$' 't ! Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 1 ' : j) of 63 ': q .' j' t è t UNITED STATES DISTRICT COURT ) SOU TH ERN DIS ICT 0F FLORIDA è CA SE NO ) . 09-21893-C1 -HOEV ELER/TU RN O FF r ( T M ICH AEL CH OW known as GMR. CH O ', et a1., r)

Plaintifs/counter-Defendants, ( V. )

: è CHAK YAM CH AU, et a1., ) . j Defendants/counter-plaintifs ( . , / y. O RD ER ON PO S .TRIAL MO TION S

I j THIS CAUSE comes before the Co rt on the parties' post-trial motions. The 't l Court heard argument from counsel on M y 9, 11, and 16, 2012, and has considered y ! ! ) : all relevant portions of the record. As ad ressed in more detail below, the Court ) ' has determined that there is no basis for isturbing the jury's verdict, with the l I exception of one item: the jury ,s award of 500,000 to Plaintiff Chow individually, ! 1 w hich the Court has determined must be et aside. The Court also finds that this

t case is not the type of ''exceptional'' case t justify attorneys' fees under the Lanham ! r : ! . Act for any party, and the Court denies, ithout prejudice to renew at the ë appropriate time, the Defendants' reques for attorneys' fees pursuant to Florida t ) ) statute. Costs will be aw arded to Plainti TC Ventures, Inc., as to the false

advertising claims, and as to Defendants n all Counts as to which they prevailed ,

and as to which costs are taxable. j ( t ) PROCEDURAL BACKGROUND '

Plaintiffs filed this case in 2009, al eging multiple counts of trademark ) è

( I Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 2 of 63

infringement and other acts relating to De endants' operation of competing restaurants which allegedly copied aspects of the d$Mr Chow'' restaurants.l

Defendants included the original investors who started the competing restaurants

in 2005, including the founding chef, Defe dant Chak Yam Chau, who formally

changed his name in 2006 to Philippe Cho Chau, and whom previously had been

employed for 25 years in Plaintiffs' New Y rk restaurant. Other Defendants

included the corporations operating the re taurants, a recent investor in the Defendants' California restaurant, and ot er chefs and a maitre d' employed by the

D efendants' restaurants. The original co plaint included nineteen daims.

Three weeks after the original com laint was filed, Plaintiffs amended their

com plaint, adding specific claims for civil respass and eorporate espionage, alleging

that ttan Asian male disguised in a chef s j cket entered the premises of the Mr Chow Restaurant Ein Miami Beach) witho t authorization and proceeded into the Mr Chow kitchen.'' ECF No. 15, ! 79.2 O November 19, 2009, the Court dismissed

l'l'he Court has endeavored to refer to the Plaintiffs' restaurants consistently as (dMr Chow'' restaurants, as the evidenc indicated that the restaurants' name is styled ïdMr'' instead of ddMr.'' (similarly, Pl intiff Mr Chow Enterprises, Ltd.). The original trademark registration, effective uly 7, 1981, was as to (dMr. Chow,'' see United States Patent and Trademark Of ce (ï'USPTO''), Reg. No. 1,160,402, and that is the only tradem ark as to which Pl intiffs elected to pursue their claims at trial. Plaintiffs' Third Am ended Complai t also sought to prosecute claims as to other trademarks, Dkt. No. 134, ! 74, e.g , the mark 'dMr Chow'' was registered on January 6, 2009, see Reg. No. 3,558,956, ut Plaintiffs ultimately elected not to pursue any claims related to those trade arks. zAccording to the First Am ended C m plaint, the alleged trespasser conducting dtcovert and other surveillanc activity'' was an aequaintance of one of Plaintiffs' longtime chefs and asked for t at chef by nam e; Plaintiffs alleged that the person was sent there for the dssole p rpose of spying on behalf of the Defendants' Miami Beach restaurant. E F No. 15, !! 83. The Court references

2 l Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 3 )! of 63 1 @. j 1 the specific claims of trespass and espio age l , without prejudice to refile the specific 1 1 claims with sufficient support - which aintiffs failed to do 1 .3

)1 A Second Amended Complaint w s filed on December 3, 2009, adding, làter 1 i lia claims for tortious interference wit Plaintiffs' em ployee relationships .,qjj;. -'i!!!EEii!l!,,- , and j'-'iq. ji breach by Defendants' Chefs of alleged ( written Confidentiality Agreements'' 1 1 purportedly signed by those Chefs. EC No. 42 1 , !! 43, 173. Defendants then filed / 1 a Counterclaim for defam ation against he Plaintiffs and also against Eva Chow l (wife of Michael Chow) and Michelle Ch n (an empl ; oyee of the Plaintiffs' .L restaurants and the sister of Eva Chow) ECF No. 119: the Court dismissed jl , without prejudice, the Countexclaim as to Mrs. how and Ms. Chun in an Order entered on l

@ April 5, 2010.

1 Finally, on April 13, 2010, a Thir Amended Complaint was filed, w ith C 1 f fif ' v sixteen claims against a tota o teen efendants. ECF No. 134. This Court had t ' jurisdiction over the federal and state cl ims ) , pursuant to 28 U.S.C. jj 1331, 1338, ) and 1367. Defendants answered the co plaint and some Defendants filed 7 I terclaims ag 1 coun ainst som e of the Plain iffs, including another claim for defam ation ) against Mrs. Chow and Ms. Chun - simi ar to the previously filed claim but ) l l.. t y these allegations as a dem onstration of t e extrem ely adversarial posture of these

. t' parties since at least the beginning of th's litigation. . ' t

3'l'he Third Am ended Com plaint - he operative complaint - ' does not include a ( specific claim of espionage but includes a legations of corporate espionage as a type t of common 1aw unfair competition (along with misrepresentation unlawful methods of compensati , false advertising, on, etc., CF No. 134, 5 154), and alleges that Defendants agent or apparent agent e gage No. 134, ! 77). q ' L. g ) t t

è :':j),'' ''' .. ? . Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 4 of 63 ( 1j jtl supported by additional factual allegatio s. Dkt. Nos. 170, 195.4. After extensive discovery disputes (some of which were resolved only after ! )- 1') the parties ,counsel were ordered by Ma istrate Judge W illiam Turnoff to spend l

1)' several hours in the court's jury room to esolve their differences), and unsuccessful ) motions to dismiss and for summary jud ment mrought by Defendants and by ( i Counter-Defendants), the case was tried to a jury over a period spanning five weeks in January and February 2012. The Co rt entered several rulings before and

during trial which eliminated certain cl ims and counterclaims,s and other claims

('. were abandoned by Plaintiffs, such that a total of twelve claims were before the , 2 ) jury, as to ten oe fendants. The jul'y found Defendants Davé 0 NYC, lnc., and Stratis Morfogen )q r. -11)--l 4lnterestingly, the Defendants' la est-filed Answer and Mfirmative Defenses lj does not include the Counterclaims (wh ch ultimately were tried before the jury). j According to the record, Defendants file an Amended Answer and Affirmative j Defenses and Amended Counterclaim ( CF No. 170), and then filed a tdcorrected'' 1 Am ended Answer and Mfirmative Defe ses (ECF No. 195), which removed 1j Affirmative Defense 69 so that it could e filed under seal. The Corrected filing also 3 itted the Counterclaims, but Plainti s already had responded to the 0mCounterclaims as stated in the earlier- led Am ended Answer and Am ended Counterclaim, and have not argued tha the om ission of the Counterclaims in the 1j Corrected filing was critical. I s'rhe court granted the Defenda ts' motion for summary judgment as to any 1j alleged tortious interference with the r lationship between Plaintiffs and Plaintiffs, j employees (Count XIV). See Order dat d January 20, 2012. (Plaintiffs had claimed j? that Defendants 'dsolicited chefs and ot er key employees'' of Plaintiffs' restaurants 11 fïto leave Plaintiffs' em ploy to work in efendants' copycat restaurant.'' ECF No. ) 134, ! 79.) The Court also granted the motion for summary judgment filed by Eva j Chow and Michelle Chun as to Defend nts:, Counterclaim for Defam ation q (Counterclaim I), and granted the Plai tiffs'/counter-Defendants' motion for t summ ary judgment as to Counterclai I11 (damages for false or fraudulent registration of the trademark). See Or er dated January 20, 2012. 1 1 4 1 1 1 1 Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 5 (( of 63

; responsible for false advertising and unfai competition by deceptive conduct as to :

Plaintiffs TC Ventures, lnc. (owner of the r Chow restaurant on 57th Street in ( New York City), and Michael Chow, indivi ually, but rejected a11 other claims and j ( counterclaims. The jury awarded $520,45 to TC Ventures, Inc., and awarded $500,000 to Michael Chow, individually. he Court deferred entering final ) è judgment - as agreed to by the parties - un il resolution of the multiple post-trial è

m ot j Ons. , )

(E AN A YSIS ) ) This case involves a relatively strai htforward dispute which was l agc essively litigated, between two sets of restaurant companies and their ;. principals, regarding allegedly unfair busi ess practices. Claims were brought for y (7 federal and comm on 1aw trademark, trade nam e, and trade dress infringement, as # 11 as f0r false advertising, conversion, a d deceptive business practices. Plaintiffs 'è W e i ultimately prevailed only on the question f false advertising *0th under the :' . Lanham Act, 15 U.S.C. j 1125(a), and the ommon law) and unfair competition by deceptive conduct in New York.6 Defenda ts did not prevail on their Counterclaims ' ).

: V lthough Plaintiffs TC Ventures, I c., and Michael Chow, individually, pl assert that they prevailed not only on the anham Act claim for false advertising but also on a11 of the com m on law claims, he Court disagrees with that ' interpretation of the jury's verdict. Altho gh the Jury lnstructions and Verdict Form, consistent with the parties' agreem nt, com bined the four com m on 1aw claims (Counts Vl - IX) into a single elaim of ttunfair Competition'' or ('Unfair , Competition by Deceptive Conduct,'' the j ry specifically did not find for the ( Plaintiffs as to trademark, trade name or rade dress infringement and that verdict t must be read in conjunction with the jury' verdict for Plaintiffs as to the generally g stated claim for ddunfair Com petition.'' A r view of the Third Am ended Com plaint , l

è1.,. g' Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 6 1 of 63 j 1 ) j1 which were before the jury (for defamati , and a request that the ttMr. Chow'' ?(j trademark be de-registered). Before add essing the parties' post-trial motions, the :j1j)èë.-1 Court lists the parties and the specific cl ims which were at issue. i ) j l1 The parties at trial

1-.. ? 1 The Plaintiffs include Michael Ch w (known as fdM r. Chow''), Mr Chow l Enterprises, Ltd., a California Limited P rtnership, (operator of a Mr Chow (. j7 restaurant in Beverly Hills, California, nd owner of the RMr. Chow'' trademarkl;

)1 M C Miami Enterprises, LLC, a Florida imited Liability Company (operator of a 1 1 M r Chow restaurant in Miami Beach, F1 rida); MC Tribeca, LLC, a New York --. 111r---I- Limited Liability Company (operator of M r Chow restaurant in Tribeca in New

.; 1t York City); and TC Ventures, Inc., a Ne York Corporation (operator of a Mr Chow

restaurant on 57th Street in New York C ty).

; i1 reveals that the sole basis for the comm n law claim stated in Count V1 was trade :) name infringement - the jury's finding f r Defendants as to trade name 1 infringement eompels the conclusion th t Plaintiffs did not prevail on Count Vl. !' Similarly the alleged trade name or tra e dress infringement w as included, am ong other allegations,, as a basis for the com on 1aw claims stated in Counts W I, W II, and IX and the jury's finding for Defend nts as to the claims of trade name and trade dress infringem ent suggests that laintiffs did not prevail as to those allegations - or at least did not complet y succeed - as to those com m on law Counts. r Moreover, as the jury rejected the Plain iffs' claims for deceptive conduct under è Florida or California law, the verdict su gests that the jury found deceptive conduct l 1 as to the Defendants' activities in ew York. The Court concludes that, at ) onm ost, y Plaintiffs TC Ventures, Inc., and ichael Chow , individually, prevailed on 1 only those aspects of the common law a egations in Counts VlI, VI1I, and IX 14 relating to false advertising and unfair ompetition by deceptive conduct in New l York. 1) 7united States Patent and Trade ark Office CUSPTO'') Reg. No. 1,160,402). 1j 1 6 1 1 ')) èj j Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 7 j of 63 j j a1i l j, y , ,lS Defendants are Chak Yam Chau ( nown as Philippo Chau during his j ) l employment by Plaintiffs), whose legal n me since August 2006 has been Philippe ,, l 1 chow chau; stratis Morfogen (investor ho opened restaurants with Defendant ' il )1 ( i chau in New York, Miami, East Hampto , and Mexico City under the name of , j kj

: ( ddphilippe by Philippe Chow''); David Lee an original investor who helped open the . ê Defendants' restaurants in New York an Californial; Philippe Miami LLC, a (.. (. ;@è: Florida Limited Liability Company (oper tor of the Defendants' restaurant in i! j Miami Beachl; Philippe North America staurants, LLC, a New York Limited

'j.. ) Liability Company; Philippe Restaurant orp ., a New York Corporation; Davé 60 1 '3 , th NYC, Inc., a New York Corporation (oper tor of Defendants restaurant on 60

' j.. Street in New York City); Philippe Expre s LLC, a New York Corporation; Philippe j itè . ,. .t T w est coast LLc, a california Limited P tnership (operator of Defendants' l .

,. .jgjjq-.:.. jIj) y. restaurant in West Hollywood, Californi ); and Manny Hailey (investor in the (i ' qè Defendants' restaurant in California). O the eve of trial, Plaintiffs abandoned y ( l ),) their claims which had been brought aga nst four of Defendants , Chefs a and a lt

.( .f ( lj M aitre d',9 and the Court issued correspo ding orders of dismissal, see Dkt. Nos. r (y' k) 297, 307. . ! $ 8plaintiffs stipulated to the volunt ry dismissal of a11 claims against ). # Defendants Yao Wu Fan, Sun Chun Hui, Mark Cheng, and Ping Ching Kw ok. ECF )l No. 287, p. 12, ! 8.d. See Order dated Ja uary 23, 2012. The dismissal of these t: Defendants also resulted in the dismissa of Count XV, which alleged that the c h es jI: had breached 'twritten Confidentiality A reements'' purportedly signed by each ) chef, see ECF No. 134, ! 43; the Agreem nts were never produced. . t) 9 The Court dismissed this case as o all claims against De çen dant costin t) Dum itrescu, based upon the Defendants' greem ent w ith Plaintiffs' Notice of 1j Voluntary Dismissal as to such claims. ee Order dated January 27, 2012. y 1 7 )1j y)) 1 1, .# lr 1 Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 8 j of 63 )' 47 # ( j à 1) The claims tried before the l'urv l 1! . l The following federal statutory cla ms were tried against a1l Defendants: l ) l trademark infringement, 15 U.S.C. j 111 (1) (Count 1);10 trademark infringement t i' t l q (dBased on Reverse Confusion and Revers Palming Off,'' 15 U.S.C. j 1125(a) (i.e., j ! 7 Defendants use of the ddMr. Chow'' trade arkll caused consum ers to view the ' E ) ' 1 tL. plaintiffs as infringers of the Defendants (Count 11); false association/designation ' ) i., t . E . of origin and federal unfair competition, 5 U.S.C. j 1125(a) (copying Plaintiffs' r ;E 7 '' m enu, etc., to give impression that Defen ants , restaurants are related to Plaintiffs, g' r ) t restaurants) (Count 111); false advertisin , 15 U.S.C. j 1125(a) (Count IV); and ( t' ) dilution of a famous trademark, 15 U.S. . j 1125(c) (Count /.12 Common 1aw j ; (i ' claims were broueht *-' for: '' tra denam e '' inf ingement (Count V1); unfair competition 1l @ t by misappropriation and reverse passing off (e.g., by falsely claiming that the - ït ' ) Plaintiffs' original recipes, methods of pr paration, etc., actually were Defendants' ( : l l E j ) l.. lj 'oplaintiffs stipulated to dismissal f al1 claims in Count l for trademark r l )7E' i nfringement other than those brought b Plaintiff Mr Chow Enterprises, Ltd., the j: ) l OWZOr Of the Sole tradem ark being prose uted in this case. See ECF No. 287, p. 12, kt ) ! 8.e., as noted in this Court's Order of J nuary 27, 2012. 1# llq'he Third Am ended Complaint r ferences the dé MR CH OW brand, product

; identity and corporate identity'' as well a the CCM R CHOW Redstered Marksj'' and

.i the Plaintiffs' Gsignature dishes, the noo le-pulling demonstration, and the j 7 culturally significant Chinese cuisine pr sented in a refined designer restaurant ' F environment.'' See ECF No. 134, !! 103 104. As noted above, the sole trademark f at i ssue a t trial was the d(Mr. Chow'' trad mark (emphasis added). However, the i very slight difference between the two st les (the trademark includes a period) is of L , no significance to the issues before the C urt at this time. ( l2The Court granted Plaintiffs' req est to remove from jury consideration the 7 question of whether dilution of the dtMr. how'' tradem ark had been established, 1 brought pursuant to 15 U.S.C. j 1125(c). ,! 1 1) ôo , ) 1 ))'è '

Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 9 (:t) of 63 j l l creations) (Count VlI); unfair competition y passing off (of the dfchow'' name and lj

the unique aspects of the Plaintiffs' restau ants) (Count VIlI); unfair competition, ; i l generally (Count IX); conversion (Count X I); and inducing breach of contract j 1t-- ( Count XVI). In addition, claims were bro ght for violation of New York (New York 'l l trade secret law, Count X), Florida (Florid Deceptive and Unfair Trade Practices j Act, Fla. Stat. j 501.201 et seq. (FDUTPA) Count XI), and California (California (' ( Business and Professions Code, Sections 1 200 et seq. (CBPC), Count XIII) state ) laws on unfair trade practices.l' jy 0n February 15, 2012, just prior to he close of evidence, the Court orally î J 13The Court granted Defendants' mo ion for summ ary judgment as to the l claims for violation of FDUTPA and CBPC to the extent that such claims relied j l exclusively on allegedly unlawful compens tion practices by Defendants as to their own em p 1 oyees, as Plaintiffs failed to dem nstrate that their alleged dam ages were the result of such alleged practices. Plaint'ffs alleged that Defendants engaged in d' prov iding illegal compensation and benefi s to chefs, including unreported cash t payments, thereby reducing the operating osts of their restaurants, a form of cost l reduction not possible for lawfully operate restaurants such as (Plaintiffs, !j' restaurantsl''. ECF No. 134, !! 72, 79. T e Court excluded such evidence from the j trial after determining that it was irreleva t to the issues, finding that Plaintiffs : had failed to establish a relationship betw en such alleged cash paym ents and . Plaintiffs' claimed dam ages. In their motion for new trial, Plaint'ffs continue to complain about allegedly tdillegal paym ents'' in cash by Defendants, nd cite a California court decision which observed, in dicta, that the 'dfailure to pay tatutorily mandated overtime wages ' constitutes unfair competition in that an e ployer w hich fails to pay overtime t j wages gains an pnfair advantage over its c mpetitorsj'' Herr v. Nestle U.S.A.. lnc., 1' 109 Cal. App. 4tn 779 (cal. App. 2d Dist. 2 03). The facts presented at trial in this case, however, did not establish that Defe dants failed to com ply with overtime wage laws in either California or Florida, or that Plaintiffs' claimed dam ages in California or Florida were the result of De endants' allegedly unlawful overtime (or other) compensation practices. Evidence p offered to the Court (including evidence # of a prior federal suit brought against Plai tiffs by former employees in New York) suggested that Plaintiffs them selves may ave engaged in questionable practices relating to overtime com pensation - thereb w eakening the argum ent that Defendants had achieved a com petitive ad antage by doing so. . 9 j y j) i i.'!jjjj. -.q Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 11l 'j 10 of 63 )r

' 1 granted oefendants , motion for directed erdict as to the alleged misappropriation j . p Of trade secrets under New York law (Co nt X), based on the failure of Plaintiffs to 1 1 y 'j) bring such claim within the applicable st tute of limitations.l4 Also, at the close of l. ---,ljj j!pj.-t 11 trial, the Court noted that Plaintiffs had bandoned their claims of inducem ent of : ) C. ' breach of contract (Count XVI), and any laims based on trademark registrations t ('- (j j tdM 1l other than the r .Chow'' trademark an , accordingly, such claims properly were t -/1! ë j dismissed. In summary, by the end of th trial, Plaintiffs had abandoned their ë E ,

j.5 . claims as to more than half of the Defend nts, and either had abandoned or had è r: j j 1) 14 N ; ew York law provides a three y ar statute of limitations for claims of 1) mi sappropr iation of trade secrets. N.Y. .P.L.R. j 214. Gdlf a defendant t # ) m isappropriates and discloses a trade se et, he becomes liable to plaintiff upon t . f. disclosur k e. On the other hand, if the defe dant keeps the secret confidential yet j m a es use of it to his own com m ercial ad antage, each successive use constitutes a f new ,,, ) , actionable tort for the purpose of th running of the Statute of Limitations. Lemelson v. Carolina Enters., Inc., 541 F Supp. 645, 659 (S.D.N.Y. 1982) (citations ' omitted). In the present case, the eviden e clearly demonstrated that Defendants t w ere not keeping any alleged dïtrade secr ts'' confidential, but instead were openly serving food, from the first day their rest urants opened, that was similar to the ir

foodbe opened served first in Plaintiffs' restaurant restaurants. to a long-time De endantsm ployee alsoof Plaintiffs, gave a tour and of shortly their soon-to- after j$ opening that first restaurant Defendants ppeared on a television show to ' demonstrate preparation of selected men item s. See also, Gurvey v. Cowan. ' Liebowitz & Latman. PC, 2009 U.S. Dist. LEXIS 34839 (SDNY April 24, 2009) ) (finding claim for misappropriation of tra e secrets time-barred); affirmed, 462 Fed. èc APPX. 26 (2nd cir. 2012); lDT Cor . v. Mo an Stanle Dean Witter & Co., 12 N.Y.3d ( ! 1 w 132 as time-barred,(N.Y. 2009) (finding noting that harmedclaim for par mi yapprop failed riationto dem onstrateof confidential that any business action or j ) inaction by alleged infringer caused dela in bringing the enforcement action).

:.

15The Plaintiffs did not include Def ndants Philippe Express, LLC, nor F Philippe Restaurant Corp., a New York C rporation, nor Philippe North America f j i Restaurants, LLC, a New York Limited L counsel acknowledged that there was test .abilitymony that Co., thesein the ''were verdict defunct form. entities,Plaintiffs' or jl shellsDefendants '' and agreeare d to stipulate to dismiss he entities, ECF No. 355, pp. 12-13; such ) , therefore, DISM ISSED f om this action. l . ( 0 j:# Cj k '* Fq! Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page ' 11 of 63 j) ) 1 'j. judgment entered against them as to four Counts X, XIV, XmV, and XVI) of the l l original sixteen Counts brought in this cas . j ' 1- The jury deliberated as to eleven Co nts (Counts I-IV, VI-IX, and XI-XIII) j) à. against four individual Defendants (Morfo en l , Chau, Lee, and Hailey) and three j l corporate Defendants (Davé 60 NYC, Inc.; hilippe Miami, LLC; and Philippe West h:

t Coast, LLC), and, as noted above, found li bility as to only false advertising (Count

'E IVI and unfair competition by deceptive co duct (as stated in a portion of Counts è

ï. W I and IX), and as to only two of the seve Defendants. The jury also rejected both ( of the Counterclaims (for defamation, Cou terclaim 1, and for de-registration of the (è tdMr. Chow'' trademark, Counterclaim 11).16 lJ

The Court now turns to the parties' ost-trial motions. # j . ) t 111)... A. Plaintiffs' motion for new trial as to Co nts I and 1117 l Plaintiffs challenge the jury ' s decisi n as to the Lanham Act claims for ' j j trademark infringement (Count 1) and unf ir competition by trade name j >-L infringement (Count 11). Plaintiffs argue t at the verdict for Defendants as to Counts I and 11 is against the evidence an that a new trial should be ordered, ) 'j pursuant to Fed. R. Civ. P. 59, because Pla ntiffs established sufficient evidence of

trademark and trade nam e infringem ent b demonstrating the existence of actual i è

! 16For a detailed listing of the parties and claims, see Dkt. Nos. 383 and 385 lt (charts prepared by the parties, summariz' g the outcome of each claim as to each j party). j l7plaintiffs did not seek a new trial s to any other Counts. l j l 1 lj lr i' j l ' Y) Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page j' 12 of 63 j ) . )t confusion as to the parties' restaurants. Pl intiffs also claim that Defendants' trial p l conduct - particularly statements made by efense counsel in closing argum ent 18 t# and defense counsel's tdmultiple acts of mis onducf'- justifies the granting of a new l trial l . Finally, Plaintiffs argue that the int rests of justice would be served by the ( l g'ranting of a new trial, in light of Defenda ts' deliberate attempt to take k 1). bstantial business away from Plaintiffs use of the tdobviously confusing nam e su l'!.!. .. tchow,' rather than the (Defendant Philipp Chau's) real family name, dChau.''' l f.

Defendants respond that Plaintiffs f iled to preserve any issue of defense t-- counsel's misconduct by not objecting to th allegedly improper statements made in )t . closing argument. Moreover, Defendants a gue that the greater weight of the j evidence supports the jury's verdict; specifi ally, Defendants Morfogen and Davé 60 ) j: N YC argue that no consum er survey was c nducted and that the only evidence of yt i alleged consumer confusion was introduced through the testimony of Plaintiffs , jl j! employees (a1l of Plaintiffs' witnesses were ither employed by or paid by Plaintiffs kl I', for their testimony). Defendants assert th the jury properly applied the 1aw as 't. instructed by this Court and found no liabi 'ty for federal trademark and trade !.7y ) name infringement due to the lack of comp lling and objective evidence of customer i#

confusion related to Defendants' alleged us of the tdMr. Chow'' trademark or trade j j name tà . At trial, Defendants introduced evi nce that their restaurants do not use j the (dMr. Chow'' trademark or trade name, nd objected to Plaintiffs' attempt to l) tl) ).

l8plaintiffs complain, for example, th t Defendants' counsel stated: fdtzadies ytl and gentlemen of the jury, I thank a1l of yo . M ay God bless you and your l

families.... And may God bless the United tates of America.'' ECF No. 345, p. 76. l ) 12 !! l l )l I Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 1, 13 of 63 l rl l j-ë rj j r prohibit Defendants from using the name ddchow'' - a name which Plaintiffs argue is '). used by m f ultiple other entities and as to hich other trademark registrations have r I lk. I been issued (see Defendants ,Ex. 16). à j fIE 1 l l : 1. Statem ent of the claims at issue E: , Plaintiffs claims in Counts I and II, as presented to the jury, sought to r r(I protect a trademark and trade name, stat d identically by Plaintiffs as d$Mr. Chow,'' l from confusion on the part of the consum e resulting from Defendants' use of the

nam e dtphilippe by Philippe Chow.'' As a initial matter, the Court notes that è ; ' Plaintiffs' Third Am ended Complaint ide tifies Count I as ddFederal Tradem ark l l Infringement'' under 15 U.S.C. j 1114(a), nd Count 11 as (dFederal Trademark l lnfringement Based on Reverse Confusio and Reverse Palming Off under 15 j lt U.S.C. j 1125(a)''19 - and both Counts refe ence Plaintiffs' ttRegistered Marksi'' 1 l however, the Jury Instructions and the V rdict Form reference the claim in Count j' Ijlt' 11 as tdTrade Name Infringement'' and ttU fair Competition by Trade Name t' ( Infringementj'' respectively. Defendants id not object to this characterization of tt 1..-

Count 11 in the Jury Instructions and Ver ict Form, nor have they raised such an )j.

argument in response to the Plaintiffs' mo ion for new trial as to Count II. While (' j lgdddlt j everse passing off ... (is when a producer misrepresents someone else's 'y goods539 U or services as his own.''' Dastar Cor . v. Twentieth Centur Fox Film Cor . j .S. 23, 27 n. 1 (2003); see also, Del onte Fresh Produce Co. v. Dole Food Co., 'f 136 F. Supp. 2d 1271, 1284-90 (S.D. Fla. 001) (stating elements for a 'ïreverse ) palming off ' claim). Count 11 of Plaintiffs' operative Complaint refers to ) ddconfusingly similar marks'' which are d'li ely to cause consum ers to view'' Plaintiffs' restaurants dïas infringers of Defendants' arks and style of doing business,'' i.e., a stated claim for ddreverse confusion'' as to t e Plaintiffs' tradem ark. L t 1. 1., ( t è L Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 14 of 63

Count 11 does not perfectly plead a claim for trade name infringement, it does reference the appropriate statutoz.y provi ion for such a claim , 15 U.S.C. j 1125(a). ln any event, as Plaintiffs described the rade nam e at trial as idpntical to the

tradem ark, and Defendants consented to trial of the trade nam e infringem ent

claim, any defect in the pleading as to Co nt 11 (or Plaintiffs' re-characterization of Count 11 at trial) is not objectionable.zo he Court will evaluate Plaintiffs'

tradem ark infringement claims as havin been brought under both 15 U.S.C. j 1114(1) and j 1125(a), and will evaluate laintiffs' claim of unfair competition by trade name infringement under 15 U.S.C j 1125(a).21

20Fed. R. Civ. P. 15*) allows a Cou t to treat ddunpled issues which are tried with either the express or implied consen of the parties'' as if they were raised in the pleadings. Cioffe v. Morris, 676 F. 2 539, 541-42 (11th Cir. 1982). Even if Count 11 of the Complaint lacked a speci cally stated claim for trade nam e infringement, support for such a claim ca be found in Count II1 of Plaintiffs' Third Am ended Complaint, which alleged that efendants' use of the nam es dtphilippe Chow and tMr. Chow''' constituted a false designation of oridn which was likely to deceive consumers, a violation of the sam provision of the Lanham Act, j43(a), (15 U.S.C. j1125(a)) referenced in Count II. 21An aggrieved owner of a registere tradem ark may proceed under either 15 U.S.C. j 1114(1) or j 1125(a), or both, to rotect the registered mark. To protect a qualifying unrebstered mark or trade na e, an authorized user may proceed under the latter provision of the Lanham Act, j 3(a) (codified as 15 U.S.C. j 1125(a)). See, e.e., Cum ulus Media Inc. v. Clear C annel Comm 'ns Inc., 304 F.3d 1167, 1172 n.3 (11th Cir. 2002). The Plaintiffs electe to describe the trade name as identical to the tradem ark, i.e., GMr. Chow,'' and the arties som ewhat interchangeably referenced the alleged infringem ent of th Sdtradem ark'' and tdtrade nam e.'' The jury was instructed specifically that a Sïtrade ark'' is dda word, a nam e, a sym bol, or a combination of them , used by a person to 'dentify and distinguish that person's goods or services from those of others,'' E F No. 350, p. 9, and that a tttrade nam e'' is ïtany word or words used by a person to identify that person's business and to distinguish it from the business of others, ' ECF No. 350, p.19. See, e.=., Safeway Stores Inc. v. Safewa Discount Dru s I c., 675 F.2d 1160, 1163 (11th Cir. 1982) ($(A1 trademark identifies and distinguis es a product, ... and a trade name (identifies and distinguishesl a business.'' . 4 'il Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 15 of 63 l l1 2. Leeal standards 2 l The Lanham Act protects trademar owners from infringement by subjecting t

to dvil liability any person who shall, w it out the consent of the owner of the trademark: I (a) use in commerce any reproductio , counterfeit, copy, or colorable (

imitation of a reéstered mark in co nection with the sale, offering for sale, distribution, or advertising of any g ods or services on or in connection with :

which such use is likel to cause co usion, or to cause mistake, or to deceive; E or (b) reproduce, counterfeit, copy, or c lorably imitate a rezistered mark and t apply such reproduction, counterfeit copy, or colorable imitation to labels, '. signs, prints, packages, wrappers, r ceptacles or advertisem ents intended to / be used in comm erce upon or in con ection with the sale ) , offering for sale, distribution, or advertising of goods r services on or in connection with

which such use is likel to cause con usion, or to cause mistake, or to deceive. ) t1 15 U.S.C. j 1114(1) (emphasis added). Th Lanham Act also protects against unfair . iti ,@:. compet ve use of trade names, by authori ing civil actions against: ) l (alny person w ho , on or in connectio w ith any goods or services, or any lj container for goods, uses in com m er any word, term, nam e, symbol, or j device, or any com bination thereof, any false designation of origin, false or $ misleading description of fact, or fal e or misleading representation of fact, (r which -(A) i '( s likel to cause confusio , or to cause mistake, or to deceive as to 't the affiliation, connection, or ssociation of such person with another person, or as to the origin, spo sorship, or approval of his or her goods , . services, or com m ercial activit'es by another person, or (B) in commercial advertising r promotion, misrepresents the nature, characteristics j , qualities, or g ographic origin of his or her or another j' person's goods, services, or co m ercial activities. '

15 U.S.C. j 1125(a) (emphasis added). jlr

To prevail on a trademark (or trade ame) infringement claim , a plaintiff è m ust establish that it has the rights in the radem ark/nam e at issue and that the k jq infringer: 1) used the trademark/name in c mm erce without the owner's consent, r 4 15 t) tt jjjjj:''' Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page !l 16 of 63 l )' (. l and 2) that such use was likely to cause co fusion. See, e.e., Caliber Auto. t Li )' uidators Inc. v. Prem ier Chr sler Jee Dod e , 605 F.3d 931 (11th Cir. 2010) '.l (reversing summary judgment for alleged 'nfringer of trademark where sufficient ' evidence of strength of mark and actual co fusion by relevant consum er had been offered) 1. . Plaintiff Mr Chow Enterprises, L d., owns the mark 'dMr. Chow,'' . ( registered as of July 7, 1981, for dtrestaura t services and carry out restaurant

services.'' Plaintiffs' Ex. 1. )

./ The parties ag-ree that in this case a determination of whether Defendants'

1. conduct was dtlikely to cause confusion'' wa the critical issue as to both Counts I ) and II j . The parties also ar ee that in this ase the relevant factors for considering t

whether Plaintiffs established a likelihood f confusion as to the alleged t j' infringem ent of the tradem ark and the tra e nam e are identical. The Court of l (:.' Appeals for the Eleventh Circuit has adopt d a seven '(. -factor test to determine j l Whether there is a likelihood of confusion a to the use of a registered @ l l

tradem ark/nam e. ( The factors are: , 1) strength of the plaintiff s mark, 2) similarity between the plaintiff s ark and the allegedly infringing mark, r 3) similarity between the products a d services offered by the plaintiff and 7 defendant, 't 4) similarity of the sales method (t 5) similarity of advertising methods,, ,) 6)7) defendant's intent, and J'

actual confusion. j'*'. 2. è See, e.e., Tana v. Dantanna's, 611 F.3d 767 772-73 (11th Cir. 2010) (affirming : : summary judgment for alleged competitor estaurant with very similar name, due l i to insufficient evidence of likelihood of conf sion or intentional appropriation of t j. lt 16 j

l) 1 ( 11 Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 17 of 63

.) 1 i 1. 'i l trademarkl; Cumulus Media lnc. v. C1e r Channel Com m 'ns Inc j ., 304 F.3d 1167, t @ 1172 n 1 d .5 (11th cir. 2002) (affirming entry of preliminary injunction in action l j ! ' b ht for infringement of unregistered mark or trade name) j,ij roug . The jury was 'j 1t instructed as to these seven factors, and irected that they also could consider 1,5j 71 y il d'lalny other factors that bear on likelihoo of confusion : j .'' ECF No. 350, p. 14, j i ) è j (, ! 1 3. Evaluation of the evidence su ortin the . ur verdict ' ) u: t ; aj . A new trial should not be granted n evidentiary grounds unless the verdict . is tdagainst the clear weight of the eviden e ..., even though there may be substantial t

evidence which would prevent the directi n of a verdict.'' Hewitt v. B.F. Goodrich j' I C t o., 732 F.2d 1554, 1556 (11th Cir. 1984) itations omitted '. . As the finder of fact, j ) h Court properly defers to the jur t e y unle s their verdict is against the great weight .21111 - ---(: y of the evidence. Glmhen independently w ighing the evidence, the trial court is to j view not only that evidence favoring the j ry verdict but evidence in favor of the

m oving party as we11.'' W illiam s v. Valdo ta, 689 F.2d 964, 973 (11th Cir. 1982). The Court, however, should not substitut the Court's Rown credibility choices and l

'' ' inferences for the reasonable credibility c oices and inferences made by the jury. Id. W hether this Court would have reach d the sam e conclusion ddis irrelevant , as ë; è long as there is some support for the jury' decision.'' Rosenfield v. Wellineton t Leisure Products t . Inc., 827 F.2d 1493, 149 (11th Cir. 1987). jt lr t. w)j -)

/ 1 7

i lj . j :è)11! : ., Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page t-yj,r 18 of 63 jj t1 j 1j l 4 a. evidence of actual confusion l j Plaintiffs argue that the evidence f actual confusion j') j , the seventh factor of 'r j ' the ddlikelihood of confusion'' test i 1y , was su stantial, and that Defendants caused ) 1t tdmassive confusion'' by their alleged infri gement of Plaintiffs' trademark and trade ij C'Ii1 !.k

name. To support their argument, Plaint --. ffs rely on several items published in jIj),.. l.

)jjl.. either newspapers or on the internet whi h indicated confusion as to whether the j.). Defendants' restaurants were related to laintiffs' restaurants; according to è. .E 1 intiffs E P a , if these authors were confused, then actual confusion exists between 'E'

(f) Plaintiffs' and Defendants' restaurants' c stom ers . Plaintiffs also rely on testimony ) J by Plaintiffs' employees who reported tha customers were confused , and on ) statements reportedly made by a member of Defendants' staff, e.g., that customers j ! d'make that mistake (that the restaurants are affiliated) all the time .'' At trial, lj' Plaintiffs did not offer a survey of potenti l or actual customers ) , nor any other t evidence - beyond that noted above - supp rting a finding of likelihood of confusion t) . p) Defendants argue that the Plaintiff were unable to prove that consumers l j w ere likely to be confused as to the partie ' restaurants during the nearly four years ) in which Defendants restaurants have be n com petitors of Plaintiffs restaurants . ) i Specifically, Defendants argue that the ad ission of statem ents allegedly made by

Plaintiffs' customers to Plaintiffs' employe s was improperly adm itted hearsay . For t exam ple, Defendants claim that Plaintiffs' counsel questioned employees as to the ' ) specific words customers allegedly had use to describe why they were confusedzz

22t(What did they say?'' ddDid they say w here they were getting that ) information from?'' Trial Tr., Jan. 31, p. 3 ; ïtWhat kind of things would people 1 ql (j

11),.. '

$ . I Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page . 19 of 63 ) r' ! . and, in so doing, demonstrated that such estimony was being offered to establish

the truth of the matter . ; , i.e., custom er con sion, by reference to the specific words t ' and . , therefore, that such testimony shoul have been excluded. Defendants argue

that even if the improper hearsay as to 'ta tual confusion'' is considered, there was ' insufficient evidence at trial to prove that a likelihood of confusion has been caused ) ( by Defendants' use of ddphilippe by Philipp Chow.'' :

The Court first addresses the Plain iffs' argument that tdmajor newspapers t

explicitly told their readers that the Phili pe Chow restaurants were dMr. Chow.'''23 ( t.

In support of this argum ent, Plaintiffs' m ion for new trial references several )L l exhibits, each of which is discussed, below 1 Two fdmajor newspapers'' are refere ced among these exhibits: the New York j( Post and the New York Times, but none o the exhibits reveal that those (

d' (. publications told their readers'' that the efendants' restaurants were the y ' (è Plaintiffs' restaurants. Two of the pertine t exhibits are printouts from j

7. nypost.com, one of which is from a posting about dïdating'' (describing a blind date : (. w hich took place at a Philippe restaurant hich was described a ddMr. Chow's f t amous Chinese restauranfl,z4 the other i a posting/article which describes the q

say?'' Trial Tr., Jan. 31, p. 114; tdWhat did they say?'' Trial Tl'., Feb. 2, p. 63. F J 23 ? The ddmajor newspapers'' reference y Plaintiffs is somewhat misleading;

none of the exhibits include a critic's revie of the com peting restaurants, nor w ere the majority of these items written by som one affiliated with a tïmajor newspaper.''

24The exhibit which was printed fro w ww .nvpost.com , appears to be a blog 2 posting, from March 2008, reporting on a lind date w hich the author arranged to j' ddMtake place at the Defendants' New York re taurant, which the author described as k( r. Chow's famous Chinese restaurant, P ilippe.'' The author herself did not go to j 1 't

t . 1 l1 Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 20 of 63 1 qj 1 / instant lawsuit as - neither of these are n cessarily evidence of ç 'â actual consum er j ( ( ! confusion 1i . And, the only exhibit related o the New York Times is from a ddBlog on l ', h 1 oining out, osted by the xew vork Ti es which simply refers to a press release ji , 14 (apparent 1y issued by the Philippe resta rants) regarding a survey of New York k1 1 res taurants o . l O f the oth er exhibits offered by P1 intiffs 1 , a11 appeared on websites q

F (zavot.com ,z; roxibeatrice. ' blogspot.comz8) ith an unknown readership, y. or on an ) t %)jjjy

the restaurant, instead sending a'tlosh'' a d a ttLauren'' to dine there. t 68 (tdtshanghai Surprise'by Saryn Chorn y Plaintiffs' Ex. 15 2008'') , , last updated 3:00 a.m . M arch 16, ( . ' *)à 25An exhibit which appears to be a internet posting or article from the New , York Post references the instant lawsuit; he posting , by Jeremy Olshan, includes a statement by Defendant Morfogen that cl rifies that there is no familial f C0w!relationship tch between Michael Chow and hilippe Chow Chau. Plaintiffs' Ex. 95 ow' a Chau Till Now,'' by Jerem Olshan, last updated 11:13 a.m., July ' 10, 2009).

z6plaintiffs provided a printed versi n of a blog posting apparently affiliated l w ith the New York Times , ww w .diners'ou nal.blo s.n times.com , which includes the blog post author's brief tdcongratulati s , M r. Chow'' which he posted after ' receiving a press release in October 2009 oting that fdphilippe Nam ed Top Chine Restaurant in NYC se .'' Plaintiffs' Ex. 73 . T e author is not identified as a customer f) ofthe the jury restaurants, that this was and eviden this brief mention ay have been insufficient to convince 1) ce of actual c nfusion by relevant consum ers. 27A blog posting, printed from ww w jf briefly announces several different re . a ot.com, with an unspecified audience, j'; Cit stau ants which are opening in New York () k y, among which Philippe's restaurant i included Cphilippe Chow the chef ' nown as Mr. Chow, is about to fire up th stoves at his new eatery , .'' Plaintiffs' Ex. 63). This post is not written by someone i entified as a customer of either q Plaintiffs' or Defendants' restaurants , and the jury may have concluded that this

was not evidence of actual confusion of cus omers of the restaurants. l 28A blog posting , printed from www . oxibeatrice.blo s ot.com . reports that . dtphillipe (sicl is opening a location in West Hollywo the food is just as incredible but not a set enu - pd .... yhilippe- is by Mr. Chow ) .'' Plainti sff ' Ex. 72. A gain, this '' yI 2 l l j j. ('. 1 Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page .1 ) 21 of 63

.j ' 1 l open website to which the public can pos a comment ( .)l velp.comz% and, as such, may t have been viewed by the jury as ) of little ersuasive value in determining that 1 ) 1 1j actual consumers were confused. l l Moreover 1 , among Plaintiffs' exhibi s at trial were several examples of clearly

( 1) stated comparisons between the Defenda ts' new restaurant and the Plaintiffs' ).11q ,, . 1 existing restaurant, indicating that there was not widespread confusion )j . See, e.z., Plaintiffs' Ex . 64, (a restaurant review p blished in New York Magazine: dtlmitation jj! chi nese: A veteran of the storied Mr. Ch 's attempts a spinoff of his own jj4è'. ,'' by t

Adam Platt, April 16, 2006, printed from ymag.com); Plaintiffs , Ex. 62 ( ..vorfogen t makes no effort to divert attention from t e (Mr t . Chow restaurant nearbyl. You ft have to compare it to Mr . chow because e have basically their core kitchen but î , 1'î it's not like we took a1l their people ; ,' he s id, nothing (sic) that there were chefs that

'' retired 10 years ago that recently came b ck. '' ddWoks & Waterfalls On The UES l , tl dated December 19, 2005 b , printed from w w .fashionw eekdail .com . dtdshort-lived confusion or confusion of individuals casually acquainted with a ( J appears to be simply a brief announceme of an upcoming opening of a restaurant 1 in late 2009, on a blog which has an unkn wn audience; in addition ; not identified as an a , the author is j ctual custom er of eit er Plaintiffs' or Defendants' restaurants. lflfj :

zgplaintiffs' Ex. by a ''Lisa M'' 125 is printed from el .com and includes a comment posted l . of Boca Raton, Florida, as t the Defendants' restaurant in Boca ' Raton (which was closed before the trial o this case) which states: (ç This is one of è the best restaurants .... I've eaten at Mr. how in I,A and NYC and am so pleased to r have one in my neighborhood ji .'' W hile the uthor of this com m ent, website to which the public is invited to co tribute com m ents posted on a j , claims to be a custom er of Plaintiffs' restaurants, it is un lear that this custom er also dined at , Defendants' restaurants, nor is it clear wh ther the apparent confusion revealed in

the comment carried enough weight to per uade the jury of the author's actual ' confusion. 2 l if t) tt: f Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page jj 22 of 63 jf ).t . business is worthy of little weight while co fusion of actual customers of ( a business j. is worthy of substantial weight.''' Caliber A to. Li uidators Inc. v. Premier # Ch ( rvsler, Jeep. Dodee. LLC, 605 F.3d 931, 36 (11th Cir. 2010), nuotine Safewav l l St ) ores Inc. v. Safewa Discount Dru s In ., 675 F.2d 1160, 1167 (11th Cir. 1982). k t ). ï'lrllhe consumers of the relevant product o service, especially the mark holder's è. 7 customers, turn the key (as to evidence of l . kelihood of confusionl.'' Caliber, at 936. l Plaintiffs did not establish that the person writing these blog postings or F ' taurants, with the possible î comments were actual customers of Plainti fs res ),., exception of the Sdluisa M.'' who posted a co m ent on velp.com , nor did they establish t' that the reading audience - which might in lude actual customers of Plaintiffs' ,? l restaurants - was confused.3o l l ln summary, a review of all of these xhibits, along with the other evidence l introduced at trial -- f ion ,- kj , does not reveal that the e was ram pant newspaper con us , ! as Claimed by Plaintiffs. The jury simply ay not have viewed these exhibits as lj evidence of actual confusion by the relevan consum ing public, or may not have t

.( found that any confusion indicated in these exhibits had been caused by j l/ D efendants' use of dtphilippe by Philippe C ow.'' ( f.

As to the statements allegedly made y Plaintiffs' customers, as reported by 11t? -. Plaintiffs' employees, this Court overruled he Defendants' objections and admitted 'j '(1 )

3oplaintiffs argued that the ttenormou '' reading audience of these publications ', w ere ddall potential consum ers'' of Plaintiffs' restaurants. ln fact, it appears that ,,- . only some of the readers of these blogs or ot er media sources mieht be Plaintiffs (!.. customers, and that those readers ma be w u1d be confused ifthey read these y com m ents. The Court cannot make a findi g of actual confusion based on such ? reasoning. : )è 22 j' ( l j l Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 23 of 63

3l the evidence, despite the weakness of Plai iffs' argum ents as to adm issibility.

In limited and appropriate circum st nces, courts have considered evidence of customer confusion recounted in the usiness' em ployees' affidavits. Such evidence is considered adm issible as vidence of the consum ers' state of mind, not as proof of the truth of the matte asserted. H owever, this exception is not open-ended or without boundari s. Rather, the evidentiary value of such proof of customer confusion depends n the facts and circum stances presented.... Vague statements sugg sting that some unidentified custom er expressed some sort of general confu ion is dtpractically useless,'' and is properly disregarded by the Court.

Atlantic National Bank v. Atlantic Souther Bank, 2010 U.S. Dist. LEXIS 133665

(S.D. Ga. July 29, 2010) (citations omitted) (rejecting claim that there was a likelihood of confusion, and ranting summ ry judgment in favor of alleged

3lThe Court overruled Defendants' o 'ections to the testimony of Plaintiffs' employees at trial as to the alleged confusi n on the part of their customers, as this Court tends toward a broad approach to ad issibility of evidence. Plaintiffs argued persistently that the statements were not arsay, as they were not being offered to dem onstrate that the Plaintiffs' and Defen ants' restaurants were the sam e, but rather were offered to establish that custo ers were confused. On further reflection, the Court might not have been c rrect in adm itting such testimony - particularly since it generally was introduc d without specific information as to w hen the statem ents by customers were m de, or which custom ers made such statements. In Air Turbine Technolo In . v. Atlas Co co AB, 295 F. Supp. 2d 1334 (S.D. Fla. 2003), a court faced argume ts similar to those which Plaintiffs presented during the trial of this case. (CPI intiff initially argues that these statem ents are not being offered for the tru h of the matter asserted. The Court rejects this argument. It is only because of he asserted truth of the statements that they are being offered.'' Id., at 1345 n. . That court reviewed several decisions of the Eleventh Circuit as to the adm issibil ty of consum er statem ents, and discerned that while hearsay testimony mi ht be adm issible to dem onstrate a state of mind of ddconfusion,'' the reason behind t e state of mind was not adm issible as evidence of, for exam ple, the alleged ddfalse dvertising.'' The court cited the 1972 Advisory Committee Notes to Fed. R. of Evi . 803(3), noting that the exclusion of Gstatements of memory or belief to prove th fact rem em bered or believed'' from adm issibility pursuans to this Rule ddis nece sary to avoid the virtual destruction of the hearsay rule which would otherwise res lt from allowing state of mind, provable by a hearsay statem ent, to serve a the basis for an inference of the happening of the event which produced the tate of m ind.''

23 ' i. ..'' , Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page l 24 of 63 : ; infringer). The evidenee offered through Plaintiffs' employees suggested that some l @ diners at Plaintiffs, restaurants apparen ly had desired originally to dine at ? : , , ) Defendants restaurants - e.g., diners ha m ade reservations at Defendants ( ' restaurants but arrived at Plaintiffs' res aurants, diners ordered dishes which were i i i t se q no rved at Plaintiffs' restaurants but laimed that they had ordered the dish on a y prior visit ' (obviously , l , at Defendants rest urants), etc. Even with the admission of

this suspect evidence, the jury apparentl did not find that the alleged trademark or

E . trade nam e infringement had resulted in actual consum er confusion )( . J The consum ers' statem ents , report d only by Plaintiffs' employees (and y admitted as evidence despite Defendants' objections thereto) ï' ( , m ust be evaluated as ; ' , to what extent of actual consum er confus on was represented in those statements . 16 ' t '7va-78e Tana v. oantanna s, a . w ithou specifus as to the consum ers' basis for 1 : . fusion, e.g., the record is silent as to at caused these custom ers' confusion con , the jul'y might have found that the confusion as not based on Defendants' allegedly - infringing use of Rphilippe by Philippe C w ''32 Or . , the jury may have made a credibility determination as to the Plainti fs' witnesses - a determination which this t C l ourt should not disturb - which limited t e persuasive value of this testimony . In t short, the Court cannot find that the Plai tiffs' em p loyees' testimony was such clear l' '; j j 32The testimony by Plaintiffs' empl ees also may have been perceived to j' establish that Plaintiffs inadvertently obt ined new customers in recent years as such customers sought out Plaintiffs' rest urants w hen ) , instead, the custom ers oribnally had planned to visit Defendant ' res taurants - which the evidence 1) indicated have been successful in gaining favorable reputation . W hile this evidence clearly does suggest confusion on the part of custom ers , it does not j demonstratemark or name that the confusion was relate to the Defendants' use of an infringing j . j 2 l ;' ) l jê Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page tt 25 of 63 7 .q i evidence of actual custom er confusion cau ed by l an alleged infringement by l t Defendants such that the jury's verdict on the infringement claims must be set ) ) aside. l t Fi l nally, as to the isolated statemen s allegedly made by Defendants' l r; employees, which Plaintiffs claim provide vidence of consumer confusion lE , the jury , 71 reasonably could have found this evidence o be unpersuasive . For example, j M i ) chael Chow's sister-in-law , Ms. Chun, t stified that she phoned the Defendants' ) restaurant in New York soon after it was o en (in late 2005/early 2006) and the )l ) person on the phone responded fdyes'' when Ms t . Chun asked if it was ttMr. Chow.'' t

Trial Tr. Jan. 30, p. 74. As another examp e of this type of evidence ( , M s. Valerie jê Rivera l -Giraud, a former probation officer ired by Plaintiffs to serve as a private ! )

investigator (admittedly not an expert on f od or the restaurant industryl,'3 j

fi ,1) testied that when she made her reservati n by telephone with Defendants' è ) restaurant, she asked if the restaurants we e affiliated because they both had the ël sam e last nam e @ , and was told that ddthe for er chef from Mr. Chow works at l l Philippe'' and that tdpeople make that mist e r all the time.''34 Trial Tr., Feb. 2, pp. 't t 33 t Beach inMs December Rivera-Giraud 2011 and was compare asked to it visto t laintiffs'Defendants' re restaurant in Miami l T staurant in Miami Beach. kj rial Tr., Feb. 2, p. 39. i MD j efendants objected to introduction Of this testimony, ded this Court that the statem ents ere made by a partybut opponent Plaintiffs' counsel ) persua . Upon 6 further refection, the Court views this evid nce as having been offered for the truth of the matter asserted j , and not subject to a earsay exception; l probably should j have excluded this evidence at the time , as reservations agent is not an agent of l the party to the extent that they do not hav the authority to bind the party on a critical issue in litigation (such as whether here is a likelihood of confusion jy between the Defendants' and Plaintiffs' rest urants). f j 2 5 $ ) t )) I f'' Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page r 26 of 63 j: l l 63 l - 64. The former statement is not exactl m isleading, nor is it relevant evidence of ji iq any confusion by customers,35 and the latte statement - which may have been )t . viewed by the jury as an oflhand or isolate remark - is not direct evidence of actual k confusion by customers of either Plaintiffs ' r Defendants' restaurants. Indeed, Ms. 1 j.t

Rivera-Giraud herself testified that when s e spoke to a patron next to her, whom jr h 1.. ad been to both restaurants, that the patr n ddunderstood that the restaurants k i l were different.'' Trial Tr., Feb. 2, p. 61. (T at patron had been told that the l restaurants were not affiliated. Id.) ) ItJ

l b. evidence of the likelihood of confu ion )1. ) Finding that the evidence of ddactual'' confusion was somewhat lacking, the t

Court turns to evaluation of the other facto s which can demonstrate a likelihood of l l consum er confusion. If the Plaintiffs failed to carry their burden of establishing @ l ) that consumers were likely to be confused Defendants' use of ddphilippe by ( ). Phili i ppe Chow,'' then the verdict for Defen ants was proper and the motion for new l l t ) rial should be denied. l l The jury was instructed that they co ld consider al1 seven factors of the test, j. l t, )

35At trial, Chau had ever beenPlaintiffs a head exhaustively chef or master add essed ef at Plaintthe questioniffs' restaurants, of whether instead Philippe )l redferring to him as one of the staff, among thers, responsible for a certain set of t uties lesser than those of the head chef (e. ., Chau was a ddgreat expediter- ) chopper,'' Trial Tr., Jan. 26, p. 160, but not ufficiently skilled for the ddfirst wok'' f position in the kitchen, as tdfirst wok is sort f sacred ground, only for the ... head (l chef,'' Trial Tr., Jan. 24, p. 130, etc.). The j ry was free to evaluate to what extent Philippe Chau had served as a (( chef, ,) (( hea chef, ,, or ((m aster chef, ,, and whether his j E status as a ttchef' was pertinent to the issue of consum er confusion. ) f 26 t j ) ) ) ).t L? Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page '.. 27 of 63 l l i identified above l , in order to determine wh ther Defendants' allegedly infrinbng l ). conduct created a likelihood of confusion l . pecifically, the jury was instructed that l ( they could consider the strength or weakn ss of Plaintiffs' trademark t . d$A mark's l j strength is measured by its distinctivenes l .... (Dlescriptive marks ... may not be # di l stinctive at all (and, therefore) may be eak and entitled to a narrower range of ) l protection, if any.'' ECF No. 350, p. 11. T e jury was instructed that the d'Mr . ) '' k ) Chow mar was considered d'incontestabl '' and was presumed to be at least a 'j descriptive mark with secondary meaning. Id., pp. 12, 17. tè k

The Plaintiffs' mark, (dMr. Chow,'' w s registered decades ago lè- , and has been f used (in the modified version, ((Mr Chow'') ontinuously and prominently by ( î Plaintiffs' restaurants l . W hile Plaintiffs ap arently do not engage in advertising it 1 , l was evident at trial that Plai 1 ntiffs foster a onscious connection between Plaintiff l l M ichael Chow's nam e and his r l estaurants. For example, Plaintiffs played a video- l !( . recording of a party celebrating the thirtie anniversary of the Plaintiffs , k j

restaurant in California, which included re ordings of conratulations to ïtMichael'' tj

from dozens of celebrities. Plaintiffs' Ex. 1 1. l) Defendants do not dispute that the td r t . Chow'' mark is associated, at least in t l the minds of Plaintiffs' custom ers ) , w ith P1a ntiffs' restaurants which offer Chinese l j

cuisine in a fine dining environment. Defe dants offered evidence, however, that )j ! m ultiple other entities have obtained trade ark registrations including the nam e tt tïchow'' (a total of fifty three registrations r lating to restaurants and restaurant t l services, and sixty one relating to food-relat d goods and services , were identified), jt' j )$ 1 27 j. j' h' j..@. i Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page f 28 of 63 It

E.. l and have rebstered businesses which incl de dtchow'' in the business name (one ! ) hundred and three businesses registered i New York l , California, and Florida). # tf Defendants' Ex. 16.36 The jury may have d termined that this evidence indicated E

that the Plaintiffs' mark, ddMr. Chow,'' was ot particularly strong , as the jury was #

instructed that d'gtlhe extent to which third parties have used the same mark is also 1. l som ething that you may consider in deter ining the strength of the mark .'' ECF lf No ) . 350, p. 12.37 t l A s to the factor relating to similarit of the marks , there was little or no : t evidence that Defendants ever used the sp cific mark d(Mr . Chow.'' Defendants have jl t continuously used dt Philippe by Phi li ppe C w'' or tdphilippe Chow'' or ddphilippe'' in l l association with their restau i rants, includi g use of these nam es in signs, menus , t à. plates, etc. (See Defendants ' Exs. 69, 80, 8 -91.) Plaintiffs argue that Defendants' j i choice of 'dchow'' fo l r use in their restaurant resulted in misleading consum ers. k jî Plaintiff Michael Chow testified at t ' a1 that he always knew Defendant j ' Chau as dtphili l ppo Chau'' during the 25 yea s he worked for Plaintiffs' restaurants. l l T ial Tr i r ., Jan. 26, pp. 126-27, 129.38 W hen efendant Chau becam e a naturalized f l 36Whi1e there may b 17: e some duplicatio am ong these registrations, the t1: evidence clearly demonstrated third party se of the term 'dchow .7 .'' Although the Plaintiffh s trademark istdMr. Chow'' and not simply dtchow,'' the use by dozens of 1, ot er entities of the term ddchow'' was admi ted as relevant to whether a likelihood l of confusion existed between Plaintiffs' and efendants' restaurants l . p )'j 37 Indeed, the jury's verdict for Defen ants as to the claimed infringement '(ê' mayCh indicate that the jury determined that efendants' use of dtphilippe by Philippe ( ow'' was not an infringem ent as to the m rk ddMr. Chow.'' t( 1. 38See also , Plaintiffs' Ex. 43, memo fr m Michelle Chun to staff of Plaintiffs' l ddAlways com m unicate through Mr New York restaurant, dated January 17, 20 3 ( . j 1 28 t t 1 t p. t 7:1k1-. r2 '' ' ' Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page ): 29 of 63 . j . citizen of the United St ( j ates (in August 20 6), he changed his legal name from Chak j

Yam Chau to dfphilippe Chow Chau.'' Tri l Tr., Feb. 8, pp. 59-60, 65 68.39 tjy , Defendant testified that he chose the na e Philippe because his name alread q y had ) been informally changed to Philippe (fan nglish name that will be easier'', Trial j l j!

, Tr *)Feb. 9, p.12), by one of the chefs at Pl intiffs' restaurants with whom k ) Defendant worked for ma I ny years, and al o that customers usually called him t Philippe, Trial Tr ., Feb. 8, p. 65. H e also stified that he chose tdchow'' as his f l m iddle name because it represented a spe ing of his C k antonese name ''Chau'' which sounded the sam e and which others alrea y assum ed w a s the correct spelling. Trial ) Tr #'l ., Feb. 8, p. 64; see also, Trial Tr. , , Feb. 3, pp. 16-17. ) l Plaintiff Michael Chow conceded th t from Rday one'' he bonded with and ) ! liked Defendant Chau, as they shared the am e last nam e/character i , a sym bol j d'Zh ) ou,'' from their country of o igin, China. Trial Tr pronounced ., Jan. 25, pp. 71- ) 72; Trial Tr )q ., Jan. 26, pp. 129-30. The jury heard extensive testimony from Plaintiff j Chow as to the history of the pronunciatio of the Chinese character, the difference t'l )

between the Cantonese and Beijing dialect , the colonization of Hong Kong by the @ ) British, and resulting modification of Zhou o Zhow and then Chow t'4,, . Trial Tr., Jan. . 25 l , pp. 71-74. The juz'y easily could have co cluded that because Defendant's legal y Philippe Chow Ch tj' name WaS au, at least as f August 2006, and his legal nam e prior l' j H or and in his absence , talk to Phillipo.n). 1

Petiti391t is undisputed that Defendant Ch u submitted a properly supported y). on for Nam e Change to the U .S. Depa tment of Homeland Security Citizenship and lmm igration Services , U .S. Ct , to ch nge his nam e to Philippe Chow Chau , ECF No. 287, p. 7, ! 5.ff., in August 2006 a d such name change was completed. )t ! 29 ') ( t 1. è. .:' 'L . Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 30 of 63 )î) ' lê.: ' ) to that time was Chak Yam Chau jl' , that h w as entitled to use the nam e d'Chow'' as l ' to his restaurants a j 1, nd that the use of the ame was not necessarily evidence of 1 , trademark or trade name infringement. 4o 1, Moreover, the jury was instructed t at''each mark must be considered as a t' l Whole.... (and that likelihood) of confusion cannot be based on dissection of a mark, llj that is ) , on only part of a mark. The mere act that both marks share a comm on l term does not by itself make the marks si ilar enough to establish likelihood of 'f

confusion.'' ECF No. 350, p. 12. W hile th evidence clearly established that the j- # f I( ocus at Plaintiffs' restaurants is on the id ntity of the founder M ichael, i.e., Mr , ., # Chow, the evidence also clearly establishe that the prominent term in the l )f Defendants' restaurants' trade nam e is Ph li e by Philippe Chow . 't N jt or did Plaintiffs establish that De ndants knew that a tradem ark as to the k)

name RMr. Chow'' existed prior to the filin of this lawsuit. Plaintiff Chow adm itted 1'j'è that Defendant Chau probably would not ave known that Pl J- aintiffs had a t tdM 1è tradomark RS to r .ChOW'' When Defend t left Plaintiffs' employment in late ) 2005 to open the Philippe restaurants t . Tri l Tr., Jan. 25, p. 61. Indeed, there was ( t no dixect evidence offered that Plaintiffs to d Def ) endants that they were infringing l ' demark prior to the initiat on of this case in late 2009 on Plaintiffs tra . The Jury l Instructions specified that Plaintiffs could ecover dam ages fo l r trademark y infringement only if Plaintiffs dthave proven by a preponderance of the e ;t' vidence that l t. OM oreover, whether Defendants' rest urants had used ddchow'' or , ''Chau,'' in their nam e may be of little mom nt instead, l , as the pronunciation of the two t' versions of the word is similar, if not identi a1, and the Plaintiffs may well have l argued that confusion existed as a result of he sim ilar sound of the '!j name. ) 1 30 l j ),

l ) .) Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 31 of 63 t .1 k 1 ) Defendants had either statutory or actua notice th 1 at Plaintiffs' trademark was . l ( ' gistered.'' ECF No. . re 350 ,p. 17.41 (j):!j4. ( '? The jury heard from several witne ses that Plaintiff j,r)-; s did nothing to protect j their trademark or trade name use by De endants for s ( ' everal years, despite being

E ., y aware of Defendants competing restaura ts even before the fi ' - rst of such resta ,'; urants opened in early 2006.42 For e am ple , Brahim Muratovic (referred to by ) an oarties as Brian Murati) t . a lonetime e olovee of Plaintiffs and the current - ' - -'' - - t è' m aitre d , m anager at Plaintiffs ) restauran located on 57 th Str ? ' eet in New York City, testified that he provided a copy of Defen ants , menu to Michael Chow and Mi tf chelle l Chun (a manager of the Plaintiffs' restaur nts) in December 2005 $ . Trial Tr., Jan. l j 31, pp. 28-30. 111t.. ! 1-

r since 1979, testified that he saw Defendan s' menu (with (dphilippe by Philippe )) Chow'' at the top of th j e menu)43 and sent i by facsimile to Ms. Chun and to Michael 1. Chow, who was in Los Angeles at the time because Mr k'q . M urati was concerned that j som e item s on that menu were identical to item s being served at th e Mr Chow j 1jlq-- 4lThe claim for trade nam e infringe ent è!il-;. requirement for imposition of damages , of course, does not include a similar jè order to entitle the user to pursue a claim, as rddtrade dam ag name''es und need not be registered in ') er the Lanham Act. 'j. D 4zDefendants argued that Plaintiffs aited to file this lawsuit until after 1 efendants opened a restaurant in Miam i each near the l ocation where Plaintiffs # intended to open a competing restaurant ) , i an attem pt by Plaintiffs to gain favorable (and free) publicity. jt

S 43Mr M uxati also testified that he vi ited Defendants' restaurant on 60th ' treet in New York City before it opened a d was given a full tour of the new ) restaurant by Defendant Morfogen. Trial ., Jan. 31, pp. 34-35, p. 51. / j 31 j j. j' 1.

). j Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 32 of 63 $ l ) t!

restaurant. Trial Tr., Jan. 31, pp. 49-51. r. Murati testified that Plaintiff Chow t and Ms. Chun did nothing about the alleg dly copied men l u items after they k received the Philippe restaurant ' s menu. s. Chun admitted that she knew of the 1 ' i in Decem ber 2005 an saw a menu Defendants open ng , and that she told both l jj Plaintiff Chow and also Ms. Chun's sister, hris Chun , an attorney working for 1 .j Plaintiffs at the time, about this informati n. l Trial Tr., Jan., 30, pp. 122-124. ( A l s further evidence of Defendants' t ansparency as to the launching of its g Lk restaurants as com petitors to Plaintiffs , re taurants l , w hich arguably might support L tj a determination that Defendants did not e gage in bad faith or i ntentional @ l infringement, Defendant Chau testified th t he and Defendant Morfogen appeared 1. ) on an episode of the Martha Stewart televi ion show in February 2006 ) , preparing a y i. m enu item titled dtGreen Prawns,'' and that another of Defendants' employees ) , M r. $ ) Cheng l , appeared on that same episode and erformed a tfnoodle show'' (making L (C

noodles by pulling dough by hand). Trial T ., Feb. 9, pp. 23-24.44 î t :, To support Plaintiffs claim that Defe dants should have known th ' at they #t ) were infringing on a trademark l , Plaintiffs' ounsel relied heavily on one phone call p r placed by Ms )j . Chun to Defendant Chau soo after the Defendants opened their fi rst j

restaurant in New York City. In closing ar um ent ) , Plaintiffs' counsel stated that t M s. Chun provided adequate notice to Defe dants by that phone call p., , and that her j )1 ) GDuring this testimony j , Plaintiffs' co nsel objected that the word dsshow'' was l ambiguous.'' b Counsel conceded that noodle p lling has been done forSdhundreds of ) yearsdi ut implied that performing such fea dton the floor of a restaurant'' was a j. stinctive aspect of Plaintiffs' restaurants hich Defendants had copied F . Trial Tr., lj eb. 9, pp. 24-25 . / ! 32 t ) 4. t' 'ë . i ! Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page Ii' 1 33 of 63 j 1 t r Oral statements were Sjust as good as a la yer writing a letter è) .'' Trial Tr., Feb. 16, ' . j) p. 80. H owever r I , it was undisputed that efendant Chau - the recipient of Ms l . j 6 Chun's call t , had some limits in his use of he English language (indeed , he testified j' at trial with the help of an interpreter), a d that Ms. Chun was speaking in j

, English, and rapidly, when she telephone Defendant Chau to tell him to ddnot i) I bother my chef t , you're not allowed to wa1 on the 57th street .'' Trial Tr., Feb. 8, p. l 1 74. M s. Chun testified that she was upset and told Defendant Chau that ddyou t copied the menu, you tried to steal the na e t, , a11 these things you're doing is really k j' wrong.... And stop coming around the rest urant trying to steal staff and doing al1 )' ) this nonsense.'' Trial Tr ., Jan. 30, pp. 69- 0. Defendant Chau testified that after l y M s. Chun finished scolding him she hung up the phone 45 l , . Trial Tr., Feb. 8, p. 74. ) , l Plaintiffs counsel asked Defendant hau (at least five times) whether there i' # w as a portion of the call that he did not un erstand b !7 ecause Ms. Chun was l t speaking rapidly and in English; counsel a parently was attempti ) ng to ï'establish ) lt that there was a great deal said that EDefe dant) was not remembering.-- Trial Tr-, t, r. Feb. 8, pp. 77-78. But that line of question ng instead simply established that l j Defendant probably did not understand m ch of what M s l . Chun was stating, as she ) ' herself had admitted that she was upset a d didn , t let him speak (.# . Defendant ) t. testified that he remem bered clearly that s iq . Chun told him to not bother her chef )

and to not walk on 57 th Street, but h e cou ld not rem ember much of the call because tl ) $1

45Ms. Chun acknowledged that she to d him not to speak until she finish j' king ed t spea , and that when he tried to say so ething she hung up the phone ECF t No. 311, p. 70. , j j 33 )

i $t. ) Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 34 of 63 ) f

t). he was very upset about being told to avoi w alking on the street . Trial Tr., Feb. 9 , ; 76 M oreover ( P . . , M s. Chun did not even te tify that she referenced the trademark (' d 1' uring the telephone call.46 l $l In light of the Plaintiffs' failure to p rsue Defendants until almost four y ears r @ after the competing restaurants had beqn pened )'. , the jury may have determined 't )l that Plaintiffs them selves did not find muc similarity between the fdMr . Chow'' ) t tradem ark/trade nam e and the allegedly i ringing mark used by Defendants , nor j imilarity between the products and servic s offered by the competing restaurants s .o l The clear weight of the evidence indicated hat the Defendants may not have been )k j )

t l MAlthough the question of laches wa not presented to the jury l h , the jury may t ave been troubled by the fact that there w s only this single contact by Plaintiffs l in the nearly four years between the openi g of Defendants' restaurants and the / j filing of this lawsuit. ! Gplaintiffs' Count 1II alleged unfair c mpetition by dtTrade Dress t Infringement.'' dtdgrlqrade dress infringemen ' is a subset of the dfalse designation of 1 origin' or tfalse or misleading description of act' claims oribnally recognized under t '1 2002)b 43(a).'' H man v. Nationwide Mut. Fire I s. Co., 304 F.3d 1179 , 1187 (11th Cir - 'k . dtdrrrade dress' involves the total ima e of a product and may include features ' such as size j , shape, color or color combinati ns, texture, graphics, or even particular q les techniques.'' John H. Harland Co. sath v. larke Checks Inc., 711 F.2d 966, 980 l (11 Cir. 1983) (citations omitted). ddrl'he fa ors relevant to determining whether t there is a likelihood of confusion between t trade dress of two products are j g 'essentiallyof confusion the between same' theas thoseparties relevant ' trademark to d termi.'' 1d.,ning at 981 whether (citations there omitted). is a likelihood In )' Count 111, Plaintiffs alleged that Defendant copied ttsignature dishes j , m enu, and 'j a11 the other distinctive elements'' associate w ith Plaintiffs' restaurants , and the l Jury Instructions stated that trade dressdd ay include the general appearance of @t

the exterior and interior of the restaurant, t e décor, the menu, the style of service the style of p , k reparation, and any other feat res reflecting on the total image of the 1

restaurant. l '' The jury entered a verdict in f vor of Defendants as to this Count, Plaintiffs do not seek a new trial as to the a egations of trade dress infringementand ) . l ?) 34 j ) j' i Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page l 35 of 63 fi lf ' ! aware of Plaintiffs trademarks until the fi ing of this lawsuit in 2009 48 l . j ) ) The jury also heard testimony l and s w physical evidence of the significant 1

l' distinctions between the parties' restauran s w hich may have contributed to the l) l jury's conclusion that Plaintiffs had not est blished a likelihood of confusion . For C example, the style of the lettering in the re tauxants names j ' is different, the color C t scheme in their restaurants is not the sam ,49 the menu items are not identical t 1:.

(although the evidence revealed that many items are similarso), etc. Plaintiff Chow l q1' 1. 48Defendant Morfogen testified that e had no notice prior to May 2009 f Plaintiffs that he was engaging in false adv rtising by purchasing internet searchrom t) terms, which included dtMr .Chow,'' Trial Tr , Feb. 7, p. 85, and his testimony as to l thislaims issue was uncontroverted. See discuss ' n ,infra, relating to false advertising ) c . $ t 49Ms. Rivera-Giraud testified that Pl intiffs' restaurant had a blue carpet j and s , # erved food on silver plates and Defen ants restaurant had a red carpet , , and ? served food on ceramic plates marked with ( Philippe '' - suc h that the décor was l similar but the 'tambience (of the restauran s wasl different 60. .'' Trial Tr., Feb. 2, p. j k soAlthough Plaintiffs do not challenge the jury's verdict for Defendants as to l conversion ) , the Court addresses the issue h re to illustrate the weakness of l ' lleged trade nam e infringement and consum er confusion Plaintiffs case as to the a . l During deliberations on February 21, 2012, he jury posed the following question'. j,r()... j . ddF'or conversion of intellectual property are e to decide if Mr '' Th . Chow has the t copyright of the signature dish and decorati n. e Court responded, pursuant to 'f the ar eement of counsel (( lr , No. You do not n ed to determine if Mr. copyright for the 'signature dish and decora ion' you mention in yourChow question has a j) . only need to decide if these terms are tintell ctual property' under the instructionYou I ë'j have given to you on Conversion and also co sider a1l of the factors in the instruction on Conversion f . eonsidering whether Plaintiffs'' The had jury's a signat ques reion dish reveals and thatdecoration the jury which was might î) have been converted by Defendants; it is rea onable to conclude that the jury had rt duly considered a similar question as to whe her any signature dish or decoration t had been infringed by Defendants j . t ' 1). 35 ) l ! l j) l Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 2. l 36 of 63 l ) t. testified that he perceived fortune cookies s tdsymbolically very demeaning ... to the ) ( t culture of my country'' and that he would ever serve fortune cookies in his i t restaurants ) . Trial Tr., Jan. 26, p. 99. In c ntrast, a witness hired by Plaintiffs to t visit the Defendants' restaurant in Miam i each testised that she was served )('

fortune cookies at Defendants' restaurant nd that the message in the cookie was t , r tdsexu ) al and almost crude in content.'' Tria Tr., Feb. 2, p . 45. 1. 1 Plaintiffs also offered testimony tha m any of thei i r custom ers consistently or tj l l regu arly dined at their restaurants , for ex mple, Plaintiff Chow testified that 1. ninety percent of the clientele at the 57th s eet restaurant in New York City were t (

local residents who supported the restaura t, Trial Tr., Jan. 26, pp. 76-77, and Ms. jt jt . Chun testified that their long-time clients ad been ordering one of Plaintiffs ' i m enu j it l ems, Chicken Satay, dtfor decades,'' Trial r., Jan. 30, pp. 108-109, which suggests è 1:. that such clients might not be likely to be c nfused by the opening of a com peting !'! j restaurant even if that restaurant were on1 a few blocks away and served similar l j ) menu items. Plaintiff Chow also testified t at the Plaintiffs , restaurants are k nown C) throughout the wo l rld and that he also is a e1l known figure in the United States. ! lt Trial Tr 11.: ., Jan. 25, pp. 168-169.51 This evide ce suggests that a finding of likelihood f 1) ) slpl ). aintiffs played a video for the jury which had been recorded during a l celebration of the thirtieth anniversary of a r Chow restaurant; that video 1j. p revealed that a num ber of actors and other ublic figures were personally sending t their anniversary greetings to ''Michael'' Ch w ) . Plaintiffs' Ex. 111. This is )

additional evidence that the jury might hav weighed in determining that, at least q to the clientele frequenting the Plaintiffs' restaurants as , there was little likelihood 1 ' restaurants nd Defendants' restaurants of confusion' between Plaintiffs , as ) 1 ssociated Pla ntiffs' restaurants with Plaintiff Chow , Plaintiffshimself. customers strong y a )l 36 1. / ' !# ( )l ) Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page ! 37 of 63 l 7.

l 1. of confusion by consum ers was by no

mea s the only conclusion that the jury could . have reached -. . The Court cannot conclude that the g'reat weight of this evidence f established a likelihood of confusion relat d t j) o Defendants' alleged use of the ) t Plaintiffs' trademark or trade name or l use of a name 'dsimilar to'' the trademark or jl trade name Gee Jury Instructions l , ECF N . 350, pp. 9, 19).52 l As to the fourth and fif'th factors of e lik elihood of confusion test , i.e., the , 1

similarity of the sales method, and the sim 'larity of advertising methods the jury 1) , reasonably could have found that Plaintiff did not establish th t at the relevant class j of consumers would be confused by Defend nts ' compe ting restaurants' sales or t!. dvertising methods ) a . For exam ple, Plainti fs eschew com m ercial advertising dtgme l . ' don't do much advertising or marketing )h , be ause Mr. Chow, the restaurant gets lot j (s ic) of publicity on its own. .... gme don't r ally advertise to promote the 1 j restaurant.'' Trial Tr., Jan. 30, p. 137 (Ms. hun). Defendants l , in contrast, offered I ).

evidence of a promotional baseball cap (Def ndants' Ex . 79), happy hour flyer ). (Defendants' Ex. 83), and gift card (Defenda ts' Ex t . 84) associated with Defendants' h

m arketing efforts.

?. Finally, as to Defendants' intent to co p 4.( ete unfairly and the balancing of this ) factor along with the other factors of the . app icable test, the Court notes that the # t szAlthough the jury necessarily had to find that the Defendants' conduct 11)( caused a likelihood of consum er confusion in order to find for Plaintiffs as to the # comm on law claim for unfair com petition j , se Jury lnstructions, ECF No. 350 that finding did not require the jury to ident' th , p. 28, ) federally-protected trademark or trade nam at Defendants had used the l) e GMr. Chow.'' For example m ay have found that Defendants simply eng ged in dddeceptive or fraudulent, the jury 17t conduct,'' e.g., false advertising j; , not related t the specific use of the <

restaurants. See, e.=., Plaintiffs' Ex. 61. (i

Plaintiffs argued at trial that Defe dant Morfogen urged Chau to I(. intentionally add fcohow'' to his legal nam so that he could confuse the consum ing fl t public by claiming to be related to Plaintif M i chael Chow. A1l of the evidence , ji discussed above, as to Defendants' legal n m e change may h lè ave demonstrated to t the jury that Defendant Chau (and other efendants) were not intentionally 'l engaging in unfair l competition when Defe dant adopted the nam e t'Chow.'' The ( jury heard impassioned testimony from De endant Ch au that he left his long-time p employer, whom he liked , because tfMichae Chow didn't give me the chance, so ... l )) !' s3pl )i aintiffs also introduced evidence t at Defendant Morfogen described Defendant Chau as the tïchef and archit j '' Pl ect f the menu (at Plaintiffs' restaurants) l supportfor the past 27 yrs, aintiffs' Ex. 80 - a sta em ent clearly lacking in factual j . J 38 t l

j. t'r' Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page y 39 of 63 l l l believe I need to go out and have my own usiness .'' Trial Tr., Feb. 9, p. 46.54 ( The evidence of the intention of Def ndants Morfogen and Chau to compete l with Plaintiffs ' res taurants is not necessa '1y evidence of an intention to compete $t unfairly. The great weight of the evidence indicated th l at Defendants intended to C compete directly with Plaintiffs by offerin a type of fi f ne Chinese dining which is /

relatively unique, and available from only few restaurateurs l . The jury's verdict lj t: for Defendants on infringement may simpl reflect that the jury found that (.) Defendants did not intentionally use'IMZ'. how'' in their restaurants' nam es 6: , j m enus, etc., and any likelihood of confusio in the mind of consum ers was the result l

of lawful competitive conduct l.- . The law doe not protect a trademark owner (or user ' j of a trade name) from al1 com petition, or ev n from aggressive com petitors ) , but only j protects against unfair competition l . W hile efendants competed openly and 6 , l perhaps, aggressively, Plaintiffs have not e tablished that the jury's verdict in favor 1 . of Defendants on the infringement claims as against the clear weight of the ): j evidence. l l In summary, the jury may have foun that there was not credible evidence #1;

that the Defendants had used the tradem ar or trade nam e ddM r. r. Chow'' in a l m anner that was likely to cause confusion a ong consum ers () , nor that there was ) t. sufficient evidence of actual confusion betwe n Plaintiffs' an d D efendants' @ )

)t- 54 Defendant Chau testified that he re * gned because his wife continually )' asked him why he was not being promoted t head chef by Mr ) . Chow, particularly r since he had been working for Mr. Chow for ore than twenty years 8 . Trial Tr., Feb. t , p. 22. Defendant Chau continued to work for Plaintiffs' restaurant for three l years after he was denied the promotion to ad chef, and finally left in late 2005 t after having worked for 25 years for Mr ,) . Cho . Trial Tr., Feb. 8, pp. 17, 22. j 39 1, ) ). k.

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' . ) 1j:

restaurants resulting from Defendants' u e of Gphilippe by Philippe Chow.''55 For l t ? a1l the above reasons jl ) , the Court cannot fi d that the verdict in favor of Defendants l )11. i j as to federal trademark and unfair compe ition by trade name infringement is 1;)*. #

against the clear weight of the evidence l ' . l tt y.l. 4. Alle ed misconduct b Defendants an their counsel t t As an alternative basis for the gran ing of their request for a new trial on @' '4 ''t Counts 1 and I1, Plaintiffs point to four pri ary areas of d ; efense counsel's allegedly L deceptive conduct which Plaintiffs claim p ejudiced the j f' ury against them; (1) j reference to a magazine article which did ot publish a recipe which counsel implied )

(. was contained therein (if the article had p blished the recipe it would have been )t evidence of the non-secret nature of Plaint'ffs' re h$' cipes); (2) questions asked as to ) whether Plaintiff Michael Chow, s wife k (when ' , Ev Chow, had published a cookboo t in fact the evidence was that no such cookb ok h ad ever been published, and l instead that Michelle Chun had written do n th l e Plaintiffs' recipes in a recipe book 1 Which was kept in a safe at one of the resta rants) - again purportedly as evidence lë. t of the non-secret nature of the recipes; (3) t e reading of a t ) ranscript of a deposition 'j of Michelle Chun which was referred to by

efense counsel as a deposition of Eva k. Chow; and (4) displaying a photo of a resta rant with the ïdchow'' name during ht l ssplaintiffs argued that there was sub tantial t) , 'dmassive,'' and uncontradicted evidenceing of a widespread actual confusion of c nsumers that has occurred and is still tj occurr s a result of Defendants' alleged se of the tradem ark , but did not offer a 1 satisfactory explanation to the juz.y as to wh Plaintiffs waited for more than three l. years to pursue a tradem ark infringem ent a tion against D h efendants if there was j w idespread actual confusion am ong co sum ers suc . l 40 )t ) ). ) lt ' j l Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page j ! 41 of 63 j 1 i tp t tl cross-examination of Mi t 1 chael Chow and c nfusing the witness by referring to a t j different restaurant. As to the cookbook i sue # .1 , the Court gave a curative t instruction r!-... , on February 13, 2012, advisi g the jury that Mrs. Chow had not t published a cookbook !t , and that the jury s ould disregard defense counsel's ( l statement that Mrs. Chow had published cookbook )l . None of the other areas of r alleged misconduct rise to the level th l at t ey required a curative instruction at trial j nor do they require the g'ranting of a new ial.56 j',t. Plaintiffs also claim that Defendant Morfogen 1. , with his counsel's knowing ) participation, engaged in misconduct and rovided false testimony relating to fl whether an unrelated restaurant was usin the nam l? e Mr. Chow or Mr. Chen. Even j if this was an incident of false testimony 1'l , a d even if defense counsel had knowingly ' j k permitted such false testimony - which the ourt doubts, the Court does not find (; ( that this would be a sufficient basis on whi h to grant a new trial j . The jury heard l ixteen days Of testimony and argum ent ) S , a d Spent three days deliberating; the l

Plaintiffs' complaints about Defendants' an their counsel's conduct simply are l) i t nsufficient to require Court intervention . ê i Indeed, the Court notes that conduct f a1l co 1. unsel suffered as the trial ) continued far beyond the parties' original es imat t e of the time required to try this #

case. For exam ple in closing argum ent Plai tiffs' counsel refere tii , nced an exhibit , j

'- 56 Plaintiffs ' counsel repeated ly, i nthe resence of the jury complained about J'jj).ë defense counsel making ''misleading'' statem , nts. The Court, of course condone any counsel ' s intentional misconduc ' however , would notin )') , m istakes may be made good faith, during litigation and when such , istakes oc , j cur, present an opportunity t for a11 counsel to endeavor to improve their f ture perform ance jè curative instructions which were requested . In this case, any ) , nd necessary, were provided . ) 4 1 lt û

j't'. )). ) Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page jj 42 of 63 j j 1 Pl aintiffs' Ex. 81 j j , as evidence of Defenda ts' efforts to ddattack M r. Chow ... (olver j' ( ) j j and over again.'' ECF No. 345 1# 4 , p. 31. Th Exhibit is an em ail sent to D efendant j Morfogen by his wife, dated January 26 !) , 007. Plaintiffs' counsel reported that the t itlr email states that d( (it would beJ the ultima e fuck you to M1'Chow (to open a lj. . restaurant in a location in Miami Beachl '' nd counsel said '' (t1 h at tells you what t l their thinkin l g was; that tells you what th y're doing .'' ECF No. 345, p. 31. Defense 1 counsel responded, properly t , in his closing argum ent that the referenced exhibit k 's if l , w as a personal em ail sent by Defendant e, t'after Michael Chow told al1 his 'j #) vendors in New York City ' 11 !' , don t se them ood in 2007. You sell them food, then ' I ' m no t g jl oing to pay you, and you're no lon er going to be my vendo r.'' ECF No. 345, jf 't h n Stratis told his wife that p. 56. He continued by describing that w , his wife got ) ' ) RIIKW Rlld ShO SRid Somothixg ... tlmt ShO S m barrassed about ..., but that's how she l felt. W hy is that in this courtroom ? ! ... It w s his personal email .'' ECF No. 345 , p. t 56. Surprisingly, during Plaintiff s rebutta closing argument ) , Plaintiffs' counsel # again referenced the t'fuck you to Mr lj . Chow' statem ent contained in the Exhibit and l then misstated defense counsel's position b claiming that: ddcounsel told 1. you this j w as written because his wife was angry ove th 11l e lawsuit. W ell, this was written j ' fl '' ECF No two years before the lawsuit. So, that expla ation doesn t y. . 345, p. 81. l Defense counsel did not object at the time to this mi 1) s-characterization of his t j he Court - reluctant to inte ru j statement, and t pt any counsel during closing l j argum ent, did not correct the Plaintiffs' cou sel's significant mi j' s-characterization t . y Plaintiffs , counsel ,s attack on defense co ( unse w as significant, of course, because it '# # ) ) ( 42 @

!.

6.(. ,

Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page l 43 of 63 t l r ) portrayed defense counsel as untruthf ) ul, nd was one of the last things the jury j. ( heard before beginning their delib erations îl

In conclusion, and noting that this se was litigated over a period of five ). l w ee ks ,the Court does not find that defe ns counsel's isolated statem ents , nor l t Defendants' conduct during trial, merit a w trial as to Counts 1 and Il ) . Plaintiffs r

failed to object to such statements at the tr'al and m oreover jq'i. , , have failed to l establish that such statements inûuenced t,1- e jury improperly such that a new trial l t is warranted t . j / ) In l sum m ary, the Court finds that th re was very little evidence of actual i consumer confusion introduced at trial - an such evidence may have b j1: een j considered unpersuasive by the jury . There was substantial evidence of agr essive k

competition between the parties, and some vidence that there may be a likelih i ood ) of confusion among relevant consumers t , but little evidence that Defendants used Plaintiffs' tradem ark or trade nam e in 1)(, such m anner that such use resulted in a ny t'fjjiy demonstrated likelihood of confusion ).i. . The v rdict for Defendants as to Count s I and r 11 is not against the clear )h , or great, weight o the evidence . , and Plaintiffs have not 1 established any other basis for setting aside h !l e jury's verdict on these Counts', therefore, Plaintiffs' motion for a new trial is DEN IED ljt .

)'j l rt-.,, j 43 l f l (' i j't Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page t! 44 of 63 l

B. Defendants' motion for . ud m ent as a à.1. common 1aw unfair com petitions; atter of 1aw as to false advertisin and ) lj ln ruling on Defendants' motion for udgm ent j) as a matter of law, the Court t 'dconsider a11 the evidence , and the in erences drawn therefrom must , in the light 1 l m ost favorable to the nonmoving party ... ( nd) then determine whether, in this l li t) ght, there was any legally sufficient basis for a reasonable jury to find in favor of l I the nonm oving party.'' Pensacola Motor S 1es Inc l . v. Eastern Shore To ota LLC , l 684 F jIj))..))'' .3d 1211, 1226 (11th Cir. 2012) (citati ns omitted) . The standard is heavily ll weighted in favor of preserving the jury's v rdict. The Court's assessment of the l j Plaintiffs' motion for a new trial l , above, dif ers significantly from the Court's C ri analysis of Defendants' motion for judgmen ; as to the former , the Court had to t determine whether the verdict was against he great weight ljl of the evidence, but as to the latter the Co l urt reviews the evidence only to determine whether there was ! any l t egally sufficient basis to sustain the ju y's verdict - if so, then the verdict t

should stand. ty

1. Basis for 'ur 's verdict for Plaintiffs as to false l competition bv deceptive conduct advertisin and unfair t l j Defendants argue that Plaintiffs faile to set forth evidence of damages 1. jf sustained as a result of false advertising an failed to introd t uce evidence of actual # confusion among consumers; Defendants als argue that the dam ages awarded b jt y j l

)t. sWlthough Defendants' motion is title t. as a motion for judgment i notwithstanding the verdict, the requested r lief is properly described as a re F of Defendants' motion for judgment as a mat er of law newal ); , pursuant to Fed. R. Civ. P. 50(19. l't ) 44 tp ! ) t ' ' jj,. jj,.llllll.) l Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page j 45 of 63 ! 1 l the j ury to Plaintiffs TC Ventures 1 , lnc., nd Michael Chow , individually It , are duplicative . M oreover, Defendants note hat this Court pre 1,1 viously found that only / the Plaintiff Mr Ch ow Enterprises, Ltd. ad standing to enforce the fïMr . Chow''

'2 trademark (and not the other Plaintiffs) , such that only Mr Chow Enterprises ( , Ltd. j 1 'jj.:1 could be awarded damages for false adve tising (but the jury awarded nothing to Mr 11 7 Chow Ente rprises and instead ) , found onl for Michael Chow and TC Ventures, Inc.). Plaintiffs respond that D ) efendants have misconstrued the rele ) vant standards, and that there is no need to e s ablish a tradem ark infringem ent . , nor a y '. likelihood of confusion resulting from Def ndants' improper advertising Plaintiffs 1 . t1y note that a claim for false adver ising requi res dem onstration of a

'' '' correcïddeception, not tdconfusion J likelihood of , nd that such claim may be brought by l any Person, i . e .,not solely the trademark egistranttdwho believes that he or she is tl , or is likely to be damaged'' by the false ad e rtising. 15 U.S.C . j 1125(a)(1)(B). ( Plaintiffs urge the Court to uphold the jur ' s verdict as to the question of false l advertising and unfair competition, based n the evidence that false statements l I were made by Defendants which had the t nden ):) cy to deceive customers such that t their buying decisions would be influenc iè ed - ddeven if (the customersl understood ) that they were two different and unrel ))f ated restaurants.'' ECF No. 365 , p. 9. t To establish false advertising under h è e Lanham Act, Plaintiffs must : establish that the Defendants' advertisem e ts and promotions (which were used j tfi n com m erce '') were false or misleading rs or had the 1' ,s8 nd either deceived consum e j 58The challenged advertisement may e literall t m isleading.dfrrhe lin y false, or it may simply be 1 e between literally fals and misleading is not always a clear l y 45 l) p l l . 1. Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page # 46 of 63 $. l capacity to do so, and that such deception ad a mat ) erial effect on the consumers , j urchasing decisions p P . 15 U.S.C. j 1125(a). Plaintiffs also must establish an injury l l resulting from the false advertising 1. . ld.; s e also, e.a'., Osmose. Inc. v. Viance. LLC, , 612 F.3d 1298, 1319-20 (11 th Cir . 2010) (no clear error in finding that m anufacturer i j ' h of wood preservative was likely to be injur d by competitor s statements that a third ' y party's testing of the manufacturer's prod 1)t u t verified claims made by the competitor ' that the manufacturer's product was defect' ( ve). l(. At trial t , Plaintiffs offered evidence o two categories of allegedly false ) advertising: (1) statements by (or at the dir ction o9 Defendant M ? orfogen to t restaurant critics/reviewers in December 2 05 that Defendant Chau was the l () m astermind of the dishes and the architect f the menu at th t e Mr Chow restaurants j and that Defendant Chau was a chef acclai ed b y top critics,sg and (2) the purchase ) ;11.. of search terms on internet search engines hich resulted in the Philippe li.. yk restaurants appearing in searches for ddMr ow'' restaurants. (Defendant lt(. M orfogen also may have had employees sub it p ).q ositive reviews in an attem pt to l jl skew publicly viewable reviews in favor of P ilippe restaurants, but the Court has l t not found any precedent for finding that thi co ï nstitutes false advertising .) )

As to the statements to restaurant cri ics/reviewers) the Court must take the ) t '( tbut it is a fine line ) One , .''' Osmose Inc. v. Vi nce LLC 1317 (11th 1 , 612 F.3d 1298, Cir. 2010) (nuotine N. Am . M ed. Co . V j . Ax' m Worldwide. Inc., 522 F.3d 1211 ' 1225 (11th Cir. 2008)). , j ) sgplaintiffs also complained repeatedly publicchange that his Dname to tfchow,'' and Defendant aboutorfogen' Defendants attempt Chau'ss to mislead decision the to t j efendant Chau and Michael Ch w were related previously. , as discussed ( ( 46 k f. l 7t. !' 1 ) l Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 1 47 of 63 rE j j' ,@ evidence in the light most favorable to Pl intiffs and , in doing so, is unable to j 1j conclude that the jury's verdict should be isturbed. There was sufficient evidence t. ! that certain of the statements reported in he media were without a basis in fact (' Th . j e Court observes that Defendant Morf o en appears to be inclined toward

exaggeration, at a minimum , as he allege ly publicly stated before trial th I at $1.7 t ' fees had been awarde to Defendants million in attorneys - when no such order had ) been entered6o and after trial he proclaim d th (. '' f , at the jury verdict was a ddlandslide l or Defendants - which is disputable win , t least. j A s to the argum ent relating to purc ase of internet search terms 7 , Plaintiffs j) offered exhibits demonstrating internet se ch results dated 2008 - 2009 which f , th street in New York City show the address of the Philippe restauran on 60 , with l its corresponding website address , appeari g imm ediately under the heading q j W6POI1SOfPd SizksM and 66Mr Chow'' On a pri t ! out Of Google search results. Plaintiffs' l ) EX. 33. Defendant argues that it was n0t e gaging in commercial advertising when t . it purchased these search terms on Goo 61 !jk.r)' gle a d other search engines and that such l j) 60 l A arently the basis for this comm e t w entrythe Court's of anpp orderruling a in favor of Defendants as o certasain Defendants' claims wo interpretationuld result in the that ù) w arding attorneys' fees to Defendants . l ElDefendant Morfogen testified that D fendants bought from Google (and others) the tdkey words'' Chow, M r. Chow, Ph lippe Chow j , Chinese cuisine Duck, etc. - in total several hundred w , Peking l ords re purchased. 119-125, 144-151; Trial Tr Trial Tr., Feb. 2, pp. ( ., Feb. 6, pp. 146-1 8; Trial Tr purchase of such 'tkey w ., Feb. 7, p. 121. The ) ords'' by Defendants as to generate traffi own website, as follows: A user searching on oogl t'Mr Chow''c wouldto Defendants' see the l! Philippe Chow information appearing as a tfs e for . j clicked on the Philippe Chow informatio onsored linky'' and if the user then 't) web n the user would go to the Defendants' $ site. Id. at 121 Trial Tr., Feb , . 6, pp. 146 148; Trial Tr Feb. 7, pp 120-123. ., . 103-104, t ) 47 y jj' ( ! Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 48 of 63 t l i i 1) act vty does not constitute false adverti ing as the conduct was not a ddfalse statement of fact'' about their restaura .jjj: nt . Defendants assert that the only time $ .11 . jj j period when they had purchased such t -. t e s - or similar terms - was in 2008 or j. 'y 2009, prior to the filing of this laws ) uit an at a time when Defendants claim that i!'!') ) . they did not know Plaintiffs ow ned the tr demark as to that name . -gr Defendants , also have offered to stipulate that th ey wi l not purchase the search term ttM -. . r. chow'' in the future , as they now have be n notified that it is protected as a tradem ark. (... j The United States Court of Appeals for the F #'yj ourth Circuit recently has jt.@ addressed, in some detail j , the use of Goog AdW ords and the evolution of Google's j policy as to the use of trademarks by ! adve tisers, in Rosetta Stone Ltd . v. Gooele. )

Inc., 676 F. 3d 144 (4th Cir. 2012). As obser ed by that court , from 2004 until 2009 l )r Google permitted advertisers to purchase eywords containing a third party ls ) j trademarks even over the objection of the t adem ark owner t . (Advertisers purchase ) kem ords for use in searches through a pro ess of bidding for the right to have the l f advertisers' ad and website address di !). splay d whenever a user searches for the #

specific keyword.) In 2009, dsGoogle change its policy to permit th trademarks in advertising text in fou e limited use of )'i r situa ions. '' Id. at 151. Those situations included; 1) when the advertiser is a resell t e of the tradem arked product , 2) makes l or sells component parts of the product t) , 3) o ers compatible goods for use with the l

t. 6zDefendant Morfogen testifi )1) he was falsely advertising by usinged these that Go h glehad se noarch notice terms prior to M ay 2009 that t , Trial Tr., Feb 85. . 7, p. ' ) j 48 t )' ) S Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 49 of 63 t(. . ! product, or 4) provides information ab tl out r reviews the product . The appellate ( court determined that Google had not vica iously infringed on the trademark at fl !' issue in that case, but remanded the case o the trial court for further proceedings l as to whether Google had directly or contr' uto rily infringed on the trademark or t diluted the trademark 63 1d l)k . . at 173. 1 , jè Plaintiff Chow testified that he saw ponsored links on internet search tl

1. engines (Google, AOL, and Yahoo) which isleadingly affiliated the Defendants, j restaurants with the Mr Chow restaurants nam e , see Plaintiffs' Ex . 33, 34, 35, j Trial Tr., Jan. 25, p. 23, but no testimony as offered as to whether such sponsored jj. links had resulted in consum ers going to D f J'l endants' restaurants as a result of ' ( confusion when their original intention wa to dine at a Mr Chow restaurant. In #) the case of Internetsho sinc .com v. Six C C nsultin Inc 31222 (N ., 2011 U.S. Dist. LEXIS l .D. Ga. March 24 , 2011), the trial ourt observed that there was no ji

evidence that sales of the allegedly competi g product had resulted from potential )1111::(,.-,. customers clicking on a sponsored link whic used a trad )(: emarked term without )

authorization. h The Eleventh Circuit fdhas not yet det rmined w hether the purchase of l1. G t oogle AdW ords can be considered a use in omm e rce for purposes of 15 U .S.C. j @' 63A: le j ast one com m entator has observ d that ttfinding search for trademark infringement impermissibly ves mark owners mor engines liable l '' e rights than trademark law entitles them , and recom m e ded that courts not find that search ) engine practices of allowing advertisers to us others' t t suggesting kem ords for the competitor to pu chase shouldrademarks trigger tot trigger ads or t rademark ' infringementTrade-Marketin liability. : Wh Malachowski,Trademark Owners Daniel, Seminar Article: Search Enelne l in Paid Search annot Monopolize Use of Their Marks j , 22 Depaul J. Art Tech. & 1nt 11. Prop. L . 369, 386 (Spring 2012). t: (' 49 ) ) l l l ')(jjjj.'t( Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 'jj 50 of 63 11

1125(a).'' S. Grouts & Mortars v. !) 3M Co , 575 F .3d 1235, 1250 (11th Cir . 2009) (claim was not pursued after lower court refused to permit am endm ent of c ).' omplaint to add claim). The appellate court has a knowledged that a competitor might @ le gitimately include another company' èj) s t adem arked nam e or term as a tïm lt eta tag'' i embedded in a website in order to ge ''Although we express no l nera e search results.

# opinion thereon, such a defendant may h ve a legiti . m ate reason to use the t :'( competitor j s trademark as a meta tag an , j .è , in any event, w hen the defendant s .

website is actually accessed (.. , it will be cle r to the consum er that th l ere is no ) reationship between the defendant and t e competitor beyond the competitive ))'

relationship.'' North Am . ' M ed. Cor . v. iom Worldwide lnc ., 522 F.3d 1211, 1224 '

( 11th Cir .2008). l Taking the evidence in the light m l o t favorable to Plaintiffs , the Court is i unable to find a basis for setting aside th ') e 'ury's verdict as to false advertising and unfair competition by deceptive conduct l , a the jury may have viewed the ( statements attributable to Defendant Mor ''Mr Chow'' and i ' gen, or the purchase of . j related key words as internet search terms as sufficient evidence of false ll l statements which had the capacity to de W hile the Court's t(. cei e consum ers.

discussion, above, suggests that the purcha e of search terms - standing alone t - may j not necessarily be sufficient to demonstrate a violation of the Lanha jj('iE( m Act's ) proscription against false or misleading ) adv rtising, the Court finds that the jury ( had a legally sufficient basis for it s verdict s to this claim j, . ln light of the above 'tè , , j Defendants motion for judgment as a matt 1111:1(. e of law as to these claims is D Ex lEo ---. ) . j 50 1'f ! ) 1 .l). ). ' '; '. Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page . 51 of 63 I

' ly 2 ) . D uplicative dam aees award ! As to the alleged duplicative award f damages to TC V j.1 entures, Inc., as well ) as to Michael Chow, individually (' , the Cou t finds that the jury mistakenly awarded jl dam ages to Michael Chow which resulted 'n a d l uplication of the jury's award to TC C !' t Ventures, lnc. A review of the record reve ls that the Court , i - with counsel s t cooperation - created a confusing verdict fo m which did not correspond to the Jury j l lnstructions and, therefore, was misleadin to the jury. (. t

On February 7, 2012, Plaintiffs filed their first version of their prop osed jury 9 instructions and verdict form t , w hich includ d the following statement under the ) title(tDamages.'' ttlf you l'ind in favor of the Plaintiffs on l any of the above claims, you should proceed to determine the dam ag s if any, suffered by each restaurant'' 11, , . t EOF VO. 325-2) p. 4. The first entity listed n the ddDam ages'' portion of th e form l

tdMr. l). WaS Chow Restaurant - New York Cit (57th Street). Id. Plaintiff Michael l j Chow was not included in the Dam ages sect'on of th i e Plaintiffs' original proposed l l verdict form.64 On February 12, after negot' tions with Defendants' counsel ) , l Pl lè aintiffs filed a revised set of proposed jury instructions and verdict form. ECF No. ( 335-1. The proposed verdict form included t e same statement quoted above, and tk also listed the 57th Street restaurant as the rst entity listed in the ttDamages'' lj'f. portion of the form; immediately below that ntity, however, appearedd'Michael Jj Chow'' with a footnote stating: ddlt is the Defe dants' position th l at Michael Chow t

64Defendants' initially proposed verdic form it , filed February 7, list any Defendants by name, instead providi g a blank space for the 2012,jury to did not jt't complete as to which Defendants were respo sible for ea ch proposed category of damages. ECF No. 328 j . 1

5 1 )1, ) t. ) t Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page ( 52 of 63 I - t- I individually p. should also be identified as s eking d It is @1) amages for each restaurant. the Plaintiffs' osition that he does )? not ne d to be identified se aratel because he it owns the cor orations and their income ses throu h to him .'' ECF No. 335-1 , p. t 4 (emphasis added).65 Plaintiffs did not in lude Michael Chow elsewhere on their 1

proposed verdict form . A s a result of discu sions with couns el in chambers, the j final verdict form moved the listin ) g of ddMic ael Chow'' to the end of the list of #( potential recipients of dam I ages, i.e., after t e list of the Plaintiffs' re staurant t corporations. (.t, k The Court's instructions to the jury s ated that: J# ln this case, the damages clai ed by Plaintiffs have been separated tl into damages suffered by (1) the Mr. how restaurant in New York City l (57tb street), (2) the Mr. Chow resta rant in Beverly Hills j (3) the Mr. Chow restaurant in Mia i Beach , California, and k , Florida. You should t determine the Plaintiffs' dam ages r , if ny, in each location ln determining damages for ea h location . jC , (1) the Plaintiffs' lost profits at the re taurant you may consider awarding k , (2) the reduced sale value of ) the restaurant at that location ' C , or (3) he Defendants p rofits in that location These are alternative measures of da . j ages though. You may award only one ' of those measures of damages for eac l j ocation, but no more than one . 1 ECF No. 350, p. 43 (emphasis added) ) . The j ry asked a question during d j'l eliberations as to which Defendants would e responsible to pay damages to f M ichael Chow; the question apparentl y was rompted by the Court's own failure to it , include a list of Defendants on the verdi !!r) ct fo imm ediately below Michael Chow's ( nam e. The Court provided a corrected page , hich listed all Defendants , and the j

65The parties' Joint Pretrial Stipulatio indicates that (STC Ventures j New York corporation that owns and , lnc. is a L j 324 E. 57th Street'' ECF No. 287 operate the Mr. Chow restaurant located at j) , , p. 5, ! 5.i., nd that Michael Chow and his wife , Tribeca, LLC Eva Chow, are, and the MCsole Miamiowners Enterprises of Mr Chow LE C.terprise ECF s,No Ltd., TC Ventures, Inc., MC ')lk , . 287, p. 6, !j 5.p. i!)- y 52 # )' ) --17. ')') : Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 1- 53 of 63 '. l ' .y juz'y selected only Stratis Morfogen jj-.-Ij),j . As to the damages awarded to the Pl aintiffs' k .1 restaurant on 570- . Street in New York Cit )' , the jury seleded only the Defendant ( Davé 60 NYC, Inc., as the responsible par y t . Although Plaintiffs had not origin j al y sought to include Michael Cho 7: w on the j verdict form, Plaintiffs now strenuousl t y a ue in favor of the jury's decision to l award $500,000 to him. Plaintiffs claim t at Mich l ael Chow testified to not being j ab le to sell his restaurant on favorable ter sand that could have been the basis for tj , the jury's calculation of damages he suffer d i l ndividually.66 Plaintiffs' expert (. ) testified that he did not calculate damages or Michael Chow individually but that 1 j ($ ilndirectly, he's obviously behind all thes r t ( estaurants.'' Trial Tr ) ., Feb. 1, p. 145.

According to Plaintiffs' Memorandum Rega ding Proof of Damages at Trial, filed ) 3 January 23 ) , 2012, ddMr. Chow ... will testify s to the actual and projected sales of l à fore and after t e defendants' l his New York restaurant be acts of unfair com petition j ,

as well as the value of his New York rest )) (( V au ant. ECF No. 294, p. 6. Recoverable l damages may be based on the diminutio I n in the value of the plaintiff s property l A nd, an officer of the plaintiff ma . j y testify to such values,, ) . 1d., at p. 8, citations #) omitted. During opening statements ' 1 stated: '') , Plaint ffs counse t# y! 66plaintiffs also argue that the d q' pay for remedial advertising to overcomeamag th s may have been for Michael Chow to 4) e negative impact of the false advertising by Defendant Stratis Morfogen; owever (. to the cost of any remedial adverti , no evidence was introduced as j sing. (lnd ed, Plaintiffs reportedly do not enga in advertising. See discussion ge !' , supra.) More ver, the search engine results were approximately three years Old at the time of ial (the result tl although Plaintiffs argue that such misleadi g search terms swere were ope from 2009), and t nearly one year , the evidence of any alleged c rrent har rable for ) was minimal, at best. m from such prior conduct g'*(7 ! 53 ) k ) @.. t à Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 1 54 of 63 1 ) j Now, what damage was done to M ' hat damage . Chow? You will hear testimony about j W . A nd you will l'ind o t that in the N damage is principally in the New ew York restaurant, 1 th ork restaurant because Miami is n the t .t ere's very little dam age out in C lifo ew, anda l1 j rock.... And you can see the effect i hadrnia.... Mr. Chow's sales dropped like ) amount of money that he's lost . I mean, this cost him a huge .k . # in this New Y Al o cost him value. He had a saleable asset ork restaurant for a ery big num b successful as of December (05 er, because it was very t . Tod y, 1 think he'd have a hard tim ' : away. e giving it ';11. j . ECF No. 301 , pp. 40-41. (t(T)he Californi damage . 1 , w e concede, is very slight The f . Florida damage is very slight !t , actually. r. Chow is doing well here . It hasn't been j as a big disaster as it is in New York. Bu in New York, his restaurant was j. destroyed. Destroyed big time j .'' ECF No. 01, pp. 41-42. The focus was , of course , ) on the damage to the restaurants. The Ju y Instructions also explain ) ed that: ln determining damages for each Er staurantl locati j1) awarding (1) the Plaintiffs' lost prof ts at the r on, you may consider ( value of the restaurant at th estaurant, (2) the reduced sale l l at loca ion, or (3) the Defendants' profits in that ocation. These are alternative mea ures of dam ages though award only one of those measures of dam . You may ) ages for each location ( han one. , but not more t l,

ECF No. j 350, p. 43 (emphasis added). As i clear from these Instructions , the jury j' was to consider either the lost profits or th red uced sale value of the restaurant , t and the award to Michael Chow individ tl uall - without connection to a particular j restaurant which was damaged - appears to have been made in error 1, . N otably, the t j jury declined to award any punitive damage A , despite being instructed that puniti ve 'è dam ages were permissible . ) Taking the evidence in the light most avorable to Pl /k. aintiff Chow , and in ) recognition of the Jury lnstructions , w hich ere approved by the parties , and the ( Plaintiffs7 counse l's OWn statements as to th potential recovery of damages as to l! ) 54 ltt t ).t l Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page ( 55 of 63 ') . è h E' e corporations that would pass through o Pl l aintiff Chow , - t the Court finds that the l Defendant Morfogen is entitled to judgme t ij). as a matter of law in his favor as to this l

issue, l and the award of $500,000 to Plaint ff Michael Chow , individually, m ust be l

set aside. l l . - 1jt..

C. Plaintiffs' motion for in'unctive 1 relief a to false advertisin ( Plaintiffs seek an order permanentl f enjoining Defendants from false t : advertising and also seek injunctive relief s to the claims for common law unfair l). competition. Defendants argue that Plaint ff ij' s lack standing to seek such broad j relief, as the only Plaintiff who prevail ed, Ventures, lnc., does not own the d'Mr . t Chow '' tra demar k (it is owned by Mr Chow nterprises, Ltd.). As recently stated by ,1 t the Eleventh Circuit, a court has broad disc etio tk n as to the determination of ë whether an injunction should issue after th allegedly harmful conduct h lt as ceased. h Pensacola Motor Sales Inc rt . v. E. Shore To ta LLC , 684 F.3d 1211 (11th Cir. 2012). ) ) The Court notes that the jury awarded no p nitive dam ages whatsoever , and the l j Court ' b assessment o f the evidence and the arties suggests that an injunction is '

t necessary at this time j no . The Plaintiffs' m st recent example of allegedly false 1

advertising (by purchasing internet search t r !q# ms) took place two or more years j. before the trial of this case t . Injunctive relief ould be an extraordinary remed

y, j' and the Court does not find that the facts of t is case warrant such relief 1j)y... . l f* 1. Finally, Defendants' motion for sancti )t- o s (Dkt No. 358) is DENIED. l t

55 i. ) t j.. Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 56 of 63 : t t ).1 Defendants ask the Court to direct Plain iffs to stop misrep ji ([email protected] resenting facts and I evidence to the public t , and ask the Court to direct Plaintiff - s' counsel to stop filing . frivolous motions which misst ( ate the evi nce and facts found by th j'( court finds th e jury. The j at such relief is not necessa y at this ti me.67 t #

.r ! D. Plaintiffs' motion for in'unctive relief r dilution ( î' Plaintiffs claim that the ddM .) r. Chow' trademark has been dilut ed; however , jy this claim did not go to the jury because P aintiffs instead asked this Court to rul e )#. on the matter, arguing that the daim so l u t solely injunctive relief.68 To determine l whether Plaintiffs are entitled to l relief un er this theory , the Court must determine ) whether Defendants blurred or lessened th val 15 f ue of Plaintiffs' tradem ark. l U.S.C. j 1125(c)(1). In light of the jury's de ermination that there was insufficient ) t evidence of trademark or trade name infrin em ent , and after a consideration of the ! totality of the evidence presented with t resp ct to the separate standard applicable l to diluti t on claims (under either the Lanha Act or N ew York law), the Court is not j able to find that Defendants diluted Pl ainti s ' trademark; therefore , Plaintiffs' ' j motion for injunctive relief as to dilution is ENIED j' . l jt j) j' 67The Defendants' motion als f) o request d an extension of time to respond t pending motion - the requested extension w g o a ( February 27 ranted orally by the Court on , 2012. j l) 6'Defendants argue that Plaintiffs sim ly m l submit this claim to the jury - correctly obser in ade a tactical decision not to t injunctive relief and damages for dilution g that the Plaintiffs sought both g. C , si ilar to Plaintiffs' other Counts brought pursuant to the Lanham Act whi ) ch ere submitted to the jury . yCt 56 1 j: lè

;'l Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page ). 57 of 63 r ! ) E. Plaintiffs , renuest to increase d ) am aees ) Plaintiffs ask the Court to treble th $520 ) ,451 in damages awarded against ) t Defendant Davé 60 NYC, lnc., arguing th t such damages ar t e insufficient to j

Compensate Plaintiffs for their losses. (Pl intiffs sought damages totaling in excess j 1 of twenty million dollars in this ca ). se.) The Lanham Act permits a court to award 1 'dany sum above the amount found as actu dama t.) ges, not exceeding three times k such am ou j. nt.'' 15 U.S.C. j 1117(a). The d termination of whether additional : dam ages are required is based on th e Cour finding tïthat the amount of the j

recovery based on profits is ... '' nd if the Court so finds, then the Court ':l inadequate , in it j may, s discretion 'tenter judgment for s ch sum as the court shall find to be just, l aceording to the circum stances of the case (l .'' 15 U.S.C. j 1117(a). The amount l awarded is strictly to be considered as comp nsation !j , and is not to be construed as a j Penalty. ld. (l The Court h l as ddconsiderable'' discreti n to award such additional dam ages , I based on a showing of actual harm ) . Plaintif s argue that they proved damag es from i t January 2006 through March 2011 (the end ate used by Plaintiffs' expert Sergio 'î. Negreira), but that the jury apparently only ttrib )') uted the Plaintiffs' losses from j the first four months of 2006 (i 1 .e., prior to w en the Plaintiffs opened a second 'j restaurant in New York City , in Tribeca) to efendants' conduct , and did not find j? that the entire loss of profits between M ay 2 06 and December 2011 was ) attributable to Defendants' conduct , i.e., the j ry found that such losses were the l result of a cause other than Defendants' cond ),'t- ct. Defendants respond that the l 't 6 f 57 ) t ï' ( t j $ Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 1 58 of 63 !1 1 i Plaintiffs' damages r , 1 equest was a 'dballp rk'' num ber and not based on specific t l J ? evidence of damages t t' , and urge the Court ot to incre ase the am ount of dam ages ''lr '1. r'j awarded by the jury j. . Defendants elicited testimony 1 at trial that when Plaintiffs ) l t opened their second restaurant in New v rk city ( , it was ''helpful'' to the original )

restaurant, Trial Tr., Jan. 25, pp. 197-98, nd the volum e of busine t. ss at the original f location dtwent up for three months (j .'' Tria Tr ., Jan. 26, pp. 69-70. 1 During deliberations I , the jury aske for the monthly total gro ss earnings for k 2005 and 2006 for the Mr Chow rest Ct auran on 57th Street in New York Cit y, which j were provided - pursuant to the parties' a eement; the jury then asked for the r exact opening date (twe need the month a d da/') for the Plaintiffs' restaurant in il Tribeca, to which the parties ag ) -reed to res ond t'May 2006 .'' The jul'y apparently t. j did not find that the Plaintiffs had proven ) at Defendants' false advertising or ) unfair com petition by deceptive c (; onduct wa the cause of the reducti ): on in Plaintiffs' h rofits after May 2006 (when Plaintiff t p s elec ed to open a second restaur ant in New ) York City). The Court has determined th t/ at he jury properly assessed the damages js proven at trial and, consequently declines t award an increase i l , n the dam ages; as @ ' y such, Plaintiffs motion is DENIED . t ) F. Plaintiffs' and Defendants' moti )t ons for at orne s' fees l The Court has the discretion to deter ine whether to award fees t . The ) Lanham Act provides that a court Gin excepti na1 cases may award reasonabl ) e t attorney fees to the prevailing party ) .'' 15 U. .C. j 1117. The Court of Appeals for # ) ) 58 l)' ) ) h l t Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page ) 59 of 63 't t 1 j 1 t j1 the Eleventh Circuit has defined (dexcep ti nal'' to include cases where a party acts in tj 1 a tfmalici ous, fraudulent, deliberate and illful'' manne r or a case in which @j Revidence of fraud or bad faith exists.'' Ti e Kin dom Inc ) . v. Mor an Tire & Auto ) lnc., 253 F.3d 1332, 1335 (11th Cir . 2001). The parties in this case all claim t ) b o have j/ een the (dprevailing'' party , and claim tha an award of fees is warranted. ! Plaintiffs argue that the central liti liè ated issue was won by Plaintiffs (with i evidence of intentionally false advertising) and ( also that the conduct of Defenda nt t Morfogen and defense counsel at trial m ak this an tdexceptional case'' f 1. or which fees h should be awarded to Plaintiffs l . D efendan s respond by arguing th at the Plaintiffs t did not prevail, overall, as they did not suc eed on the ïï significant issues tried t) before the court - re '' ferencing a test emplo ed by the Eleventh Circuit . Defendants ' claim that they won on the claims th 1')j at ma up 80% of the discovery take n and 'j 100% of the motions to compel that Pl aintif s had filed . M oreover, Defendants l j arguethat they prevailed on the other Lan am Act claims (trademark t 1è

infringem ent, etc., which Defendants say w re brought i n bad faith by Plaintiffs6g) ) , j) and that Defendants also prevailed on the N w York trade secrets claim (the Co urt t1. ruled before the verdict that the New Y l)! ork c aim was time-barred , as the Plaintiffs t.

did not give Defendants timely notice that t y were infringing on Plaintiff s ('MR. l CHOW'' trademark) t . D efendants also argue hat th ey prevailed on the Florida ) claim for deceptive and unfair t )t' rade practice (FDUTPA) j . ( 69The Eleventh Circuit permits th '/ .) when a plaintiff has brought tfan obviouslye aw w rdak ofL fees to a prevailing defendant t evidence shows that the plaintiff anham Act claim and the i acted in bad faith and with an impr W eldini Servs . v. Forman, 301 Fed oper motive.,, j . Appx. 86 (lltb Cir. 2008) y . 't 59 lr i i) k:

Tt ' ; ) Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 60 of 63 ) 1 The Court notes that Plaintiffs sp 1 nt a large amount of time on the issue of t1. 1 Gt ( rade secrets'' - induding reques i . 'J' alleged ng that the court room be sealed during ) :'. t j testimony which was purportedly goi ng t reveal secret recipes I 1 , when there was I ! nothing secret about the testimony subse uently elicited j . In addition, Plaintiffs i included claims again j st several of Defend nts' chefs (employees) for allegedly l breaching StWritten Agreement s'' of confid ntiality but no such î. agreem ents were l ( ever produced, e.g., the Joint Pretrial Stip lation rep orts that Defendant Chau Gdid l nothave a written non-compete agreemen l or written confidentiality agreement l j with any of the Plaintiffs.'' ECF No. 287, . 7, ! 5.dd. Plaintiffs ultimately l.t abandoned all claims against four of th 1.tj e C efs on the eve of trial , and also ) abandoned claims alleging that Defendant induced the Chefs to b reach their j agreem ents with Plaintiffs. Plaintiffs also ismissed their alle gations against Defendant Dumitrescu i) , a maitre d' employ d by Defendants and previously i employed by Plaintiffs (until he sued for un aid ). overtime wages, intentional l infliction of emotional distress # , battery and ssault by Plaintiff Ch ow, and settled 'r that litigation in July 2008) l1 . Finally, Plain iffs sued Defenda nt Manny Hailey, w ho è 1 urchased an investment int ( On y p erest in th Defendants' California operations in ( 2010, the year after this lawsuit was filed; d ) spite Defendant Hailey's admittedly l little involvement in the issues being litigat d, Plaintiffs were unwilling to di ) smiss l the case against him t) . The jury ultimately fo nd no liability att , ributable to l ? Defendant Hailey. Plaintiffs' broadly stated llegati ) ons in the Third Am ended # Complaint resulted in those four chefs, the m itre d' l , and Defendant Hailey all ) )t 60 1.7J ' y ) 97 ïty1. j. Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page l 61 of 63 1 1 j ' ) ) being under the cloud of liti t . gation for sev ral years without a à 2 t ,1 n apparent basis for rl (! m aintaining the claim s filed against the * 1 . 2.. l h ln total, Plaintiffs called approxim tely tw t enty witnesses, and the ) overwhelming majority of the questions p sed by Plaintiffs' counsel related to th l e ) allegations of trade secrets (despite the th ee year statute of limitations which t. j applies to claims in New York) l , and trade ark or trade nam e infringem ent - claims on which Plaintiffs were unsuccessful lky . In ight of this record , the Court does not ) find that Plaintiffs l , to the extent that they were the prev ailing party on the claim of t false advertising pursuant to th e Lanham ct, are entitled to a determination that .t this is an exceptional case which t m erits an award of fees . j.. r A s to Defendants' request for fees (' , to the extent that they tdprevailed'' on any f Lanham Act claims , the Court does not fin a basis for d l eeming this an exceptional )t

case which justifies an award of fees. )'( In su m ary, the Court does not find a basis . f ) or granting attorneys' fees under the Lanh m Act to any party . @ Although attorneys' fees accordin ) g to FDUTPA are justified for Defendants ! - L as of the present record - such request is pre ature ( . The Court also finds that t ( Defendants may be entitled to attorneys' fee under the CBPC and New Y )) ork law, t, but will deny the motion for fees , without pr judice to be renewed at the conclusion k)

of any appeals. tj . l ) ) ) G. Costs #, k Defendants filed a motion seeki )j ng fees and costs, relying on multiple j( t )' 6 1 1)1 )

t 111).,. i $1 Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 1 62 of 63 .t tl 1 t 1 k ()1 statutory provisions and Fed. R. Civ. P t . 5 (d). ln a response in opposition then claimed e , Plaintiffs t ntitlement to costs , citing ed ) . R. Civ. P. 54(d) and the Lanham Act. t j The Court has determined that De ndant Davé 60 NYC ) , Inc., was not a ' prevailing party in this case and is k not en itled to an award of costs 1 . A11 other q Defendants ) , however, can be considered t e ddprevailing party'' as Plaintiffs did not ty.l succeed as to any claims against th t. ese oth r Defendants and , therefore, these Defendants are entitled to thei ) r costs in de ending against Plaintiffs' ! claims, ) pursuant to Rule 54(d). ((A defendant is a revaili l ng party if the plaintiff achieves i ) none of the benefits sought in brinbng its l wsuit.'' Pickett v (-. . Iowa Beef Processors , )' 149 Fed * Appx. 70 t 831, 832 (lltb Cir. 2005). k t)

Also, the Court has determined that laintiff TC Ventures, lnc., vt i s entiued t to costs related to prosecution of th k e claim f r false advertising (Count 1/ and t unfair competition by deceptive co ) nduet, pu suant to the Lanham A tt. ct, and Fed. R. 'ë

Civ. P. 54(d), 72 respec tively. In addition 17 , as efendants did not succeed as to their t

three Counterclaims 'ms relied on provisions of the Lanham $)) , (two of the Countercla

Act), all Plaintiffs are entitled to co y sts as to heir defense against the j

70A the Florida statutes t as to Counts XI (FDUTPA) provide an in ependent basis for an award of costs ) , Fla. Stat. costs not be made until the conclusionj of501.2 05(1), and require that an award any ppeals, the Court will await a ruliof tj *1 Defendants notify th ng jj.. ay onsuch the an amount award ofis permissiblethe costs as to Count XI unt e Court that l . 1 71No other Plaintiffs were th '' !)t e ddprevaili g party. / tb t litigant72See, in whose e.2., Headfavor judgmentv. Medford, i 62 F.3d 35 , 354 (11 Cir. 1995) (''Usually the l s rendered i the prevailing party Efor purposes Rule 54(d). '' ) (quo tations omitted). of jl 't j 62 1( k ) ) ) ji Case 1:09-cv-21893-WMH Document 387 Entered on FLSD Docket 10/24/12 16:30:19 Page 2(. 63 of 63 j .è )' 1 Counterclaims . The parties shall subm it ny requests f j or costs, with accom panying i E1 1 docum entation j , no later than November 2 ! .j , 2012. )

' s

j. )y ! coxc slox ) For the reasons stated above i , Plain 'ffs' motion for new trial is DEN IED , and / Defendants' motion for judgment as a mat er of 1a Ir w is GRANTED , in part ' the j award of $500,000 in damages as to Plaint ff Chow is s et aside and judgment will j be entered on behalf of Defendant Morfoge . Plaintiffs ' motions for injunctive relief l

(as to dilution and as to false advertising) re DENIED. Plaintiffs' motion for 1 j increased damages is DEN IED . The partie , m otions for attorneys , fees ë( pursuant to j.

the Lanham Act are DENIED . Plaintiffs' otion for costs is GRA NTED ( , in part, l d D l an efendants' motion for costs is GR AN T D in part, consistent with the i ,

discussion above t . l j ' motion for l Finally, Plaintiffs entry o final judgment is GRANTED in part. l , j Judgment will be entered in a separate d @. oc ment, based on the jury verdict and jt ' lings, above consistent with the Court s ru . ) D ON E AN D ORD ERED in Chambers in Mi am i this 24th day of October r ( 2012. tt. y

W ILLIAM M . HO VELER l SENIOR UNITED STATES DISTRICT COURT JUDG ) Copies furnished: E l Bertram H. Fields tkj Curtis B. Miner j A nthony Accetta ) Vincent J. Ancona ylf j' )' 63 1 ij

1. .