Uptown Grill, LLC v. Shwartz
Uptown Grill, LLC v. Shwartz
Opinion of the Court
ORDER AND REASONS
Before the Court is Motion for Summary Judgment (Doc. 194) filed by Uptown Grill, LLC. For the following reasons, the Court finds that the Bill of Sale clearly and unambiguously transferred the disputed trademarks to Uptown Grill, LLC. Motion for Summary Judgment is GRANTED.
BACKGROUND
This consolidated matter involves a protracted dispute over the ownership rights to certain intellectual property associated with the famous Camellia Grill restaurant in New Orleans. In the various suits, two business entities each claim to own the intellectual property associated with the restaurant.
In the lead case, Uptown Grill, LLC (“Uptown Grill”)
In the consolidated cases, Camellia Grill Holdings, Inc. (CGH) seeks judgment against Defendants, Hicham Khodr; The Grill Holdings, LLC (“Grill Holdings”); Chartres Grill, LLC; RANO, LLC; Uptown Grill, LLC; Uptown Grill of Destín, LLC; K & L Investments, LLC; and Robert’s. Gumbo Shop, LLC (jointly referred to as the “Khodr parties”).
For many years prior to Hurricane Katrina, the Shwartz family owned and operated Camellia Grill. Under the Shwartz family ownership, the restaurant on -Car-rollton Avenue was the -only location of operation. In 1999, Shwartz formed CGH for the sole purpose of holding federally registered trademarks associated with the restaurant.
In August of 2005, the city of New Orleans was decimated by the landfall of Hurricane Katrina. Shwartz relocated to Grenada, Mississippi in the wake of the storm, and Camellia Grill remained closed. At some point during the year following Katrina, Shwartz and Khodr negotiated the sale of Camellia Grill. In August of 2006, the parties, through various entities, executed three contracts: (1) the- Cash Sale, (2) the Bill of Sale, and (3) the License Agreement.
The Cash Sale was executed on August 11, 2006. Pursuant to the Cash Sale, Mi
On August 11, 2006, Michael Shwartz, Camellia Grill, Inc., and CGH executed a Bill of Sale in favor of Uptown Grill, LLC, for the sum of $10,000.00. The Bill of Sale transfers:
[I]nterest in and to the following tangible personal property located within or upon the real property described in Exhibit “A” ... and within or upon the buildings and improvements located thereon:
All furniture, fixtures and equipment, cooking equipment, kitchen equipment, counters, stools, tables, benches, appliances, recipes, trademarks, names, logos, likenesses, etc., and all other personal and/or movable property owned by Seller located within or upon the property described in Exhibit A annexed hereto and within or upon the buildings and improvements thereon.5
On August 27, 2006, CGH and Grill Holdings executed the License Agreement, in which the parties acknowledged that CGH held the now-disputed federally registered trademarks and granted Grill Holdings exclusive license to use the trademarks for the sum of $1,000,000.00, plus royalties.
Sometime following the transactions in 2006, disagreements arose regarding the License Agreement and litigation ensued. The Licensing Agreement was ultimately cancelled by a Louisiana state court based on the finding that Grill Holdings had breached its obligations under the contract.
While the state judgment cancelling the License Agreement was on appeal, CGH filed suit in this Court alleging that Grill Holdings’ continued use of the Camellia Grill trademarks violated the Lanham Act, and seeking a preliminary and permanent injunction prohibiting Grill Holdings from using the marks, including the facade of the Camellia Grill building.
While the Motion for Voluntary Dismissal was pending, Uptown Grill filed 13-6560, the lead case in this litigation. Uptown Grill alleges that it owns the trademarks that are located “within or upon the property” at 626 South Carrollton Avenue, that its continued use of the trademarks is lawful, and that it is entitled to a declaratory judgment to that effect.
After the Motion for Voluntary Dismissal was granted and while the Uptown Grill claim was pending, CGH initiated suit in state court asserting claims for trademark infringement by filing a supplemental pleading in the then-closed state court litigation. The Khodr parties removed the litigation to this Court, invoking this Court’s federal question jurisdiction under the Lanham Act, and the litigation was consolidated with the declaratory action. After the Court denied a motion to remand, CGH amended its complaint to explicitly assert Lanham Act claims.
At its core, this Motion turns on whether the language of the Bill of Sale was clear and unambiguous and, if so, what was transferred to whom.
Summary judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.”
In determining whether the movant is entitled to summary judgment, the Court views facts in the light most favorable to the non-movant and draws all reasonable inferences in his favor.
LAW AND ANALYSIS
The questions before the Court are relatively straightforward, even if the answers are not. On August 11, 2006, Michael Shwartz sold the building and real estate of Camelia Grill to RANO, LLC. On that same date, the Shwartz parties and Uptown Grill executed the Bill of Sale at issue. CGH and Grill Holdings entered into the License Agreement two weeks later. The current Motion requires the Court first to determine whether the terms of the Bill of Sale were clear and unambiguous and, if so, what the Bill of Sale transferred to Uptown Grill.
I. Bill of Sale
The Bill of Sale expressly invokes Louisiana law. “According to the Louisiana Civil Code, ‘[i]nterpretation of a contract is the determination of the common intent of the parties.’ ”
The determination of whether a contract is clear or ambiguous is a question of law.
The Bill of Sale was 'executed- by Michael Shwartz, Camellia Grill, Inc., CGH,
FOR AND IN CONSIDERATION of the price and sum of TEN THOUSAND AND NO/lOO ($10,000.00) DOLLARS, which Purchaser, has well and truly paid unto Seller, the receipt .and sufficiency whereof is acknowledged, Seller, does by these presents, hereby sell, transfer, and convey unto Purchaser, its successors and assigns, all of Seller’s right, title and interest in and to the following tangible personal property located within or upon the real property described in Exhibit “A” annexed, hereto and within or upon the buildings and. Improvements located thereon: ..
All furniture, fixtures and equipment, cooking equipment, kitchen equipment, counters, stools, tables, benches,- appliances, recipes, trademarks, names, logos, likenesses, etc., and all other personal and/or movable property owned by Seller located within or upon the property described*721 in Exhibit A annexed hereto and within or upon the buildings and improvements thereon (the “Personal Property”).27
The parties vehemently disagree on- the proper interpretation of the contract. Uptown Grill contends that the contract clearly and explicitly conveys ownership of all “trademarks” to it. The Shwartz parties offer three arguments to the contrary. First, they argue that the contract’s use of the phrase “tangible personal property” necessarily limits the contract to such items or renders the contract ambiguous. Second, they argue that, even assuming that the contract transferred ownership of the trademarks, such a transfer is not permitted under the law. Finally, the Shwartz parties argue that this Court should consider parol evidence regarding the intent of the parties.
The Shwartz parties’ first argument, that the inclusion of the'term “tangible personal property” limits the terms of the contract or creates ambiguity within it, is without merit. They contend that, under Louisiana law, trademarks are incorporeal movable property and thus not “tangible.” According to the Shwartz parties, the clear wording of the contract limits the assets transferred to tangible property. Alternatively, the Shwartz parties argue that the inherent conflict between the term “tangible personal property” and the term “trademarks” renders the contract ambiguous.
While the Shwartz parties correctly contend that trademarks and other intellectual property rights are not tangible, this argument ignores a fundamental rule of contract interpretation. “[I]n the interpretation of ... contracts, the specific controls the general.”
This Court finds that the term “tangible personal property” can be reconciled with the rest of the contract such that all of the words in the contract have meaning, without doing violence to any provision. This Court finds that all tangible personal property located at 626 Carrollton Avenue was transferred, as well as the specifically identified intangible property of “recipes, trademarks, names, logos and likenesses.” This reading comports with the Court’s obligation to construe specific terms as controlling over general terms and to ensure that the contract is interpreted in a manner that renders each term effective.
The Shwartz parties additionally argue that a transfer of the trademarks could not have legally occurred in the Bill of Sale because the good will associated with the
Good will is essentially the good reputation that a business enjoys.
The Shwartz parties correctly note that trademarks may not be transferred without the good will of the business to which they are attached; they may not be sold in gross. The Shwartz parties go further,’ however, and seem to argue that good will cannot be transferred without its express mention in the contract. This argument misses the point. In the Bill of Sale, the Shwartz parties clearly and unambiguously transferred “recipes, trademarks, names, logos, likenesses, etc. and all other personal and/or movable property.” The Bill of Sale transferred every single asset of Camellia Grill to Uptown Grill. It is clear to this Court that Camellia Grill was sold lock, stock, and barrel. Pursuant to well-settled trademark law, the Court must conclude that the good will of Camellia Grill was transferred with the sale of the entire business.
In this Motion, the Shwartz parties offer one final argument. They contend that the Court must consider the conduct of the parties after the Bill of Sale to properly interpret the contract. Louisiana Civil Code article 2053 provides that “a doubtful provision [in a contract] must be interpreted in light of the nature of the contract, equity, usages, the conduct of the parties before and after the formation of the contract, and of other contracts of a like na
It is, however, possible to read this argument another way. While the Shwartz parties have not explicitly made this argument, perhaps they contend that a literal application of the language in the Bill of Sale produces an “absurd” result. Louisiana law permits courts to consider extrinsic evidence in search of the parties’ intent where the literal interpretation of a contract leads to absurd results.
CGH argues that the price reflected in the Bill of Sale, $10,000, is irreconcilable with the value of the Camellia Grill name. In support of this argument, it cites the License Agreement in which Grill Holdings paid one million dollars for the right to use the Camellia Grill trademarks. This fact alone does not render a result “absurd.” The Fifth Circuit has cautioned that, “although a business decision may be unwise, imprudent, risky, or speculative, it is not necessarily ‘absurd.’ We decline to allow contracting parties to escape the unfortunate and unexpected, though not objectively ‘absurd,’ consequences of a contract by subsequently characterizing their consequences as ‘absurd.’”
On the basis of these facts, the Court simply cannot find that the literal application of the Bill of Sale’s terms rises to the level of absurdity. The fact that the Shwartz parties appear to be suffering from an acute case of sellers’ remorse does mot render the terms of the Bill of Sale objectively absurd. Accordingly, the Court holds, as a matter of law, that the terms of the Bill of Sale clearly and unambiguously transfer ownership of the trademarks associated with the operation of the Camellia Grill restaurant on Carrollton Avenue to Uptown Grill.
II. License Agreement
The Court must next determine the effect, if any, of the License Agreement. The License Agreement was executed between CGH and Grill Holdings. In the agreement, the parties stipulated that
Where, as in this case, the Court finds that the contract is clear and unambiguous “no further interpretation may be made in search of the parties’-intent and courts must enforce the contract as written.”
The first argument is less clear. It seems’that CGH argues that, even if the Bill of Sale unambiguously transfers ownership of the trademarks, the License Agreement modifies the Bill of Sale to provide that CGH retained- the trademarks. This argument, however, overlooks a key difference between the two contracts: Thé Bill of Sale transferred property to Uptown Grill, whereas the License Agreement licensed the trademarks to Grill’ Holdings. “Once [a] contract is complete, it is not subject to. further modification by either party without the consent of the, other.”
Though not specifically argued in these Motions, the Court notes that CGH alleged in the consolidated cases that the Khodr parties are a single business enterprise.
Under Louisiana law, business organizations are generally regarded as separate 'entities.
Common ownership, standing alone, is insufficient to establish that several entities constitute a single business enterprise.
III. Laches
CGH also argues that Uptown Grill’s declaratory judgment action.should be dismissed based • upon the equitable remedy of laches. “Laches are an inexcusable delay that results in prejudice to the defendant.”
Moreover, even assuming that CGH could assert the defense, it cannot prove that Uptown Grill delayed filing this action. .CGH argues that Uptown Grill delayed filing this action until eight years after the Bill of Sale was executed. This contention misses the point. Uptown Grill brought this action for - declaratory judgment in -response to the action brought in this Court by CGH; On July 23,2013, CGH filed a Complaint against Grill Holdings alleging trademark infringement related to the continued operation of Camellia Grill.
IV. Uptown Grill’s Declaratory Judgment Action
In light of . the foregoing, the Court grants summary judgment to Uptown Grill. In the Declaratory Action, Uptown Grill seeks a judgment declaring that it owns all of the intellectual property “within or upon” the Camellia Grill location on Carrollton Avenue and .that its continued use of that property, does not violate the Lanham Act, 15. U.S.C. § 1114, or any other law. As outlined in this Order, the Bill of ..Sale clearly and unambiguously transferred the Camellia Grill trademarks to Uptown Grill. The Court has not been
Having determined that Uptown Grill has carried its burden to prove that it owns the trademarks, the secondary issue for this Court to address is whether the trademarks transferred to Uptown Grill in the Bill of Sale could be limited to the trademarks “within or upon” the Carroll-ton Avenue location. In other words, did CGH retain any interest in Camelia Grill trademarks following the Bill of Sale?
The Court must answer this question in the negative. It is axiomatic that “ownership of trademarks is established by use, not by registration.”
As mentioned above, there is absolutely no dispute that, CGH used the marks solely in connection with the Carrollton Avenue Camellia Grill restaurant. Indeed, at oral argument, counsel for CGH conceded that the marks had never been used outside of the Carrollton location.
The Court itself has doubts about what the parties subjectively intended when they entered into the transactions at issue. The Court’s role in this matter, however, is governed by Louisiana contract law. Under that law, the Court must first attempt to discern the intent of the parties from the four corners of the contract itself. If the contract is clear and unambiguous, the Court must accept the terms of the contract as reflective of the parties’ intent. That is precisely what the Court has done in this case. The parties to these contracts were sophisticated businessmen represented by competent counsel. Now, faced with the prospect that the Bill of Sale does not say what they subjectively intended it to say, the Shwartz parties ask the Court to rescue them from the consequences of the contract they signed. The Court declines this invitation. Accordingly, for the reasons set forth above, the Court concludes that Uptown Grill owns all of the Camellia Grill trademarks.
CONCLUSION
For the foregoing reasons, the Motion for Summary Judgment (Doc. 194) is GRANTED, and the Court will issue judgment for Plaintiffs in 13-6560.
. CGH and Camelia Grill, Inc. are wholly owned by Michael Shwartz.
. Doc. 1, p. 6.
.The Grill Holdings, LLC; Chartres Grill, LLC; RANO, LLC; Uptown Grill; LLC; Uptown Grill of Destín, LLC; K & L Investments, LLC; and Robert’s Gumbo Shop, LLC are all wholly owned-by Hicham Kho.dr.
. Doc, 194-3.
. See The Grill Holdings, L.L.C. v. Camellia Grill Holdings, Inc., 120 So.3d 294 (La.App. 4 Cir. 2013).
. See Camelia Grill Holdings, Inc. v. City of New Orleans, et al., No. 13-5148 (E.D.La. filed July 23, 2013).
. Fed.R.Civ.P. 56(c) (2012).
. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
. Coleman v. Houston Indep. Sch. Dist., 113 F.3d 528 (5th Cir. 1997).
. Engstrom v. First Nat’l Bank of Eagle Lake, 47 F.3d 1459, 1462 (5th Cir. 1995).
. Celotex Corp. v. Catrett, 477 U.S. 317, 324, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
. Johnson v. Deep E. Tex. Reg. Narcotics Trafficking Task Force, 379 F.3d 293, 301 (5th Cir. 2004) (internal citations omitted).
. Badon v. RJR Nabisco, Inc., 224 F.3d 382, 394 (5th Cir. 2000) (quoting Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir. 1994)).
. Boudreaux v. Banctec, Inc., 366 F.Supp.2d 425, 430 (E.D.La. 2005).
. Guidry v. Am. Pub. Life Ins. Co., 512 F.3d 177, 181 (5th Cir. 2007) (quoting La. Civ.Code art. 2045).
. See John Paul Sapir, LLC v. Yum! Brands, Inc., 106 So.3d 646, 652 (La.App. 4 Cir. 2012)
. La. Civ.C.ode art. 2046.
. Lewis v. Hamilton, 652 So.2d 1327, 1330 (La. 1995) (citations omitted).
. Clovelly Oil Co., LLC v. Midstates Petroleum Co., LLC, 112 So.3d 187, 192 (La. 2013).
. Sims v. Mulhearn Funeral Home, Inc., 956 So.2d 583, 589 (La. 2007).
. La. Ins. Guar. Ass'n v. Interstate Fire & Cas. Co., 630 So.2d 759, 764 (La. 1994) (citation omitted).
. Mobil Exploration & Producing U.S. Inc. v. Certain Underwriters Subscribing to Cover Note 95-3317(A), 837 So.2d 11, 24 (La.App. 1 Cir. 2002) (citation omitted).
. See Orleans Parish Sch. Bd. v. Lexington Ins. Co., 118 So.3d 1203, 1212 (La.App. 4 Cir. 2013) (citation omitted).
. The contract refers to these parties collectively as "Seller.”
. The contract refers to Uptown Grill as "Purchaser.”
. Doc. 194-3. Exhibit A is a legal description of the property on which the Carrollton Avenue restaurant sits.
. Corbello v. Iowa Prod., 850 So.2d 686, 704 (La. 2003) (superseded by statute on other grounds); see also Mazzini v. Strathman, 140 So.3d 253, 259 (La.App. 4 Cir. 2014); Center-link, Inc. v. Sarpy Properties, LLC, 78 So.3d 776, 781 (La.App. 5 Cir. 2011); Jessop v. City of Alexandria, 871 So.2d 1140, 1146 (La.App. 3 Cir. 2004); Aikman v. Thomas, 887 So.2d 86, 90 (La.App. 1 Cir. 2004).
. Lewis, 652 So.2d at 1330.
. Newark Morning Ledger Co. v. United States, 507 U.S. 546, 555, 113 S.Ct. 1670, 123 L.Ed.2d 288 (1993).
. Id.
. Id. at 556, 113 S.Ct. 1670.
. Sugar Busters LLC v. Brennan, 177 F.3d 258, 265 (5th Cir. 1999).
. Id.; see also 15 U.S.C. § 1060 ("A registered mark or a mark for which application to register has been filed shall be assignable with the goodwill of the business in which the mark is used, or with that part of the goodwill of the business connected with the use of and symbolized by the mark.”).
. Sugar Busters, 177 F.3d at 265.
. Id.
. 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 18:23 (4th ed. 2015).
. Id.
.See La. Civ.Code art. 2053 cmt. a ("This Article ... clarifies the law by providing that courts may resort to equity for guidance only when the meaning of a provision is in doubt. They may not do so in order to enlarge or restrict the scope of a contract or provision whose meaning is apparent.”).
. Halphen v. Borja, 961 So.2d 1201, 1205 (La.App. 1 Cir. 2007).
. Nat’l Union Fire Ins. Co. of Pittsburgh, Pa. v. Circle, Inc., 915 F.2d 986, 991 (5th Cir. 1990).
. Sims v. Mulhearn Funeral Home, Inc,, 956 So.2d 583, 589 (La. 2007); La. Civ.Code art. 2046.
. Woods v. Morgan City Lions Club, 588 So.2d 1196, 1200 (La.App. 1 Cir. 1991).
. This allegation is found in the consolidated cases only and is not pled in the declaratory action.
. Green v. Champion Ins. Co., 577 So.2d 249, 257 (La.App. 1 Cir. 1991).
. Id. at 257.
. Id.
. Town of Haynesville, Inc. v. Entergy Corp., 956 So.2d 192, 197 (La.App. 2 Cir. 2007) ("The involvement of a sole or majority shareholder in a corporation is not sufficient alone to establish a basis for disregarding the corporate entity").
. Abraham v. Alpha Chi Omega, 708 F.3d 614, 622 (5th Cir. 2013).
. Id.
. See Camellia Grill Holdings, Inc. v. New Orleans City et al, No. 13-5148, Doc. 1 (E.D. La. filed July 23, 2013).
. Bd. of Supervisors for Louisiana State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 475 (5th Cir. 2008).
. Union Nat. Bank of Texas, Laredo, Tex. v. Union Nat. Bank of Texas, Austin, Tex., 909 F.2d 839, 843 (5th Cir. 1990).
. Transcript of Oral Argument at 5:17-20, Uptown Grill v. Michael Shwartz, et al., No. 13-6560 (April 29, 2015).
Reference
- Full Case Name
- UPTOWN GRILL, LLC v. Michael Louis SHWARTZ
- Cited By
- 2 cases
- Status
- Published