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United States District Court, S.D. New York

February 17, 2004.


The opinion of the court was delivered by: J. OWEN FORRESTER, District Judge


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 Torre Bueno.

  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 prizes.
  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?
A. Yes.
Q. And do you recall the substance of any of those conversations?
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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