Recitation of the papers as required by CPLR § 2219(a) considered in reviewing the underlying motion to reargue:

Order to Show Cause, annexed Exhibits and Affidavits...........................................1

Affirmation in Opposition and annexed Exhibits.......................................................2

Reply Affirmation.......................................................................................................3

Defendant's Declaration............................................................................................4

For Plaintiff:Moulinos & Associates LLC by Peter Moulinos, Esq.

For Defendant:Fox Rothschild LLP by Ernest E. Badway, Esq.

Plaintiff 276-8 Pizza Corp., d/b/a/ John's Pizzeria, seeks a preliminary injunction against defendant Lisa Free, a/k/a Lisa Castellotti, to enjoin her use of the name and mark "John's [*2]Pizzeria" in Bronx County. The plaintiff corporation owns John's Pizzeria, established in 1929 and located at 278 Bleecker Street in New York County. Peter Castellotti, Jr. is the plaintiff's co-president and co-chairman of the Board; defendant Lisa Castellotti is his estranged daughter. The Court granted co-president and co-chairman Robert Vittoria's application to intervene; he did not provide a written submission.

The plaintiff claims that its mark is being diluted by the defendant. The plaintiff's photographs depict a "John's Pizza" sign in front of the Bleecker Street establishment, neon lights that announce "John's Pizzeria" to passers-by and a menu that highlights its long history. The plaintiff submits two reviews that establish that John's Pizzeria of Bleecker Street is highly regarded:

75 years of John's pizza and the Village: That's amore

Over the years John's has received rave reviews from such publications as Zagat's and Time Out New York and won awards, such as City Search's 2001 best pizza audience winner. Celebrity photos line the walls - from Mary Tyler Moore to New York Rangers general manager Neil Smith, who signed his picture, "To John, the best from the best!" Rapper Vanilla Ice called John's pies "dope pizza."

...Movie stars like Danny DeVito, Rhea Pearlman and David Faustino, from "Married with Children," stop by for a pie when in the neighborhood, as do a group of devoted local residents and sports stars from the Giants, Jets and Yankees.(Deborah Lynn Blumberg, thevillager.com/villager_66/75years ofjohnspizza.html, 8/4-10/2004.)

John's Pizzeria of Bleecker, Greenwich Village

Every city needs at least one older-than-old restaurant with a certain kind of cultivated rakishness—hard, straight-back wood booths that don't encourage lingering; graffiti-carved walls that conjure visions of 1950s hooliganism; grumpy signage.

We have all this—plus pretty decent pies—in John's Pizzeria of Bleecker Street, one of the quintessentials on our list of must-visit New York pizzerias." (Adam Kuban,http://slice.seriouseats.com/archives/2013/04/new-york-quintessentials-12-classic -pizzerias-you-should-know-slideshow.html#show-319939, 4/18/2013.)

By Settlement and Shareholders' Agreement dated 3/12/96, Robert Vittoria and Peter Castelloti, Sr. were designated as the shareholders, officers and directors of the plaintiff [*3]corporation.^[FN1] The Agreement at paragraph 13 allocates 60 voting shares in the plaintiff corporation to Mr. Vittoria and 40 voting shares to Mr. Castellotti. Net profits are similarly divided. The Agreement designates Mr. Vittoria and Mr. Castellotti as the co-presidents and co-chairmen of the Board; it further names Mr. Vittoria as the board treasurer and Mr. Castellotti as the board secretary. Paragraph 19 sets forth parameters with respect to use of the corporate name:

Vittoria and Castellotti shall not authorize any person, firm or organization in which they shall not be owners to permit the use of the corporate assumed name without the consent of the Board of Directors in writing.

Defendant Lisa Free initially operated "John's Pizzeria's" pizza restaurants in Times Square in Manhattan and in Jersey City, New Jersey as entities that were distinct from the plaintiff's business. On or about 11/12/12, the defendant linked her Times Square and Jersey City restaurants with the plaintiff corporation by stating in her website that:

1. John's originally opened on Sullivan Street in Greenwich Village; re-opened at its current Bleecker Street address where it "continues to churn out incredible pizza" in an "atmosphere reminiscent of days gone by" with original booths, neon sign, tin ceilings and checkered floor;

2. John's in Times Square opened in 1997; and

3. "expanding outside of New York City, John's in Jersey City has become an ideal neighborhood location attracting pizza lovers throughout the state."

The defendant's website advertises that:

John's has always been a place where friends and family love to gather. The family's commitment to excellence and their love of the business make this venerable pizzeria withstand the test of [*4]time.

At issue is Ms. Free's continuing use of the plaintiff's corporate name and mark and her pending use to promote her new establishment at 2376 Arthur Avenue in Bronx County, her newest location. Shareholder and co-president Peter Castellotti avers in his supporting affidavit that the defendant's use of the plaintiff's name and mark confuses the public, exposes the plaintiff to substantial liability, damages its reputation and causes irreparable injury. The plaintiff proffers several reviews of Ms. Free's Jersey City restaurant that are illustrative:

1. Domino's Anyone?

It's a poor, poor pizza...Domino's is actually slightly better than this place. (yellowbot.com/johns-pizza-jersey-city-n.j [5/22/08].)

2. They need to get rid of the bar!!

I was in town visiting my friends and family. I live in PA and the pizza out here is not to great. I was told there was a great Pizzeria in New York called John's, when I found out they opened one in my hometown. I was very interested in eating there. Let me tell you, it was a great disappointment. I have made better pizza on my own...When I asked (the waitress) if the manager or owner was available...she told me the owner was sitting at the bar. When I looked over, I saw a woman that was too intoxicated to be a woman in management. (yellowbot.com/johns-pizza-jersey-city-n.j [4/30/08].)

3. AOL wanted to share a review of John's Pizzeria, 87 Sussex Street, Jersey City, NJ 07302

I have to agree with the other reviewers here, this place was such a disappointment.

It's not because the food was cold (which it was), or because the pasta was overcooked (yup, that too) or that the service was terse (bordering on annoyed) but frankly because this place has such potential and the owners either don't give a #%€~, or they're just lazy. (Jay S., yelp.com [3/4/10].)

4. AOL wanted to share a review of John's Pizzeria, 87 Sussex Street, Jersey City, NJ 07302 [*5]

TERRIBLE EXPERIENCE. AWFUL service — our waiter kept forgetting everything. I love Johns on Bleecker in NYC — Cannot believe this is the same folks. Thought the place seemed dirty...what a disappointment. (Kate L., yelp.com [4/22/13].)

5. AOL wanted to share a review of John's Pizzeria, 87 Sussex Street, Jersey City, NJ 07302

An absolute abomination. I cannot even believe that John's of New York is affiliated with this fiasco of a restaurant.

Here is all you need to know:

Food: Cold, terrible, expensive

Service: Inept, at best

Atmosphere: Ranging from uncomfortable to mildly hostile.

Don't worry, John's, I won't bother you by spending money here again. (Randy S., yelp.com [12/29/09].)

6. AOL wanted to share a review of John's Pizzeria, 87 Sussex Street, Jersey City, NJ 07302

It's dark in this pizzeria. Real dark. And it smells like the carpeting or the furniture are overdue for an upgrade. Everything just seems old and worn, and not in a good way. The pizza is just ok, nothing great. Joun's in the city is much better. This place really skeeved me. The service wasn't that attentive either when I came in to order a pie for take out. I think the manager/host was overwhelmed...(M.V., yelp.com [8/1/12].)

7. AOL wanted to share a review of John's Pizzeria, 87 Sussex Street, Jersey City, NJ 07302

It was good. Would I stand in line for hours like they do in the Village. Hell no at least not for the pizza here in JC. (Stephanie Y., yelp.com [6/4/09].)

8. AOL wanted to share a review of John's Pizzeria, 87 Sussex Street, Jersey City, NJ 07302

John's Pizzeria in Jersey City is HORRIBLE...The manager did not [*6]even care that we were leaving. This place is a DUMP! Get a better staff and clean your restaurant! (mike h., yelp.com 5/29/11].)

The 3/12/96 Agreement has various non-competition clauses but provides at Paragraph 6 that Peter Castellotti, Jr., Lisa Castellotti and Madeline Castellotti may "open and operate any restaurant premises" outside a one mile radius of John's Pizzeria on Bleecker Street. Defendant Lisa Castellotti Free contends that Paragraph 6 authorizes her to freely use the plaintiff's name and mark provided that her restaurants are located one mile outside the plaintiff's radius; she alternatively proffers a 6/29/13 menu from Mr. Castellotti's Upper East Side restaurant that lists four locations including the defendant's Times Square and Jersey City pizza restaurants to establish waiver. The defendant submits proposed website language to "clarify" the history section and distinguish the separate businesses. The draft language nonetheless retains many references to John's Pizzeria of Bleecker Street.

DISCUSSION

The general purpose of trademark law is to prevent a person from passing off his goods or business as the goods or business of another. (Oaklite Products v Boritz, 161 Misc 807 [Sup Ct, New York County 1936].) A trademark infringement does not depend upon the use of identical words but instead on whether a trade name or trademark is "so alike another in form, spelling or sound that one, with a not very definite or clear recollection as to the real trademark, is likely to become confused or misled." (Oaklite Products v Boritz, 161 Misc at 808.)

New York's anti-dilution statute provides broader protection than federal trademark and unfair competition laws. (Katz v Modiri, F Supp2d 883 [SDNY 2003].) New York defines dilution as "the gradual whittling away of a firm's distinctive trademark or name." (Allied Maintenance Corp., 42 NY2d 538 [1977].) The Court of Appeals in Allied Maintenance Corp. explained the purpose of General Business Law 368-d, now replaced by General Business Law § 360-l, as follows:

The evil which the Legislature sought to remedy (in the anti-dilution statutes) was not public confusion caused by similar products or services sold by competitors, but a cancer-like growth of dissimilar products or services which feeds upon the business reputation of an established distinctive trade-mark or name.

A party may seek injunctive relief pursuant to General Business Law § 360-l in cases of infringement of a registered or unregistered mark or in cases of unfair competition, [*7]notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services, where there is a likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name. In Fusha Japanese Restaurant, Inc. v Fusha, 17 AD3d 226 (1st Dept 2005), the plaintiff corporation established that it had been incorporated more than a year before the defendants assumed the name "Fusha Japanese Cuisine." Even though there were three other businesses, none of them restaurants, that were registered with the Secretary of State under the name "Fusha," the First Department held that it "does not avail defendants that actual customers have confused defendants' Staten Island restaurant with plaintiff's Manhattan restaurant." The lower court's decision to issue a preliminary injunction was accordingly affirmed and the defendants were enjoined from using the name "Fusha" as part of their restaurant's name, notwithstanding the fact that "Fusha" is a recognized common business name in the New York metropolitan area.

Unlike the distinctive Fusha name referenced by the First Department in Fusha Japanese Restaurant, Inc. v Fusha, there exist pizza establishments named John's Pizza, John's Pizzeria or some variation thereof. Here, the distinction lies in the defendant's deliberate linking of the plaintiff's name and mark with her own establishments notwithstanding the absence of the plaintiff's written authorization. The plaintiff has additionally established the defendant's intentional creation of customer confusion between the plaintiff's highly regarded Bleecker Street restaurant and the defendant's operations. The Court notes that during the pendency of this proceeding, the defendant opened John's Pizzeria of NY & NJ, her new restaurant at 2376 Arthur Avenue in Bronx County, the subject location.

After careful consideration, the Court finds that the plaintiff established its prima facie case by a preponderance of the credible evidence. The Court accordingly issues a preliminary injunction barring the defendant's use of the plaintiff's names and marks: The defendant must delete all reference to a shared history at her respective locations, in all communications and in all advertising.

This matter is adjourned to January 27th, 2014 for further consideration as needed. A copy of this Decision and Order with Notice of Entry shall be served within five days upon the defendant.

Dated: January 14, 2014

Bronx, New York

__________________________

Hon. Lizbeth González