Legal Question in Intellectual Property in New York
Motion to Quash?
I am a Cal. Atty. Have filed suit in Cal. against NY company for breach of contract. Contract was signed by my client in Cal. and was for purchase of licenses for use of NY Company's services. My client would then sublicense to California companies. NY company has appeared and is defending here.
In a move designed to set up a 2nd front, NY company has filed suit in NY alleging trademark violation under NY state law unrelated to the Cal lawsuit. The alleged violations are for statements allegedly made on one of my client's web sites.
I believe the NY lawsuit to be frivolous. I would like to file a motion to quash. My client's only contacts with NY was the contract entered into with the NY company which was done via email and fax.
Looking for a NY City attorney who can let us know what chances of success for quashing and/or representation in that NY lawsuit.
4 Answers from Attorneys
Re: Motion to Quash?
I am counsel to Hartman & Craven LLP (www.hartmancraven.com). We do intellectual property litigation. There is a partner named Edward White who has great experience with these matters. His direct line is 212-754-6911. You can also contact me at 212-836-4973.
Re: Motion to Quash?
As I am admitted in NJ and not NY, please consider:
Ronald D. Coleman
Coleman & Weinstein
A Professional Corporation
410 Park Avenue
15th Floor
New York NY 10022
212.752.9500
fax 212.223.4646
www.coleman-firm.com
as a candidate for this work.
Regards,
Don
Re: Motion to Quash?
New York Long Arm Jurisdiction for actions sounding in trademark is fairly aggressive. Under the basic standard, harm of lost sales or customers arising out of potential likelihood of confusion (the basis of trademark infringement) has been sufficient for asserting in personem jurisdiction over an out of state defendant. However, in those instances where there is no conceivable possibility or actual harm to computer users �within the state,� such jurisdiction has not been found. So, in gauging the relative value in asserting a motion to dismiss on jurisdiction grounds, you must determine if your client�s use of the subject mark or a mark that potentially confusingly similar has sufficient potential to confuse or deceive a New York computer user.
The following is an excerpt from Starmedia Network, Inc. v. Star Media, Inc., 64 U.S.P.Q.2D (BNA) 1791 and offers an example:
Under New York law, injury "within the state" includes harm to a business in the New York market through lost sales or customers, as well as harm and threatened harm in the New York market resulting from the confusion and deception of New York computer users. See Citigroup Inc. v. City Holding Co., 97 F. Supp. 2d 549, 568 (S.D.N.Y. 2000); American Network v. Access America/Connect Atlanta, Inc., 975 F. Supp. 494, 497 (S.D.N.Y. 1997). Plaintiff's allegations of harm resulting from the potential for confusion and deception satisfy the requirement of an injury "within the state." See Cable News, 2000 WL 1678039, at *4; Telebyte, Inc. v. Kendaco, Inc., 105 F. Supp. 2d 131, 135-36 (E.D.N.Y. 2000).
Hope this helps. Please feel free to contact me if you need local assistance/counsel. Thank you.
Kaiser Wahab
646-375-2363
Re: Motion to Quash?
Please feel free to call me to discuss.
(212) 292-5390
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