A0450 Rev.
`end zgg-ir<):y5Q§§age9 Document 124
`Filed 07/09/2009
`Page 1 of 1
`
`
`United States District Court
`
`Northern District of Illinois
`Eastern Division
`
`Geisha LLC
`
`V.
`
`Roy Tuccillo
`
`JUDGMENT IN A CIVIL CASE
`
`Case Number: 05 C 5529
`
`E]
`
`I
`
`Jury Verdict. This action came before the Court for a trial by jury. The issues have been
`tried and the jury rendered its verdict.
`
`Decision by Court. This action came to trial or hearing before the Court. The issues
`have been tried or heard and a decision has been rendered.
`
`IT IS HEREBY ORDERED AND ADJUDGED that Geisha’s motion to stay is denied without
`prejudice. Pursuant to its March 1, 2006 order this court awards attorneys’ fees and expenses
`in favor of Geisha in the amount of $67,150.46. Tuccillo’s motion to strike is denied.
`
`Michael W. Dobbins, Clerk of Court
`
`Date: 7/7/2009
`
`/s/ Ena T. Ventura, Deputy Clerk
`
`

`
`sis-:4 (Rev. 12/07)
`
`Filed 05/12/09 Page 1 of2
`Case 2:09-cv-O2022—JFB-WDW Document 1-1
`CIVIL COVER SHEET
`
`‘
`
`x
`
`The IS 44 civil cover sheet and the information contained herein neither re lace nor su
`by local rules ofcourt. This form, approved by the Judicial Conference 0 the United ‘
`the civil docket sheet‘
`(SEE INSTRUCIIONS ON THE REVERSE OF THE FORM.)
`L (3) PLAJNTIFFS
`ROY TUCCILLO, an individual
`
`- e n
`
`-
`
`-
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`DEFENDANTS
`GEISHA NYC, LLC. dlbla JAPONAIS and OSSS HOSPITALITY
`NYC. LLC
`
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`
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`-v
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`New Y°"<
`(b) County of Residence of ram Listed Plaintiff _'_“i__________ County of Residence ofFirst Listed Defendant
`(EXCEPT IN us. PLAINTIFF cum)
`(IN u.s. PLAlN‘I'II-‘F CASES ONLY)
`IN LAND CONDEMNATION cnsas, usr-: THE LOCATION or THE
`LAND INVOLVED.
`
`NOTE:
`
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`
`
`
`= ‘
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` Aocomrnodations
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`
`
`Attorneys (IfKnown)
`3 L .IndTelephoroe Number)
`(c) pflétfiraefls
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`U S C .-/A
`Unknown
`Arnold L. Kert, Esq.
`Garden City, N.Y.
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`II. BASIS OF JURISDICTION (Place an “X” in One Box only)
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`PERSONAL INJURY
`O I I0 Inslllnce
`D 422 Appeal 1! USC 158
`U 400 State Reappomonment
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`
`D I20Marine
`CI
`362PersoualIn3‘ury-
`D6200therFood&Drug
`D 423WitIldr-awn!
`D 4l0Arm'tnut
`D 3|0A.irplane
`D I30MiIIerAct
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`El625DrugRdIlodSeizure
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`U 43OBanks|ndBanking
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`I3 I40 Negotiable Instrument
`Liability
`0 365 Panorlal Injury -
`ofhopeny 2| USC 881
`CI 450 Commerce
`0 I50 Recovery oI'Overpaymmt O 320 Aueult. Libel &
`Product Liability
`[3 630 Liquor Laws
`CI 460 Deportation
`ilfinfiarcurierltofludgnaen
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`CI 368AsbestosPawnaI
`D 640KR&Tn.u:k
`D 470RaeketeerInflueueedand
`CI ISI Medicare Act
`0 330 Federal Employers’
`Injury Product
`D 650 Airline Regs.
`Corrupt Orgmizations
`0 I52 Recovery of Detiulted
`Liability
`Liability
`D 660 Occlqaalionnl
`O 480 Consumer Credit
`Student Loans
`0 340 Marine
`PERSONAL PROPERTY
`Snfety/Health
`Cl 490 Cablelsat TV
`(Exd. Veterms)
`O 345 Marine Product
`D 370 Other Fraud
`0 690 Other
`CI 8I0 Selective Service
`0 I53 Rewvery ofoverp-ymenl
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`0 362 Block Lung (923)
`Cl I60 Stockholders‘ Suit:
`0 355 Motor Vehicle
`Propaty Damage
`C] 875 Customer Challenge
`CI I90 Otha Contact
`Product Liability
`0 335 Property Damage
`I2 USC 3410
`0 I95 Contact Product Lilbility Cl
`0 890 Other smutoly Actions
`CI I96FranchiIe
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`D 893 Environmental Matters
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`U 220 Foreclosure
`D 894 Energy Allocation Act
`D 230 Rem Lease & Ejectrnent
`Cl l7l lRS—Third Party
`0 895 Freedom of Information
`0 240 Torts to Land
`26 USC 7609
`Au
`Cl 245 Ton Product Liability
`0 900AppeaI oI'Fee Determination
`D 290 All Other Real Property
`Under Equal Access
`to Justice
`CI 950 Constitutionality of
`State statutes
`
`
`
`
`..
`
`CI 790 Other Lebor Litigntion
`
`
`
`Sentence
`I3 791 Empl. Rot. Inc.
`443 Housing]
`CI
`Hnbeas Corpus:
`Security Act
`
`
`S30 GGIIIII
`0 444 Welfare
`535 Death Penalty
`
`0 445 Amer. w/Diubilitles -
`540 Mandamus & Other
`Employment
`550 Civil Rights
`
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`SS5 Pnaon Condition
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`0 440 Other Civil Rights
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`C 463 Haber: Corpus -
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`CI 465 Other Irnrnignlion
`Aetiorl:
`
`V. ORIGIN
`at 1 Original
`Proceeding
`
`VII. REQUESTED IN
`COMPLAINT:
`
`(Place an "x" in One Box Only)
`CI 5 Multidistrict
`5 T""fif"§‘-"If-"{’“
`g 4 Reinstnted or Cl
`[3 2 Removed from
`El 3 Remanded from
`Litigation
`_ f’
`'5 "=
`Reopened
`State Court
`Appellate Court
`Cite the U.S. Cvil Statute under qvhich you are filing (Do1léot cite firhgiaflonal statutes unless diversity):
`VI. CAUSE or ACTION BMW .
`.
`’ '
`‘
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`or
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`npuon of cause.
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`0 CHECK IF THIS IS A cuss ACTION
`DEMAND 3
`CHECK YES only ifdemanded in complaint:
`UNDER FrR~C-P- 23
`JURY DEMAND:
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`CI No
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`cl 7
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`to District
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`5
`VIII. RELATED CASE(S)
`DOCKET NUMBER
`JUDGE
`I " "“"“°"°"”'
`IF ANY
`
`
`DATE SI
`
`FOR OFFICE USE ONLY
`
`ATU
`
`ATTORNEYOFRECORD
`
`RECEIPT D5
`
`AMOUNT
`
`APPLYING IFP
`
`JUDGE
`
`MAG. JUDGE —......—.._.__j__——__—.
`
`

`
`Case 2:09-cv-O2022—JFB-WDW Document 1-1
`
`Filed 05/12/09 Page 2 of 2
`
`ARBITRATION CERTIFICATION
`
`do hereby
`, counsel for Plaintiff
`1, Arnold L. Kert, Esq.
`certify pursuant to the Local Arbitration Rule 83.10 that to the best of my knowledge and belief the damages
`recoverable in the above captioned civil action exceed the sum of $150,000 exclusive of interest and costs.
`1
`Relief other than monetary damages is sought.
`
`
`DISCLOSURE STATEMENT - FEDERAL RULES CIVIL PROCEDURE 7.1
`
`Identify any parent corporation and any publicly held corporation that owns 10% or more or its stocks:
`N/A
`
`Please refer to NY-E Division of Business Rule S0.1(d)_(2}
`
`1.) Is the civil action being filed in the Eastem District of New York removed from a New York State court located
`in Nassau or Suffolk County: No
`
`2.) If you answered “no” above:
`
`a.) Did the events or omissions giving rise to the claim or claims, or a substantial part thereof, occur in Nassau
`or Suffolk County? Yes
`
`b.) Did the events or omissions giving rise to the claim or claims, or a substantial part thereof, occur in the
`Eastern District’? Yes
`
`If your answer to question 2 (b) is “No,” does the defendant (or a majority of the defendants, if there is more than
`one) reside in Nassau or Suffolk County, or, in an interpleader action, does the claimant (or a majority of the
`claimants, if there is more than one) reside in Nassau or Suffolk County?
`
`(Note: A corporation shall be considered a resident of the County in which it has the most significant contacts).
`
`
`I am currently admitted in the Eastern District of New York and currently a member in good standing of the
`bar of this court.
`
`Yes
`
`1
`
`No
`
`Are you currently the subject of any disciplinary action(s) in this or any other state or federal court?
`
`1 P
`
`lease provide your E-MAIL Address and bar code below. Your bar code consists of the initials of your first and last
`name and the last four digits of your social security number or any other four digit number registered by the attomey
`with the Clerk of Court.
`(This infonnation must be provided pursuant to local rule 11.1(b) of the civil rules).
`
`ATTORNEY BAR CODE: ALK3106
`
`E-MAIL Address: ALKERT@opton|ine.net
`
`I consent to the use of electronic filing procedures adopted by the Court in Administrative Order No. 97-12, “In re
`Electronic Filing Procedures(EFP)”, and consent to the electronic service of all papers.
`
`Signature:
`
`Yes
`
`(If yes, please explain)
`
`No
`
`

`
`Case 2:09-cv-02022-JFB-WDW Document 1-2
`
`Filed 05/12/09 Page 1 of 11‘
`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF NEW YORK
`__ - _ - - - -..- ...____-.. .. ..--.._-.. .. _.._-- .....-.._ --_-- ..--_-..-____ _--....--- ...... _x
`
`ROY TUCCILLO, anindividual
`
`CV-O9 anal
`
`ii--«-J
`
`'4' Psi er-.-4’
`
`Plaintiff,
`
`Civil Action No.
`
`.
`- against -
`
`GEISHA NYC, LLC d/b/a JAPONAIS and
`osss HOSPITALITY NYC, LLC
`
`Defendants.
`
`, BIANCO. J.
`3,7
`6D COMPLAINT AND
`*
`JURY DEMAND
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`------------------------------------------------------------- -—x
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`‘
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`
`.1 -53
`
`COMPLAINT FOR TRADEMAIRQNG /3L 4 ,
`INFRINGEMENT UNFAIR COMPETITION AND DILtfi1‘I"§t~JOf-‘F/C E
`
`I1-
`
`Plaintiff, ROY TUCCILLO, by his attorneys ARNOLD L. KERT PLLC, complaining of
`
`the defendants, GEISHA NYC, LLC d/b/a JAPONAIS and OSSS HOSPITALITY NYC, LLC,
`
`allege as follows:
`
`THE PARTIES
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Roy Tuccillo is an individual residing in the State of New York and operates
`
`Japonais restaurant and lounge.
`
`Upon information and belief, Geisha NYC, LLC is a Domestic Limited Liability
`
`Company, doing business as Japonais, with offices at 420 Lexington Avenue,
`
`New York, New York 10170.
`
`Upon information and belief, Geisha NYC, LLC owns Japonais New York.
`
`Upon information and belief, Geisha NYC, LLC operates Japonajs New York.
`
`Upon information and belief, OSSS Hospitality NYC, LLC is a Domestic Limited
`
`Liability Company, with offices at 420 Lexington Avenue, New York, New York
`
`lOl70.
`
`

`
`Case 2:09-cv-02022-JFB-WDW Document ‘I-2
`
`Filed 05/12/09 Page 2 of 11_
`
`6.
`
`Upon information and belief, OSSS Hospitality NYC, LLC owns Japonais New
`
`York.
`
`7.
`
`Upon information and belief, OSSS Hospitality NYC, LLC operates Japonais
`
`New York.
`
`JURISDICTION AND VENUE
`
`8.
`
`This action is for trademark infiingement, unfair competition, trademark dilution
`
`and cybersquatting committed by the defendants in violation of the laws of the
`
`United States and the State of New York. Count I of this action for trademark
`
`infringement is brought under the Sections 32-34 of the Trademark Act, 15 U.S.C.
`
`§105l et seq. and 15 U.S.C. Sections 1114-1 1 16; Count II for unfair competition
`
`is brought under Section 43(a) of the Trademark Act, 15 U.S.C. §l225(a); Count
`
`111 for dilution is brought under Section 43(c) of the Trademark Act, 15
`
`U.S.C.§l l2S(c); Count IV for cybersquatting is brought under Section 43(d) of
`
`the Trademark Act, 15 U.S.C. §112S(d); Count V is brought pursuant to the
`
`common law of New York; and Count V1 for injury to business reputation and
`
`dilution is brought under New York General Business Law §360-I. Accordingly,
`
`this court has jurisdiction pursuant to 15 U.S.C. §§1 114-1116 and 1125(3), and 28
`
`U.S.C. §§ 1138(a) and 1138(b) (pendant jurisdiction over unfair competition
`
`claims). Upon information and belief, venue is proper in this district, pursuant to
`
`28 U.S.C. §1391, as defendant operates offices and does significant business in
`
`New York, and this district is convenient to both litigants in terms of witnesses
`
`and evidence.
`
`

`
`Case 2:09-cv-02022—JFB—WDW Document 1-2
`
`Filed 05/12/09 Page 3 of 11‘
`
`FACTS
`
`9.
`
`Roy Tuccillo (hereinafter “TUCCILLO”) operates Japonais, a restaurant and
`
`lounge in Westbury, New York.
`
`10.
`
`On June 25, 2004, TUCCILLO filed a trademark application with the U.S. Patent
`
`and Trademark Office (USPTO), Serial No. 76599761, for the JAPONAIS design
`
`mark.
`
`1 1.
`
`TUCCILLO’s application was an “intent-to—use” (ITU) application because he had
`
`not yet actually used the mark in commerce specifically in connection with the
`
`type of restaurant services described in his application for registration.
`
`12.
`
`TUCCILLO received his “notice of allowance” from the USPTO on August 23,
`
`2005.
`
`13.
`
`On April 1, 2008 TUCCILLO opened his restaurant, Japonais, using his
`
`J APONAIS mark throughout.
`
`14.
`
`On May 2, 2008, TUCCILLO filed a verified “statement of use” with the USPTO,
`
`swearing that he was using the mark in commerce in connection with restaurant
`
`and lounge services.
`
`15.
`
`TUCCILLO registered the trademark on March 17, 2009, under Reg. No.
`
`3 591 621 .
`
`16.
`
`Afier the mark registers, the registrant, TUCCILLO, is treated as though he began
`
`using the mark on the date he filed the ITU application (the “constructive use
`
`date”), June 25, 2004.
`
`17.
`
`In 2006, Geisha NYC LLC and OSSS Hospitality NYC LLC opened two new
`
`

`
`Case 2:09-Cv—O2022-JFB-WDW Document 1-2
`
`Filed 05/12/09 Page 4 of ll
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`18.
`
`19.
`
`20.
`
`21.
`
`22.
`
`23.
`
`24.
`
`J aponais restaurants, one in the Flatiron district in New York City, the other in the
`
`MGM Mirage Hotel and Casino in Las Vegas.
`
`Both restaurants use the stylized JAPONAIS mark throughout.
`
`The fame of the mark, JAPONAIS, is partly attributable to the amount of business
`
`conducted under the mark, over a long period of time.
`
`Through its continuous use of the JAPONAIS design since 2008, the plaintiff has
`
`acquired substantial goodwill and customer recognition throughout the region.
`
`Plaintiff has expended substantial time, effort and money in developing a brand
`
`image for his restaurant, including the development and marketing of his
`
`JAPONAIS design.
`
`As a result of providing services under the JAPONAIS mark, JAPONAIS has
`
`become distinctive in the restaurant industry, as well as among the general public.
`
`The scope of goodwill and customer recognition in plaintiffs JAPONAIS design
`
`is evidenced by the substantial sales of plaintiffs JAPONAIS restaurant since
`
`2008.
`
`TUCCILLO is the owner of the U.S. Trademark Reg. No. 3591621. Under
`
`Trademark Act Section 33, such ownership creates and constitutes primafacie
`
`evidence that TUCCILLO owns this mark, that TUCCILLO’s trademark currently
`
`is valid, and that TUCCILLO has exclusive rights to use the registered mark,
`
`JAPONAIS.
`
`25.
`
`The defendants have adopted and used in commerce the name and mark
`
`JAPONAIS in connection with restaurants and lounges, in bad faith and with full
`
`

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`Case 2:O9—cv—O2022—JFl3-WDW Document 1-2
`
`Filed 05/12/09 Page 5 of 11
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`knowledge of the prior, long established rights of TUCCILLO and his related
`
`companies.
`
`26.
`
`The defendants also have in bad faith obtained and retained ownership ofthe
`
`27.
`
`28.
`
`29.
`
`30.
`
`domain names JAPONAISNYC.COM and JAPONAISLASVEGASCOM, acts
`
`which constitute trademark infringement, dilution and unfair competition, with the
`
`added intent of improperly attempting to obtain profit from ownership of the
`
`domain name in violation of anti-cybersquatting prohibitions.
`
`Despite demands from TUCCILLO that the defendants cease use of JAPONAIS
`
`as a trademark, trade name and domain name, defendants have continued to use
`
`these designations improperly and in bad faith.
`
`COUNT I
`
`This cause of action arises under the Trademark Act of 1946, as amended (U.S.C
`
`Section 1051 et seq.). More particularly, this Count is to remedy infringement of
`
`trademarks registered in the U.S. Patent and Trademark Office, and is brought
`
`pursuant to §§32-34 ofthe Trademark Act of 1946 (15 U.S.C. §§11l4-1116).
`
`TUCCILLO repeats and realleges each and every allegation contained in
`
`paragraphs 1-27 of this Complaint
`
`Use in commerce by the defendants of a colorable imitation of TUCClLLO’s
`
`federally registered trademark is likely to cause confusion, mistake and deception
`
`among members of the public and in the trade as to the source, origin, or
`
`sponsorship of defendants’ services. Such use by defendants constitutes a clear
`
`and direct infringement ofTUCCILLO’s right in and to TUCCILLO’s federally
`
`

`
`_Case 2:O9—cv-O2022—JFB-WDW Document '1-2
`
`Filed 05/12/09 Page 6 of 11.
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`registered trademarks, and has resulted in injury and damage to TUCCILLO that
`
`will continue ifdefendants are not ordered to cease all use ofthe mark,
`
`JAPONAIS.
`
`COUNT II
`
`31.
`
`32.
`
`33.
`
`34.
`
`35.
`
`36.
`
`This cause of action arises under §43(a) of the Trademark act of 1946, as
`
`amended (1 5 U.S.C. §l I25(a)) for unfair competition and false designation of
`
`ori gin.
`
`TUCCILLO repeats and realleges each and every allegation contained in
`
`paragraphs 1-30 of this Complaint.
`
`Defendants, by reason of the foregoing acts, have falsely described, represented
`
`and designated the origin of its services. Defendants activities already have
`
`confiised the public into believing that defendants’ restaurant and lounge is
`
`associated with TUCCILLO, and defendants’ continued activities are likely to
`
`create further confusion and deceive the public concerning the source of
`
`defendants’ services. Such activities have caused, and are likely to cause, further
`
`damage to TUCCILLO and his related companies.
`
`COUNT III
`
`This cause of action arises under Section 43(c) of the Trademark Act (15 U.S.C
`
`§1 125(c)).
`
`TUCCILLO repeats and realleges each and every allegation contained in
`
`paragraphs 1-33 of this Complaint.
`
`'I'UCCILLO’s trademark is “distinctive” within the meaning of the anti-dilution
`
`

`
`Case 2:O9—cv-02022-JFB-WDW Document "I-2
`
`Filed 05/12/09 Page 7 or’ 11,
`
`37.
`
`38.
`
`39.
`
`40.
`
`provision contained in Section 43(c) of the Trademark Act.
`
`Defendants’ operation of a restaurant and lounge under the name and mark
`
`JAPONAIS, and defendants’ ownership of the domain names
`
`JAPONAISNYCCOM and JAPONAISLASVEGASCOM, constitutes
`
`commercial use in commerce that is causing dilution of the distinctive quality of
`
`TUCClLLO’s distinctive mark.
`
`The distinctive nature of TUCCILLO’s trademark is of enormous value, and
`
`TUCCILLO has suffered and will continue to suffer harm, as well as the blurring
`
`and whittling away of its distinctive trademark, ifdefendants’ wrongful conduct
`
`is allowed to continue.
`
`COUNT IV
`
`This cause of action arises under Trademark Act Section 43(d), l5 U.S.C.
`
`§1125(d), often referred to as the “Anti-Cybersquatting Consumer Protection Act”
`
`or “ACPA.”
`
`TUCCILLO repeats and realleges each and every allegation contained in
`
`paragraphs 1-38 of this Complaint.
`
`In bad faith, defendants have obtained, held and currently own the domain names
`
`JAPONAISNYC.COM and JAPONAISLASVEGASCOM, names that contains
`
`the distinctive trademark, JAPONAIS.
`
`42.
`
`The domain names, JAPONAISNYC.COM and JAPONAISLASVEGAS.COM,
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`are nearly identical and confusingly similar to TUCCILLO’s distinctive
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`trademark.
`
`

`
`Case 2:09-cv—02022~JFB-WDW Document 1-2
`
`Filed 05/12/09 Page 8 of 11.
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`43.
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`44.
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`45.
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`46.
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`47.
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`Defendants registered the domain names with the bad faith intention to profit from
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`use of TUCCILLO’s trademark.
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`Defendants’ bad faith is evidenced by various factors, including but not limited to
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`defendants’ prior knowledge of TUCClLLO’s right in his trademark and the
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`distinctiveness of that trademark; and the large extent to which the trademark
`
`incorporated in the domain name and throughout the defendants’ web sites is
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`distinctive.
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`COUNT V
`
`This cause of action arises under the common law of unfair competition and
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`trademark infringement.
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`TUCCILLO repeats and realleges each and every allegation contained in
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`paragraphs 1-44 of this Complaint.
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`Defendants, by reason of the foregoing acts, have traded upon and appropriated to
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`itself the reputation and valuable goodwill of J APONAIS and acted to create the
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`likelihood of confusion and mistake on the part of the public as to the source of
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`defendants’ services. Defendants’ acts are likely to lead the public to mistakenly
`
`believe that defendants’ services are in some way sponsored by or associated with
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`TUCCILLO and create the impression that defendants’ services are rendered with
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`TUCCILLO’s approval. Defendants’ activities constitute common law unfair
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`competition and trademark infringement, and are a misappropriation and
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`infiingement of TUCClLLO’s common law trademark rights.
`
`

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`Case 2:09-cv—O2022-JFB-WDW Document ’l-2
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`Filed 05/12/09 Page 9 of ‘ll
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`CQUNT Vl
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`48.
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`49.
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`50.
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`51.
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`Plaintiff realleges each and every allegation set forth in paragraph 1-47 of this
`
`Complaint.
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`The use of the JAPONAIS name and mark was and is with full knowledge of
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`plaintiff’ s prior rights and plaintiff‘ s objection to the use thereof.
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`Defendants’ use of the JAPONAIS name and mark has and will injure the
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`business reputation of the plaintiff and will dilute the distinctive quality of
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`plaintiffs distinctive JAPONAIS name and mark in violation of New York
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`General Business Law §360-I.
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`Defendants’ conduct has caused and will cause irreparable injury to TUCCILLO
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`unless enjoined by this court.
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`WHEREFORE, plaintiff demands the following relief:
`
`1.
`
`That defendants, their officers, agents, employees, servants, successors, assigns,
`
`affiliates, and related entities, and all persons and organizations in act of concert,
`
`participation and combination with them, be enjoined permanently from:
`
`(3)
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`Using the trade name, trademark, domain name, or other indicia of origin,
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`including in whole or part the term JAPONAIS, or any colorable imitation
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`thereof;
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`(b)
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`Advertising, operating a website, using store signs or business stationary, or
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`offering any services using the trade name, trademark, domain name or other
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`indicia of origin including in whole or part the term, JAPONAIS, or any colorable
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`imitation thereof;
`
`

`
`Case 2:09-ev~02022—JFB—WDW Docu.ment1—2
`
`Filed 05/12/09 Page10c~f1’_l
`
`(C)
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`Using any false designation, description, or representation stating or implying that
`
`the defendants are the origin of, or are connected with, JAPONAIS or its services;
`
`and
`
`(61)
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`Otherwise engage in acts of unfair competition and infringement which tend to
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`injure TUCCILLO’s rights in trade name, trademark and domain name,
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`JAPONAIS, or any colorable imitation thereof, or which dilute the distinctive
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`quality of TUCCILLO’s name, trademark or domain name.
`
`That defendants be required to account to TUCCILLO for any and all profits
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`derived by it, and to compensate TUCCILLO for all damages sustained by reason
`
`of acts complained of herein, and that the damages herein be trebled pursuant to
`
`the Trademark Act.
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`That defendants be ordered to deliver up for destruction all infringing materials
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`bearing the JAPONAIS names or marks, and any eolorable imitation thereof, in
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`whole or part.
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`That TUCCILLO be awarded punitive damages.
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`That defendants be ordered to transfer their domain name JAPONAISNYC.COM
`
`and JAPONAISLASVEGASCOM, and any similar domain.
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`That defendants be required to place advertisements or send notification to past
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`and present customers that it improperly has been using the mark JAPONAIS.
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`That TUCCILLO be awarded the cost and disbursements of this action, together
`
`with reasonable attorney’s fees.
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`That TUCCILLO has such other and further relief as the court deems just and
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`proper.
`
`10
`
`

`
`Case 2:09-ev-O2022—JFB-WDW Document 1-2
`
`Filed 05/12/09 Page 11 of 11
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`JURY DEMAND
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`Pursuant to Federal Rule of Civil Procedure 38(b), plaintiff hereby demands a trial by jury
`
`as to all issues.
`
`Dated: May 4, 2009
`Garden City, N.Y.
`
`Respectfully submitted,
`ARNOLD L. KERT, PLLC
`
`s
`
`___...
`
`C333 \
`ARNOLD L. KERT, E Q. (ALK 3106)
`Attorneys for the Plaintiff
`666 Old Country Road
`Garden City, N.Y. 11530
`(516)222—1860
`
`.
`
`11
`
`

`
`(,,d,,,,r,,((,,,,m,,
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`Case 1:05-cv-05529 Document 123
`
`Filed 07/07/2009
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`Page 1 of 3
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`United States District Court, Northern District of Illinois
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`R. p.1m....sfi’s$3.A.m3,;,
`
`
`DATE
`
`7/7/2009
`
`
`
`
`
`CASE NUMBER
`
`CASE
`TITLE
`
`05 C 5529
`
`Geisha LLC vs. Roy Tuccillo
`
`
`
`DOCKET ENTRY TEXT
`
`Geisha’s motion to stay [117] is denied without prejudice. Pursuant to its March 1, 2006 order [34], this court
`awards attorneys’ fees and expenses in favor of Geisha in the amount of $67,150.46. Tuccillo’s motion to
`strike [61] is denied. This case is dismissed without prejudice, to be reinstated, if appropriate, following
`completion of the TTAB cancellation proceeding. (For further details see minute order.)
`
`as --
`I[ For further det
`
`ails See text below ]
`“‘
`air:
`
`Docketing to mail notices.
`
`
`
`STATENIENT
`
`On September 26, 2005, Plaintiff Geisha, LLC, sued Defendant Roy Tuccillo for infringing a mark it uses in
`connection with a high—end Chicago restaurant. Through counsel, Tuccillo filed a verified answer, and
`verified amended answer, in early November. Then at his discovery deposition in January 2006, Tuccillo
`testified unequivocally that he had not signed the answer to the complaint in this case and had no knowledge
`that the answer had ever been filed. Tuccillo nevertheless made no effort at that time to withdraw the
`
`improper answer or amend it. When Plaintiff reported the substance of Tuccillo’s testimony on February 21,
`2006, the court entered an order striking the answer. Tuccillo filed his amended answer a week later. Then on
`March 1, 2006, the court directed ordered Plaintiff to pay the fees and expenses Plaintiff incurred as a result of
`these events.
`
`Plaintiff has filed a detailed fee petition seeking an award of $69,499.96, an amount Tuccillo characterizes as
`“outrageous.” Before addressing his few other objections (which are largely overruled), the court pauses to
`describe the background of this dispute.
`
`Procedural History
`
`In order to investigate Tuccillo’s implicit charge of serious wrongdoing by his attorneys, Plaintiff issued
`subpoenas for the testimony of the two New York lawyers who had filed the answers. Apparently caught in a
`misstatement (if not in a deliberate falsehood), Tuccillo filed a motion to quash the subpoenas, now
`acknowledging that he had in fact signed a Power of Attomey—an instrument that he failed to mention at his
`deposition or produce for review by Geisha’s attorneys. Tuccillo’s objections to Plaintiff’ s efforts to depose
`his attorneys, and those of the New York lawyers themselves, were overruled by a federal judge in New York.
`
`To complicate these events, when deposed, one of Tuccillo’s New York lawyers insisted he was unaware of
`
`05C5529 Geisha LLC vs. Roy Tuccillo
`
`Page 1 of 3
`
`

`
`l
`
`
`
`
`STATEMENT
`
`
`
`the Power of Attorney and did not sign Tuccillo’s name to the answer filed in this lawsuit. The other lawyer, a
`friend of Tuccillo’s who is now suspended from the practice of law, testified that he also did not sign
`Tuccillo’s name to the answer; instead, this witness claimed that, at Tuccillo’s own request, the answer was
`signed and notarized by an unidentified former employee. Attorney No. 2 was unable to provide the name,
`address, telephone number, or any other identifying information for the mystery signer.
`
`
`
`
`
`In at least some respects, Tuccillo’s second amended answer, filed on February 28, 2006, differed from the
`original one. Although Tuccillo insists that the differences are insignificant, the filing of a purportedly sworn
`answer that is inaccurate in any respect is of grave concern to the court. And Tuccillo has not to date
`explained why, upon learning that an answer had been filed purportedly without his knowledge or
`authorization, Tuccillo himself took no steps to seek leave to withdraw that answer. Instead, after adamantly
`denying knowledge of the original answer at his deposition, Tuccillo submitted an affidavit on March 1 in
`which he suddenly recalled having granted his New York lawyers a broad Durable Power of Attorney
`authorizing their filings on his behalf.
`
`
`
`
`
`
`
`
`
`
`Fee Petition
`
`
`
` As noted, Tuccillo calls the amount sought by Geisha’s attorney “outrageous.” Although the fees requested,
`
`totaling $69,499.96, are indeed substantial, the court notes that Geisha has submitted detailed billing
`statements identifying the services performed, the attorneys who performed them, the time expended and the
`
`hourly rate claimed. Those detailed billing statements, as amplified in Geisha’s memoranda of la.w, reflect the
`following:
`
`-
`Geisha was required to issue two subpoenas for Tuccillo’s New York lawyers, and then respond with
`legal memoranda, supported by research, in opposition to Tuccillo’s own motion to quash those
`
`subpoenas
`Geisha’s counsel had to prepare for a brief, but successful, appearance before a federal judge in New
`
`York
`
`
`
`
`
`
`-
`
`-
`
`Geisha utilized two attorneys for the New York depositions, not only to enable Geisha to depose the
`witnesses simultaneously but also to ensure that an attorney admitted in New York (for whom no
`travel or accommodations expense was incurred) would be available should a return to court be
`necessary
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`-
`
`Geisha incurred a hotel bill for one night’s stay as a result of the New York lawyers’ failure to notify
`counsel that they would not proceed with the deposition on the date it was originally noticed
`
`
`
`Tuccillo has not challenged Geisha’s counsel’s hourly rates. He argues, instead, that Geisha has not
`authenticated its attorneys’ billing records or shown that the bills were actually paid; that Geisha used too
`many lawyers; that the fees generated were unrelated to Tuccillo’s own amended answer: that Geisha’s efforts
`to establish that Tuccillo’s testimony was false was “completely unsuccessful,” and that Geisha has engaged
`in improper ex parte communications with the court.
`
`
`
`
`
`
`
`
`
`To the extent that Tuccillo’s objections to Geisha’s billing records had any merit, Geisha has cured those
`objections by submitting the affidavit of Attorney Joan Long [63]. Ms. Long’s affidavit, and the unredacted
`
`billing records she submitted as an exhibit to that affidavit, satisfy the court that the original fee petition was
`“cleansed” of time devoted to matters unrelated to the stricken answer. And, although Tuccillo baldly asserts
`
`that Geisha relied on too many lawyers, all of whom presumably had to become familiar with the case,
`
`Tuccillo has not specifically identified any particularly troublesome entries, and the court sees none. Nor is
`
`
`
`
`O5C5529 Geisha LLC vs. Roy Tuccillo
`
`Page 2 of 3
`
`
`
`
`

`
`the court moved by Tuccillo’s implicit suggestion that fees are not recoverable unless Geisha has already
`actually paid them; although payment of an attomey’s fee is strong evidence that the fee is reasonable, the real
`question is whether the requested amounts are fees that commercial parties would have incurred and paid even
`without a fee—shifting award. See Kallman v. Tandy Corp., No. 99 C 490, 2001 WL 761137 (N.D. Ill. June 11,
`2001), citing Medcom Holding Co. v. Baxter Travenol Labs., Inc., 200 F.3d 518, 521 (7th Cir. 1999).
`In this
`case, where Geisha engaged in the effort to get to the bottom of the matter even before the court directed
`payment of fees, the answer is obviously yes.
`
`Tuccillo’s contention that Geisha’s attorney time was not generated by the confusion surrounding his original
`answer simply ignores the record. Absent Tuccillo’s adamant insistence that he did not sign the answer—and
`simultaneous failure to explain what he himself now claims to have known about the Power of A.ttomey—sent
`Geisha’s lawyers on a “wild goose chase” to determine whether Tuccillo was lying under oath or his attorneys
`had violated the canons of ethics. Rather than cooperate with that investigation, Tuccillo and the lawyers
`fought Geisha’s subpoenas, with the predictable result that Geisha’s lawyers were required to file briefs,
`prepare for a court appearance, and then appear before Judge Kaplan. Whether or not Geisha demonstrated
`that Tuccillo’s testimony was false, there can be no question that Geisha showed that his testimony was
`grossly misleading. And the confusing and misleading nature of his former attorneys’ conduct is attributable
`to their client, Tuccillo, as well. Again, Tuccillo himself, who had all of the relevant information at his
`disposal, did nothing to clarify his earlier statements; he did not even seek leave to amend his answer until the
`original, purportedly-unauthorized one, was shicken on the court’s own motion.
`
`Tuccillo’s objection to alleged ex parte communications bears little discussion; Ms. Hall’s March 2, 2006
`letter bore the mark: “cc: Jeffrey Pine,” making it clear that she had included Tuccillo’s attorney in her letter
`to the court. A motion may (or may not) have been a more appropriate way to seek instruction fi'om the court,
`but any suggestion that the letter was an improper ex parte communication is unconvincing.
`
`Tuccillo himself has not bothered to identify specific objectionable time entries, but the court notes that its
`own review of Geisha’s fee petition chart suggests that certain minor reductions are appropriate: On 2/2/06,
`Attorney R. Unikel