Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA831760
`
`Filing date:
`
`07/07/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91233045
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Coffee Mania, LLC
`
`ROBERT E PURCELL
`THE LAW OFFICE OF ROBERT E PURCELL PLLC
`211 WEST JEFFERSON STREET, SUITE 24
`SYRACUSE, NY 13202
`UNITED STATES
`Email: rpurcell@repurcelllaw.com
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Motion to Dismiss - Rule 12(b)
`
`Robert E. Purcell
`
`rpurcell@repurcelllaw.com
`
`/Robert E. Purcell/
`
`07/07/2017
`
`2017-07-07-Applicants-Motion-to-Dismiss.pdf(212168 bytes )
`2017-07-07-Decl.REP-In-Support-Motion-Dismiss.pdf(404560 bytes )
`2017-07-07-Exhibit-A-Decl.pdf(1128133 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Opposer,
`
`-vs-
`
`
`
`
`
`
`
`Opposition No. 91233045
`
`
`In the Matter of Application Serial No. 87/002,591
`Filed on April 15, 2016
`For the Mark, COFFEE MANIA
`Published in the Official Gazette (Trademark) on October 25, 2016
`
`-----------------------------------------------------------------x
`5Z USA Intellectual Property Ventures, LLC
`
`
`
`
`
`
`Coffee Mania, LLC,
`
`
`
`Applicant.
`-----------------------------------------------------------------x
`
`
`
`
`APPLICANT’S MOTION TO DISMISS, OR IN THE ALTERNATIVE, FOR
`SUMMARY JUDGMENT
`
`
`
`
`
`Applicant, Coffee Mania, LLC, hereby moves under 37 C.F.R. § 2.116 and Fed.
`
`R. Civ. P. 12(b) to dismiss this opposition, as alleged in the Amended Notice of
`
`Opposition filed June 23, 2017. In the alternative, Applicant moves for summary
`
`judgment under Fed. R. Civ. P. 56.
`In the Board’s order dated June 7, 2017, the Board granted Applicant’s motion
`
`
`
`to dismiss the initially filed Notice of Opposition since Opposer had not pleaded
`
`priority of use sufficient to support its likelihood of confusion and false suggestion of
`
`a connection claims. The Board granted Opposer leave to amend, and Opposer has
`now filed an Amended Notice of Opposition (hereinafter “ANO”).
`
`
`
`The ANO is devoid of any cause of action based on priority of use, but is
`
`based solely on allegations that Opposer and Applicant entered an agreement
`
`providing that Applicant would amend the application-at-issue in these proceedings to
`
`
`
`1
`
`

`

`delete certain recited goods. Specifically, Opposer contends that Applicant’s failure to
`
`amend the instant application violates the agreement.
`
`
`
`Applicant moves to dismiss for failure to state a claim upon which relief can be
`
`granted, more particularly, for lack of standing (which must be both pleaded and
`
`proved) and for lack of a statutory ground (which must be both pleaded and proved).
`
`See, TMBP § 309.03(b) and (c).
`
`Opposer Acknowledges That It Currently Possesses No Right To Enforce Any
`Settlement Agreement
`
`
`
`Even presuming arguendo the ANO sufficiently satisfies the low threshold of
`
`pleading standing by stating that it would be harmed by the instant application issuing
`
`to registration, there is no statutory ground on which to support the ANO. See
`
`TBMP § 309.03(c). For, example, breach of contract is not a statutory ground that
`
`provides the Board with jurisdiction to even consider the matter. The ANO cites to
`
`the holding of Kimberly-Clark Corp. v. Fort Howard Paper Co., 772 F.2d 860, 863 (Fed.
`
`Cir. 1985) in support of its contention that the allegations in the ANO regarding
`
`breach of contract are sufficient grounds. The Kimberly-Clark case involved an
`
`agreement that the parties did not dispute existed and did not dispute was
`
`enforceable. The issue there was an interpretation of that agreement. Here there is a
`
`vast dispute about the very formation and existence of any agreement, plus a dispute
`
`about the enforceability of any such agreement, if it was formed and does exists,
`
`under New York law that imposes special requirements for agreements settling
`
`litigation.
`
`
`
`As noted by the Board in its order granting the earlier motion to dismiss,
`
`Opposer has not proffered any document allegedly comprising the written agreement,
`
`much less an executed agreement. Opposer still fails to proffer such a document. The
`
`ANO makes allegations as though the existence of any agreement is an undisputed
`fact; whereas in truth, it is only Opposer’s contention and hope that such an
`
`
`
`-2-
`
`

`

`agreement exists – issues vigorously contested by Applicant in the trademark
`
`infringement lawsuit pending in the United States District Court for the Northern
`
`District of New York.
`
`The allegations in paragraph 19 of the ANO contain an admission that there is
`
`an “issue whether [any agreement] is binding.” Moreover, the Opposer’s allegations
`
`that any agreement exists are also inconsistent with its allegations in paragraph 5 of
`
`the original Notice of Opposition:
`
`Opposer contends that Opposer and Applicant have settled the trademark
`dispute between them, which would allow for registration of their respective
`marks for certain goods and services. Applicant is now disputing the
`settlement and the parties have filed briefs with the District Court and are
`awaiting a ruling by the Court. The ruling may make moot this
`Opposition.
`
`(emphasis added). The allegations that any agreement exists are also contradicted by
`the materials Opposer submitted with Opposer’s Response to Applicant’s Motion to
`
`Dismiss For Failure to State a Claim Upon Which Relief can be Granted filed April
`20, 2017. Those materials include a copy of Opposer’s memorandum in the trademark
`
`infringement lawsuit. That memorandum addresses extensively issues and matters
`
`that pertain only to whether any agreement exists: whether there was a formation of a
`contract (see pages 6-7), whether there was a “meeting of the minds” (see pages 7-10),
`
`whether some sort of agreement should exist due to part performance (see page 8),
`
`and, even if there was no agreement, whether the parties reached some sort of binding
`“preliminary agreement” (see pages 11-13). If any agreement indisputably existed,
`
`there would be no need for Opposer to make such arguments.
`If one closely reads Opposer’s memorandum, one will also see that Opposer is
`
`
`
`trying to concoct an agreement by cutting and pasting bits and pieces of e-mails and
`
`draft documents. There is no document evidencing any purported agreement, and no
`
`signed document.
`
`
`
`-3-
`
`

`

`Applicant has attached hereto its Plaintiff’s Memorandum in Opposition to
`
`Defendant’s Cross-Motion to Enforce Settlement Agreement (without exhibits), filed
`
`in the trademark infringement lawsuit, which demonstrates that Applicant is
`
`contesting both the formation/existence of any purported agreement as well as
`
`whether any such agreement, if it exists, is enforceable under New York law, which
`
`imposes special requirements for agreements settling litigation. As noted in
`Applicant’s memorandum:
`
`Most importantly, Judge Scullin entered an Order dated July 8, 2016 [Dkt. 38]
`stating, “The mediator has advised the Court that the parties have settled this
`action or are in the process of doing so.” (emphasis added). Judge Scullin’s
`Order later states the case will be conditionally dismissed but may be reopened
`“if settlement is not consummated.” (emphasis added).
`
`Thus, although Opposer contends that settlement was achieved prior to July 8, 2016,
`
`as of that date, the court was of the view that settlement had not yet been
`
`consummated.
`Opposer’s pleadings to date admit the very existence of any settlement
`
`
`
`agreement is up in the air. Opposer cannot identify or provide a copy of any such
`
`agreement; nor can Opposer provide an executed copy of any such agreements; nor
`
`can Opposer identify any clause within any such agreement that is allegedly now being
`violated by Applicant’s current prosecution of the instant application. Opposer
`
`acknowledges that the issue of whether any such agreement was ever formed or
`
`exists
`
`is before the court handing the trademark
`
`infringement
`
`lawsuit for
`
`determination and that Opposer has no right to enforce any alleged agreement at
`
`this time. Opposer acknowledges it would have such a right only if the court
`
`should later rule completely in its favor.
`
`
`
`It is axiomatic that standing must exist at the commencement of an action
`
`throughout the action. See, e.g., Abraxis Bioscleuce, Inc. v. Navinta LLC, 625 F.3d 1359
`
`(Fed. Cir. 2010), affirmed en banc, 672 F.3d 1239 (Fed. Cir. 2011). A lack of standing at
`
`
`
`-4-
`
`

`

`the commencement of an action cannot be cured by later-arising events. In Abraxis, a
`
`plaintiff filed suit for patent infringement. Later discovery revealed the fact that at the
`
`time of filing suit, the plaintiff did not own the patents, but that the real owner of the
`
`patents had promised to assign the patents to the plaintiff and actually did so eight
`
`months after the lawsuit was filed. The Federal Circuit three-judge panel as well as an
`
`en banc panel ruled that the expectation of ownership of the patents at the time of
`
`filing suit did not confer standing, and the later assignment of the patent did not cure
`
`that defect. Accordingly, the Federal Circuit deemed standing to be lacking at the
`
`time of the lawsuit was filed, and ordered dismissal of the lawsuit.
`The ANO itself, as well as Opposer’s original Notice of Opposition, as well as
`
`the materials Opposer has submitted in this proceeding amply demonstrate Opposer’s
`
`acknowledgement that no enforceable agreement currently exists that can support its
`
`allegation of harm by breach of that alleged agreement. Nor can such a situation form
`
`a ground for supporting this opposition.
`Applicant believes that Opposer’s pleadings by themselves demonstrate
`
`dismissal of the ANO is warranted. To the extent Applicant’s motion is deemed as
`
`necessarily relying on the attached memorandum or any other documents of record,
`
`then Applicant believes summary judgment is warranted.
`
`
`
`
`
`If The Court Later Rules in Opposer’s Favor, Opposer Still Has a Complete Remedy
`As mentioned in connection with Applicant’s motion to dismiss the original
`
`notice of Opposition, if this opposition is dismissed, and if the court in the trademark
`
`infringement case rules as Opposer hopes, Opposer still has a complete remedy: ask
`Applicant to voluntarily amend its registration to conform to the court’s ruling, and if
`Applicant does not comply, then file a petition to partially cancel Applicant’s
`
`registration or to file suit in a court seeking an order compelling Applicant to comply.
`
`There is currently no reason to hold up the issuance of a registration to Applicant,
`
`
`
`-5-
`
`

`

`especially when at worst the registration would need to be only partially amended to
`
`delete certain of the recited goods.
`
`
`
`This Opposition Should Not Be Stayed, Since Opposer Had No Right To Initiate The
`Opposition
`
`
`
`The Board should decline to consider whether the opposition should be stayed
`
`pending further developments in the trademark infringement lawsuit. A party lacking
`
`standing or whose opposition is subject to dismissal has no right to participate in an
`
`opposition or intermeddle in or to interfere with the normal progression of an
`
`application to registration. An opposer who lacks standing to oppose inherently lacks
`
`standing to request a stay.
`
`
`
`
`Dated: July 7, 2017
`
`
`
`
`
`Respectfully submitted,
`
`
`
`By: /s/Robert E. Purcell_______
`Robert E. Purcell, Esq.
`THE LAW OFFICE OF ROBERT E. PURCELL,
`PLLC
`211 West Jefferson Street, Suite 24
`Syracuse, New York 13202
`Telephone: (315) 671-0710
`Facsimile: (315) 671-0711
`E-mail: rpurcell@repurcelllaw.com
`
`Attorneys for Plaintiff, Coffee Mania, LLC
`
`
`
`-6-
`
`

`

`CERTIFICATE OF SERVICE
`
`I certify that on the 7 day of July, 2017 a copy of the foregoing APPLICANT’S
`
`MOTION TO DISMISS, OR IN THE ALTERNATIVE, FOR SUMMARY
`JUDGMENT was sent via e-mail and First Class Mail, postage pre-paid, to the
`following:
`
`
`
`Susan M. Kornfield
`Bodman PLC
`201 S. Division Street
`Ann Arbor, MI 48104
`skornfield@bodmanlaw.com
`
`
`/s/Allison Haines_
`Allison Haines
`
`-7-
`
`
`
`
`
`
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 87/002,591
`Filed on Apijl 15, 2016
`For the Mark, COFFEE MANIA
`Published in the Official Gazette (Trademark) on October 25, 2016
`
`32351;"i;;;tg;;1;;i;:;;;;;;;;;;;1'£;5_______
`
`Opposer,
`
`-95.
`
`Coffee Mania, LLC,
`Applicant
`_______________________________________________________________"X
`
`Opposition No. 91233045
`
`DECLARATION OF ROBERT E. PURCELL IN SUPPORT OF
`
`APPLICANT’S MOTION TO DISMISS OR IN THE ALTERNATIVE FOR
`
`SUMMARY IUDGMENT
`
`1, Robert E. Purcell, hereby state, swear, and affirm as follows:
`
`1.
`
`I am counsel of record for the Plaintiff, Coffee Mania, LLC.
`
`2. Attached hereto as Exhibit A is a true and accurate copy of Plaintist
`
`Memorandum in Opposition to Defendant’s Cross-Motion to Enforce
`
`Settlement Agreement (without exhibits) as filed in the United States District
`
`Court for the Northern District of New York on November 28, 2016 in the
`
`case set forth in the caption of the memorandum.
`
`I declare under penalty of- perjury the foregoing statements are true and correct.
`
`

`

`Executed while in Syracuse, New York, U.S.A._ on July 2 2017.
`
`#5";
`
`. .
`a
`i
`
`Robert E. Pure d'
`
`

`

`EXHIBIT A
`
`
`
`

`

`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF NEWI YORK
`
`COFFEE MANIA, LLC,
`
`Plaintiff,
`
`v.
`
`5:1 5—CV-823
`
`(FJS/ DEP)
`
`COFFEEMANIA BRYANT PARK, LLC,
`
`Defendant.
`
`PLAINfIfIFF’S MEMORANDIZM 1N OPPOSITION TO DEFENDANT’S
`CROSS-MOTION TO ENFORCE SETTLEMENT AGREEMENT
`
`Plaintiff, Coffee Mania, LLC, by and through its undersigned attorney, hereby
`
`opposes Defendant’s Cross—Motion To Enforce The Settlement Agreement, and asks
`
`the Court to re—open the litigation.
`
`
`
`

`

`Table of Contents
`
`Page No.
`
`The Nature Of “The Settlement Agreement” That Defendant
`Seeks To Have Enforced Is Nebulous ....................................................................... .. 1
`
`The Court Record Evidences a Lack of Any Settlement as of July 7, 2016 ......... .. 2
`
`Plaintist Ability to Contest Defendant’s Factual Assertions is
`Hampered by an Agreement to Mediate That the Parties
`Executed and That Defendant Appears to Have Violated..................................... .. 3
`
`A Factual Synopsis of the Parties’ Two Mediation Sessions and
`Their Attempts to Settle this Lawsuit, Albeit Unsuccessfully................................. ..5
`
`Defendant’s Contention That Some Sort of Agreement Should
`Be Enforceable Because of Defendant’s Purported Partial
`Performance Is Specious ............................................................................................... ..11
`
`There Were No Binding Preliminary Agreements of Any Sort.............................. .. 15
`
`There Was No Complete, Binding Settlement Agreement,
`And Even If There Were, New York Law Prohibits The
`Enforcement of Any Such Agreement....................................................................... ..18
`
`Conclusion...................................................................................................................... .. 20
`
`
`
`
`

`

`Table of Authorities
`
`Cases
`
`Page No.
`
`Andre—Long 0. Verizon Com, 31 A.D.3d 353, 819 N.Y.S. 2d 56
`(1St Dep’t 2006) ............................................................................................................... .. 19
`
`Ciaramella o. Reader’s DzégeJtAmoa'atlon, Ina, 131 F.3d 320
`(2d Cir. 1997) .... .. ................................................................................................ .. 8,11,12,18
`
`Dolyam’: o. Dyna-Empire, Ina, 465 F. Supp. 2d 170 (E.D.N.Y. 2006) ....................... ..5,8
`
`Dolgz'rz Elder! Corp, 31 N.Y. 2d 1, 45, 334 N.Y.S. 833 (1972) ................................. .. 19
`
`Em'co o. Daoldqflfi 170 Misc. 2d 378, 382, 647 N .Y.S. 2D 382
`(Civ. Ct., Kings Co. 1998) ............................................................................................. ..19
`
`jucme: o. Lyzwz'm/ez', 875 F. Supp 2d 155 (N .D.N.Y. 2012) ........................................ ..17
`
`Maldonado o. Nooar/zlr Pbamzaoeulz'oal Corp, 40 A.D.3d 940,
`836 N.Y.S.2d 663 (2d Dep’t 2007) .............................................................................. .. 19
`
`Popooz't 1). New York Ciy Hoalt/J and Hoyaz'z‘alx Corp,
`180 A.D.2d 493, 493, 579 N.Y.S.2d 399 (1st Dep’t 1992) ........................................ ..19
`
`R. G. Groz¢, Inc.
`
`I). Hom @‘Ham’cm‘ Co., 751 F.2d 69 (2d Cir. 1984) ...................... .. 20
`
`River: 11. Comm Holding LLC, 11 Misc. 3d 647, 649, 812
`N.Y.S. 2d 301 (Sup. Cl. N.Y. C0. 2006) ..................................................................... .. 19
`
`Sears, Roebuck and Co. 21. Sears Rea/y; Co, 932 F. Supp. 392 (N .D.N.Y. 1996) ........ ..12,18
`
`film I). Cigy ofNow York, 05 Civ. 7181 (S.D.N.Y. 2/26/08) ..................................... .. 18
`
`Statutes
`
`15 U.S.C. §1051(d) ........................................................................................................ ..14
`
`N.Y.C.P.L.R. § 2104...................................................................................................... .. 18,19
`
`N.Y. Gen. Oblig. Law § 5—701(a) ................................................................................. ..18,19
`
`ii
`
`
`
`

`

`Other Authorities
`
`Page No.
`
`37 C.F.R. § 2880:) ......................................................................................................... .. 14
`
`37 C.F.R. § 2.89 .............................................................................................................. .. 14
`
`

`

`The Nature Of “The Settlement
`
`reement” That Defendant Seeks To Have
`
`Enforced Is Nebulous
`
`Defendant seeks “an order enforcing the parties’ settlement agreement”. See
`
`its Notice of Cross—Motion Dkt. 46 p. 1 of 3. Similarly, Defendant’s Memorandum in
`
`Support of Its Cross—Motion [Dkt 464] concludes with a request “that the Court
`
`enforce the parties’ settlement”. See p. 13 of the Memorandum. However, there is
`
`no clear indication of the particular settlement document Defendant seeks to enforce.
`
`Is the “settlement agreement” Defendant seeks to enforce the so—called June
`
`Terms (as allegedly incorporating the so~called April Terms)? Is it a much more
`
`detailed and lengthy document that Defendant drafted and sent to Plaintiffs counsel
`
`by e—mail on June 20, 2016?
`
`Is it the document that Defendant sent by e-mail to
`
`Plaintist counsel by e-mail on September 13, 2016?
`
`One may gain a clue as to the four corners of the settlement agreement that
`
`Defendant seeks to enforce by reference to Exhibit A to the Affidavit of justin P.
`
`Bagdady.
`
`[Dkt 46-3].
`
`(hereinafter referred to as “JPB Affidavit”). As explained in
`
`the e—mail forming part of that Exhibit A, the draft, detailed, lengthy proposed
`
`settlement agreement sent June 20, 2016 plus two further changes is the “settlement
`
`agreement” that Defendant is asking this Court to enforce.1
`
`Defendant seems to argue alternatively that, if this Court is not inclined to
`
`enforce any such alleged “settlement agreement”, then this Court should enforce
`
`something Defendant refers to as a “Type I” preliminary agreement or a “Type II”
`
`preliminary agreement.
`
`Is the Type I preliminary agreement the so—called June terms
`
`that allegedly incorporate the April terms? Is it the more detailed, lengthy document
`
`e—mailed June 20, 2016 (with or without the two acknowledged changes in Exhibit A
`
`to the JPB AffidavitP)? Likewise, what is the Type II preliminary agreement and what
`
`1 Defendant fails to explain why two, and only two, further changes to the June 20,
`2016 draft are warranted for inclusion as a part of the settlement agreement as to
`which Defendant seeks enforcement.
`
`
`
`
`
`
`
`

`

`are its specific terms? If any such Type II preliminary agreement is to be enforced,
`
`any enforcement would not end the litigation, but rather, would seem only to require
`
`the parties to engage in further good faith attempts to work out a final resolution in
`
`settlement of the lawsuit.
`
`The Court Record Evidences a Lack of An Settlement as of ul 7 2016
`
`The objective evidence strongly indicates that there was no complete, binding
`
`settlement agreement as of the telephone status conference held July 7, 2016.
`
`Although this Court’s docket entry on June 24, 2016 [Dkt 37] states the mediator
`
`indicated a successful outcome of the parties’ mediation, there is no record of what
`
`the mediator precisely reported to the Court. Rather we have only the Court’s
`
`abbreviated docket entry to the effect
`
`that, based on the mediator’s report, a
`
`settlement agreement
`
`is being prepared and will be submitted for the Court’s
`
`consideration.
`
`Immediately after the telephone status conference held July 7, 2016, the Court
`
`made a minute docket entry (with no docket entry number) stating “Plaintist counsel
`
`recently sent the proposed draft settlement agreement to the defendant.” and further
`
`stating the parties agreed that the Court could conditionally dismiss the action based
`
`on settlement, with a right to seek to re—open the matter if settlement was not
`
`achieved.2
`Most importantly, Judge Scullin entered an Order dated July 8, 2016 [Dkti 38]
`
`stating, “The mediator has advised the Court that the parties have settled this action
`
`or are in the process of doing so.”
`
`(emphasis added). Judge Scullin’s Order later
`
`2 28 U.S.C. § 753(b) generally mandates that each session of the court “shall be
`recorded verbatim”, but seems to create an exception: “subject to the discretion
`and approval of the judge.” Court personnel have advised Plaintist counsel that
`no recording of the July 7, 2016 telephone status conference was made. Thus,
`there is no clear record of exactly of what was said regarding the status of the
`settlement negotiations during that conference.
`
`2
`
`
`
`

`

`
`
`
`
`states the case will be conditionally dismissed but may be reopened “if settlement is
`
`not consummated.” (emphasis added).
`
`Thus, the Court was under the View as of late July 7 and again as of July 8, 2016
`
`—- after the July 7, 2016 telephone status conference -- that there was no settlement as
`
`of that time and there was only a possibility of settlement eventually occurring.
`
`Plaintiff’s Ability to Contest Defendant’s Factual 'Assertions is Hampered by
`an Agreement to Mediate That the Parties Executed and That Defendant
`Appears to Have Violated
`
`This Court’s L.R. 83.11-5(d)3. states: “The parties will be asked to Sign an
`
`agreement of confidentiality at the beginning of the mediation session.” Indeed, the
`
`mediator, Mr. Frankel, asked the parties to review and execute an Agreement to
`
`Mediate that is five single—spaced pages in length plus the signature page. The parties
`
`executed that document, which provides
`
`for
`
`restrictions on disclosure of
`
`communications that are broader than the restrictions imposed by the NDNY Local
`
`Rules regarding mediation and the NDNY’s General Order #47, dated May 23, 2016,
`
`regarding mediation. The terms of the Agreement to Mediate are so broad that they
`
`might be interpreted as precluding a disclosure of even the Agreement to Mediate
`
`itself.
`
`If this Court is inclined to grant any part of Defendant’s cross—motion to
`
`enforce the settlement agreement, Plaintiff requests an order from this Court
`
`requiring the submission of the Agreement to Mediate and asks this Court to entertain
`
`a motion by Plaintiff for leave to supplement this opposition and for appropriate
`
`sanctions against Defendant for violating the terms of that Agreement to Mediate,
`
`I including the sanction of denying Defendant’s cross-motion to enforce the settlement
`
`agreement.
`
`Plaintiff will carefully attempt to comment on Defendant’s allegations and
`
`assertions that appear to be in violation of the Agreement
`
`to Mediate, since
`
`Defendant has already exposed that information. Nevertheless, Plaintiff believes that
`
`

`

`
`
`there is additional information that might be used to rebut Defendant’s assertions and
`
`allegations that Plaintiff does not feel comfortable in disclosing due to the obligations
`
`set forth in the Agreement to Mediate.
`
`The mediation session held June 7, 2016 was slipshod. That session was
`
`conducted with Plaintist authon'zed settlement representatives, Craig and Michele
`
`Brooks, Plaintiff’s attorney, James Muldoon, and the mediator, Philip Frankel, all
`
`present physically in Mr. Frankel’s office. See the Declaration of Michelle Brooks
`
`being filed concurrently herewith (hereinafter “MB Declaration”) at 1] 2. Defendant’s
`
`participation was only by having its attorneys Justin Bagdady and Susan Kornfield
`
`participate remotely by telephone connection, without any party representative of
`
`Defendant being on the telephone connection.
`
`Id. This is confirmed by Mr.
`
`Zhuravlev’s stating that he participated in that mediation “by being available to
`
`counsel for defendant by telephone throughout that day.”
`
`See the Affidavit of
`
`Evgeny Zerolev [Dkt 46—2] (hereinafter “EZ Affidavit”) at 1] 4.
`
`Defendant states that “Plaintist counsel and the mediator agreed that counsel
`
`for Defendant could participate in the June mediation by telephone and that a
`representative of Defendant with authority to settle could be available by phone.”
`
`However, this Court’s mediation rules do not permit such agreements to be made
`
`without the specific, express permission of the assigned magistrate judge. As stated in
`
`this Court’s General Order #47, at
`
`1] 5.8,
`
`the parties or
`
`their authorized
`
`representatives are required to attend the mediation sessions in person, and if any
`
`party desires not to attend in person, then a request must be made with the assigned
`
`magistrate judge, who shall “promptly make a determination as to whether to excuse
`
`the person’s attendance, permit participation by telephone or by other means, or to
`
`excuse the person’s participation in total.” Although paragraph 5.8F. of this Court’s
`
`General. Order permits the mediator to allow a representative to be available by
`
`telephone, that permission may be exercised only if such person has previously been
`
`

`

`“excused from appearing in person at a mediation session”. Such person may be
`
`excused only by making a request to, and the permission of, the assigned magistrate
`
`judge. Defendant failed to seek or obtain such permission for the June 7, 2016
`
`mediation session.
`
`The requirement of attendance in person obviously forces the parties to take
`
`the mediation more seriously, permits the parties to see facial expressions and body
`
`gestures, and generally promotes the odds of a successful mediation.
`
`In accordance with sound mediation practice, if a mediation session results in a
`
`settlement due to the parties’ meeting of the minds on all material terms in resolution
`
`of the dispute, then the mediator will prepare a written document and ask the parties’
`
`attorneys and/ or their representatives to sign that document and indicate that it is a
`
`binding agreement that recites all of the material terms.3 Defendant has not alleged
`
`that any such document whatsoever was prepared], or existed, much less signed by
`
`anyone, as of the end of the mediation session on June 7, 2016. One may fairly and
`
`confidently find that there was no such document and may fairly and confidently
`
`conclude that no such document exists because there was no meeting of the minds
`
`regarding all of the material terms of any settlement.
`
`A Factual Synopsis of the Parties’ Two Mediation Sessions and Their Attempts
`to Settle this Lawsuit, Albeit Unsuccessfiilly
`
`Plaintiff will provide a synopsis of the mediation sessions and the parties’
`
`attempts to settle this ligation while adhering to the prohibitions about disclosure
`
`contained in the Agreement to Mediate, except to the extent that Defendant has
`
`already disclosed such information.
`
`The parties conducted a first mediation session on April 15, 2016. There is no
`
`dispute that the parties did not settle the lawsuit at that mediation session, or even
`
`shortly afterward. Defendant ambiguously states that some time “at the end of the
`
`3 See, sag, Deblam'r a. Dyna-Eflqu're, Ina, 465 F. Supp. 2d 170 (E.D.N.Y. 2006).
`5
`
`
`
`

`

`
`
`April Mediation” it prepared some sort of draft settlement agreement, which it calls
`
`the “April Terms”, set forth as Exhibit B to the JPB Affidavit. Paragraph 4 of the
`
`JPB Affidavit inconsistently states that “the April Terms include all material terms
`
`that were agreed upon at the April Mediation.” How can that be, when neither party
`
`contends there was any settlement resulting from the April 15, 2016 mediation!
`
`Further, Defendant does not explain why neither party executed the April Terms in
`
`the signature blocks at the end of that document if it really did contain “all material
`
`terms that were agreed upon”.
`
`What Defendant fails to disclose to this Court is that twelve days after the
`
`mediation ~— on April 27,2016 -— Defendant provided to Plaintiff a much more
`
`detailed, proposed “Settlement Agreement And General Release” comprising eight
`
`single-spaced pages. See the Declaration of Robert E. Purcell being concurrently filed
`
`herewith (hereinafter “REP Declaration”) fl 2, Ex. A.
`
`In response, on May 23, 2016,
`
`Plaintiff sent back the proposed “Settlement Agreement And General Release” with a
`
`plethora of proposed changes and revisions in redline. See REP Declaration 1} 3,
`
`Exhibit B. Thus, despite a “bullet points” type of a proposed settlement set forth in
`
`the April Terms and despite Defendant’s sending on April 27 a much more detailed,
`
`elaborate agreement purportedly incorporating those terms, and despite Plaintiffs
`
`sending to Defendant yet another, further revised, proposed settlement agreement on
`
`May 23, 2016 (See REP Declaration 11 4, Exhibit C), both parties acknowledge there
`
`was no settlement whatsoever achieved by the April session or thereafter, through at
`
`least the second mediation session held on June 7, 2016.
`
`Defendant contends that its so—called June Terms set forth in an e—mail on June
`
`7, 2016 (as further corrected/revised in emails by the mediator and by Plaintist
`
`counsel) constitutes some sort of binding settlement agreement addressing all material
`
`terms.
`
`Plaintiff reaches
`
`this conclusion by contending that
`
`the june Terms
`
`

`

`additionally incorporated all of the April Terms -— a completely confusing and
`
`befuddling contention.
`
`First, the contention is strange because Plaintiff alleges that at the end of the
`
`April 15, 2016 mediation session, there was only a single issue that remained to be
`
`negotiated. See JPB Affidavit fl 5. Defendant alleges that the June Terms “lists only
`
`the new terms the parties agreed to at the june Mediation”. See jPB Affidavit 11 9.
`
`Nonetheless, the June Terms include fourteen n not one —— separately identified
`
`“bullet points”.
`
`Second,
`
`there is nothing in any correspondence proffered by
`
`Defendant
`
`that expressly or even implicitly may be interpreted as
`
`indicating
`
`Defendant’s intent or anyone’s intent to incorporate the April Terms in the June
`
`Terms. Third, the April Terms include a clause (see paragraph 13.) that the parties
`
`desire to prepare and execute a more detailed settlement agreement and release
`
`“by
`
`May 13, 2007” —- a date that had already come and gone by June 7, 2016. Fifth,
`
`Defendant alleges the June Terms “does not list the April Terms because those terms
`
`already had been agreed to, and therefore were not revisited during the June
`
`Mediation.” See JPB Affidavit {I 9. However, some of the items listed in the June
`
`Terms are duplicative of those set forth in the April Terms, and thus the June Terms
`
`cannot be deemed to simply supplement the April Terms. For example, see bullet
`
`point 9. of the April Terms and bullet point 10. of the June Terms. Also, there is no
`
`evidence that any of the April Terms were ever agreed to other than Defendant’s own
`
`self—serving allegation. Moreover, Plaintiff does not contend that the so—called April
`
`Terms was ever signed by either party. Sixth, and importantly, neither the April
`
`Terms nor the June Terms set forth any financial terms or compensation —- obviously
`
`an extremely important, yet missing, material term.
`
`Defendant’s counsel’s June 7, 2016 cover e—mail states GB Affidavit, Exhibit
`
`C):
`
`These are our notes regarding the agreements that were reached today.
`Please let us know if anyone thinks our notes are inaccurate on these points.
`
`7
`
`
`
`

`

`Obviously this is not an exhaustive list of every last term. We will work on
`incorporating these into a settlement agr