United States District Court, S.D. New York
February 17, 2004.
MARY DE LA TORRE BUENO and LAURA DE LA TORRE BUENO, Plaintiffs -against- DANCE PERSPECTIVES FOUNDATION, INC., Defendant
The opinion of the court was delivered by: J. OWEN FORRESTER, District Judge
OPINION AND ORDER
This memorandum supplements the Court's ruling of November 3, 2003
granting plaintiff's Motion for Directed Verdict and determining that as
a matter of law Mary de la Torrè Bueno became the owner and
possessed the right to use the "de la Torrè Bueno Prize" and
family name by the end of April 2002.
In reaching this conclusion, the Court considered trial testimony,
trial exhibits, as well as deposition transcripts, and finds as facts
that by the end of April 2002, defendant Dance Perspectives Foundation,
Inc. ("DPF') relinquished any ownership rights in the "de la Torre Bueno
Prize" and that those rights were transferred to the plaintiff Mary de la
In particular, the Court considered two letters written in the spring
of 2002. The first letter, dated March 12, 2002, was written by Timothy
DeBaets, Ms. Bueno's attorney, informing DPF that Ms. Bueno was resigning
from the DPF board. The letter also stated that Ms. Bueno was " Very
unsatisfied with the manner in which DPF had handled the "de la Torre
Bueno Prize . . ." and demanded that, "[o]n behalf of Ms. Bueno and
her family . . . that DPF immediately stop using her family name."
(Pl. Ex. 13).
The second letter, dated April 12, 2002, was written by Theodore
Striggles, an attorney for DPF. (PL Ex. 20). This letter was written in
response to the Mr. DeBeats' March 12, 2002 letter and indicated that DFP
had agreed to stop using the de la Torre Bueno family name effective
immediately. Specifically, the letter stated, in pertinent part:
The Board has considered Ms. Bueno's resignation
and accepts it in the spirit with which it was
conveyed. Since she "no longer wishes" to be
associated with the Foundation, her desire to have
the Foundation stop "stop using her family name"
is granted effective immediately.
[H]er family name will no longer be associated in
any way with the Foundation, its work or its
Accordingly, in the April 12, 2002 letter DPF accepted the demands made
by Ms. Bueno in her March 12, 2002 letter that the "de la Torre Bueno"
name will no longer be associated in any way with DPF. Therefore, DPF
relinquished ownership of the "de la Torre Bueno Prize" and the de la
Torre family name on April 12, 2002.
Furthermore, in reliance on the April 12, 2002 letter, Ms. Bueno went
to another dance organization, the Society of Dance History Scholars, who
agreed to award the "de la Torre Bueno Prize."
Throughout the trial, defendant DPF adamantly argued there was no
evidence in the record that DPF's president, Donald McDonagh received,
authorized, or approved the April 12, 2002 letter. The Court finds this
argument without support. There is a plethora of evidence in
trial testimony, exhibits, and deposition transcripts that leads
inescapably to the conclusion that Mr. McDonagh received, authorized, and
approved the April 12, 2002 letter.
First, on March 28, 2002, Mr. Striggles, the attorney for DPF, faxed a
draft of the April 12, 2002 letter to both Mr. McDonagh and DPF's
treasurer Carl Taggersell. There is no dispute that the March 28, 2002
fax was addressed to Mr. McDonagh and Mr. Taggersell at their correct fax
numbers. (PL Ex. 16). The fax transmission verification report indicates
that the fax went through to both parties, and Mr. Taggersell testified
at trial that he had in fact received the fax. (PL Ex. 31, Tr. at 481).
Second, the draft version of the April 12, 2002 letter (dated March 28,
2002) made reference to an "attached document" regarding the financial
state of DPF. That document was not included in the draft letter but was
included in the final April 12, 2002 version. (PL Ex. 20). Mr. McDonagh
faxed an "Itemized Statement of Income and Expenses 2001" to Mr.
Striggles for him to include in the final version of the April 12, 2002
letter, (Pl. Ex. 31). Mr. McDonagh's name and fax number appears along
the top of the fax indicating he was the sender. Id. Indeed,
the itemized statement was written about in detail in the final version
of Mr. Striggles's April 12, 2002 letter indicating that Mr.
Striggles had incorporated the itemized statement into the final version
of his letter. (Pl. Ex. 20).
Third, a March 31, 2002 letter from Mr. Striggles to Mr. McDonagh and
Mr. Taggersell regarding an upaid legal bill indicated that Mr. Striggles
was expecting to proceed with the letter to Ms. Bueno. (PL Ex. 17) On the
last page of that letter Mr. Striggles stated, "In the meantime, I see no
reason to proceed with the letters to DeBaets, Steinau, Walter-Yvertes,
Egan, Bueno and the others." Id. (emphasis added). At
trial, Mr. McDonagh conceded that he had read the March 31, 2002 letter.
(Tr. at 692) In fact, he directed Mr. Taggersell the DPF
treasurer to pay Mr. Striggles's bill and payment was made on
April 9, 2002. Id.
Furthermore, Mr. Striggles himself testified at trial that before he
sent the April 12, 2002 letter, he discussed it with Mr. McDonagh at
length and Mr. McDonagh approved it in its totality. (Tr. at 95)
Mr. McDonagh's deposition testimony regarding whether or not he spoke
to Mr. Striggles regarding the March 12, 2002 letter makes it clear that
he knew exactly what he was doing:
Q. . . . Did you provide a copy of this letter
to Mr. Striggles at any time?
A. We discussed it. I don't recall whether I gave
him a copy or not. I may have.
Q. When did you discuss it with him, Mr. McDonagh?
A. Shortly after we received this and discussed
it, the board discussed it.
* * *
Q. Okay. And how many telephone conversations do
you recall having with Mr. Striggles
discussing this March 12, 2002 letter?
A. I couldn't tell you.
Q. Was it more than one, sir?
Q. And do you recall the substance of any of
A. Similar to the discussions that we had on the
board. We-it was accepted, it was approved,
there seemed to be little to do. MR. ISRAEL:
What's the "it"?
A. The letter, the resignation letter and there
seemed to be little to do other than
acknowledge and approve.
October 21, 2003 deposition at 104-05).
The only contrary evidence was Mr. McDonagh's testimony that he never
received the April 12 letter whether in draft form (March 28 fax)
or the final version, and that he never had any conversations with Mr.
Striggles between March 9 and April 12, 2002 regarding Mary Bueno. (Tr.
at 635-37). As stated above, this testimony was directly
contradicted by the documentation and by Mr. Striggles and Mr. Taggersell
(DPF's treasurer) at trial which established that Mr. Striggles had faxed
copies of his draft letter to Mr. McDonagh and to Mr. Taggersell.
Based upon these findings, the Court hereby enters this declaratory
judgment and permanent injunction against defendant Dance Perspectives
Foundation, Inc., its officers, agents, servants, employees, and
attorneys, and upon those persons in active concert or participation with
them who receive actual notice of the order by personal service or
otherwise (collectively "DPF"):
1. The Court hereby declares and adjudges that DPF has no right, title
or interest in the name, trademark, or service mark known as the "de la
Torre Bueno Prize" and has no right to use or refer to the "de la Torre
Bueno" family name of plaintiffs and their father Jose Rolling de la
Torre Bueno in any way in connection with any of DPF's activities or in
connection with any literary or other prizes which DPF may choose to
award, and DPF is prohibited from naming or referring to any present or
future prize which DPF may choose to award as a prize that was formerly
known as the "de la Torre Bueno Prize," or as the "Jose Rollins de la
Torre Bueno Prize in Dance Literature" or any other name containing or
referring to the plaintiffs' family name of "de la Torre Bueno;"
2. DPF is permanently enjoined from using the names, trademarks, or
service marks "The de la Torre Bueno Prize," "Jose Rollins de la Torre
Bueno Prize in Dance Literature," or any variations thereof containing
any portion of the proper name "de la Torre Bueno," for or in connection
with any prize, award, citation, or other honor, and fro publishing
announcing, or distributing the same in any announcements,
advertising, promotional, or other means of communication with the
public, in any media or in any other manner, except that DPF may that it
previously awarded the "de la Torre Bueno Prize" so long as such
statement is not made in a manner to convey or suggest in any way that
DPF currently is associated with the "de la Bueno Prize" in any way or
that it currently or in the future will award a prize, award, citation or
other honor that replaces, continues, or was formerly known as the "de la
Torre Bueno Prize";
3. DPF shall, within seven (7) days from entry of this Judgment, take
whatever steps are required in writing to name and establish that
plaintiffs Mary and Laura de la Torre Bueno are as of April 2002 and
henceforth owners, sole trustees, and sole signatories for the "de la
Torre Bueno Prize" trust accounts held by DPF;
4. DPF shall, within thirty days from entry of this Judgment withdraw
with prejudice in writing its application with the United States Patent
and Trademark Office ("PTO"), under Section l(b) of the Trademark Act, to
register "Jose Rollins de la Torre Bueno Prize in Dance Literature" as a
service mark and is permanently enjoined from submitting any application
for registration of a mark which in any uses the De la Torre Bueno name.
The foregoing constitutes the Court's findings of fact and conclusions
of law and is so ordered.
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