Apple Air Conditioning & Appliance Service, Inc., doing business as Apple Air Conditioning and Heating, respondent,
Apple Home Heating Corp., et al., appellants. Index No. 602243/16
Law P.C., Copiague, NY (Francesco P. Tini of counsel), for
Trainor, Hawthorne & Cristiano LLP, Massapequa Park, NY
(Robert J. Cristiano of counsel), for respondent.
C. BALKIN, J.P. ROBERT J. MILLER VALERIE BRATHWAITE NELSON
LINDA CHRISTOPHER, JJ.
DECISION & ORDER
action, inter alia, to enjoin trade name and service mark
infringement, the defendants appeal from an order of the
Supreme Court, Nassau County (Jerome C. Murphy, J.), entered.
The order, insofar as appealed from, denied the
defendants' cross motion to amend their answer to assert
seven proposed counterclaims.
that the order is modified, on the facts and in the exercise
of discretion, by deleting the provision thereof denying the
defendants' cross motion for leave to amend their answer
to assert seven proposed counterclaims, and substituting
therefor a provision granting the defendants' cross
motion for leave to amend their answer to assert only the
third, fourth, fifth, and sixth proposed counterclaims and
otherwise denying the cross motion; as so modified, the order
is affirmed insofar as appealed from, without costs or
the plaintiff was granted a preliminary injunction enjoining
the defendants from using the name "Apple" in
conjunction with their heating and air conditioning business
(see Apple Air Conditioning & Appliance Serv., Inc. v
Apple Home Heating Corp., ____ A.D.3d ____ [Appellate
Division Docket No. 2016-06051; decided herewith]), the
plaintiff moved to dismiss the counterclaim asserted in the
defendants' answer, and the defendants cross-moved to
amend their answer to assert seven new proposed
counterclaims. The defendants appeal from so much of the
order as denied their cross motion.
for leave to amend pleadings under CPLR 3025(b) should be
freely granted unless the proposed amendment (1) would
unfairly prejudice or surprise the opposing party, or (2) is
palpably insufficient or patently devoid of merit"
(Favia v Harley-Davidson Motor Co., Inc., 119 A.D.3d
836, 836 [internal quotation marks omitted]). Here, the
plaintiff would not be prejudiced or surprised by the
proposed amendments to the answer, and the issue is,
therefore, whether the Supreme Court properly found that the
seven proposed counterclaims in the amended answer were
palpably insufficient and/or patently devoid of merit.
to amend the answer to assert the first proposed
counterclaim, which alleged "frivolous action," was
properly denied as patently without merit, since New York
does not recognize a separate cause of action alleging
frivolous litigation (see Amex Dev., LLC v Aljohn Group,
Inc., 134 A.D.3d 865, 867; Greco v
Christofferson, 70 A.D.3d 769, 771). We also agree with
the Supreme Court's determination to deny leave to amend
the answer to assert the second proposed counterclaim, which
alleged "unjust enrichment," as patently without
merit. If the plaintiff succeeds in this action, it will not
be against equity and good conscience to permit it to use the
name "Apple" to the exclusion of the defendants
(see Mandarin Trading Ltd. v Wildenstein, 16 N.Y.3d
173, 182). Leave to amend the answer to assert the seventh
proposed counterclaim, which alleged trade libel, was
properly denied as palpably insufficient and patently without
merit. The proposed counterclaim failed to plead special
damages, which are an element of that tort (see Thome v
Alexander & Louisa Calder Found., 70 A.D.3d 88,
105), and the allegedly libelous statements underlying the
counterclaim were made in the context of this litigation, and
are therefore absolutely privileged (see Rufeh v
Schwartz, 50 A.D.3d 1002, 1004).
the Supreme Court improvidently exercised its discretion in
denying leave to amend the answer to assert the third
proposed counterclaim, which, liberally construed, asserts a
cause of action to recover damages for fraudulent
registration of the plaintiff's service mark pursuant to
General Business Law Â§ 360-j, and is not palpably
insufficient or patently devoid of merit. Moreover, the
proposed fourth, fifth, and sixth counterclaims, which seek
declaratory relief, while duplicative of denials in the
answer, were nevertheless not palpably insufficient or
patently devoid of merit, and leave to amend the answer to
assert those counterclaims should have been granted.
parties' remaining contentions are without merit.
BALKIN, J.P., MILLER, BRATHWAITE NELSON and ...