Vegetable Kingdom, Inc. v. Katzen

653 F. Supp. 917
CourtDistrict Court, N.D. New York
DecidedFebruary 19, 1987
Docket85-CV-728
StatusPublished
Cited by15 cases

This text of 653 F. Supp. 917 (Vegetable Kingdom, Inc. v. Katzen) is published on Counsel Stack Legal Research, covering District Court, N.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Vegetable Kingdom, Inc. v. Katzen, 653 F. Supp. 917 (N.D.N.Y. 1987).

Opinion

MEMORANDUM-DECISION AND ORDER

MUNSON, Chief Judge.

Before the court are two motions brought by defendant and third-party plaintiff Mollie Katzen. Katzen seeks to disqualify the law firm of Moses & Singer, which represents plaintiff Vegetable Kingdom, Inc. (“Vegetable Kingdom” or “plaintiff”) from also representing the third-par *919 ty defendants named in Katzen’s third-party complaint on the grounds of an alleged conflict of interest. Katzen has also moved for a protective order staying the taking of her deposition until the disqualification motion has been resolved and Katzen has been able to serve all of the parties named in her complaint. On the basis of the following, both motions are denied. Further, sanctions are imposed on Katzen’s attorneys pursuant to 28 U.S.C. § 1927 (1982). .

I. BACKGROUND

Vegetable Kingdom, a New York corporation, commenced this lawsuit against defendants Katzen, Phillip Wood, and Phillip Wood, Inc., a California corporation doing business as Ten Speed Press, alleging, inter alia, breach of contract and trademark infringement in violation of New York law and of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1982). 1 This dispute arises out of Katzen’s publication of the successful vegetarian cookbook entitled The Moosewood Cookbook.

From 1972 to date, Vegetable Kingdom has owned and operated the Moosewood Restaurant, located in Ithaca, New York. Katzen was one of the original shareholders of Vegetable Kingdom. Plaintiff alleges that in 1974 Katzen and other workers at the restaurant prepared the original version of The Moosewood Cookbook. A revised version was published in 1975 with notice of copyright in the Moosewood Restaurant. In August 1976 Katzen unsuccessfully attempted to register a claim to copyright in the 1975 work in the names of the Moosewood Restaurant and Mollie Kat-zen. One month later, Katzen was successful in obtaining a copyright in the 1975 revision in her name as the sole author of that work. In her application for registration of her claim to copyright, Katzen represented to the copyright office that she was “doing business as Moosewood.” Amended Complaint, Ex. B.

In 1976 Katzen initiated negotiations with Wood, seeking the publication and national distribution of the cookbook through the Ten Speed Press. In January 1977 Katzen informed Vegetable Kingdom of these negotiations and sought the corporation’s consent to the use of the “Moose-wood” name in the title of the book. Thereafter, Vegetable Kingdom discovered that Katzen had procured registration of copyright in the 1975 revision of the cookbook in her name only. To clarify the rights of the parties and to resolve any disputes over the use of the “Moosewood” moniker, Vegetable Kingdom and Katzen entered into a written agreement on February 18, 1977 (“1977 Agreement”). This agreement is the basis for plaintiff’s contract claim against Katzen.

Under the terms of the 1977 Agreement, the parties agreed that Katzen was “the sole and exclusive owner of the cookbook known as ‘Moosewood Cookbook’ ” and that the corporation would “assign[] the exclusive right to use the name ‘Moose-wood’ as it applies to the cookbook.” Amended Complaint, Ex. C, H1. Katzen acknowledged that she adopted the name “Moosewood” from the Moosewood Restaurant, and further agreed to pay over to plaintiff ten percent of any royalties she received from the sale of the cookbook “during the term of this contract.” Amended Complaint, Ex. C, 11H 2, 3. Thereafter, a revision of the 1975 version of the cookbook was published in 1977, and Kat-zen commenced making payments to Vegetable Kingdom pursuant to the terms of the 1977 Agreement.

In 1979 “Estelle,” a New York partnership (“the partnership” or “Estelle”), was formed for the sole and exclusive purposes of purchasing all of the outstanding shares of stock in Vegetable Kingdom and of directing the management of that corporation. On January 8, 1979 the partnership *920 entered into an agreement (“1979 Agreement”) with the seven shareholders of Vegetable Kingdom, including Katzen, which effectuated the sale of all outstanding shares of Vegetable Kingdom stock to the partnership. The following language was included in the agreement:

All parties to this agreement acknowledge that Mollie Katzen has the exclusive right to the use. of the name “MOOSEWOOD” in connection with the writing, printing, or publishing of any cookbook; and each party hereby assigns the exclusive right to so use the name “MOOSEWOOD” to Mollie Katzen.
All parties acknowledge that Estelle has the sole and exclusive right to the use of the name “MOOSEWOOD” in connection with the operation or ownership of any restaurant... or any other eating and drinking place or any other business involved with the sale of food or food products within 150 miles of Ithaca, New York, and each party hereby assigns the exclusive right to so use the name “MOOSEWOOD” to Estelle.
Each party to this agreement acknowledges that except for the two above-mentioned exclusive rights to the use of the name “MOOSEWOOD” each party has the right to use the said name at present and it is the intention of each party that each party to this agreement will continue to retain the right to use the name “MOOSEWOOD.” Therefore, no party shall do any act which would in any way interfere with any other party’s right to use the name “MOOSEWOOD” except in connection with a cookbook or a food establishment within T50 miles of Ithaca, New York, as above-mentioned.

Third-Party Complaint, Ex. C, 1JH 5-7.

Between 1977 and April 10, 1981 Katzen paid Vegetable Kingdom a total of $16,-896.07 pursuant to the terms of the 1977 Agreement. By letter dated December 24, 1981, however, Katzen claimed that she was no longer obligated under that agreement and announced her intention to cease making payments to plaintiff. Thereafter, in March 1984, Vegetable Kingdom commenced this action. 2 Vegetable Kingdom seeks contract damages for the alleged breach of the 1977 Agreement. In the alternative, plaintiff argues that the 1977 Agreement should be interpreted as an ex-ecutory accord, and that Katzen’s breach of that accord entitles plaintiff to assert its right to ownership of the 1975 version of the cookbook and its subsequent derivations, as well as to pursue any trademark claims it has arising out of the Lanham Act, 15 U.S.C. §§ 1051 et seq. (1982), and New York law.

In May 1985 Katzen commenced a third-party action against the partnership and its seventeen individual partners. Katzen seeks indemnification for any liability incurred as a result of Vegetable Kingdom’s trademark claims, as well as compensatory and punitive damages for breach of contract and misrepresentation. All of her claims are tied to the 1979 Agreement. Katzen has served summons and complaint on several, but not all, of the named third-party defendants.

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Cite This Page — Counsel Stack

Bluebook (online)
653 F. Supp. 917, Counsel Stack Legal Research, https://law.counselstack.com/opinion/vegetable-kingdom-inc-v-katzen-nynd-1987.