Commercial Litigation and Arbitration

Internet Evidence Not Offered for the Truth Sufficiently Authenticated on Summary Judgment by Attorney’s Affidavit

Lebewohl v. Heart Attack Grill, LLC, 2012 U.S. Dist. LEXIS 93945 (S.D.N.Y. July 6, 2012):

The parties to this declaratory judgment action are restaurants that use provocative names to market their extravagantly caloric food. Defendants are a chain of theme restaurants called the Heart Attack Grill and its owners (together, "HAG"). HAG's menu at its one extant restaurant (in Las Vegas, Nevada) offers patrons the Single Bypass Burger, the Double Bypass Burger, the Triple Bypass Burger, and the Quadruple Bypass Burger. HAG has registered trademarks for the restaurant name and the names of its four burgers. Plaintiffs are a New York City kosher delicatessen, the Second Avenue Deli, and its owners (together, "the Deli"). Since 2004, the Deli has offered patrons the Instant Heart Attack Sandwich, and the Deli now proposes to add to its menu an item called the Triple Bypass Sandwich.

The issue before the Court is whether the Deli's current or contemplated uses of the marks Instant Heart Attack Sandwich or Triple Bypass Sandwich violate HAG's rights under the Lanham Act, 15 U.S.C. §§ 1052 et seq. For the reasons that follow, the Court holds that the Deli's current use of the Instant Heart Attack Sandwich mark does not violate HAG's rights; that the Deli may modestly expand its use of that mark, as set forth herein, without giving rise to a likelihood of confusion with HAG's mark; and that the Deli may also lawfully use the Triple Bypass Sandwich mark on a limited basis pursuant to a concurrent use arrangement to which the parties assented at oral argument. ***

c. Potential for Future Confusion / Concurrent Use

The Deli seeks a declaration that expanded use of the Instant Heart Attack Sandwich mark would not create a likelihood of consumer confusion, or, alternatively, if there is such confusion, a declaration that concurrent use by the Deli and HAG of their respective "heart attack" marks is permissible. Specifically, the Deli seeks a declaration that it is entitled to exclusive use of the Instant Heart Attack Sandwich mark in New York, New Jersey, and Connecticut.

In addressing the Deli's application, the Court considers at the threshold whether the Deli has established, through competent evidence, that it used the Instant Heart Attack Sandwich mark before the date when HAG filed to register its mark (June 9, 2005). That showing is important because, to the extent dual use of the marks presents a likelihood of confusion, the Deli must establish prior usage. Otherwise, HAG's registration of its Heart Attack Grill mark with the USPTO confers exclusive nationwide rights for its mark to the exclusion of marks that present a likelihood of confusion. See Dawn Donut Co. v. Hart's Food Stores Inc., 267 F.2d 358, 362 (2d Cir. 1959); 4A Callmann on Unfair Comp., Tr. & Mono. § 26:4 (4th ed. 2012); Carl Karcher Enter. Inc. v. Stars Rests. Corp., 35 U.S.P.Q.2d 1125, 1133 (1995) ("15 U.S.C. § 1057(b)[] creates a presumption that the registrant has the exclusive right to use its mark throughout the United States."); Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 1568 (Fed. Cir. 1983) (same). The parties disagree whether the Deli has established that it used the Instant Heart Attack Sandwich mark before June 9, 2005.

The Deli's evidence of prior usage consists of: (1) Jack Lebewohl's sworn declaration that he created the sandwich "around 2004," Lebewohl Decl. ¶ 6; (2) a menu dated "2004-05" that contains both the name of the sandwich and an address for a Deli location that closed on January 1, 2006 (Dkt. 68 Ex. 9); (3) the May 19, 2004, Chowhound review (Dkt. 57 Ex. 12); (4) the January 13, 2005, Chowhound message-board post (Dkt. 65 Ex. 4); and (5) the July 2004 Korean Airlines newsletter (Dkt. 65 Ex. 3.) HAG disputes the admissibility of the latter three items, because the Deli's counsel merely downloaded them from the Internet with no authentication from a business-records custodian (i.e., from Chowhound or Korean Airlines).

HAG is correct that this side issue over authentication could have been mooted had the Deli obtained affidavits from custodians at Chowhound and Korean Airlines that the exhibits in question were authentic records of those entities. HAG is also correct that the Rules of Evidence apply on a motion for summary judgment. See Raskin v. Wyatt Co., 125 F.3d 55, 65 (2d Cir. 1997). However, notwithstanding the Deli's regrettably casual approach to authentication, the Court's judgment is the Chowhound and Korea Airline records are sufficiently authenticated to be admitted here.

A district court has broad discretion over the admissibility of evidence. See Raskin, 125 F.3d at 65-66. The test for authentication under Federal Rule of Evidence 901 is, simply, whether a reasonable juror could find the proffered evidence authentic. See Fed. R. Evid. 901(a) ("The requirement of authentication . . . is satisfied by evidence sufficient to support a finding that the matter in question is what is proponent claims."); United States v. Tin Yat Chin, 371 F.3d 31, 38 (2d Cir. 2004). Under Rule 901(a), "[t]he bar for authentication of evidence is not particularly high." United States v. Gagliardi, 506 F.3d 140, 151 (2d Cir. 2007) (citing United States v. Dhinsa, 243 F.3d 635, 658 (2d Cir. 2001)). The proponent need not "rule out all possibilities inconsistent with authenticity, or to prove beyond any doubt that the evidence is what it purports to be." Gagliardi, 506 F.3d at 151 (citing United States v. Pluta, 176 F.3d 43, 49 (2d Cir. 1999)). Rather, a document may be authenticated based on its "appearance, contents, substance, internal patterns, or other distinctive characteristics, taken in conjunction with circumstances," Fed. R. Evid. 901(b)(4), and circumstantial evidence may establish authenticity. See United States v. Bagaric, 706 F.2d 42, 67 (2d Cir. 1983), abrogated in part on other grounds by Nat'l Org. for Women Inc. v. Scheidler, 510 U.S. 249 (1994); United States v. Holmquist, 36 F.3d 154, 167 (1st Cir. 1994); Denison v. Swaco Geolograph Co., 941 F.2d 1416, 1423 (10th Cir. 1991); John Paul Mitchell Sys. v. Quality King Distribs. Inc., 106 F. Supp. 2d 462, 472 (S.D.N.Y. 2000). Such evidence can include a document's appearance and content. See John Paul Mitchell, 106 F. Supp. 2d at 472; Lorraine v. Markel Am. Ins. Co., 241 F.R.D. 534, 556 (D. Md. 2007). Newspaper and periodical evidence, furthermore, may be self-authenticating. See Fed. R. Evid. 902(6).

Here, the Deli's counsel, William Chuang, has represented that he downloaded the Chowhound and Korean Airlines exhibits from the Internet websites of those entities. *** Given that representation, a recent decision by a federal district court in Michigan in a Lanham Act case is apposite. In Foreword Magazine, Inc. v. OverDrive Inc., No. 10-cv-1144, 2011 WL 5169384, at *4 (W.D. Mich. Oct. 31, 2011), various Internet printouts were submitted to show use in commerce at summary judgment on a Lanham Act claim. The Court noted that "[t]he Federal Rules of Evidence, including Rule 901, apply to computer-based evidence in the same way as they do to other evidence." Id. at *3 (citing 5 Weinstein's Federal Evidence § 900.05(1)(b) at 900-50 (2d ed. 2004)). It admitted numerous screenshots from websites, accompanied only by the sworn affidavit of an attorney. The Court noted that the affidavit, "along with other indicia of reliability (such as the Internet domain address and the date of printout)[,] are sufficient to authenticate these exhibits . . . ." Id. at *3. It recognized that where a litigant offers a printout from a third party website not to show the truth of the matter asserted, but "merely to show that certain images and text appeared on the website, they are not statements at all and thus fall outside the ambit of the hearsay rule." Foreword Magazine, 2011 WL 5169384, at *4; see also Firehouse Rest. Grp. Inc. v. Scurmont LLC, No. 09-cv-00618, 2011 WL 3555704, at *5 (D.S.C. Aug. 11, 2011); Perfect 10 Inc. v. Cybernet Ventures Inc., 213 F. Supp. 2d 1146, 1155 (C.D. Cal. 2002); accord United States v. Cameron, 762 F. Supp. 2d 152, 157-58 (D. Me. 2011).

The same logic dictates a finding of admissibility here. The Chowhound and Korea Airlines exhibits were submitted as attachments to a declaration by the Deli's attorney.... Each has sufficient indicia of authenticity. Like the printouts admitted in Foreword Magazine, the July 2004 Korean Airlines article contains an Internet domain address as well as a printout date.... It appears to contain the text of the original Korean Airlines newsletter reprinted on the author's professional website. The address for the Deli given in the article is the Deli's location as of July 2004.

As for the two Chowhound posts, they are direct printouts from the website; both contain Internet domain addresses as well as printout dates. Both articles remain accessible on that public website as of the writing of this opinion, as the Court has verified. See Dkt. 68 Exs. 1, 3; (, last visited July 5, 2012); (, last visited July 5, 2012). Both reviews contain indicia of reliability. A detailed analysis of the food at the Deli in the May 19, 2004 review describes a sandwich referred to as the "No. 4," in words that match the description of the same sandwich on the Deli's 2004-05 menu. (Dkt. 68 Exs. 1, 9.) The description of the Instant Heart Attack Sandwich itself in the January 13, 2005 message board post similarly matches the description on the Deli's 2004-05 menu. (Dkt. 68 Exs. 3, 9.) The reviewer described the sandwich as containing "two huge potato pancakes (instead of bread slices) with your choice of pastrami, corned beef, etc." Id. That post also correctly identified the Deli's then-location. Id.

For all these reasons--and because the Korean Airlines and Chowhound exhibits are consistent with the Deli's 2004-05 menu and with Jack Lebewohl's sworn declaration--they satisfy Rule 901(b)(4)'s requirements for authentication. Viewed together, and in conjunction with the 2004-05 menu and with Jack Lebewohl's declaration, this evidence demonstrates--convincingly--that the Deli's Instant Heart Attack Sandwich mark was in use before HAG filed to register its Heart Attack Grill mark.

Footnote 7. The cases on which HAG relies, involving the exclusion of newspaper articles for the truth of the matter asserted, are not to the contrary. See, e.g., Cantave v. New York City Police Officers, No. 09-cv-2226, 2011 WL 1239895, at *11 n.6 (E.D.N.Y. Mar. 28, 2011). On the contrary, the Second Circuit has upheld the use of newspaper articles and travel guides as proof of prior use. See Patsy's, 658 F.3d at 268; see also Demetriades, 698 F. Supp. at 524 (using newspaper evidence to establish use in commerce); Int'l Healthcare Exch., 470 F. Supp. 2d at 371 (suggesting publicity in brochures, catalogs, or newspapers can establish prior use in commerce).

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