Case Details

CourtSouthern District of New York
Docket number1:12-cv-00201
Date case filed2012-01-11
Date case closed2013-05-29
Date of latest filing2013-05-29
Assigned toJudge Alison J. Nathan
Case cause15:1051 Trademark Infringement
Nature of suit840 Trademark
Jury demandBoth
Demand
JurisdictionFederal Question

Case Parties

Party: The Velvet Underground
Party type: Counter Defendant
a Partnership, by it General Partners, John Cale and Lou Reed
Attorney name: Christopher Robert Whent
Attorney Contact:
(See above for address)
ATTORNEY TO BE NOTICED

Attorney name: Clifford James
Attorney Contact:
(See above for address)
ATTORNEY TO BE NOTICED
Party: The Andy Warhol Foundation for the Visual Arts, Inc.
Party type: Counter Claimant
Attorney name: Jess Michol Collen
Attorney Contact:
(See above for address)
LEAD ATTORNEY ATTORNEY TO BE NOTICED

Attorney name: Joshua P. Paul
Attorney Contact:
(See above for address)
LEAD ATTORNEY ATTORNEY TO BE NOTICED

Attorney name: David Bruce Ewen
Attorney Contact:
(See above for address)
ATTORNEY TO BE NOTICED

Case Docket

Docket
Item
Date FiledDocument
Available
Short
Description
Long Description
12012-01-11 ComplaintCOMPLAINT against The Andy Warhol Foundation for the Visual Arts, Inc.. (Filing Fee $ 350.00, Receipt Number 465401026643)Document filed by The Velvet Underground. (Attachments: # 1 Exhibit, # 2 Exhibit)(rdz) (Attachment 1 replaced on 1/12/2012) (ama). (Attachment 2 replaced on 1/12/2012) (ama). (Additional attachment(s) added on 1/12/2012: # 3 Ex. 3, # 4 Ex. 4, # 5 Ex. 5, # 6 Ex. 6) (ama). (Additional attachment(s) added on 1/13/2012: # 7 Exhibit) (rdz). (Entered: 01/12/2012)
1.1 Exhibit
1.2 Exhibit
1.3 Ex. 3
1.4 Ex. 4
1.5 Ex. 5
1.6 Ex. 6
22012-01-11 Standing Order re Complex Civil CasesSTANDING ORDER IN RE PILOT PROJECT REGARDING CASE MANAGEMENT TECHNIQUES FOR COMPLEX CIVIL CASES IN THE SOUTHERN DISTRICT OF NEW YORK (See M-10-468 Order filed November 1, 2011). This case is hereby designated for inclusion in the Pilot Project Regarding Case Management Techniques for Complex Civil Cases in the Southern District of New York (the Pilot Project), unless the judge to whom this case is assigned determines otherwise. This case is designated for inclusion in the Pilot Project because it is a class action, an MDL action, or is in one of the following Nature of Suit categories: 160, 245, 315, 355, 365, 385, 410, 830, 840, 850, 893, or 950. The presiding judge in a case that does not otherwise qualify for inclusion in the Pilot Project may nevertheless designate the case for inclusion in the Pilot Project by issuing an order directing that the case be included in the Pilot Project. The description of the Pilot Project, including procedures to be followed, is attached to this Order. (Signed by Judge Loretta A. Preska on 10/31/2011) (rdz) (Entered: 01/12/2012)
32012-01-26 Affidavit of Service ComplaintsAFFIDAVIT OF SERVICE. The Andy Warhol Foundation for the Visual Arts, Inc. served on 1/13/2012, answer due 2/3/2012. Service was accepted by Donna Christie. Document filed by The Velvet Underground. (James, Clifford) (Entered: 01/26/2012)
42012-01-27 Order for Initial Pretrial ConferenceNOTICE OF INITIAL PRETRIAL CONFERENCE: Initial Conference set for 2/24/2012 at 10:00 AM in Courtroom 23B of the United States District Court for the Southern District of New York, 500 Pearl Street, New York, NY 10007 before Judge Alison J. Nathan. (Signed by Judge Alison J. Nathan on 1/27/2012) (ft) (Entered: 01/27/2012)
52012-02-02 Certificate of Service OtherCERTIFICATE OF SERVICE of Notice of Initial Pretrial Conference, Standing Order, and Court's Individual Practices served on Defendant The Andy Warhol Foundation for the Visual Arts, Inc. on 2/2/2012. Service was made by Mail. Document filed by The Velvet Underground. (James, Clifford) (Entered: 02/02/2012)
62012-02-02 Notice of AppearanceNOTICE OF APPEARANCE by Jess Michol Collen on behalf of The Andy Warhol Foundation for the Visual Arts, Inc. (Collen, Jess) (Entered: 02/02/2012)
72012-02-02 Notice of AppearanceNOTICE OF APPEARANCE by David Bruce Ewen on behalf of The Andy Warhol Foundation for the Visual Arts, Inc. (Ewen, David) (Entered: 02/02/2012)
82012-02-02 Motion for Extension of Time to File AnswerCONSENT MOTION for Extension of Time to File Answer re: 1 Complaint,. Document filed by The Andy Warhol Foundation for the Visual Arts, Inc..(Ewen, David) (Entered: 02/02/2012)
92012-02-03 Order on Motion for Extension of Time to AnswerMEMO ENDORSEMENT on re: 8 Motion for Extension of Time to Answer re 1 Complaint. ENDORSEMENT: SO Ordered. The Andy Warhol Foundation for the Visual Arts, Inc. answer due 3/5/2012. (Signed by Judge Alison J. Nathan on 2/3/2012) (jfe) (Entered: 02/03/2012)
102012-02-05 Notice of AppearanceNOTICE OF APPEARANCE by Joshua P. Paul on behalf of The Andy Warhol Foundation for the Visual Arts, Inc. (Paul, Joshua) (Entered: 02/05/2012)
112012-02-10 Endorsed LetterENDORSED LETTER addressed to Judge Alison J. Nathan from Clifford James dated 2/10/2012 re: counsel request an adjournment of the initial pretrial conference to March 23, 2012 at 3:30 p.m. (and to extend the deadline for the written submission to March 16, 2012). ENDORSEMENT: So Ordered. ( Initial Conference set for 3/23/2012 at 03:30 PM before Judge Alison J. Nathan.) (Signed by Judge Alison J. Nathan on 2/10/2012) (djc) (Entered: 02/14/2012)
122012-02-16 Stipulation and OrderSTIPULATION AND ORDER: The Andy Warhol Foundation for the Visual Arts, Inc. answer due 3/19/2012. (Signed by Judge Alison J. Nathan on 2/16/2012) (jar) (Entered: 02/16/2012)
132012-02-17 Amended ComplaintFIRST AMENDED COMPLAINT amending 1 Complaint, against The Andy Warhol Foundation for the Visual Arts, Inc. with JURY DEMAND.Document filed by The Velvet Underground. Related document: 1 Complaint, filed by The Velvet Underground.(cd) (Additional attachment(s) added on 2/23/2012: # 1 Exhibit, # 2 Exhibit, # 3 Exhibit, # 4 Exhibit, # 5 Exhibit, # 6 Exhibit, # 7 Exhibit) (rdz). (Entered: 02/22/2012)
13.1 Exhibit
13.2 Exhibit
13.3 Exhibit
13.4 Exhibit
13.5 Exhibit
13.6 Exhibit
13.7 Exhibit
142012-03-16 Initial Report of Parties Before Pretrial ConferenceINITIAL REPORT OF PARTIES BEFORE PRETRIAL CONFERENCE. Joint Submission Document filed by The Velvet Underground.(James, Clifford) (Entered: 03/16/2012)
152012-03-19 Motion to DismissMOTION to Dismiss Notice of Motion in Support of Defendant's Motion to Dismiss First Amended Complaint. Document filed by The Andy Warhol Foundation for the Visual Arts, Inc.. Responses due by 4/5/2012(Paul, Joshua) (Entered: 03/19/2012)
162012-03-19 Declaration in Support of MotionDECLARATION of Joshua Paul in Support re: 15 MOTION to Dismiss Notice of Motion in Support of Defendant's Motion to Dismiss First Amended Complaint.. Document filed by The Andy Warhol Foundation for the Visual Arts, Inc.. (Attachments: # 1 Exhibit 1)(Paul, Joshua) (Entered: 03/19/2012)
16.1
172012-03-19 Memorandum of Law in Support of MotionMEMORANDUM OF LAW in Support re: 15 MOTION to Dismiss Notice of Motion in Support of Defendant's Motion to Dismiss First Amended Complaint.. Document filed by The Andy Warhol Foundation for the Visual Arts, Inc.. (Paul, Joshua) (Entered: 03/19/2012)
182012-03-19 Rule 7.1 Corporate Disclosure StatementRULE 7.1 CORPORATE DISCLOSURE STATEMENT. No Corporate Parent. Document filed by The Andy Warhol Foundation for the Visual Arts, Inc..(Paul, Joshua) (Entered: 03/19/2012)
192012-03-19 Certificate of Service OtherCERTIFICATE OF SERVICE of Notice of Motion to Dismiss, Declaration of Joshua Paul in support of motion to dismiss, Memorandum of Law in support of motion to dismiss, Defendant's Rule 7.1 Disclosure Statement served on Plaintiff The Velvet Underground on March 19, 2012. Document filed by The Andy Warhol Foundation for the Visual Arts, Inc.. (Paul, Joshua) (Entered: 03/19/2012)
202012-03-27 Scheduling OrderSCHEDULING ORDER: Amended Pleadings due by 4/9/2012. Fact Discovery due by 10/1/2012. Expert Discovery due by 12/21/2012. Joint Pretrial Order due by 3/4/2013. (Signed by Judge Alison J. Nathan on 3/27/2012) (ab) (Entered: 03/27/2012)
212012-04-12 Endorsed LetterENDORSED LETTER addressed to Judge Alison J. Nathan from Clifford James dated 4/11/2012 re: Plaintiff respectfully requests that your Honor issue an order permitting plaintiff to file the Second Amended Complaint. ENDORSEMENT: Plaintiff shall file the amended complaint forthwith. Defendant's motion to dismiss is denied without prejudice to renew or refile by April 30, 2012, in light of the amended complaint., ( Motions due by 4/30/2012.), Motions terminated: 15 MOTION to Dismiss Notice of Motion in Support of Defendant's Motion to Dismiss First Amended Complaint filed by The Andy Warhol Foundation for the Visual Arts, Inc. (Signed by Judge Alison J. Nathan on 4/12/2012) (lmb) (Entered: 04/12/2012)
222012-04-13 Amended ComplaintSECOND AMENDED COMPLAINT amending 13 Amended Complaint, against The Andy Warhol Foundation for the Visual Arts, Inc. with JURY DEMAND.Document filed by The Velvet Underground. Related document: 13 Amended Complaint, filed by The Velvet Underground.(djc) (Additional attachment(s) added on 4/17/2012: # 1 Ex 1, # 2 Ex 2, # 3 Ex 3, # 4 Ex 4, # 5 Ex 5, # 6 Ex 6, # 7 Ex 7) (ama). (Entered: 04/16/2012)
22.1 Ex 1
22.2 Ex 2
22.3 Ex 3
22.4 Ex 4
22.5 Ex 5
22.6 Ex 6
22.7 Ex 7
232012-04-30 Motion to DismissMOTION to Dismiss Second Amended Complaint. Document filed by The Andy Warhol Foundation for the Visual Arts, Inc.. Responses due by 5/17/2012(Paul, Joshua) (Entered: 04/30/2012)
242012-04-30 Memorandum of Law in Support of MotionMEMORANDUM OF LAW in Support re: 23 MOTION to Dismiss Second Amended Complaint.. Document filed by The Andy Warhol Foundation for the Visual Arts, Inc.. (Paul, Joshua) (Entered: 04/30/2012)
252012-05-14 Declaration in Opposition to MotionDECLARATION of Clifford James in Opposition re: 23 MOTION to Dismiss Second Amended Complaint.. Document filed by The Velvet Underground. (Attachments: # 1 Exhibit 2d am. compl., # 2 Exhibit Covenant not to Sue)(James, Clifford) (Entered: 05/14/2012)
262012-05-14 Memorandum of Law in Opposition to MotionMEMORANDUM OF LAW in Opposition re: 23 MOTION to Dismiss Second Amended Complaint.. Document filed by The Velvet Underground. (James, Clifford) (Entered: 05/14/2012)
272012-05-24 Stipulation and OrderSTIPULATION AND ORDER. It is hereby STIPULATED AND AGREED by and between counsel for the parties that Defendant may serve and file its reply papers in further support of the Motion on or before May 31, 2012. (Signed by Judge Alison J. Nathan on 5/24/2012) (rjm) (Entered: 05/25/2012)
282012-05-31 Reply Memorandum of Law in Support of MotionREPLY MEMORANDUM OF LAW in Support re: 23 MOTION to Dismiss Second Amended Complaint.. Document filed by The Andy Warhol Foundation for the Visual Arts, Inc.. (Paul, Joshua) (Entered: 05/31/2012)
292012-09-07 Protective OrderSTIPULATED PROTECTIVE ORDER...regarding procedures to be followed that shall govern the handling of confidential material... (Signed by Judge Alison J. Nathan on 9/7/2012) (jfe) (Entered: 09/07/2012)
302012-09-07 Memorandum & OpinionOPINION AND ORDER: #102319 Because this Court concludes that the covenant not to sue eliminated any justiciable controversy between the parties over copyright in the Banana Design, VU's claim for declaratory judgment is DISMISSED without prejudice. By eliminating any immediate, realistic prospect of injury to VU from the Warhol Foundation's asserted copyright, the Warhol Foundation's Covenant Not to Sue has also eliminated any live controversy under Article III. VU's claim for a declaratory judgment that the Warhol Foundation has no copyright rights in the Banana Design is therefore DISMISSED without prejudice. (Signed by Judge Alison J. Nathan on 9/7/2012) Copies Sent By Chambers. (jfe) Modified on 9/11/2012 (jab). (Main Document 30 replaced on 1/23/2013) (ad). (Entered: 09/07/2012)
312012-09-07 Endorsed LetterENDORSED LETTER addressed to Judge Alison J. Nathan from Joshua Paul dated 8/28/2012 re: Counsel requests for an Order extending by 90 days the discovery and other deadline contained in the Court' initial scheduling Order as follows: Fact discovery by 12/31/2012. Expert discovery by 2/22/2013. ENDORSEMENT: So Ordered. Further extensions are unlikely to be granted. Premotion letters are not required for dispositive motions. Any dispositive motion shall be filed within 30 days of the close of discovery. See the Court's rules for the deadlines regarding submission pf pretrial materials. (Signed by Judge Alison J. Nathan on 9/7/2012) (jfe) (Entered: 09/07/2012)
322012-09-10 LetterLetter addressed to Judge Alison J Nathan from Clifford James dated 8/28/2012 re: Request for additional time to finish fact discovery. Document filed by The Velvet Underground.(cd) (Entered: 09/10/2012)
332012-09-14 Answer to Amended ComplaintANSWER to 22 Amended Complaint, with JURY DEMAND., COUNTERCLAIM against The Velvet Underground. Document filed by The Andy Warhol Foundation for the Visual Arts, Inc..(Paul, Joshua) (Entered: 09/14/2012)
342012-10-02 ReplyREPLY re: 33 Answer to Amended Complaint, Counterclaim. Document filed by The Velvet Underground. (James, Clifford) (Entered: 10/02/2012)
352012-10-04 Notice of AppearanceNOTICE OF APPEARANCE by Lisa A McAndrews on behalf of The Andy Warhol Foundation for the Visual Arts, Inc. (McAndrews, Lisa) (Entered: 10/04/2012)
362012-10-04 Notice of Change of AddressNOTICE OF CHANGE OF ADDRESS by Lisa A McAndrews on behalf of The Andy Warhol Foundation for the Visual Arts, Inc.. New Address: Collen IP, THE HOLYOKE-MANHATTAN BUILDING, 80 South Highland Avenue, Ossining, NY, 10562, (914) 941-5668. (McAndrews, Lisa) (Entered: 10/04/2012)
372012-11-19 Endorsed LetterENDORSED LETTER addressed to Judge Alison J. Nathan from Clifford James dated 11/13/2012 re: Request to extend discovery as follows. ENDORSEMENT: The proposed schedule is so ordered. The Court notes, however, that the initial schedule ordered by the Court provided for an extended period--beyond what the Court normally allows--for discovery in this matter. Moreover, the Court has already extended the discovery period once in this matter by 90 days. In large part, the present extension is granted because the Court recognizes the disruption caused by Hurricane Sandy, which the court recognizes as an exceptional circumstance. Counsel are therefore advised that they should complete discovery by the end of the period now ordered, and that no further extensions will be granted. ( Expert Discovery due by 3/22/2013. Fact Discovery due by 2/15/2013.) (Signed by Judge Alison J. Nathan on 11/19/2012) (cd) (Entered: 11/20/2012)
382013-01-02 Order Referring Case to Magistrate JudgeORDER REFERRING CASE TO MAGISTRATE JUDGE: Order that case be referred to the Clerk of Court for assignment to a Magistrate Judge for Settlement. Referred to Magistrate Judge Frank Maas. (Signed by Judge Alison J. Nathan on 1/2/2013) Copies Mailed By Chambers. (djc) (Entered: 01/03/2013)
392013-01-02 LetterLetter addressed to Judge Alison J. Nathan from Clifford James dated 12/24/2012 re: Christopher R. Whent and I are co-counsel for plaintiff The Velvet Underground in the above action. I write on behalf of both parties and their respective counsel to advise the Court that, subject to the approval of your Honor, the parties want to schedule a settlement conference with Magistrate Judge Frank Maas. It is the understanding of counsel for both parties that the Court's order of reference for this purpose is required to enable the effort to resolve the case in this way. Accordingly, on behalf of all counsel I respectfully request that your Honor issue such an order of reference. Document filed by The Velvet Underground. (djc) (Entered: 01/03/2013)
402013-01-18 Stipulation and OrderSTIPULATION AND ORDER RELATING TO EXPERT DISCLOSURES: NOW, THEREFORE, it is hereby STIPULATED, AGREED AND ORDERED, as follows: 1. Definitions. For purposes of this Stipulation and Order, the following terms have the following meanings as set forth herein. (Signed by Judge Alison J. Nathan on 1/18/2013) (djc) (Entered: 01/18/2013)
412013-02-11 Endorsed LetterENDORSED LETTER addressed to Magistrate Judge Frank Maas from Clifford James dated 2/8/2013 re: Plaintiff's counsel writes on behalf of all counsel and parties to request an adjournment of the settlement conference scheduled before your Honor on February 15, 2013 at 2:00 P.M. ENDORSEMENT: Approved. At the moment, only the following slots in early March are available: 3/4/ - 10 a.m. or 2 p.m.; 3/5 - 2 p.m.; 3/6 - 10 am; 3/11 - 2 pm; 3/12 - 10 am; 3/13 - 2 pm.. (Signed by Magistrate Judge Frank Maas on 2/11/2013) (ago) (Entered: 02/11/2013)
422013-03-15 Scheduling OrderSCHEDULING ORDER: Conference set for 3/29/2013 at 10:15 AM in Courtroom 906, 40 Centre Street, New York, NY 10007 before Judge Alison J. Nathan. (Signed by Judge Alison J. Nathan on 3/15/2013) (cd) (Entered: 03/18/2013)
432013-03-21 Endorsed LetterENDORSED LETTER addressed to Judge Alison J. Nathan from Joshua Paul dated 3/19/2013 re: Request that the parties be directed to provide the court with short letters before next week's conference. ENDORSEMENT: Defendant's request is denied. The parties may raise this issue with the Court at the conference on March 29, 2013. The parties should note that, barring exceptional circumstances, this Court does not typically entertain a summary judgment motion practice in advance of a bench trial. (Signed by Judge Alison J. Nathan on 3/21/2013) (cd) (Entered: 03/21/2013)
442013-04-03 Scheduling OrderSCHEDULING ORDER: Per the parties' request, in lieu of providing the Court with proposed findings of fact and conclusions of law in advance of trial (as described in Rule 5D), the parties are instead to submit, also by June 10, 2013, a memorandum of law, not to exceed 25 pages in length, and a bullet pointed list, not to exceed 10 pages in length, containing proposed factual findings keyed to record evidence. Within five days of the close of trial, the parties will be required to submit proposed findings of fact and conclusions of law, keyed to the trial record. Daubert or in limine motions, if any, will also be due by June 10, 2013. The parties are again reminded that they are to take into account the fact that this is a bench trial when determining what motions are necessary. In the event that motions are filed, opposition briefs, if any, will be due by June 24, 2013, and reply briefs, if any, will be due by July 1, 2013. The parties are cautioned in advance that, absent an unforeseen emergency, the motions briefing schedule will not be altered. Finally, Defense counsel having noted that it (at least) will likely seek to admit multimedia exhibits in addition to the documentary exhibits described in Rule 5B(iv), the parties are to submit to the Court by May 28, 2013, a joint proposal for how any such materials will be submitted. Motions due by 6/10/2013. Responses due by 6/24/2013 Replies due by 7/1/2013. (Signed by Judge Alison J. Nathan on 4/1/2013) (cd) (Entered: 04/03/2013)
452013-05-29 Order of DiscontinuanceORDER: It having been reported to the Court that this case has been settled, it is hereby ORDERED that the above-captioned action is discontinued without costs to any party and without prejudice to restoring the action to the Court's calendar if the application to restore the action is made within thirty (30) days. Within this thirty day period, the parties may submit to the Court their own Stipulation of Dismissal for the Court to So Order. All presently scheduled deadlines, (Dkt. No. 44), are hereby adjourned. The Clerk of the Court is directed to terminate this action. (Signed by Judge Alison J. Nathan on 5/29/2013) (lmb) (Entered: 05/29/2013)
462013-05-29 Mail Trademark Form (case terminated)Mailed notice to Commissioner of Patents and Trademarks to report the termination of this action. (lmb) (Entered: 05/29/2013)
472013-05-29 STIPULATION OF DISMISSAL WITH PREJUDICE: Pursuant to Fed. R. Civ. P. 41(a)(1)(A)(ii), it is hereby STIPULATED AND AGREED by and between the parties as follows: 1. All claims asserted by Plaintiff The Velvet Underground in its Second Amended Complaint (DE 32, filed April 13, 2012) are hereby dismissed with prejudice. 2. All counterclaims asserted by Defendant The Andy Warhol Foundation for the Visual Arts, Inc. in its Answer, Affirmative Defenses and Counterclaims (DE 33, filed September 14, 2012) are hereby dismissed with prejudice. 3. Each party shall bear its own attorney's fees and costs. ENDORSEMENT: The Clerk of Court is directed to close this case. Any pending motions are moot. (Signed by Judge Alison J. Nathan on 5/29/2013) (lmb) (Entered: 05/30/2013)