapplicable to challenges brought under Rule 60(b)(4), Burda Media, Inc. v. Viertel, 417 F.3d at 298, and is, at least with regard to claimed mistakes under Rule 60(b)(1), essentially identical to the above-mentioned, bifurcated de novo/clear error standard of review. See Johnson v. Univ. of Rochester Med. Ctr., 642 F.3d 121, 125 (2d Cir. 2011) (regarding Rule 60(b)(1) mistakes, court abuses discretion if (1) its decision [not to vacate] rests on an error of law or a clearly erroneous factual finding; or (2) cannot be found within the range of permissible decisions) (citing Zervos v. Verizon N.Y., 252 F.3d 163, 169 (2d Cir. 2010)).
Issue 4 The propriety of the District Courts actions described in Question 4, above, should be reviewed de novo. See De Jian Zheng v. Filip, 308 Fed. Appx. 539, 540, 081093, 2009 U.S. App. LEXIS 1797, at *2 (2d Cir. Jan. 30, 2009) (determination as to proper quantum of evidence required to sustain burden constitutes question of law) (citing Lin Zhong v. U.S. Dept of Justice, 480 F.3d 104, 117 (2d Cir. 2007)).
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EXHIBIT A
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UNITED STATES DISTRlCT COURT SOUTHERN DISTRlCT OF NEW YORK
--------------------------------------------------------------SANDA WANA HOLDINGS LTD.,
)(
ORDER
Plaintiff, 11 Civ. 2712 (AKH) -againstHENRY DUNAY, Defendant. ALVIN K. HELLERSTEIN, U.S.D.J.:
l
\'
Don
FILED
)(
---------------------------------------------------------------
IHn FII H): \
Defendant has moved for vacatur of the Court's August 19,2011 and November 21,2011 Orders and for dismissal of this action or, in the altemative, for a stay pending appeal. Defendant argues that the Court lacks subject matter jurisdiction. The Court has jurisdiction for trademark infringement actions pursuant to 28 U.S.C. 1338. The Court's retention ofjurisdiction for enforcement of the August 16, 2011 Consent Order pursuant to the Consent Order's terms is likewise proper. In re Am. E){press Fin. Advisors Sec. Litig., 2011 WL 5222784, at *15 (2d Cir. Nov. 3, 2011). Defendant also argues that the Court should vacate its November 21, 2011 Order pursuant to Fed. R. Civ. P. 60. The Court hereby modifies its November 21, 2011 Order such that Defendant may retain his Facebook, Twitter and email accounts provided he refrains from using such accounts to engage in jewelry-related commercial activity. Defendant's request for a stay pending appeal is denied as no grounds for a stay have been shown. The Clerk shall mark the motion (Doc. No. 39) terminated. SO ORDERED. Dated: Decemberl!/2011 New York, New York ALVIN K. HELLERSTEIN United States District Judge
::;;:--
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EXHIBIT B
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USOCSDNY DOCUMENT ELECTRONICALLY FILED
DOC #:_--;os:-;.---rrDATE FILED:
8' .. ,,--11
AllIIN K. HELLeRSTElN
UNITED STATES DISTRlCf COURT SOUTHERN DISmCf OF NEW YORK SANDAWANA HOLDINGS LTD., Plaintiff, Ilcv2712 (AKH) (aLE) CONSENT ORDER
U,S,D,.!,
v.
HENRY DUNAY, Defendant.
WHEREAS, on or aOOm April 20, 201 I, PlaintilfSendawatlll Holdings Ud. ("Plaintiff") insliMed an aclion in the United Slales District Court, Southern District of New York, Civil Action No, II
crv, 2712 (AKH)(RLE) against defeodant
Dunay having a principal place
of business at 22 Wesl4811! Street. Suite 408, New Yolk. New Yolk 10036 ("Defendant") in which Plaintiff8Oushl, iI11!I!: IJ!/JJ., illiunctive relief and damages fur acts ofalleged trademark infringement, unfair competition. and designation of SOW"Ce or origin of any good or services arislngout of Defendant's use of the tenD HENRY DUNAY or DUNAY and/or colorable imilations of the followins trademarks: United Statca Tmdemark Registration Nos. 16 J6668, 1616669, and 2954396. and all goodwill owned by Plaintlffassoeiated therewhb incorporatiag tbe terms HENRY DUNAY and/or DUNAY (referred to herein Mthe "HENRY DUNAY TRADEMARKS"); and WHEREAS. Plaintiff end Defendant have been affurded the opportunity to consult
with, and baving consulted with aUOrncys oftheir own eboice in connection with the execution
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ofthis Permanentlr\lunction and Final Judgment on Consent. and having relied upon the advke of such atlorneys in executing this Pennaneut InjWlCtiOIl and Final Judgmenl on Consent. and baving entered into a Settlement Agreement (the "Al!R'ement") dated August providing. _
I?" , 2011,
fllkl. for the entry of this PennanentlnjunctiOJl and Final Judgment on Consent;
and WHEREAS. Ihe Court bas jurisdiction over tbe subjectmalter of this aclion and
per;onaljurisdiction over Defendant and H.D.D., (nc., a New York corporation with an ac:kIress of22 West 48 Street. Suite 408. New Yolt, New York 10036 ("HOD',), and venue in this action being proper in Ibis Judicial district; IT IS HEREBY ORDERED, .WlftlfleM, AND DECREED. that
I,
Defendant Henry Dunay, HOD, HOD's affiliates, HOD's divisiollll, and HDD's
subsidiaries, as well sa HDD's respective principals, officers, agents, servants.

employees and all others acting in direct and/or indirect concert or participation with
them, be and hereby are PERMANBNTLY ENJOINED and RESTRAINED on a
worldwide baals from: (a)

\Ising the HENRYDUNAY TRADEMARKS or any marlc or design that
incorporates andlis confusingly similar thereto, as a design. Ir&d.marlc, trade name, service mark, brand name, domain name. and/or designation of SOUI'CC or origin of any good or services relating \0 jewelry or the sale, licensing, manufacture, advertising, promotion, andlor distribution thereof; and
(b)
the import, export,llI8IIufacture, distribution, purchase, offer for sale. sale or advertisement, promotion. nwketlng, or display ofjewelry used on 01' in connection with the HBNRY DUNAY Tr&demarlcs or any other colorable
2
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Imitations oftbe HENRY DUNAY TRADBMARKS, or any marka confu8lngly similar thereto, either individually or in coqjunction with other words, IIIIII'ks or designs. (c) Use oCthe HENRY DUNAY TRADEMARKS in any JlUIIIIlCl On jewelry, labels for jewelry, Itllllg tags or product packaging for jewelry. or any other trademark. type usage in association with jewelry. (d) Use of the HENR.Y DUNAY TRADEMARKS in promotional and advertising llIIIIerial unless his name is used descriptively, in a descriptive phrase, and it must be less prominent in type, size, and boldness than any entity which Is selling the jewelry ofHenry DIlDay. (e) Advertising. J118I'keting or selling jewelry products through the domain name HENRYDUNAY.NET or any other lop level dontain name that includes the
words HENRY DUNAY or DUNAY.
2. 3.
Dunay shall have 30 days ftom after entry oCtile Order to comply with tlus Order. ThIs Court retains jurisdiction of tills action for the purpose ofenCore! ng the provisions oftills Pennanant II\iunction and Final Judgment on Consent by way ofcontempt or otherwise.
4.
S.
The parties waive appe41 ofthis Permanent lqiunotion and Final Judgment on Consent.
Each party to tbls PerlnaDern InjWlction and Final Judgment On Consent 511all bear its own costs, expenses and 1Itt0mays' fees in this action.
6.
ThIs Permanent il\iunclion and Final Judgment on Consent shall operale as the ftnal Judgment in this action a8 to the Deftmdant and HOD, but shall not be cOlllllrued as an admission of liabUity by the Defendant and HOD. nor as any type of coneession on the
3
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/lIIrt ofDefeIldanl and HDD.
PLLC Mitchell Devack, Nicholas Otis, Esq. Law Offices of Mitchell !. Devack PLLC 90 Merrick Avenue, Suite 500 Bast Meadow, New York 11554
Attorney fur Defendant Henry Dunay
Approved and Entered by the Court: . . .
.4Q)
.. -.<c,P"1- ""I'"
,
on. Alvin K. Hellerstein, U.S.D.N.Y.
fi)..,t-A
-'#
4
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EXHIBIT C
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"
USDC SO", DOCUMF'T
UNITED STATES DISTRlCT COURT SOUTHERN DISTRlCT OF NEW YORK ...... -.------.-.-.-.-.----- x SANDAWANA HOLDINGS LTD.,
ELEClRU:"IC\LL \' FILED DOC #: D.HE \;";UL"T2..(:-;-r.4""""4-
SUMMARY ORDER Plaintiff, 11 Civ. 2712 (AKH) against HENRY DUNAY, Defendant.
--..-.---.-.-................-.---..............-.............- x
ALVIN K. HELLERSTEIN, U.S.DJ.: On November 14,2011, a hearing was held regarding Plaintiffs motion for sanctions. For the reasons stated on the record, the Court shall find Defendant in contempt unless he assigns the henrydunay.net domain name and all other internet accounts bearing his name to Plaintiff by November 22, 2011. SO ORDERED. Dated: Novembe New York, ,2011 ew York United States District Judge
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14
EXHIBIT D
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14
1 1 1 2 2 3 3 4 4 5 5 6 6 7 7 8 8 9 9 10 10 11 11 12 12 13 13 14 14 15 15 16 16 17 17 18 18 19 19 20 20 21 21 22 22 23 23 24 24 25 25 1BESSANDAWANA UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK ------------------------------x SANDAWANA HOLDINGS LTD., Plaintiff, v. HENRY DUNAY, Defendant. ------------------------------x November 14, 2011 3 p.m. Before: HON. ALVIN K. HELLERSTEIN, District Judge APPEARANCES LEVISOHN BERGER LLP Attorneys for Plaintiff BY: PETER L. BERGER JONATHAN BERGER LAW OFFICES OF MITCHELL J. DEVACK, PLLC Attorneys for Defendant BY: NICHOLAS P. OTIS ALSO PRESENT: SUDHIR JAIN SNEHA JAIN HENRY DUNAY FRINETTE SIMON 11 Civ. 2712
SOUTHERN DISTRICT REPORTERS, P.C.
(212) 805-0300
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2 1BESSANDAWANA (Case called) MR. BERGER: Peter Berger and Jonathan Berger, and sitting at the table is Sudhir Jain and Sneha Jain. They are from Sandawana. MR. OTIS: Law Offices of Mitchell Devack by Nicholas Otis, and I am appearing on behalf of my firm in relation to our motion for leave to withdraw as counsel of record. With me is Henry Dunay, the defendant, and Frinette Simon, who although not a party is the registrant of the website in question. THE COURT: What does that mean? MR. OTIS: She registered the website in her name. THE COURT: What is her connection? MR. OTIS: She is Mr. Dunay's fiancee but because -THE COURT: She is a proxy for him. MR. OTIS: Again, as I stated it. THE COURT: She is a proxy for him. MR. OTIS: She is a co-owner of the business. She was a co-owner of the business. I believe the website is still registered to her name. THE COURT: The last time we were here we ducked an issue and I regret that we ducked the issue because it has re-emerged. After the asset purchase agreement by which Henry Dunay Designs, Inc., and another, out of the Chapter VII SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300
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3 1BESSANDAWANA bankruptcy sold described assets to the plaintiff, Sandawana Holdings Ltd., is there anything in this agreement that describes what Mr. Dunay might or might not do in the future? Mr. Berger. MR. BERGER: No, your Honor, not specifically that way. It was drafted as trademarks, good will, and those specifics. He did not give up the right to use his name, his personal rights. He did though agree to transfer all domain names to Sandawana and, as it turns out, we learned only last when we were before you that in fact Mr. Dunay, through the guise of Frinette Simon, obtained a Henry Dunay domain name in her name which we were unaware of during the bankruptcy proceeding, which should have been turned over. We reached an agreement last time in which we thought the use of the domain name to market and offer products for sale by Mr. Dunay would not be permitted. That was the essence of what we were seeking, so we stepped back from saying we are really entitled to that domain name. THE COURT: That doesn't seem to be an issue now because the blog that is attached to the moving papers, Exhibit 9 -- maybe I am wrong. Is that a blog that is under the registered name Henry Dunay? MR. BERGER: Yes, henrydunay.net. It has been updated a bit, your Honor. There is a current -SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300
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4 1BESSANDAWANA THE COURT: Let me read this. Is Mr. Dunay proscribed to enter the domain name in his own name? MR. BERGER: The answer is yes, your Honor, that should have been turned over as it was obtained through a contrivance during the bankruptcy proceedings by Mr. Dunay. THE COURT: That was not an issue in the motion but it certainly relates to it. MR. BERGER: Yes, your Honor. THE COURT: Mr. Otis, is there objection to doing that? MR. OTIS: There is an objection to what counsel just stated. There is, your Honor. He is prohibited from using the domain name in certain ways. He is not prohibited from maintaining a website with the words Henry Dunay as long as he doesn't use it to sell, promote or market jewelry. THE COURT: Well, this one does, it seems to me. It says first "Dear Friends: I will no longer design or manufacture under my previous Dunay logo. My new designs are handcrafted 'wonders' manufactured in New York City under the new HDD, Inc. name as logo, which represents the love I have, and have always had, for my customers." I do think that is a use of his name and domain name itself. MR. OTIS: It's informational, your Honor. No jewelry SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300
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5 1BESSANDAWANA gets sold on this website. No jewelry is exhibited on this website. Mr. Dunay, aside from the sale of the trade names, as counsel acknowledges, did not sell his name for all commercial purposes. He is not precluded from giving up his profession of over 50 years. There are no commercial activities -THE COURT: So, Mr. Otis, how can he in his permissible activity use the Internet? MR. OTIS: How can he use it in a permissible fashion? THE COURT: Yes. MR. OTIS: He can use it in a permissible fashion by including biographical and informational material as to his current activities as long as he is not selling -THE COURT: He says he manufactured. "You can find me under HDD, Inc.," and by implication his love for his customers causes him to advance a category of merchandise. He does seem to be selling. MR. OTIS: It's not a sale, your Honor. He is notifying people that he is still around. He is notifying people that he hasn't given up his profession. Yes, we acknowledge that. There is a more current page that has just been handed to me, if I may hand it up, your Honor. It's not all that different but your Honor may want to see it. THE COURT: Let me see it. We will mark this as Defendant Exhibit A. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300
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6 1BESSANDAWANA MR. BERGER: Your Honor, I just might say -THE COURT: One minute, let me just read this first. (Pause) THE COURT: It's marked as Defendant Exhibit A, today's date. So, Mr. Otis, with this announcement is this domain name finished? MR. OTIS: I am sorry, finished in what sense, your Honor? THE COURT: Can be terminated, can be abandoned, can be registered, it can be transferred. I mean, it could be never used again. MR. OTIS: Are you asking is it being used now? THE COURT: It's in use now. And I am asking if it can be closed down or transferred away. Mr. Dunay doesn't need it for any further purpose because people will look from hereafter at HDD, Inc. MR. OTIS: Your Honor, this would lead me into my firm's application. THE COURT: I follow you. Mr. Dunay, you can't appear here alone. You can't appear here without a lawyer. I will not let you speak except to answer my question. You need a lawyer. At the same time the nature of this controversy is that irreparable injury will flow to the plaintiff if he doesn't get the relief he requests, SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300
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7 1BESSANDAWANA assuming that relief has merit. You can't get a free ride on your lawyer. Although you don't have to listen to your lawyer's policy, there is a great danger that the implication to my question is that I will go along with what I am saying and close you up. I think you need to talk to your lawyer and work it out. I will give you 15 minutes to do that. MS. SIMON: Your Honor, can I approach? THE COURT: No. You are not a lawyer, right? MS. SIMON: No, but I would like to talk to you about the website. THE COURT: No, you may not. You can talk to Mr. Otis and Mr. Otis will talk to me. We will recess for 15 minutes. (Recess) MR. OTIS: May I be heard, your Honor? THE COURT: Please. MR. OTIS: Your Honor, I regret to inform the court that despite my efforts to resolve this matter today, I am unable to reach a resolution along the lines I have discussed with Mr. Berger. There are substantial differences of opinion to proceed in this matter and, accordingly, I am renewing my firm's application for leave to withdraw from this matter. THE COURT: I will address it, Mr. Otis, at the SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300
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8 1BESSANDAWANA conclusion of the motion for restructure and to enforce the consent decree. MR. OTIS: I am also advised that there are equitable considerations which although not part of the record in this case may go to the enforceability of the injunction that on the Sandawana website there are also references to Henry Dunay creating the impression that Henry Dunay, the man, is part of Sandawana, which is not the case. THE COURT: Well, I think the defendant can make its motion and I will entertain it. But at the present time what is before me is the motion by Sandawana, and in that connection I am looking at Exhibit 1 to the complaint which sets out the asset purchase agreement, Henry Dunay, Inc. as seller, Sandawana, Inc., buyer. This was sold and purchased pursuant to the bankruptcy. Apparently it's a trustee sale. The items sold are set out in paragraph D and schedule A. Among the assets described in schedule A under the title Henry Dunay Design Assets is the following: All Internet sites and websites, domain names, copyrights, patents, trademarks, and other intellectual property rights, including, without limitation, the trademarks attached to this schedule A. I am looking at the Internet sites and websites, and the website is described in Exhibit A as henrydunay@hotmail.com, Henry Dunay being a single word. So if one dials up this Internet site, one gets the description and SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300
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9 1BESSANDAWANA picture of Henry Dunay under the caption "master jewelry designer." This is plainly an Internet website that belongs to Sandawana, or should be, because it purchased all right, title and interest in that website and domain name. The fact that they are registered to another, the fiancee of Henry Dunay, does not change what I said. Yes, Mr. Otis. MR. OTIS: Just to clarify the record, henrydunay@hotmail.com is an e-mail address. The website is Henry Dunay. THE COURT: It's preceded by www.henrydunay. MR. OTIS: Henrydunay.net is the website. THE COURT: They are both very similar and they both need to be assigned, so in that respect what Mr. Dunay is doing here is improper. It would be proper, and no one would object, if the website were named HDD, Inc., which is the present name with a logo where is he going to sell his jewelry. And if someone were interested they could find that out. There is a biography attached to this Henry Dunay website written by Roberta Nass, and I think there is no objection to his continuing use of that biography under HDD, Inc., am I right, Mr. Berger? MR. BERGER: No, no problem. THE COURT: You agree with me. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300
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10 1BESSANDAWANA MR. BERGER: Yes, I agree with you. THE COURT: Now, I think, looking at the Exhibit 9 to the motion, that the description of Mr. Dunay's new activities and new designs identified as handcrafted wonders and a description of where it's manufactured and for which company, with the description that it represents the love for his customers, is a description of where to buy merchandise, his merchandise, and it disturbs me. It's an advertisement. An advertisement can be an advertisement even though it doesn't reference price or a specific item. But it carried a general category of jewelry designed by Henry Dunay. So I believe that Sandawana Holdings is correct. If I get a proper representation to abide by the consent decree, which would include a very prompt assignment of the domain names to the plaintiff, I will not declare a contempt, but if there is any resistance I will, and you can find your remedy in the Court of Appeals. Would you please, Mr. Otis, before I grant your motion to be discharged, have a very quick conversation to make sure your client understands exactly what I am saying? MR. OTIS: Yes, your Honor. THE COURT: You can do it in your seat. (Pause) THE COURT: I sense that there is continued discussion that suggests that Mr. Dunay is not so ready. So I will order SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300
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11 1BESSANDAWANA it. I will give you, Mr. Dunay, until next Monday, the 21st of November, to assign all Twitter, Facebook, and all Internet accounts bearing your name to Sandawana Holdings. If you do it and don't get involved with any refinements of your name on the Internet except under your HDD, Inc. company, I won't hold you in contempt. Otherwise I will. Is that clear? MR. DUNAY: Yes, sir. MS. SIMON: Your Honor, can I apprise the court? THE COURT: No, you can't. MS. SIMON: Can he? THE COURT: No. MR. OTIS: Mr. Dunay has advised me there is an organization called Lawyers For Artists here in Manhattan that may be able to provide him with counsel in this matter. THE COURT: You are free to go after them. MR. OTIS: What I am asking the court is one week may not be adequate time. May he have until November 28 to comply with your Honor's order and during that time he will have reasonable opportunity to consult with an attorney from Lawyers For Artists and perhaps reach some agreement that may be satisfactory to the plaintiff and to the court? THE COURT: Mr. Berger. MR. BERGER: I really feel I am unwilling to grant SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300
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12 1BESSANDAWANA that extra week. I don't think defendant is going to be any less willing. I am unwilling to consent. THE COURT: Then don't grant. Thursday of that week is Thanksgiving, so I will give you until Tuesday, which is the 22nd. I will take the motion to be discharged, Mr. Otis, and I grant the motion. I gather that you haven't been paid. I gather that there are differences between you and members of your client as to how to proceed in the case and that there is no longer a meeting of the minds between counsel and client and therefore you are discharged from the case. Mr. Otis, you can tell this to Mr. Dunay: The corporation or any other business entity cannot be represented here except by a lawyer. So you have to get another lawyer in this case. If anything comes up which requires the company to do something, and I am sure it will, and you can't do it because you don't have a lawyer, you may have to suffer the remedy that Mr. Berger requests. MR. OTIS: Shall I submit a written order, a proposed order? THE COURT: Yes, please. MR. DUNAY: Can I read a statement that I have prepared, your Honor? THE COURT: No. You can ask Mr. Berger to do it. The record is closed. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300
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EXHIBIT E
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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK ----------------------------------------------------------X X SANDAWANA HOLDINGS LTD., X X Plaintiff, X X -v.X X HENRY DUNAY, X X Defendant. X X ----------------------------------------------------------X
No. 1:11-CV-02712 (AKH) NOTICE OF MOTION FOR VACATUR OF THE COURTS AUGUST 19, 2011 AND NOVEMBER 21, 2011 ORDERS AND FOR DISMISSAL OF THIS ACTION, OR, IN THE ALTERNATIVE, FOR A STAY PENDING APPEAL ORAL ARGUMENT REQUESTED
PLEASE TAKE NOTICE that upon the annexed Declaration of Charles E. Colman and accompanying Exhibits, the annexed Declaration of Henry Dunay, Defendants Memorandum of Law, and all other papers, pleadings, and proceedings had and filed herein, Defendant Henry Dunay will move this Court, before the Honorable Alvin K. Hellerstein, at the United States Courthouse, 500 Pearl Street, New York, New York, on a date and time to be determined by the Court, for an Order 1.a) pursuant to Rule 60 of the Federal Rules of Civil Procedure and/or the Courts inherent powers, for vacatur of the Courts August 19, 2011 and November 21, 2011 Orders (and their accompanying reasoning, embodied in court proceeding transcripts), and 1.b) dismissal of this action under Federal Rule of Civil Procedure 12(b)(1) for lack of subject matter jurisdiction, or 2) in the alternative, for a stay on the effect of the aforementioned Order(s) pending Defendants appeal to the U.S. Court of Appeals for the Second Circuit. The grounds for the requested vacatur are 1) the Courts lack of subject-
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matter jurisdiction over this dispute at the relevant time(s); 2) factual and legal mistakes made by the Court in issuing its November 21, 2011 Order; 3) the repeated misrepresentations and misconduct of Plaintiff Sandawana Holdings Ltd. (on its own and/or through counsel); and/or 3) the equities of the situation, including but not limited to Sandawanas demonstrated intention to abuse the Courts November 21st Order, if the Court allows the Order to stand. In the event the Court declines to vacate its August 19th and/or November 21st Orders, Defendant Henry Dunay will move the Court for a stay of the effect of those Orders pending appeal, under the Courts inherent equitable powers, Federal Rule of Civil Procedure 62, and/or other source(s) of authority.
Dated: New York, New York December 5, 2011 CHARLES COLMAN LAW, PLLC
By: Charles E. Colman (CC-1133) 1776 Broadway, 21st Floor New York, NY 10019-2002 (917) 515-5875 (ph) (917) 534-6294 (fax) cc@charlescolmanlaw.com Attorney for Defendant Henry Dunay
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EXHIBIT F
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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK ------------------------------------x : SANDAWANA HOLDINGS LTD., : : 1:11-CV-02712 (AKH) Plaintiff, : : ORAL ARGUMENT REQUESTED - against : : HENRY DUNAY, : : Defendant. : : ------------------------------------x
MEMORANDUM OF LAW IN SUPPORT OF MOTION FOR VACATUR OF THE COURTS AUGUST 16, 2011 AND NOVEMBER 21, 2011 ORDERS AND FOR DISMISSAL OF THIS ACTION, OR, IN THE ALTERNATIVE, FOR A STAY PENDING APPEAL
Charles E. Colman, Esq. (CC-1133) Charles Colman Law, PLLC 1776 Broadway, 21st Floor New York, NY 10019-0064 Telephone: (917) 515-5875 Fax: (917) 534-6294 cc@charlescolmanlaw.com Attorney for Defendant Henry Dunay
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TABLE OF CONTENTS A. INTRODUCTION5
B. FACTUAL AND PROCEDURAL BACKGROUND..6
C. ARGUMENT...9 1. The Court Should Vacate Both Its August 16th and its November 21st Orders Under Rule 60(b)(4) As Void for Lack of Subject Matter Jurisdiction, and Dismiss This Action...9 a. The Court Has Lacked Subject Matter Jurisdiction from the Outset of This Litigation, Because This Action Has Always Been a Non-Diverse Breach of Contract Suit in Trademarks Clothing..10 b. Even if the Court Was Empowered to Exercise Subject Matter Jurisdiction at the Outset of This Case, It Lacked the Requisite Jurisdiction to Issue the November 21st Order..12 2. The Court Should Vacate Its November 21st Order Under Rule 60 Because It Resulted From Mistake; Because of Sandawanas Misrepresentations and Misconduct; and in the Interest of Justice.16 a. The Court Should Vacate Its November 21st Order Under Rule 60(a) Due to Legal and Factual Mistake[s] Arising From Oversight and under Rule 60(b)(1) Due to Mistake.16 b. The Court Should Vacate Its November 21st Order Under Rule 60(b)(3) Due to Plaintiffs Misrepresentations and Misconduct, and/or under Rule 60(b)(6) for Any Other Reason That Justifies Relief, Including Sandawanas Demonstrated Intention to Abuse the Order If the Court Allows It to Stand..22 3. If the Court Finds that It Possessed the Requisite Jurisdiction at All Times and Declines to Vacate the August 16th and November 21st Orders, It Should Nevertheless Stay the Effect of Those Orders Pending Appeal..24
D. CONCLUSION..25
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TABLE OF AUTHORITIES Cases Achtman v. Kirby, McInerney & Squire, LLP, 464 F.3d 328 (2d Cir. 2006).12, 13 American Trucking Assns, Inc. v. Frisco, 358 U.S. 133, 145 (1958).17 Catskill Dev., L.L.C. v. Park Place Entmt Corp., 286 F. Supp. 2d 309 (S.D.N.Y. 2003) ...23 Dennis Michels Productions, Inc. v. Kaplan, No. 89 Civ. 3726, 1989 U.S. Dist. LEXIS 11631 (S.D.N.Y. Oct. 4, 1989)17 Empire HealthChoice Assur., Inc. v. McVeigh, 547 U.S. 677 (2006) .15 Hadges v. Yonkers Racing Corp., 48 F.3d 1320 (2d Cir. 1995) 23 HBE Leasing Corp. v. Frank, 48 F.3d 623 (2d Cir. 1995) ..24 In re Am. Express Fin. Advisors Securities Litigation, No. 10-3399, 2011 U.S. App. LEXIS 22209 (2d Cir. Nov. 3, 2011)..13 J.A. Apparel Cop. v. Abboud, 568 F.3d 390 (2d Cir. 2009) ..17, 19, 20 Kokkonen v. Guardian Life Ins. Co., 511 U.S. 375 (1994)...10, 13 Rosenberg v. Inner City Broad. Corp., 99 Civ. 9579, 2001 U.S. Dist. LEXIS 13192 (S.D.N.Y. Aug. 30, 2001)12 Schildhaus v. Moe, 335 F.2d 529 (2d Cir. 1964) 16 Stancato v. Versace, No. 94 Civ. 4192, 1995 U.S. Dist. LEXIS 10324, (S.D.N.Y. Jul. 25, 1995)...10, 11
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Tap Publs. v. Chinese Yellow Pages, 925 F. Supp. 212, 217 (S.D.N.Y. 1996)10, 11 Statutes and Regulations 28 U.S.C. 129224 28 U.S.C. 13317, 11 28 U.S.C. 13387, 11 28 U.S.C. 1367..7 37 C.F.R. 2.72.19
Federal Rules of Civil Procedure Fed. R. Civ. P. 12(b)(1)..12 Fed. R. Civ. P. 60(a).16, 17, 23 Fed. R. Civ. P. 60(b)(1)..16 Fed. R. Civ. P. 60(b)(3)..23 Fed. R. Civ. P. 60(b)(4).....9, 12 Fed. R. Civ. P. 60(b)(6)..23
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A. INTRODUCTION Henry Dunay (Henry) is a 76-year-old jewelry designer. Declaration of Henry Dunay (hereinafter Dunay Decl.) at 1. He has been a jewelry designer for most of his adult life, and believes designing and selling jewelry is the only way he can realistically support himself. Id. at 4. If Sandawana Holdings Ltd. gets its way, Henry will be prevented from using his name in connection with jewelry in virtually any way and essentially be banished from all uses of his name on the Internet, where more commerce in the luxury goods sector takes place with each passing year. Id. at 19. Concerned only with accumulating as much online real estate as possible, and in disregard of agreement(s) between the parties, Sandawana has misrepresented the true scope of its trademark rights and repeatedly conflated trademark and nontrademark and even commercial and non-commercial uses. Unfortunately, the Courts November 21, 2001 Order (and the November 14, 2011 Transcript providing the reasoning behind that Order) contain several factual and legal errors that Sandawana can abuse, and has abused, in furtherance of its objectives. Fortunately, this Court can right the ship by vacating its recent Order. Indeed, the Court must vacate not only the November 21st Order, but all of its Orders in this case, as it lacked the requisite subject matter jurisdiction to issue them. From the outset, this case has been nothing more than a non-diverse breach of contract suit in trademarks clothing, strategically framed as a Lanham Act case. But even if this Court declines to vacate its Orders and dismiss this case, it should nevertheless stay the effect of all relevant Orders pending Henrys appeal to the Second Circuit.
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B.
FACTUAL AND PROCEDURAL BACKGROUND
In 2009, Henry Dunay and his well-respected jewelry company, Henry Dunay Designs, filed a voluntary petition for relief under Chapters 7 and 11 of the United States Bankruptcy Code. Declaration of Charles Colman (hereinafter Colman Decl.), Exh. A (Plaintiffs Complaint and Exhibits) at 15. Through an March 18, 2010 Asset Purchase Agreement, Plaintiff Sandwana Holdings Ltd. (Sandawana) acquired certain assets, including three U.S. federal trademark registrations, but notably, not expressly including a plain-text (or so-called standard character) registration in the words HENRY DUNAY. Id. at 28-29. The reason for this was clear: neither Henry nor his company had ever applied for a federal trademark registration for HENRY DUNAY in plain text; the three registrations owned by the company were all, in the words of the U.S. Patent and Trademark Office, WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM. Id. at 39, 42, 45 (emphasis added). With that said, SCHEDULE B of the Asset Purchase Agreement did purport to include among Henrys and his companys assets [a]ll internet sites and websites, domain names, copyrights, patents and trademarks and intellectual property rights, including, without limitation, the trademarks [referred to above.] Id. at 30. But conspicuously absent from this list is Henrys name, which had never been registered as a trademark except in the form of stylized designs, most likely because only those stylized designs had been consistently used as trademarks, for approximately forty years. Dunay Decl. at 15. Thus, Henry (reasonably) never believed and still does not believe that he signed away the right to use his name in all commercial respects
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concerning jewelry design. Id. at 6. Had Henry been under that impression, he never would have signed the Asset Purchase Agreement with the terms presented. Id. at 17. The language in SCHEDULE B of the Asset Purchase Agreement, though covering the field of intellectual property rights between the parties, so to speak, eventually gave rise to a dispute as to scope. Strategically framing this contract dispute as an action for trademark infringement, Sandawana brought suit in federal court on April 20, 2011, purporting to invoke the Courts jurisdiction under 28 U.S.C. 1331, 1338, and 1367. Colman Decl., Exh. A at 3, 10. On August 16, 2011, the Court issued an Order embodying a settlement between the parties, which provided in part: Defendant Henry Dunay, HDD, HDDs affiliates, HDDs divisions, and HDDs subsidiaries, as well as HDDs respective principals, officers, agents, servants, employees and all others acting in direct and/or indirect concert or participation with them, be and hereby are permanently restrained on a worldwide basis from: using the Henry Dunay TRADEMARKS or any mark or design that incorporates and/is [sic] confusingly similar thereto, as a design, trade name, service mark, brand name, domain name, and/or designation of source or origin of any good or services relating to jewelry or the sale, licensing, manufacture, advertising, promotion, and/or distribution thereof. All other provisions as further set forth in this order. (Dkt. No. 19). The Court stated that it would retained jurisdiction for enforcement purposes. Id. However, in neither the July 20, 2011 Order closing the case but retain[ing] jurisdiction to resolve any disputes arising under the consent decree nor the August 16, 2011 Order endorsing the settlement and closing the case except for enforcement did the Court limit the length of time it would retain such jurisdiction, specify how it would determine whether a dispute did, in fact, fall within the scope of the
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settlement, or indicate how it would resolve such a dispute. (Dkt. 12, 19.) Given Sandawanas apparently limitless desire for all Internet real estate in any way connected with Henry, and conversely, Henrys inability to make a living without using his name, see Dunay Decl. at 4, 5, a dispute about the settlement agreement unsurprisingly arose. That dispute centered on whether Sandawana was entitled to the henrydunay.net domain name (purchased by Henrys fiance Frinette Simon, not at Henrys instruction, after the bankruptcy had been settled, Dunay Decl. at 13) under the Asset Purchase Agreement and the August 2011 Settlement Agreement. (Dkt. 28.) A proceeding on the above-mentioned issue was held before the Court on November 14, 2011 (November 14th proceeding), at which the Court appears to have made certain findings of fact without an evidentiary basis in the record (see, e.g., Colman Decl., Exh. B at Transcript page 3 (stating that Ms. Simon was a proxy for Mr. Dunay for purposes of the henrydunay.net domain name registration); id. at Transcript page 9 (stating that henrydunay.net domain name and henrydunay@hotmail.com e-mail address are very similar)) and drawn legal conclusions some erroneous notably based not on trademark law, but on the Asset Purchase Agreement (see id. at 9 (This is plainly an Internet website that belongs to Sandawana, or should be, because it purchased all right, title and interest in that website and domain name.)) The Court issued a Summary Order docketed on November 21, 2011 (November 21st Order), providing that the Court shall find Defendant in contempt unless he assigns the henrydunay.net domain name and all other internet accounts bearing his name to Plaintiff by November 22, 2011. (Dkt. 36, emphasis added) The basis for the
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essentially unlimited scope of highlighted language was not clear, as many internet accounts now in dispute (including, most notably, a personal, private facebook page never used for commercial purposes) had not been substantively addressed during the November 14, 2011 proceeding. See generally Colman Decl., Exh. B. Since the Court issued its Order regarding all other internet accounts, Sandawana has grown increasingly aggressive, apparently emboldened by the broad language of the Courts Order, Henrys temporary pro se status, and/or the Defendants advanced age. See Dunay Decl. at 23. In fact, Sandawanas counsel, Peter Berger, went so far as to threaten Henry, a 76-year-old man in poor health, by stating in a November 24, 2011 phone call that if Henry did not transfer his facebook and Twitter accounts to Sandawana, Berger would have him put in jail over the holidays. Id. at 1, 2, 25. Thus, out of fear, Henry shut down his facebook and Twitter accounts although he continues to believe he has a right to use them. Id. at 26. Sandawanas continuing threats are causing emotional trauma to Henry and have made him afraid to maintain any identifiable presence on the Internet, without which he will be unable to earn a living, id. at 26, 5, or even maintain a social presence. This newly-retained counsel filed a Notice of Appearance on Monday, December 5, 2011, and filed these motion papers on the same day. C. ARGUMENT
1. The Court Should Vacate Both Its August 16th and its November 21st Orders Under Rule 60(b)(4) As Void for Lack of Subject Matter Jurisdiction, and Dismiss This Action From day one, this litigation has been nothing more than a breach of contract
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dispute between non-diverse parties, requiring interpretation not of federal law, but only of the parties Asset Purchase Agreement (and now, of the Courts Order attempting to enforce that Agreement.) Neither the original contract dispute nor the Courts Orders attempting to resolve that dispute can supply, or have supplied, subject matter jurisdiction in this case. Sandawana has the burden of proving that the Court possessed the requisite jurisdiction at all times, Kokkonen v. Guardian Life Ins. Co., 511 U.S. 375, 377 (1994), and for the following reasons, this is a burden it cannot sustain. a. The Court Has Lacked Subject Matter Jurisdiction from the Outset of This Litigation, Because This Action Has Always Been a Non-Diverse Breach of Contract Suit in Trademarks Clothing From the outset of this litigation, Plaintiff Sandawana has attempted to frame a run-of-the-mill, non-diverse breach of contract suit as a Lanham Act action, in order to invoke the jurisdiction of the federal courts. However, as Judge Keenan stated in Stancato v. Versace, No. 94 Civ. 41921995 U.S. Dist. LEXIS 10324, at *5 (S.D.N.Y. Jul. 25, 1995), the formal allegations of [a] complaint must yield to the substance of the claim. The court continued: [I]t is well settled that the federal courts do not have subject matter jurisdiction in cases where a trademark is merely the subject matter of a contract dispute. Plaintiffs foremost are attempting to enforce their contractual rights. The mere involvement of [a federally registered trademark] does not confer federal jurisdiction over what is essentially a contract dispute . . . . In cases where a contract establishes which party owns a particular trademark, it is the contract and not the Lanham Act that determines the rights of the parties. Id. at *7 (emphasis added). Likewise, in Tap Publs. v. Chinese Yellow Pages, 925 F. Supp. 212, 217 (S.D.N.Y. 1996), a plaintiff claimed that it ha[d] exclusive rights to use [a] mark in the
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New York metropolitan region, arguing that [a] 1986 settlement agreement gave this right to [do so.] Judge Koeltl observed that the plaintiffs purported Lanham Act claim involve[d] questions of contract interpretation only, and thus should be determined by the principles of contract law. Id. The Lanham Act, in contrast, establishes marketplace rules governing the conduct of parties not otherwise limited. Id. Stancato and Tap are instructive here. Sandawanas suit against Mr. Dunay has always boiled down to this: SCHEDULE B of the parties Asset Purchase Agreement lists among the assets to be transferred [a]ll internet sites and websites, domain names, copyrights, patents and trademarks and intellectual property rights, including, without limitation, the trademarks [referred to above.] Colman Decl., Exh. A at 30. Sandawana has argued for a broad interpretation of this provision; Mr. Dunay takes a narrower view of the correct meaning of the operative contractual language. But this dispute about contractual interpretation, interesting though it may be, presents no federal question under the Lanham Act or any other federal law. Even Sandawanas Complaint, which attempts to invoke the jurisdiction of the federal courts under 28 U.S.C. 1331 and 1338, essentially admits that this is, at its root, a lawsuit about an alleged breach of contract. In 24 of that Complaint, Sandawana alleges: Upon information and belief, Defendant has chosen to provide his goods and services using the infringing HENRY DUNAY trademark despite his knowledge that Sandawana purchased all rights, title and goodwill to the Henry Dunay Trademarks from Defendant and Dunay Designs. Colman Decl., Exh. A, at 6. Even the Asset Purchase Agreement through which Plaintiff made its alleged
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purchase makes clear (albeit by implication) that the contract not federal business tort law is intended to govern the rights and remedies between the parties, stating: Nothing in this Agreement is intended to or shall confer any rights or remedies under or by reason of this Agreement on Persons other than Seller and Buyer[.] Id. at 24 (Section 9.9). In other words, the Agreement is intended to confer rights and remedies on the Seller and Buyer, who happen to be the parties in this case. Where [as here] parties enter into an agreement governing their respective rights in a trademark, the contract itself defines their rights in the mark and determines the remedies available for an allegedly unauthorized use of the mark. Society for the Advancement of Educ., Inc. v. Gannett Co., Inc., 98 Civ. 2135 (LMM) 1999 U.S. Dist. LEXIS 700, *26 (S.D.N.Y. Jan. 21, 1999). As such, this is not, and has never been, a case for the federal courts. In light of the foregoing, all of the Courts Orders in this litigation should be vacated under Federal Rule of Civil Procedure 60(b)(4) and and the case should be dismissed with prejudice under Rule 12(b)(1). b. Even if the Court Was Empowered to Exercise Subject Matter Jurisdiction at the Outset of This Case, It Lacked the Requisite Jurisdiction to Issue the November 21st Order As this Court has observed, [a] settlement agreement is a contract, and [t]he enforceability of contracts generally is a question of state law, not federal law. Rosenberg v. Inner City Broad. Corp., 99 Civ. 9579, 2001 U.S. Dist. LEXIS 13192, at *7 (S.D.N.Y. Aug. 30, 2001) (Hellerstein, J.) (footnote omitted). Even assuming arguendo that Sandawana did properly invoke the subject matter jurisdiction of the Court at the outset of the litigation, that jurisdiction has now been exhausted.
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As the Second Circuit explained in Achtman v. Kirby, McInerney & Squire, LLP, 464 F.3d 328, 333 (2d Cir. 2006) (internal citations omitted): The power of the inferior federal courts is limited to those subjects encompassed within a statutory grant of jurisdiction. Although an exercise of judicial power [may be] desirable or expedient, a suit may not proceed absent statutory authorization. . . . In short, jurisdiction cannot simply be expanded by judicial decree. Thus, in addressing whether an injunction could establish an independent basis for subject matter jurisdiction over the action before it, the Achtman court ruled that the Injunction cannot itself furnish jurisdiction over claims that do not fall within one of the traditional statutory grants [like federal-question or diversity jurisdiction.] To hold otherwise would make mincemeat of the limited grants of jurisdiction bestowed upon us. Id. at 334. Recently, the Second Circuit held that given the context of class actions, which are complicated, expensive proceedings involving a multitude of different parties and potential parties . . . [a] district court therefore has the power to enforce an ongoing order against relitigation so as to protect the integrity of a complex class settlement over which it retained jurisdiction. In re Am. Express Fin. Advisors Securities Litigation, No. 10-3399, 2011 U.S. App. LEXIS 22209, at *50 (2d Cir. Nov. 3, 2011). However, this counsel has come across no Second Circuit case squarely holding that a federal district court may retain perpetual and otherwise unlimited jurisdiction over the enforcement of a routine settlement agreement between two parties, simply by endorsing it as a consent decree. While the Supreme Court acknowledged this practice in Kokkonen v. Guardian Life Ins. Co., 511 U.S. 375, 381-82 (1994), it did so only in dicta; in the very same
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opinion, the Court provided a reminder that [i]t is to the holdings of our cases, rather than their dicta, that we must attend[.] Id. at 379. In the apparent absence of binding authority, there is good reason for the Court to find that federal district courts may not create their own bubbles of subject matter jurisdiction over the enforcement of specific settlement agreements that do not raise questions of federal law. Certainty is one such reason: neither the Courts July 20, 2011 Order closing the case but retain[ing] jurisdiction to resolve any disputes arising under the consent decree nor the August 16, 2011 Order endorsing the settlement and closing the case except for enforcement limited the length of time it would retain such jurisdiction, specify how it would determine whether a dispute did, in fact, fall within the scope of the settlement, or indicate how it would resolve such a dispute. (Dkt. 12, 19.) In the absence of prescribed procedures, when a dispute over the settlement agreement did arise in this case, the Court did not employ conventional fact-finding tools that would be available in a new, full-fledged enforcement suit. Instead, the Court made several erroneous findings of fact, essentially sua sponte. For example, the Court summarily stated during the November 14, 2011 proceeding that Ms. Simon was a proxy for Mr. Dunay for purposes of the henrydunay.net domain name registration, Colman Decl., Exh. B at 3, but this was not factually accurate. See Dunay Decl. at 13 (I did not instruct my fiance, Frinette Simon, to purchase the henrydunay.net domain name.) At the very least, the question presented a disputed issue of material fact requiring a jury determination, which was unavailable due to the posture of the case. Likewise, the Court stated during the November 14th proceeding that that
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henrydunay.net domain name and the henrydunay@hotmail.com e-mail address are very similar, such that they should be treated identically for purposes of the Courts Order. Colman Decl., Exh. B at 9. But in fact, there are numerous factual differences between a domain name and an e-mail address. For example, a domain name can make content available to the general Internet-using public, while an e-mail address cannot. Domain names (by virtue of their ability to direct web users to content posted on websites) are capable of performing a marketing function, while an e-mail address cannot practically perform such a function. This issue likely requires expert testimony. As with the Courts finding on the proxy issue, the Courts inaccurate factual findings on the domain name/e-mail address issue (the latter of particular relevance in a dispute concerning trademarks) reveal that fast-tracked enforcement proceedings are illsuited for the adjudication of disputed factual questions. Notably, the U.S. Supreme Court has found that there may well be a line of jurisdictional significance between certain cases present[ing] a nearly pure issue of law . . . that could be settled once and for all and thereafter would govern numerous [federal] cases, and certain fact-bound and situation-specific cases that are ineligible for federal court adjudication. Empire HealthChoice Assur., Inc. v. McVeigh, 547 U.S. 677, 700-701 (2006). Finally, allowing parties to convert a private settlement contract into an official consent decree that purports to grant a federal court jurisdiction over the enforcement of that contract runs directly counter to the well-established rule that parties may not waive objections to lack of subject-matter jurisdiction. And this is not true only of litigants; federal courts, too, have no warrant to expand Congress jurisdictional grant by judicial
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decree. Id. at 696. In short, practical, statutory, and constitutional considerations warrant vacatur of all Orders issued following the parties settlement agreement and resulting dismissal. That the practice of retaining jurisdiction for enforcement purposes might be common cannot, of course, inoculate that practice from scrutiny under fundamental legal principles. 2. The Court Should Vacate Its November 21st Order Under Rule 60 Because It Resulted From Mistake; Because of Sandawanas Misrepresentations and Misconduct; and in the Interest of Justice Even if the Court finds that it possessed the requisite subject matter jurisdiction at all relevant times, it should nevertheless vacate its November 21, 2011 Order (and all portions of the November 14, 2011 Transcript supporting that Order) under various provisions of Federal Rule of Civil Procedure 60, for multiple reasons. a. The Court Should Vacate Its November 21st Summary Order Under Rule 60(a) Due to Legal and Factual Mistake[s] Arising From Oversight and under Rule 60(b)(1) Due to Mistake Federal Rule of Civil Procedure 60(a) authorizes a district court, on a motion or on its own, with or without notice, to correct a mistake arising from oversight or omission whenever one is found in a judgment, order, or other part of the record. Likewise, Rule 60(b)(1) authorizes a court to grant relief from a final judgment, order, or proceeding for, inter alia, mistake. The relevant mistake for purposes of Rules 60(a) and (b) may be an error by the district court. See Schildhaus v. Moe, 335 F.2d 529, 531 (2d Cir. 1964) ([T]here is indeed good sense in permitting the trial court to correct its own error and, if it refuses, in allowing a timely appeal from the refusal; no good purpose is served by requiring the parties to appeal to a higher court, often requiring
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remand for further trial proceedings, when the trial court is equally able to correct its decision[.]) As the Supreme Court has explained, Rule 60(a) reflects the axiomatic fact that courts have the power and the duty to correct [orders] which have issued due to inadvertence or mistake. American Trucking Assns, Inc. v. Frisco, 358 U.S. 133, 145 (1958) (emphasis added). Further, Rule 60(b) is a remedial rule to be liberally construed. Dennis Michels Productions, Inc. v. Kaplan, No. 89 Civ. 3726 (MBM), 1989 U.S. Dist. LEXIS 11631, at *5 (S.D.N.Y. Oct. 4, 1989). With all due respect to the Court, the November 21st Order and the reasoning supporting it, as embodied in the transcript from the November 14th Proceeding, reflect several inadvertent legal and factual mistakes that justify vacatur of the Order. Most significantly, the Court appears to have conflated the notion of a commercial use of a name with a trademark use of a name. This distinction is relevant because the portion of the contract between the parties enumerating assets refers to intellectual property (including trademarks) specifically, and not to commercial uses or even names. In the somewhat analogous case of J.A. Apparel Cop. v. Abboud, 568 F.3d 390, 398 (2d Cir. 2009), the Second Circuit explained: [T]he fact that JA paid a large price for the Joseph Abboud brand (and existing licensing agreements) does not necessarily mean that JA purchased the right to prohibit Abboud from using his name to refer to himself in a non-trademark sense. There is no provision in the Sale Agreement conveying all of Abbouds rights to use his name for commercial purposes, JA Apparel, 591 F. Supp. 2d 306, 2008 WL 2329533, at *9, and the district court was not entitled to supply such a provision in the name of common sense, much less to call it express[]. (Emphasis added.) As in Abboud, the operative language here does not prohibit all commercial uses
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of the name Henry Dunay, and the Court erred in ruling otherwise. Apart from the Asset Purchase Agreement mentioned above, it is instructive to examine key language from the August 16, 2011 Consent Decree from which the November 21st Order derived. That Decree prohibits using the Henry Dunay TRADEMARKS or any mark or design that incorporates and/is [sic] confusingly similar thereto, as a design, trade name, service mark, brand name, domain name, and/or designation of source or origin of any good or services relating to jewelry or the sale, licensing, manufacture, advertising, promotion, and/or distribution thereof. (Dkt. No. 19.) Under the plain language of this provision, for the use of the name Henry Dunay to fall within its scope, it must (a) incorporate and (b) be confusingly similar to the Henry Dunay TRADEMARKS. In Sandawanas Complaint (Dkt. No. 1), it identified three purported HENRY DUNAY Trademarks (Compl. at. 15) none of which comprise the words Henry Dunay in plain text. Each of Sandawanas purported HENRY DUNAY Trademarks consists of WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM. (Emphasis added.) This is significant, because the U.S. Patent and Trademark Office routinely allows registrations in stylized form that it would refuse to register in a non-stylized form. See, e.g., JEAN SHOP trademark registration, USPTO Reg. No. 2986633. Further, the U.S. Patent and Trademark office recognized that the DUNAY registration also in stylized text was substantively different from a registration for HENRY DUNAY. In USPTO Office Action 207734-0050 (Colman Decl., Exh. C), issued in response to the application for the DUNAY mark, the Office rejected a specimen
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showing the stylized HENRY DUNAY logo on a jewelry box. The Trademark Examiner explained: The specimens are also unacceptable [as evidence of use in commerce] because they do not match the drawing [of the plain-but-still-stylized DUNAY mark.] The drawing displays the mark as DUNAY. However, this differs from the display of the mark on the specimen, where it appears as HENRY DUNAY. The applicant cannot amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered. 37 C.F.R. 2.72(a)[.] The language of the Mr. Dunay has at no point since the August 16, 2011 Order incorporated any of the stylized HENRY DUNAY Trademarks into his websites, online profiles, or anything else. Dunay Decl. at 17. To the extent the Court ruled otherwise, it has committed a mistake or oversight warranting vacatur under Rule 60. But even assuming arguendo the HENRY DUNAY Trademarks were incorporated into any of Mr. Dunays materials, the uses of Mr. Dunays name at issue here are not, as a matter of law, trademark uses for the purposes of the parties contracts (like, for example, a simple e-mail address or on a non-unique facebook profile (as opposed a unique facebook Page, which is unique and may be commercial in nature. Colman Decl. at 7-10.) Again, under the plain language of the August 16th Order, Sandawana is not entitled to any relief in the absence of likelihood of confusion, let alone the extreme remedy the Court granted to the Plaintiff in its the November 21st Order. Respectfully, this counsel submits that the Court made the same reversible error of law that the district court made in Abboud: in issuing its November 21st Order to
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assign all other internet accounts bearing [Henry Dunays] name to Plaintiff, the Court erroneously resolved [the operative question] without considering the proposed uses themselves, and gave no indication of having considered such matters as the size, location, or context of the [designers] name[.] Abboud, 568 F.3d at 402. Facebook While similar in nomenclature, facebook profiles are fundamentally different from facebook pages. Facebook profiles (see, e.g., Colman Decl. at 7-10) serve a primarily social function: to connect one with ones friends and acquaintances. Notably, there is no limit to the number of facebook profiles that can be created for any given name, to the doubtless relief of the John Smiths of the world. Id. Facebook pages, by contrast, often serve commercial purposes, and do not have friends, but rather a certain number of Likes, or fans. Id. There can be only one facebook page under a certain name or phrase, id., and Mr. Dunay never created one. Dunay Decl. at 12. Mr. Dunay did create a facebook profile, which had approximately 200 friends, but over 90% of these individuals are, in fact, social acquaintances of Mr. Dunay and not customers or fans. Dunay Decl. at 11. There are often many facebook profiles for individuals with the same name, which prevents similarly-named people from being blocked out of the social network. Colman Decl. at 8. Nevertheless, following the Courts issuance of its November 21st Order, Sandawana demanded access to Mr. Dunays facebook profile, which he has never used for substantial commercial purposes. Dunay Decl. at 10. Indeed, the noncommercial nature of Mr. Dunays facebook profile is underscored by the fact that it was
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Private, such that most of the information it contained about him was not visible to the general public. Id. If one were to give Sandawana the benefit of the doubt, one might imagine that Sandawana wants access to Dunays profile because it assumes that his facebook friends are primarily customers. But that is not the case. Dunay Decl. at 11 (I used facebook to stay in touch with [friends and acquaintances.] I do not consider this group of people to be a client list, or anything else of the sort.) If Sandawana wished to create its own profile OR page for Henry Dunay, it could do so today (though Defendant would dispute the legality of that action. But even giving Sandawana this benefit of the doubt at to its motives or misunderstandings, the threatening manner in which its representative demanded access to Defendants facebook profile going so far as to tell a 76-year-old in poor health problems that he would be put in jail if he did not let a Sandawana employee into his apartment to log in to his facebook profile, Dunay Decl. at 25 is inexcusable, warranting vacatur of the November 21st Order on its own (as further explained below.) Twitter Nor is a Twitter account, by itself, inherently likely to confuse as to source, even when it is an exact duplicate of a registered mark. Yet the Court lumped it in with all other Internet accounts, apparently without having inquired into how this platform worked or how Mr. Dunay had used his account. See generally Colman Decl., Exh. B. Thus, leaving aside for the moment the fact that Mr. Dunay has cancelled his Twitter account, it is informative to examine his actual tweets, many of which are dedicated primarily to dispelling potential consumer confusion, rather than encouraging it.
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See, e.g.: 12: HENRY DUNAY: Im Giving CERTIFICATES OF AUTHENTICITY For Every Piece of Jewelry That I Made Under Dunay Logo Since I Dont Own That Company 2127689700 6:00 PM Nov 17th, 2010 14: HENRY DUNAY: Info ABOUT ME & WHERE YOU CAN FIND MY LATEST COLLECTIONS: [http://]henrydunay.net ONLY Under My New Company H.D.D. Inc. With LOGO 1:27 PM Nov 10th, 2010 17: HENRY DUNAY: Im Back to Design & Make JEWELRY, as Ive Been Making For The Past 50 Years! ONLY with MY NEW LOGO: HD Under My New Company HDD Inc. 2:46 Oct 14th, 2010
Colman Decl., Exh. A at 54-56 (capitalization original; spacing modified). Indeed, rather than attempting to confuse the public, Mr. Dunay has sought to inform the public that he not associated with a company that is selling designs he was not involved in creating or approving. Dunay Decl. at 20. One can only gather from Sandawanas efforts to poach Mr. Dunays entire online identity that it does not share the same concern about consumer confusion. E-mail Account(s) As discussed above, the Court appears to have erroneously conflated the very different creatures of domain names, which serve as addresses for websites visible to the public and can thus serve a passive marketing function, with e-mail addresses, which can serve only active communicative functions and are ill-suited to marketing. See Colman Decl., Exh. B at Transcript Page 9. All Other Internet Accounts Bearing [Mr. Dunays] Name The overly broad language of the Courts November 21st Order, requiring that he assign[] the henrydunay.net domain name and all other internet accounts bearing
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his name to Plaintiff, if allowed to stand, would effectively prevent Mr. Dunay not only from engaging in any commerce on the Internet, but from using the Internet at all. Further, the bolded portion of the Order is entirely untethered from the strictly limited language of the parties settlement agreement, as embodied in the Courts August 16th Order. As such, the November 21st Order should be vacated on the ground of mistake under Rules 60(a) and (b). b. The Court Should Vacate Its November 21st Order Under Rule 60(b)(3) Due to Plaintiffs Misrepresentations and Misconduct, and/or under Rule 60(b)(6) for Any Other Reason That Justifies Relief, Including Sandawanas Demonstrated Intention to Abuse the Order If the Court Allows It to Stand Federal Rule of Civil Procedure 60(b)(3) provides that a court may on motion and just terms, [a] court may relieve a party . . . from a final judgment, order, or proceeding for . . . fraud (whether previously called intrinsic or extrinsic), misrepresentation, or misconduct by an opposing party. Misrepresentations or misconduct warranting relief need not be intentional in nature. See Catskill Dev., L.L.C. v. Park Place Entm't Corp., 286 F. Supp. 2d 309, 315 (S.D.N.Y. 2003). The manner in which Sandawana and its representatives have conducted themselves, abusing the Courts November 21st Order through misrepresentations to and deliberate intimidation of an older pro se litigant, justifies vacatur of the November 21st Order under Fed. R. Civ. P. 60(b)(3) or 60(b)(6). Mr. Dunays Declaration speaks for itself. See, e.g., Dunay Decl. at 21 (I believe Sandawanas conduct (primarily through its attorneys) has been reprehensible at many points during this litigation.); 22 (In part for this reason, this litigation has taken a great emotional toll on me, which
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may well have adversely impacted my health.); 23 (After my previous counsel withdrew from this case, Sandawanas conduct became much more aggressive. It seemed that they are trying to intimidate me, perhaps because I was not represented for a time, or perhaps because of my age.); 24 (In one especially traumatic episode, Sandawanas lawyer, Peter Berger, called me on November 24, 2011, at around 12:10 P.M., in which he demanded that I transfer my private, personal facebook account, my Twitter account, and the henrydunay.net domain name (the last of which has since been transferred.); 25 (Berger stated that I had better transfer all of these to Sandawana soon, as he did not want to have to put me in jail for contempt.); 26 (As long as Sandawana continues its threats, I will continue to suffer emotionally and am afraid to maintain any identifiable presence on the Internet.) Sandawana should not be rewarded for its behavior; instead, the November 21st Order should be vacated. 3. If the Court Finds that It Possessed the Requisite Jurisdiction at All Times and Declines to Vacate Its Orders in this Action, It Should Nevertheless Stay the Effect of Those Orders Pending Appeal If the Court declines to vacate its November 21st Order under any of the foregoing bases, it should nevertheless stay the effect of that Order pending appeal, particularly in light of Plaintiffs demonstrated intention to abuse it. To the extent any relevant Orders are interlocutory in nature, an immediate appeal may be taken from them under 28 U.S.C. 1292(a)(1) because the Orders are directed to a party, enforceable by contempt, and designed to accord or protect some or all of the substantive relief sought by a complaint. HBE Leasing Corp. v. Frank, 48 F.3d 623, 633-34 (2d Cir. 1995) (internal citations omitted). Of course, to the extent these Orders
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are final, they are immediately appealable.
IV. CONCLUSION If Sandawana is to have its way, Henry will be effectively banished from using his name on the Internet. This would not only be inequitable and very likely unconstitutional, it is a result at odds with the parties Asset Purchase Agreement, the August 2011 settlement (which contains an exception for descriptive uses), and the fundamental purpose of trademark law to prevent confusion which has received only perfunctory lip service by Sandawana. In the interest of justice, factual and legal mistakes made, Plaintiffs misrepresentations and misconduct, and, most importantly, the Courts lack of jurisdiction to issue the Order(s) in question or even hear this case, the August 16, 2011 and November 21, 2011 Orders should be vacated and the case dismissed with prejudice. Defendant would greatly appreciate a ruling from the Court on all issues briefed in this Memorandum of Law as soon as practicable, as Mr. Dunays filing of a Notice of Appeal will divest the Court of jurisdiction for the time being. Dated: New York, New York December 5, 2011
By: ____/s/ Charles E. Colman____ Charles E. Colman, Esq. Charles Colman Law, PLLC 1776 Broadway, 21st Floor New York, NY 10019-0064 Telephone: (917) 515-5875 Fax: (917) 534-6294 cc@charlescolmanlaw.com Attorney for Defendant Henry Dunay
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EXHIBIT G
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Charles E. Colman (CC-1133) CHARLES COLMAN LAW, PLLC 1776 Broadway, 21st Floor New York, NY 10019-2002 Phone: (917) 515-5875 Fax: (917) 534-6294 Attorney for Defendant-Appellant Henry Dunay UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK -----------------------------------------------------------X X SANDAWANA HOLDINGS LTD., X X Plaintiff, X X -v.X X HENRY DUNAY, X Defendant. X X -----------------------------------------------------------X
No. 1:11-CV-02712 (AKH) ECF Case
NOTICE OF APPEAL Notice is hereby given that Henry Dunay, Defendant in the above-captioned case, hereby appeals to the United States Court of Appeals for the Second Circuit from the portions of the United States District Court for the Southern District of New Yorks December 14, 2011 Order (a copy of which is attached hereto as Exhibit A) 1) refusing to dismiss this action, and accordingly refusing to vacate all decisions and orders issued thus far in this case, for lack of subject-matter jurisdiction; 2) ruling that the District Court properly retained, and continues to properly retain, subject-matter jurisdiction over this action to oversee the enforcement of its August 16, 2011 Consent Order; and 3) in the alternative, refusing to vacate in full the District Courts November 14, 2011 proceeding and its November 21, 2011 Summary Order; each of the three above-mentioned types of
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relief having been properly requested in Defendant Henry Dunays December 5, 2011 Motion for Vacatur of the Courts August 19, 2011 and November 21, 2011 Orders and for Dismissal of This Action, or, in the Alternative, for a Stay Pending Appeal.
Dated: New York, New York January 9, 2012 CHARLES COLMAN LAW, PLLC
By: Charles E. Colman (CC-1133) 1776 Broadway, 21st Floor New York, NY 10019-2002 Phone: (917) 515-5875 Fax: (917) 534-6294 cc@charlescolmanlaw.com Attorney for Defendant-Appellant Henry Dunay TO: Peter L. Berger Jonathan A. Berger LEVISHON BERGER LLP 11 Broadway Suite 615 New York, NY 10004 212-486-7272 Fax: 212-486-0323 Email: pberger@llbl.com Email: jberger@llbl.com Attorney for Plaintiff-Appellee Sandawana Holdings Ltd.
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EXHIBIT H
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CLOSED, APPEAL, ECF
U.S. District Court Southern District of New York (Foley Square) CIVIL DOCKET FOR CASE #: 1:11-cv-02712-AKH
Sandawana Holdings Ltd v. Dunay Assigned to: Judge Alvin K. Hellerstein Cause: 15:1114 Trademark Infringement Date Filed: 04/20/2011 Date Terminated: 07/20/2011 Jury Demand: Defendant Nature of Suit: 840 Trademark Jurisdiction: Federal Question
Plaintiff Sandawana Holdings Ltd represented by Peter L. Berger LEVISHON BERGER LLP 11 Broadway Suite 615 New York, NY 10004 212-486-7272 Fax: 212-486-0323 Email: pberger@LLBL.com LEAD ATTORNEY ATTORNEY TO BE NOTICED Jonathan Andrew Berger Levisohn, Berger & Langsam, LLP 805 Third Avenue, 19 Fl. New York, NY 10022 (212)-486-7272 Fax: (212)-486-0323 Email: jberger@llbl.com ATTORNEY TO BE NOTICED
V. Defendant Henry Dunay represented by Charles Edward Colman Charles Colman Law, PLLC 1776 Broadway, 21st Floor New York, NY 10019 (917)-515-5875 Fax: (917)-534-6294 Email: cc@charlescolmanlaw.com LEAD ATTORNEY ATTORNEY TO BE NOTICED Mitchell J. Devack Law Offices of Mitchell J. Devack, Pllc 90 Merrick Avenue, Suite 500 East Meadow, NY 11554
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(516)-794-2800 Fax: (516)-794-2900 Email: ty@devacklaw.com TERMINATED: 11/30/2011 LEAD ATTORNEY
Date Filed 04/20/2011
# 1
Docket Text COMPLAINT against Henry Dunay. (Filing Fee $ 350.00, Receipt Number 1004686)Document filed by Sandawana Holdings Ltd.(ama) (Entered: 04/21/2011) SUMMONS ISSUED as to Henry Dunay. (ama) (Entered: 04/21/2011) Magistrate Judge Ronald L. Ellis is so designated. (ama) (Entered: 04/21/2011) Case Designated ECF. (ama) (Entered: 04/21/2011)
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RULE 7.1 CORPORATE DISCLOSURE STATEMENT. No Corporate Parent. Document filed by Sandawana Holdings Ltd.(ama) (Entered: 04/21/2011) Mailed notice to Commissioner of Patents and Trademarks to report the filing of this action. (ama) (Entered: 04/21/2011)
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ANSWER to 1 Complaint with JURY DEMAND. Document filed by Henry Dunay. (Attachments: # 1 Certificate of Service)(Devack, Mitchell) (Entered: 05/24/2011) ORDER TO SHOW CAUSE: It is hereby ordered that the above named defendant show cause on 7/19/2011 at 02:30 PM in Courtroom 14D, 500 Pearl Street, New York, NY 10007 before Judge Alvin K. Hellerstein, why an order should not be issued pursuant to F.R.C.P. 65(a), as set forth in this Order. ENDORSEMENT: It is further ordered that defendant's opposition papers, if any, shall be filed with the Clerk of this Court and served upon the attorneys for plaintiff no later than June 28, 2011. Any reply shall be filed and served upon the attorneys for defendant no later than July 8, 2011. (Signed by Judge Alvin K. Hellerstein on 6/10/2011) (jpo) (Entered: 06/10/2011) Set/Reset Deadlines: Replies due by 7/8/2011. (jpo) (Entered: 06/10/2011)
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MEMORANDUM OF LAW in Opposition re: 4 Order to Show Cause,,. Document filed by Henry Dunay. (Attachments: # 1 Certificate of Service)(Devack, Mitchell) (Entered: 06/28/2011) FILING ERROR - ELECTRONIC FILING FOR NON-ECF DOCUMENT FIRST MOTION for Order to Show Cause for Preliminary Injunction. Document filed by Sandawana Holdings Ltd. Return Date set for 6/28/2011 at 05:00 PM. (Attachments: # 1 Memorandum, # 2 Affidavit Jain Aff, # 3 Affidavit Berger Aff)(Berger, Jonathan) Modified on 6/28/2011 (db). (Entered: 06/28/2011)
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AFFIDAVIT of Henry Dunay in Opposition re: 4 Order to Show Cause,,. Document filed by Henry Dunay. (Attachments: # 1 Exhibit A, # 2 Certificate of Service)(Devack, Mitchell) (Entered: 06/28/2011) AFFIDAVIT of Frinette Simon in Opposition re: 4 Order to Show Cause,,. Document filed by Henry Dunay. (Attachments: # 1 Certificate of Service)(Devack, Mitchell) (Entered: 06/28/2011) ***NOTE TO ATTORNEY TO RE-FILE DOCUMENT - NON-ECF DOCUMENT ERROR. Note to Attorney Jonathan Andrew Berger to EMAIL Document No. 6 Order to Show Cause to judgments@nysd.uscourts.gov. This document is not filed via ECF. (db) (Entered: 06/28/2011)
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FILING ERROR - WRONG EVENT TYPE SELECTED FROM MENU RESPONSE in Support re: 6 FIRST MOTION for Order to Show Cause for Preliminary Injunction. Response to Defendant's Opposition to Plaintiff's Motion. Document filed by Sandawana Holdings Ltd. (Berger, Jonathan) Modified on 7/8/2011 (ldi). (Entered: 07/07/2011) ***NOTE TO ATTORNEY TO RE-FILE DOCUMENT - EVENT TYPE ERROR. Note to Attorney Jonathan Andrew Berger to RE-FILE Document 9 Response in Support of Motion. Use the event type Reply Memorandum of Law in Support (non-motion) found under the event list Other Answers. Re-File and link to document # 4 Order to Show Cause. (ldi) (Entered: 07/08/2011)
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FILING ERROR - DEFICIENT DOCKET ENTRY - FIRST REPLY MEMORANDUM OF LAW in Support re: 6 FIRST MOTION for Order to Show Cause for Preliminary Injunction. Document filed by Sandawana Holdings Ltd. (Berger, Jonathan) Modified on 7/8/2011 (ldi). (Entered: 07/08/2011) ***NOTE TO ATTORNEY TO RE-FILE DOCUMENT - DEFICIENT DOCKET ENTRY ERROR. Note to Attorney Jonathan Andrew Berger to RE-FILE Document 10 Reply Memorandum of Law in Support of Motion. ERROR(S): Document linked to filing error. ***REMINDER*** You must re-file this document as a Reply Memorandum of Law in Support (nonmotion) and link it to document # 4 Order to Show Cause, Document #6 is NOT a motion. (ldi) (Entered: 07/08/2011)
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FIRST REPLY MEMORANDUM OF LAW in Support re: 6 FIRST MOTION for Order to Show Cause for Preliminary Injunction., 8 Affidavit in Opposition, 7 Affidavit in Opposition, 5 Memorandum of Law in Opposition. Document filed by Sandawana Holdings Ltd. (Berger, Jonathan) (Entered: 07/08/2011) ORDER CLOSING CASE: The parties having reached a settlement, the Clerk is directed to mark the case closed. The complaint is dismissed with prejudice but without costs or interest to either party. I will retain jurisdiction to resolve any disputes arising under the consent decree. (Signed by Judge Alvin K. Hellerstein on 7/20/2011) (ab) (Entered: 07/20/2011) ENDORSED LETTER addressed to Judge Alvin K Hellerstein from Peter Berger dated 7/27/11 re: Request for additional time to finalize an
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agreement. ENDORSEMENT: Time is enlarged to 8/12/11 at 4:00 pm. (Signed by Judge Alvin K. Hellerstein on 7/28/11) (cd) (Entered: 07/28/2011) 07/29/2011 14 ENDORSED LETTER addressed to Judge Alvin K. Hellerstein from Peter L. Berger dated 7/27/2011 re: Counsel request that Your Honor allow additional time for counsel to attempt to resolve the differences and to conclude an agreement and permanent injunction. ENDORSEMENT: Time is enlarged to Aug 12, 2011 at 4:00 p.m. So Ordered. (Signed by Judge Alvin K. Hellerstein on 7/28/2011) (jfe) (Entered: 07/29/2011) TRANSCRIPT of Proceedings re: Conference held on 7/19/2011 before Judge Alvin K. Hellerstein. Court Reporter/Transcriber: Andrew Walker, (212) 805-0300. Transcript may be viewed at the court public terminal or purchased through the Court Reporter/Transcriber before the deadline for Release of Transcript Restriction. After that date it may be obtained through PACER. Redaction Request due 8/29/2011. Redacted Transcript Deadline set for 9/8/2011. Release of Transcript Restriction set for 11/7/2011.(McGuirk, Kelly) (Entered: 08/04/2011) NOTICE OF FILING OF OFFICIAL TRANSCRIPT Notice is hereby given that an official transcript of a Conference proceeding held on 7/19/11 has been filed by the court reporter/transcriber in the above-captioned matter. The parties have seven (7) calendar days to file with the court a Notice of Intent to Request Redaction of this transcript. If no such Notice is filed, the transcript may be made remotely electronically available to the public without redaction after 90 calendar days...(McGuirk, Kelly) (Entered: 08/04/2011) FILING ERROR - ELECTRONIC FILING FOR NON-ECF DOCUMENT FIRST MOTION for Permanent Injunction Jointly Filed by Counsel for Both Parties In This Matter. Document filed by Sandawana Holdings Ltd.(Berger, Jonathan) Modified on 8/15/2011 (ldi). (Entered: 08/12/2011) ***NOTE TO ATTORNEY TO RE-FILE DOCUMENT - NON-ECF DOCUMENT ERROR. Note to Attorney Jonathan Andrew Berger to EMAIL Document No. 17 Consent Order to judgments@nysd.uscourts.gov. This document is not filed via ECF. (ldi) (Entered: 08/15/2011) 18 ENDORSED LETTER: addressed to Judge Alvin K. Hellerstein from Peter L. Berger dated 8/11/2011 re: Counsel for plaintiff requests an extension until Friday, August 18, 2011 so that the parties can review and sign off on the necessary documents to close this matter. ENDORSEMENT: So Ordered. (Signed by Judge Alvin K. Hellerstein on 8/15/2011) (js) (Entered: 08/16/2011) ORDER: Defendant Henry Dunay, HDD, HDD's affiliates, HDD's divisions, and HDD's subsidiaries, as well as HDD's respective principals, officers, agents, servants. employees and all others acting in direct and/or indirect concert or participation with them, be and hereby are permanently and restrained on a worldwide basis from: using the Henry Dunay TRADEMARKS or any mark or design that incorporates and/is confusingly similar thereto, as a design, trade name, service mark, brand name, domain name. and/or designation of source or origin of any good or services relating to jewelry or the sale, licensing, manufacture, advertising, promotion, and/or
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distribution thereof. All other provisions as further set forth in this order. ENDORSEMENT: Approved and Entered by the Court; the Clerk shall close the file except for enforcement So Ordered (Signed by Judge Alvin K. Hellerstein on 8/16/2011) (js) . (Entered: 08/16/2011) 10/20/2011 20 FILING ERROR - ELECTRONIC FILING FOR NON-ECF DOCUMENT FIRST MOTION for Sanctions in Contempt of Consent Order. Document filed by Sandawana Holdings Ltd.(Berger, Jonathan) Modified on 10/20/2011 (ldi). (Entered: 10/20/2011) FILING ERROR - DEFICIENT DOCKET ENTRY - AFFIDAVIT of Peter L. Berger in Support re: 20 FIRST MOTION for Sanctions in Contempt of Consent Order. Document filed by Sandawana Holdings Ltd. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10)(Berger, Jonathan) Modified on 10/20/2011 (ldi). (Entered: 10/20/2011) CERTIFICATE OF SERVICE of Motion, memorandum of law, affidavit of Peter L. Berger and corresponding exhibits served on Henry Dunay on October 19, 2011. Service was made by Mail via Fed Express. Document filed by Sandawana Holdings Ltd. (Attachments: # 1 Exhibit)(Berger, Jonathan) (Entered: 10/20/2011) ***NOTE TO ATTORNEY TO RE-FILE DOCUMENT - NON-ECF DOCUMENT ERROR. Note to Attorney Jonathan Andrew Berger to EMAIL Document No. 20 Order To Show Cause to Judgments@nysd.uscourts.gov. This document is not filed via ECF. (ldi) (Entered: 10/20/2011) ***NOTE TO ATTORNEY TO RE-FILE DOCUMENT - DEFICIENT DOCKET ENTRY ERROR. Note to Attorney Jonathan Andrew Berger to RE-FILE Document 21 Affidavit in Support of Motion. ERROR(S): Document linked to filing error. You may re-file this document using event type Affidavit in Support (non-motion) found under the event list Other Answers. (ldi) (Entered: 10/20/2011) 23 FILING ERROR - DEFICIENT DOCKET ENTRY - FIRST MEMORANDUM OF LAW in Support re: 20 FIRST MOTION for Sanctions in Contempt of Consent Order.. Document filed by Sandawana Holdings Ltd. (Berger, Jonathan) Modified on 10/20/2011 (db). (Entered: 10/20/2011) ***NOTE TO ATTORNEY TO RE-FILE DOCUMENT - DEFICIENT DOCKET ENTRY ERROR. Note to Attorney Jonathan Andrew Berger to RE-FILE Document 23 Memorandum of Law in Support of Motion. ERROR(S): Document linked to filing error. (db) (Entered: 10/20/2011) 24 MOTION for The Law Offices of Mitchell J. Devack, PLLC to Withdraw as Attorney. Document filed by Henry Dunay. Return Date set for 11/8/2011 at 10:00 AM. (Attachments: # 1 Certificate of Service)(Devack, Mitchell) (Entered: 10/21/2011) AFFIRMATION of Nicholas P. Otis, Esq. in Support re: 24 MOTION for The Law Offices of Mitchell J. Devack, PLLC to Withdraw as Attorney.. Document filed by Henry Dunay. (Attachments: # 1 Exhibit A, # 2
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Certificate of Service)(Devack, Mitchell) (Entered: 10/21/2011) 10/21/2011 26 MEMORANDUM OF LAW in Support re: 24 MOTION for The Law Offices of Mitchell J. Devack, PLLC to Withdraw as Attorney.. Document filed by Henry Dunay. (Attachments: # 1 Certificate of Service)(Devack, Mitchell) (Entered: 10/21/2011) ENDORSED LETTER addressed to Judge Alvin K. Hellerstein from Nicholas P. Otis dated 10/21/2011 re: Enclosed please find courtesy copies of a Notice of Motion, Affirmation and Memorandum of Law, relative to out firm's motion for leave to withdraw as counsel of record for defendant, Henry Dunay. The Motion was e-filed on October 21, 2011. ENDORSEMENT: Motion denied, w/out prejudice to a renewal oral application at argument of Plfs motion for sanctions, returnable 11/14/2011, 10:00 a.m.. (Signed by Judge Alvin K. Hellerstein on 11/3/2011) (rdz) (Entered: 11/04/2011) ORDER TO SHOW CAUSE filed by Sandawana Holdings Ltd. Defenendant shall show cause as to why judgment should not be issued pursuant to Fed. R. Civ. P. 70, that (1) Defendant should be held in violation of the consent order, (2) that Defendant take down and be temporarily enjoined from using its website until Defendant complies in full with the consent order; (3) that the www.henrydunay.net domain name be turned over to Plaintiff; and (4) that Defendant pay Plaintiff's attorneys' fees relating to this Enforcement Application. Show Cause Hearing set for 11/14/2011 at 10:00 AM in Courtroom 14D, 500 Pearl Street, New York, NY 10007 before Judge Alvin K. Hellerstein. (Signed by Judge Alvin K. Hellerstein on 11/4/2011) (rdz) (Entered: 11/04/2011) FILING ERROR - WRONG EVENT TYPE SELECTED FROM MENU FIRST MOTION for Sanctions. Document filed by Sandawana Holdings Ltd. Return Date set for 11/14/2011 at 10:00 AM.(Berger, Jonathan) Modified on 11/7/2011 (ldi). (Entered: 11/04/2011) FILING ERROR - WRONG EVENT TYPE SELECTED FROM MENU AFFIDAVIT of Peter L. Berger in Support re: 29 FIRST MOTION for Sanctions.. Document filed by Sandawana Holdings Ltd. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10)(Berger, Jonathan) Modified on 11/7/2011 (ldi). (Entered: 11/04/2011) CERTIFICATE OF SERVICE of Order to Show Cause, Memorandum of Law, Affidavit of Peter L. Berger and Corresponding Exhibits, Certificate of Service served on Henry Dunay on 10/18/2011. Service was accepted by Henry Dunay (See enclosed redacted email from Henry Dunay indicating receipt of sanction documents). Service was made by Fed Ex. Document filed by Sandawana Holdings Ltd. (Berger, Jonathan) (Entered: 11/04/2011) ***NOTE TO ATTORNEY TO RE-FILE DOCUMENT - EVENT TYPE ERROR. Note to Attorney Jonathan Andrew Berger to RE-FILE Document 29 FIRST MOTION for Sanctions. Use the event type Memorandum of Law in Support (non-motion) found under the event list Other Answers. Re-File and link to document # 28 Order To Show Cause. (ldi) (Entered: 11/07/2011)
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***NOTE TO ATTORNEY TO RE-FILE DOCUMENT - EVENT TYPE ERROR. Note to Attorney Jonathan Andrew Berger to RE-FILE Document 30 Affidavit in Support of Motion. Use the event type Affidavit in Support (non-motion) found under the event list Other Answers. Re-File and link to document # 28 Order To Show Cause. (ldi) (Entered: 11/07/2011) 32 FIRST MEMORANDUM OF LAW in Support re: 28 Order to Show Cause,,. Document filed by Sandawana Holdings Ltd. (Berger, Jonathan) (Entered: 11/08/2011) AFFIDAVIT of Peter L. Berger in Support re: 28 Order to Show Cause,,. Document filed by Sandawana Holdings Ltd. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10)(Berger, Jonathan) (Entered: 11/08/2011) FILING ERROR - DEFICIENT DOCKET ENTRY - MEMORANDUM OF LAW in Opposition re: 20 FIRST MOTION for Sanctions in Contempt of Consent Order. Document filed by Henry Dunay. (Attachments: # 1 Certificate of Service)(Devack, Mitchell) Modified on 11/14/2011 (ldi). (Entered: 11/10/2011) FILING ERROR - DEFICIENT DOCKET ENTRY - AFFIDAVIT of Henry Dunay in Opposition re: 20 FIRST MOTION for Sanctions in Contempt of Consent Order. Document filed by Henry Dunay. (Attachments: # 1 Certificate of Service)(Devack, Mitchell) Modified on 11/14/2011 (ldi). (Entered: 11/10/2011) ***NOTE TO ATTORNEY TO RE-FILE DOCUMENT - DEFICIENT DOCKET ENTRY ERROR. Note to Attorney Mitchell J. Devack to REFILE Document 34 Memorandum of Law in Opposition to Motion, 35 Affidavit in Opposition to Motion. ERROR(S): Documents linked to filing error. Re-File using event types: Memorandum of Law in Opposition (nonmotion) and Affidavit in Opposition (non-motion) found under the event list Other Answers, then link to document # 28 Order To Show Cause. (ldi) (Entered: 11/14/2011) Minute Order Proceedings held before Judge Alvin K. Hellerstein: Oral Argument held on 11/14/2011 re: Motion for Contempt. Partially granted. (cd) (Entered: 11/17/2011) 36 SUMMARY ORDER: On November 14, 2011, a hearing was held regarding Plaintiff's motion for sanctions. For the reasons stated on the record, the Court shall find Defendant in contempt unless he assigns the henrydunay.net domain name and all other internet accounts bearing his name to Plaintiff by November 22, 2011. (Signed by Judge Alvin K. Hellerstein on 11/21/2011) (mro) (Entered: 11/22/2011) ORDER: The Law Offices of MitcheU J. Devack, PLLC moved pursuant to Local Civil Rule 1.4 for leave to withdraw as counsel for Defendant. For the reasons stated on the record during the November 14, 2011 conference, the motion is granted and the Law Offices of Mitchell J. Devack, PLLC is relieved as counsel for Defendant as of November 14,2011 (Signed by Judge Alvin K. Hellerstein on 11/30/2011) (cd) (Entered: 12/01/2011)
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NOTICE OF APPEARANCE by Charles Edward Colman on behalf of Henry Dunay (Colman, Charles) (Entered: 12/05/2011) MOTION to Vacate the August 16, 2011 and November 21, 2011 Orders of the Court and for Dismissal of This Action, Or, in the Alternative, for a Stay Pending Appeal. Document filed by Henry Dunay.(Colman, Charles) (Entered: 12/05/2011) MEMORANDUM OF LAW in Support re: 39 MOTION to Vacate the August 16, 2011 and November 21, 2011 Orders of the Court and for Dismissal of This Action, Or, in the Alternative, for a Stay Pending Appeal.. Document filed by Henry Dunay. (Colman, Charles) (Entered: 12/05/2011) DECLARATION of Henry Dunay in Support re: 39 MOTION to Vacate the August 16, 2011 and November 21, 2011 Orders of the Court and for Dismissal of This Action, Or, in the Alternative, for a Stay Pending Appeal.. Document filed by Henry Dunay. (Colman, Charles) (Entered: 12/05/2011) DECLARATION of Charles E. Colman in Support re: 39 MOTION to Vacate the August 16, 2011 and November 21, 2011 Orders of the Court and for Dismissal of This Action, Or, in the Alternative, for a Stay Pending Appeal.. Document filed by Henry Dunay. (Attachments: # 1 Exhibit Plaintiff's Complaint and Accompanying Exhibits, # 2 Exhibit Transcript of November 14, 2011 Proceeding, # 3 Exhibit USPTO Office Action Concerning Relevant Mark(s), # 4 Exhibit Sample Facebook personal profile, # 5 Exhibit Sample Facebook business page)(Colman, Charles) (Entered: 12/05/2011) CERTIFICATE OF SERVICE of Notice of Motion, Memorandum of Law, Declarations with Exhibits served on Sandawana Holdings Ltd. on December 5, 2011. Service was made by E-mail. Document filed by Henry Dunay. (Colman, Charles) (Entered: 12/05/2011) ENDORSED LETTER addressed to Judge Alvin K. Hellerstein from Peter L. Berger dated 12/2/2011 re: Counsel request that Mr, Dunay be held in contempt of the Order and that the legal fees and expenses incurred by Sandawana in seeking enforcement of the consent order signed by the court on August 16. 2011 be awarded. Counsel also request that the Court order that Sandawana and Ankit Jain be appointed to have authority to effect transfers of the Facebook, Twitter and HenryDunay.hotmail accounts. ENDORSEMENT: A motion for contempt must be supported by proofs, duly sworn. This application by letter is denied without prejudice. The motion if filed, may ask for appropriate monetary sanctions, as well as compliance. (Signed by Judge Alvin K. Hellerstein on 12/5/2011) (jfe) (Entered: 12/05/2011) TRANSCRIPT of Proceedings re: Conference held on 11/14/2011 before Judge Alvin K. Hellerstein. Court Reporter/Transcriber: Joseph Quinones, (212) 805-0300. Transcript may be viewed at the court public terminal or purchased through the Court Reporter/Transcriber before the deadline for Release of Transcript Restriction. After that date it may be obtained through PACER. Redaction Request due 12/30/2011. Redacted Transcript Deadline set for 1/9/2012. Release of Transcript Restriction set for 3/8/2012.(McGuirk, Kelly) (Entered: 12/06/2011)
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NOTICE OF FILING OF OFFICIAL TRANSCRIPT Notice is hereby given that an official transcript of a Conference proceeding held on 11/14/11 has been filed by the court reporter/transcriber in the above-captioned matter. The parties have seven (7) calendar days to file with the court a Notice of Intent to Request Redaction of this transcript. If no such Notice is filed, the transcript may be made remotely electronically available to the public without redaction after 90 calendar days...(McGuirk, Kelly) (Entered: 12/06/2011) SECOND MOTION for Sanctions Against Defendant. Document filed by Sandawana Holdings Ltd.(Berger, Jonathan) (Entered: 12/09/2011) FIRST MEMORANDUM OF LAW in Support re: 47 SECOND MOTION for Sanctions Against Defendant.. Document filed by Sandawana Holdings Ltd. (Berger, Jonathan) (Entered: 12/09/2011) DECLARATION of Peter Berger in Support re: 47 SECOND MOTION for Sanctions Against Defendant.. Document filed by Sandawana Holdings Ltd. (Berger, Jonathan) (Entered: 12/09/2011) DECLARATION of Ankit Jain in Support re: 47 SECOND MOTION for Sanctions Against Defendant.. Document filed by Sandawana Holdings Ltd. (Berger, Jonathan) (Entered: 12/09/2011) CERTIFICATE OF SERVICE of Notice of Motion, Motion, Declarations of Peter L. Berger and Ankit Jain and their corresponding exhibits, Proposed Order served on Henry Dunay on December 9, 2011. Service was accepted by Charles Colman. Service was made by electronic email. Document filed by Sandawana Holdings Ltd. (Attachments: # 1 Text of Proposed Order)(Berger, Jonathan) (Entered: 12/09/2011) ORDER terminating 39 Motion to Vacate. Defendant has moved for vacatur of the Court's August 19, 2011 and November 21, 2011 Orders and for dismissal of this action or, in the alternative, for a stay pending appeal. Defendant argues that the Court lacks subject matter jurisdiction. The Court has jurisdiction for trademark infringement actions pursuant to 28 U.S.C. 1338. The Court's retention of jurisdiction for enforcement of the August 16, 2011 Consent Order pursuant to the Consent Order's terms is likewise proper. In re Am. Express Fin. Advisors Sec. Litig., 2011 WL 5222784, at *15 (2d Cir. Nov. 3, 2011). Defendant also argues that the Court should vacate its November 21, 2011 Order pursuant to Fed. R. Civ. P. 60. The Court hereby modifies its November 21, 2011 Order such that Defendant may retain his Facebook, Twitter and email accounts provided he refrains from using such accounts to engage in jewelry-related commercial activity. Defendant's request for a stay pending appeal is denied as no grounds for a stay have been shown. The Clerk shall mark the motion (Doc. No. 39) terminated. (Signed by Judge Alvin K. Hellerstein on 12/14/2011) (lmb) (Entered: 12/14/2011) ORDER terminating 47 Motion for Sanctions. Plaintiff has moved for an order holding Defendant in contempt for failure to comply with the Court's November 21, 2011 Order. Plaintiff alleges that Defendant transferred the henrydunay.net domain name to Plaintiff but has not transferred his other internet accounts to Plaintiff as required by the November 21, 2011 Order. The Court's December 14, 2011 Order modified the November 21, 2011
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Order to permit Defendant to retain his Facebook, Twitter and email accounts provided he refrains from using such accounts to engage in jewelry-related commercial activity. Thus Plaintiff's motion is denied as moot. The Clerk shall mark the motion (Doc. No. 47) terminated. (Signed by Judge Alvin K. Hellerstein on 12/14/2011) (lmb) (Entered: 12/14/2011) 01/09/2012 54 NOTICE OF APPEAL from 52 Order on Motion to Vacate,,,,. Form C and Form D are due within 14 days to the Court of Appeals, Second Circuit. Document filed by Henry Dunay. Filing fee $ 455.00, receipt number 02087087631. (Attachments: # 1 Exhibit)(Colman, Charles) (Entered: 01/09/2012) Transmission of Notice of Appeal and Certified Copy of Docket Sheet to US Court of Appeals re: 54 Notice of Appeal. (tp) (Entered: 01/09/2012) Appeal Record Sent to USCA (Electronic File). Certified Indexed record on Appeal Electronic Files for 31 Certificate of Service Other, filed by Sandawana Holdings Ltd, 21 Affidavit in Support of Motion, filed by Sandawana Holdings Ltd, 30 Affidavit in Support of Motion, filed by Sandawana Holdings Ltd, 34 Memorandum of Law in Opposition to Motion, filed by Henry Dunay, 25 Affirmation in Support of Motion filed by Henry Dunay, 51 Certificate of Service Other, filed by Sandawana Holdings Ltd, 18 Endorsed Letter, Set Deadlines/Hearings, 35 Affidavit in Opposition to Motion, filed by Henry Dunay, 13 Endorsed Letter, 44 Endorsed Letter, 54 Notice of Appeal, filed by Henry Dunay, 29 FIRST MOTION for Sanctions. filed by Sandawana Holdings Ltd, 6 FIRST MOTION for Order to Show Cause for Preliminary Injunction. filed by Sandawana Holdings Ltd, 38 Notice of Appearance filed by Henry Dunay, 41 Declaration in Support of Motion, filed by Henry Dunay, 8 Affidavit in Opposition filed by Henry Dunay, 15 Transcript, 49 Declaration in Support of Motion filed by Sandawana Holdings Ltd, 2 Rule 7.1 Corporate Disclosure Statement filed by Sandawana Holdings Ltd, 9 Response in Support of Motion, filed by Sandawana Holdings Ltd, 42 Declaration in Support of Motion, filed by Henry Dunay, 28 Order to Show Cause, filed by Sandawana Holdings Ltd, 11 Reply Memorandum of Law in Support, filed by Sandawana Holdings Ltd, 39 MOTION to Vacate the August 16, 2011 and November 21, 2011 Orders of the Court and for Dismissal of This Action, Or, in the Alternative, for a Stay Pending Appeal. filed by Henry Dunay, 17 FIRST MOTION for Permanent Injunction Jointly Filed by Counsel for Both Parties In This Matter. filed by Sandawana Holdings Ltd, 7 Affidavit in Opposition filed by Henry Dunay, 53 Order on Motion for Sanctions, 19 Order, 4 Order to Show Cause, 37 Order, 10 Reply Memorandum of Law in Support of Motion filed by Sandawana Holdings Ltd, 5 Memorandum of Law in Opposition filed by Henry Dunay, 3 Answer to Complaint filed by Henry Dunay, 12 Order of Dismissal, 36 Order, 20 FIRST MOTION for Sanctions in Contempt of Consent Order. filed by Sandawana Holdings Ltd, 45 Transcript, 16 Notice of Filing Transcript, 46 Notice of Filing Transcript, 52 Order on Motion to Vacate, 1 Complaint filed by Sandawana Holdings Ltd, 50 Declaration in Support of Motion filed by Sandawana Holdings Ltd, 47 SECOND MOTION for Sanctions Against Defendant. filed by Sandawana Holdings Ltd, 26 Memorandum of Law in Support of Motion filed by Henry Dunay, 23 Memorandum of Law in Support of Motion filed by Sandawana Holdings Ltd, 24 MOTION for The Law Offices of Mitchell J. Devack, PLLC to Withdraw as Attorney. filed by Henry Dunay, 48 Memorandum of Law in Support of Motion filed by Sandawana Holdings Ltd, 40 Memorandum of
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Law in Support of Motion, filed by Henry Dunay, 33 Affidavit in Support, filed by Sandawana Holdings Ltd, 27 Endorsed Letter, 22 Certificate of Service Other, filed by Sandawana Holdings Ltd, 43 Certificate of Service Other filed by Henry Dunay, 32 Memorandum of Law in Support filed by Sandawana Holdings Ltd, 14 Endorsed Letter, Set Deadlines, were transmitted to the U.S. Court of Appeals. (tp) (Entered: 01/09/2012)
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Sandawana Holdings, Ltd. v. Henry Dunay (2d Cir. Appeal, Initial Documents)

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Sandawana Holdings, Ltd. v. Henry Dunay (2d Cir. Appeal, Initial Documents)

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Case: 12-84 Document: 12-1 Page: 1 01/21/2012 503910 2 UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT

CIVIL APPEAL PRE-ARGUMENT STATEMENT (FORM C)

SANDAWANA HOLDINGS, LTD.,! ! Plaintiff-Appellee,! ! v.! ! HENRY DUNAY,! Defendant-Appellant.! !

U.S. Dist. Ct. S.D.N.Y.

December 14, 2011

11 Civ. 2712 (AKH)

Attorney(s) for Appellee(s): 9 Plaintiff 9 Defendant

Has Transcript Been Prepared?

Electronic! ! TBD Index! ! Transmitted! ! Via ECF ; Add. A

Approx. Number of Transcript Pages:

Number of Exhibits Appended to Transcript:

Reporter Citation: (i.e., F.3d or Fed. App.)

IMPORTANT. COMPLETE AND SIGN REVERSE SIDE OF THIS FORM.

Case: 12-84 B: Document: 12-1DISPOSITION Page: 2 PART DISTRICT COURT

01/21/2012 503910 (Check as many as apply)

Pre-trial During trial After trial

Sought: $ Granted: $ Denied: $

PART C: NATURE OF SUIT (Check as many as apply)

1. Is any matter relative to this appeal still pending below?

Judge retains jurisdiction

Signature of Counsel of Record: /s/

Case 1:11-cv-02712-AKH Document 52

Filed 12/14/11 Page 1 of 1

UNITED STATES DISTRlCT COURT SOUTHERN DISTRlCT OF NEW YORK

--------------------------------------------------------------SANDA WANA HOLDINGS LTD.,

IHn FII H): \

Case: 12-84 Document: 12-4 Page: 2 Case 1:11-cv-02712-AKH Document 19

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USOCSDNY DOCUMENT ELECTRONICALLY FILED

DOC #:_--;os:-;.---rrDATE FILED:

crv, 2712 (AKH)(RLE) against defeodant

Dunay having a principal place

Case: 12-84 Document: 12-4 Page: 3 Case 1:11-cv-02712-AKH Document 19

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subsidiaries, as well sa HDD's respective principals, officers, agents, servants.

worldwide baals from: (a)

Case: 12-84 Document: 12-4 Page: 4 Case 1:11-cv-02712-AKH Document 19

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Case: 12-84 Document: 12-4 Page: 5 Case 1:11-cv-02712-AKH Document 19

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/lIIrt ofDefeIldanl and HDD.

Approved and Entered by the Court: . . .

on. Alvin K. Hellerstein, U.S.D.N.Y.

Case: 12-84 Document: 12-5 Page: 2 Case 1:11-cv-02712-AKH Document 36

Filed 11/21/11 Page 1 of 12 01/21/2012 503910

USDC SO", DOCUMF'T

ELEClRU:"IC\LL \' FILED DOC #: D.HE \;";UL"T2..(:-;-r.4""""4-

SOUTHERN DISTRICT REPORTERS, P.C.

TABLE OF CONTENTS A. INTRODUCTION5

B. FACTUAL AND PROCEDURAL BACKGROUND..6

FACTUAL AND PROCEDURAL BACKGROUND

are final, they are immediately appealable.

No. 1:11-CV-02712 (AKH) ECF Case

CLOSED, APPEAL, ECF

(516)-794-2800 Fax: (516)-794-2900 Email: ty@devacklaw.com TERMINATED: 11/30/2011 LEAD ATTORNEY

Date Filed 04/20/2011

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