# Petition — Norden Restaurant Corp. v. Sons of the Revolution in the State of New York, Inc. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385007_2143%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition - **Published:** January 1, 1981 - **Citation:** 454 U.S. 825 ## Text Office-Supreme Court, U.S. . rth ep 3 0) “ 9 5 G Te esauncanaa MAY 19 1981 ALEXANDER L. STEVAS, IN THE CLERK Supreme Court of the United States OCTOBER TERM, 1980 NORDEN RESTAURANT CORPORATION, Petitioner, -against- SONS OF THE REVOLUTION IN THE STATE OF NEW YORK, INC., Respondent. — ae PETITION FOR A WRIT OF CERTIORARI TO THE COURT OF APPEALS OF THE STATE OF NEW YORK GREENSPAN & JAFFE Attorneys for Petitioner 180 East Post Road White Plains, New York 10601 (914) 946-2500 LEON J. GREENSPAN, ESQ. JOSEPH D. DeSALVO, ESQ. Attorneys (11022) QUESTION PRESENTED Whether the order of the Court of Appeals of the State of New York deprived Petitioner of its valuable property rights in the service mark "FRAUNCES TAVERN" for Restaurant purposes without due process of law by departing from the applicable Federal and State statutory and common law requiring a plenary trial on the merits to resolve the material issues of fact developed by the conflict- ing affidavits and extrinsic evidence which would preclude summary judgment as a matter of law. INDEX Question Presented 8a motion for partial summary judgment on the third counterclaim set forth in the answer and counterclaims, and granted plaintiff's cross-motion to the extent of dismissing a portion of the third counterclaim. William T. Livingston III, of counsel Bachner, Tally & Mantell, attorneys) for the defendant-appellant Joseph D. DeSalvo, Esq., of counsel (Greenspan & Jaffe, attorneys) for the plaintiff-respondent. Decided: First Department March 13, 1980 9a OPINION ROSS, J. The corporate defendant, formed in 1883, is a patriotic organization dedi- cated to keeping alive the best tradi- tions of the "Spirit of '76". This not- for-profit corporation is the owner of historic Fraunces Tavern, a five-building interconnected complex located in lower Manhattan. In 1904, defendant acquired this property through a bequest from a descendant of an officer on General George Washington's staff, who was pres- ent at the Commander-in-Chief's farewell ceremony conducted at Fraunces Tavern. Through the Society's efforts, this building has been successfully restored to its original "revolutionary" character. The defendant now maintains its offices there and is curator of an on-premises museum. 10a Plaintiff leases the main building and portions of adjoining buildings of this com lex and operates a restaurant therein. The Norden family has operated this food emporium for over forty years. The plaintiff has at various times, through various media and accoutrements of plaintiff's trade, advertised the name of this restaurant as Fraunces Tavern. The existing lease signed in mid-December, 1977, effective, January l], 1977, provides in pertinent parts: §3.04 "The business conducted by Tenant in the premises is only to be conducted under the name 'Fraunces Tavern Restaurant’ or such other name as Landlord shall from time to time approve in writing. ..." §40.01 "Tenant convenants and agrees that in any and all adver- tising of the business of the Tenant ... Tenant will in no way state or imply that the buildings are in any way the property of Tenant or of the restaurant opera- ted by it in the premises ... The right to use the name ‘'Fraunces lla Tavern Restaurant’ in connection with Tenant's business shall be limited to the restaurant busi- ness conducted in the premises and to no other business or location. Plaintiff, as lessee, instituted this action for, inter alia, water damages and to enjoin defendants from interfer- ing with proposed interior remodeling. Defendant, alleging breach of lease in a third counterclaim, sought to enjoin plainitff from using the name Fraunces Tavern, and from prosecuting its Federal trademark application. Special Term denied defendant-appellant's motion for partial summary judgment on the third counterclaim and granted plaintiff's cross-motion to the extent of dismissing this counterclaim. The question then presented by this appeal is whether Special Term erred in denying defendant-landlord's motion for l2a partial summary judgment enjoining plaintiff-lessee's use of the service mark Fraunces Tavern. On the facts pre- sented herein, injunctive relief cannot be granted summarily. The terms “service mark" and "trade- mark" are related concepts and both are governed by identical standards (Boston Professional Hockey Association v. Dallas Cap & Emblem Mfg. Inc., 510 F 2d 1004 {5th Cir. 1975]; West & Co., Inc. v. Arica Institute Inc., 557 F 2d 338 [2nd Cir. 1977]). “Service mark" has been de- fined as a mark used in the sale or ad- vertising of services to identify the services of one person and distinguishes them from services of others. "Trademark", although similarly defined, identifies a manufacturer's or merchant's goods or products. [Lanham Trade-Mark Act, 15 USCA §1127, see also General Business l3a Law §360(a) and (a-i)]. The twofold Congressional intent for protecting trademarks is: "to protect the public so it may be confident that, in purchasing a product bearing a particular trade-mark which it favorably knows, it will get the product which it asks for and wants to get. Sec- ondly, where the owner of a trade- mark has spent energy, time and money in presenting to the public the product, he is protected in his ‘investment’ from its misap- propriation by pirates and cheats." (7 N.Y.L.F. 91, 92). In this Court defendant argues that through its efforts the mark "Fraunces Tavern" has became synonymous with its organization and with the maintenance and preservation of a landmark steeped in historical significance. Additional- ly, the restrictive terms and conditions in the current lease between defendant and plaintiff prohibit the latter's use ofthis mark. Therefore, the mark has derived its sole uniqueness from these l4a labors and the Society is entitled to the protection and good will flowing therefrom. Plaintiff similarly argues that the consuming public identifies the mark in dispute as connoting a disting- uished restaurant. The record on appeal divulges conflicting substantial claims by both parties. It is axiomatic that both cannot claim the benefits of this individual mark. Each controversy in this area of the law must be decided on its own merits since the circumstances surrounding each are not readily duplicated. "Although this type of litigation has been said to present mixed questions of law and fact, the emphasis, and rightly so, we be- lieve, seems to have been placed upon the fact pattern of each situation (citations omitted). Each case ... must be decided on its facts. ..." (Dell Publishing Co. v. Stanley Publications, 9 NY 2d 126, 133). 15a Courts have long recognized that non- commercial organizations are entitled, under proper circumstances, to enjoin the pirating of a mark by a junior user wen though not in direct competition. "Equity may also shield the thrust by business into the kind of legal rights acquired in areas entirely removed from commercial activities." (Cornell University v. Messing Bakeries, Inc., 285 AD 490, 492; aff'd. 309 NY 722). Under any circumstances, whatever the mark, the more viable it is in the current market, the greater is its need for pro- tection from unwarranted incursions. "The real injury ... is the gradual whittling away or dis- persion of the identity and hold upon the public mind of the mark or name by its use on non-compe- ting goods. The more distinctive or unique the mark the deeper is its impress upon the mblic con- sciousness the greater its need for protection against vitiation or dissociation from the partic- ular product in connection with which it has been used." [citation omitted] (Tiffany 16a a.nd Company v. Tiffany Pro- ductions, Inc., I47 Misa.679, 681-682; aft’d. 237 AD 801 aff'd. 262 NY 482). Without question the mark Fraunces Tav- ern is recognized by the consuming public in the local market place, if not the national. Whether the common man recog- nizes this mark as synonymous with an his- toric setting, or as a restaurant, cannot be decided in the absence of a complete trial. For this reason our dissenting colleagues’ reliance on Stogup Realty Corp, ‘ v. Marie Antoinette Hotel Corp., (217 AD 555) is misplaced. There, a full hearing was concluded before a determination was rendered, and, moreover, the subject pre- mises were specifically constructed for the use to which they were put. In Stogup Realty Corp. v. Marie Antoinette Hotel Corp., supra, the Court found that the name "Hotel Marie Antoinette" had be- come inseparably connected with the 17a building, and had become snyonymous with the hotel business through the efforts of plaintiff's predecessor. Here, Fraunces Tavern was built for the use the name implies and has been so utilized in that manner since 1763. On the record before us it cannot summarily be said that the name Fraunces Tavern has become "appurte- nant to and inseparably connected" with the defendant Society. These incompatible assertions must be resolved at trial. The defendant, as landlord and owner of a building in which plaintiff under- took a commercial venture, possesses a valued interest in its buildin s name, which is entitled to protection. However, as a result of steady and gradual usage and development, such a name may acquire a secondary meaning as indicating the par- ticular business housed in the building. (60 NY Jur. Trademarks §100). Where such 18a mark has acquired this distinctive mean- ing, the user thereof is entitled to the same protection as would be accorded a "technical" trademark. "Secondary meaning can be es- tablished by showing that notwithstanding the absence of an arbitrary, fanciful or coined expression, a trade-mark or trade name has, through exclusive use and advertising by one entity, become s%° associated in the mind of the public with that entity or its product that it identified the goods sold by that entity and distinguishes them from goods sold by others.” (Allied Maintenance Corp. v. Allied Mech. Trades, NY 538, 542 [footnote 2]). The ability of a mark to acquire a secondary meaning will rarely be estab- lished overnight. Such is uniquely attainable through a gradual evolution. Acceptance thereof will be acknowledged when a substantial section of the buying public can equate that mark with a parti- cular business and no other. (3 Callman, 19a Unfair Competition Trademarks iand Mono- polies §77.4). The issue then is whether either par- ty through its individual efforts can be credited with ascribing a secondary meaning to the mark Fraunces Tavern. After a trial if it can be determined that this mark exclusively identifies a particular business, and the buying pub- lic would thereby be confused, then that business is entitled to the service mark protection (Matter of Playland Corp. v. Playland Center, 1 NY 2d 300). In trademark law, as in other matters of equity, good faith is an indispensable component. No right of ownership can be acquired in a service mark which is not registered or adopted in good faith (15 USCA §1064; N.Y. Jur., supra, §17). De- fendant argues that this element is lack- ing. The existing lease was negotiated 20a throughout 1977, and it is alleged that a major portion of these discussions cen- tered on utilization of the mark Fraunces Tavern. However, prior to signing of this document, plaintiff on October 28, 1977, caused to be served an application with the U.S. Patent and Trademark Office seeking to register the service mark Fraunces Tavern*. The Society maintains this procedure was commenced at a time when plaintiff was aware that its use of the service mark was in dispute, and moreover violated the restrictive condi- tions of the lease. The question of good faith, or the lack thereof, is an issue, under these circumstances, which cannot be disposed of summarily. The familiar refrain that the key to summary judgment is "issue *This mark was subsequently registered on September 11, 1979. 2la finding rather than issue determination." (Sillman v. Twentieth Century Fox Film Corp., supra.; Pollard v. Meyer, 61 AD 2d 766 [First Department 1978]). Here we have substantial questions of fact that cannot be disposed of in advance of trial. Accordingly the order of Supreme Court New York County (Hughes, J.), entered on July 24, 1979, which, inter alia denied defendant-appellant's motions to dismiss the second and fourth causes of action contained in the complaint and denied defendant's motion for partial summary judgment on the third counterclaim in appellant's answer, seeking to enjoin plaintiff's use of the service mark Fraunces Tavern, and granting plaintiff's use of the service mark Fraunces Tavern and granting plaintiff's cross-motion to the extent of dismissing the third coun- 22a terclaim should be insofar as appealed from, affirmed, without costs and without disbursements. All concur, except Murphy, P.J., and Kupferman, J., who dissent in part in an opinion by Kupferman, J. KUPFERMAN, J. (dissenting in part): Fraunces Tavern on Pearl Street in lower Manhattan is a landmark. It was operated by Samuel Fraunces, and it was here that General George Washington in 1783 said goodbye to his revolutionary comrades in arms. On the 100th anniver- sary of Washington's farewell, there was organized the patriotic organization, Sons of the Revolution, the defendant- appellant herein, whose purpose was to keep alive the spirit of '76. Itisa not-for-profit corporation. In 1904, as the result of a bequest, 23a the appellant was enabled to purchase the building comprising Fraunces Tavern. It had since its organization been working to restore and preserve the building, and it has maintained it in a condition close ly approximating the original architectire and appearance. It has acquired owner- ship of neighboring buildings which are interconnected with the Tavern, and a mu- seum is there maintained. Portions of the Tavern have been rented for operation as a restaurant, with the appellant as land- lord since 1907. In 1937, the plaintiff- respondent became the tenant of the res- taurant, with the current lease becoming effective January 1, 1977 for a term end- ing October 31, 1991. The lease contains provisions which give the appellant the right to control, in terms of quality, taste and fashion, the operation of the restaurant business. are 24a Among other provisions in the lease the following: Section 3.04. The business con- ducted by Tenant in the premises is only to be conducted under the name "Fraunces Tavern Restaurant" or such other name as Landlord shall from time to time approve in writing pursuant to the request of Tenant. Section 6.02. "Landlord reserves the right to name the Buiiding and to change the name or address of the Building at any time and from time to time. ... Section 29.01. Tenant, recog- nizing that the Buildings have been maintained as an historical landmark and as an additional in- ducement to Landlord to enter into this Lease, covenants and agrees that at all times (i) the business to be conducted at, through and from the premises and the kind and quality of the merchandise, food, and services offered in the conduct thereof will be reputable in every respect, (ii) the sales methods employed in said business, as well as all other elements of merchandising, will be dignified and in conformity with the highest standards of practice obtaining among superior type stores, shops and restaurants dealing in the same or similar merchandise, food and service or conducting a 25a similar high-quality restaurant business in the Wall Street business district adjacent thereto, and (iii) the kind and quality of food and beverages and of the merchandise sold at, through or from the premises by Tenant shall be excellent in all respects, and (iv) the appearance of the premises (including the lighting and other appurtenances thereto), the appearance and de- portment of all personnel employed therein, and the appearance, number, location, nature and subject matter of all displays and exhibits placed or installed in or about the premises, and of any signs, lettering, announcements, price schedules, tags or any other kinds or forms of inscriptions displayed in or about the premises, will be only such as does not meet with Landlord's reasonable disap- proval and, if at any time rea- sonably disapproved by Landlord, Tenant shall remove the basis for such disapproval in such manner and within such reasonable time as may be specified by Landlord, in a written notice by it to Tenant for such purpose. Land- lord believes that the operation by Tenant of its business at the premises is, as of the date hereof, generally in conformity with the standards hereinabove in this Sec- tion 29.01 set forth. Section 39.04. Tenant shall remove all such lettering, improvements and modifications upom the termina- 26a tion of its Lease and shall re- pair any damage to the building or the sign occasioned thereby. Section 40.01. Tenant covenants and agrees that in any and all advertising of the business of Tenant conducted in or from the premises whether through written, typewritten, mimeographed or printed circulars, radio pro- grams, notices in the public press and publications, signs or by means of any other advertising media, Tenant will in no way state or imply that the Build- ings are in any way the property of Tenant or of the restaurant operated by it in the premises. Tenant further covenants and ag- rees that it will not alter or distort the account of any his- torical fact respecting the premises or the Buildings in any of its advertising through any of the above described media or through any other media. Adver- tising material used and paid for by Tenant should describe the busi- ness of Tenant conducted in the premises only as "Fraunces Tavern Restaurant". If Tenant, after warning that a violation of the above conditions has occurred, shall thereafter repeat the same or a similar violation, Landlord may require and Tenant covenants and agrees that it will immedia- tely, at its sole cost and expense, retract any such statement, impli- cation, or error of historical fact to which Landlord shall have 27a made objection in any and all of the advertising media in which such violation shall have occurred. The wording of such retraction shall be submitted to Landlord before publi- cation and Landlord's approval of such retraction in writing shall be obtained by Tenant which covenants and agrees that it will give to such retraction display or prominence equal to the display or prominence given to the advertising to which Landlord has taken exception as above set forth. The right to use the name "Fraunces Tavern Restaurant" in connection with Tenant's business shall be limited to the restaurant business conducted in the premises and to no other business or loca- tion, and such right shall ter- minate upon the expiration or earlier termination of this Lease. Any regular doorman or person operating checking facilities on the premises shall, labor condi- tions permitting, be costumed in Colonial Costume consisting of powdered wig, tailcoat, breeches, long hose and display buckles on shoes, so designed as to portray in true and authentic manner the dress in use during the era of the American Revolution. It is readily apparent that this is not a mere naked license discussed in Ritz Assoc. v. Ritz-Carlton Hotel Co., 35 Misc. 2d 425, aff'd. without op. (but 28a with one dissent), 19 AD 2d 522, aff'd. without op. 14 N.Y. 2d 670. It is owious that by reason of ownership, intention, long usage and contract, the name Frawces Tavern is the property of the defendant- appellant. It has acquired a "secondary meaning" indicating the defendant-appel- lant. See “Untangling the Confusion in Trademark Terminology: by Sidney A. Dia- mond, ABA Journal, October, 1979, Volume 65, p. 1523, 1525. The right to use the name is inseparably associated with the building involved, Stogup Realty Co., Inc v. Marie Antoinette Hotel Co., 217 App. Div. 555 (lst Dept., 1926). In this litigation, the plaintiff sues, among other things, in the nominal course of a tenant-landlord relationship, for water damage, a claim with respect to rent, etc. In addition, it contends that in connection with a grant of permission 29a from appellant-landlord to respondent- tenant to construct a coatroom enclosure, there were impermissible conditions at- tached with respect to the use of the words Fraunces Tavern on items to be sold in the operation of the coatroom. Among other things, the defendant- appellant landlord set forth various af- firmative defenses and counterclaims, in- cluding a third counterclaim to declare its rights in the name Fraunces Tavern and to enjoin the respondent from prose- cuting an application for a U.S. trade- mark in the name. In the interim, after the date of the order herein denying summary judgment to either side on a mo- tion and cross-motion, a certificate of registration was issued by the U.S. Patent and Trademark Office to the plaintiff- respondent tenant for a service mark for Fraunces Tavern. It is possible for a 30a licenseesuch as the plaintiff to obtain a service mark as a "related company", pursuant to Sections 5 and 45 of the Lanham Act, 15 U.S.C. 1055 and 1127. See "What the General Practitioner Should Know About Trademarks and Copyrights" by Arthur H. Seidel (4th ed. 1979) ALI-ABA, p.117. The landlord, by virtue of its lease, being in legitimate control of the usage of the mark, would therefore be a bene- ficiary of the registration, and the licenseecould not use the mark in adver- tising or labeling in any manner other than that specifically authorized by the licensor. See "An Introduction to Trade- mark Practice" by Martin J. Beran, Chap- ter 3(4), p.128-129. I would grant partial summary judg- ment to the defendant-appellant landlord on the third counterclaim, declaring its 3la rights in the trademark. There does not seem to be any real dispute with respect to the right of the tenant to construct the cloakroom, and therefore summary judgment should be granted to the plain- tiff-respondent on the second cause of action. However, the right to construct the cloakroom does not carry with it any rights with respect to any items to be sold therein with the name Fraunces Tav- ern used, without the permission of the landlord, subject to the terms of the lease. 32a APPENDIX C SUPREME COURT, NEW YORK COUNTY SPECIAL TERM, PART I NORDEN RESTAURANT CORP., Plaintiff -against- SONS OF THE REVOLUTION IN THE STATE OF NEW YORK, INC., Defendant Index No. 20981/78 Decided July 23, 1979 33a DECISION HUGHES, J.: The papers on both sides of this motion and cross motionare to a great extent vague, vexatious, and unintelli- gible, and fail to address the issues raised. Nevertheless, the Court will attempt to render a disposition. The cross motion by plaintiff to dis- miss defendant's third counterclaim is granted only to the extent that the portion of the third counterclaim seek- ing to enjoin plaintiff from prosecuting an application for a trademark before the United States Patent Office is dismissed. No authority is shown by which this State Court can restrain a party from prosecu- ting an application before that agency of the Federal Government. The argu- ments by both sides as to the merits of the application for the trademark, or of 34a the legal effect of the granting or denial by the Patent Office of that ap- plication are irrelevant. The cross motion is otherwise denied. Defendant's main motion, insofar as it seeks summary judgment on the third counterclaim, is also denied. Neitherside shows a clear right to the use or ownership of the trademark or tradename in issue. In this regard, it must be noted that the issue raised by defendant, of a lessee's estoppel to deny a landlord's title to demised real property (Tilyou v. Reymlds 108 NY 558),is irrelevant. The subject matter of the controversy at bar is not title to real property of which plaintiff is defendant's lessee, but the right to the use of a trademark or tradename of which plaintiff is de- fendant's licensee. The doctrine of licensee estoppel no longer holds. (Lear, 35a Inc. v. Adkins, 395 US 653). Defendant's main motion, insofar as it seeks dismissal or removal of plain- tiff's fourth cause of action, is denied. There is not shown a sufficient identity of issues with the prior action described in the papers. The main motion, insofar as it seeks dismissal of the second cause of action, is denied. No clear showing is made as to the right or lack of right of plain- tiff to undertake the construction in issue. | The relief sought in defendant's “sup- plemental notice of motion" is denied on the merits, although the Court could have chosen to deny the request without prejudice, as a procedural impropriety. As noted, supra, neither side shows a clear right to the trademark or service- mark in issue, and the request to direct 36a the New York Secretary of State to can- cel plaintiff's registration of the mark and for damages, cannot summarily be granted. Dated: July 23, 1979 T.J.H. J.Ss eCo 37a APPENDIX D STATE OF NEW YORK, COURT OF APPEALS At a session of the Court, held at Court of Appeals Hall in the City of Albany on the twenty- fourth day of February A.D. 1981 PRESENT, Hon. Lawrence H. Cooke, Chief Judge, Presiding Mo. No. 162 NORDEN RESTAURANT CORPORATION, Respondent vs. SONS OF THE REVOLUTION IN THE STATE OF NEW YORK, INC., Appellant 38a A motion having heretofore been made herein upon the part of the respondent (a) for an extension of time within which to move for reargument and (b) for rearg- ument of the above cause to this Court, papers having been submitted thereon and due deliberation having been thereupon had, it is ORDERED, that the said motion, inso- far as it seeks an extension of time, be and the same hereby is granted; and it is ORDERED, that the said motion, insofar as it seeks reargument, be and the same hereby is denied. /s/ JOSEPH W. BELLACOSA Clerk of the Court 39a APPENDIX E Order of the Appellate Division Granting Leave to Appeal to the Court of Appeals At a term of the Appellate Division of the Supreme Court held in and for the First Judicial Department in the County of New York, on May 13, 1980 Present: Hon. Francis T. Murphy, Jr.,PJ Theodore R. Kupferman Arnold L. Fein Joseph P. Sullivan David Ross, Justices M-1555 Norden Restaurant Corporation, Plaintiff-Respondent, -against- Sons of the Revolution in the State of New York, Defendant-Appeliant 40a The above-named defendant-appellant having moved for reargument of, or for leave to appeal to the Court of Appeals from, the order of this Court entered on March 13, 1980, Now, upon reading and filing the no- tice of motion, with proof of due service thereof, and the papers filed in support of said motion, and the papers filed in opposition or in relation thereto; and due deliberation having been had thereon, It is ordered that said motion, inso- far as it seeks reargument, be and the same hereby is denied, and said motion, insofar as it seeks leave to appeal to the Court of Appeals is granted and this Court, pursuant to CPLR 5713, certifies that the following question of law, de- cisive of the correctness of its determi- nation, has arisen whch in its opinion ought to be reviewed by the ©urt of Appeals: 4la "Was the order of the Supreme Court, as affirmed by this Court, properly made?" This Court further certifies that its de- termination was made as a matter of law and not in the exercise of discretion. ENTER JOSEPH J. LUCCHI Clerk 42a APPENDIX F AGREEMENT OF LEASE, made as of this 23rd day of November, 1971 between SONS OF THE REVOLUTION IN THE STATE OF NEW YORK, INC., a New York member- ship corporation, haYing an office at 54 Pearl Street, New York, New York, party of the first part, hereinafter re- ferred to as LANDLORD, and NORDEN RESTAURANT CORP., a New York corporation, having an office at 54 Pearl Street, New York, New York, party of the second part, hereinafter referred to as TENANT. WITNESSETH: Landlord hereby leases to Tenant and Tenant hereby hires from Land- lord the premises described in paragraph 38-A of the rider attached hereto and made part hereof for the term of (or un- til such term shall sooner cease and ex- pire as hereinafter provided) to commence 43a on the lst day of December nineteen- hundred and seventy-one, and to end on the 30th day of November nineteen hun- dred and eighty-five both dates inclusive at an annual rental rate reserved in paragraph 39-A and additional rent as herein provided. 41. Tenant may place a sign on the frmt of the building at 58 Pearl Street to read "Fraunces Tavern Cocktail Lounge", said sign to be of a colonial design, and otherwise subject to the approval of Landlord, which approval shall not be unreasonably withheld, as to the size, design and location of said sign. Tenant may also place a sign on the front of the building known as 26 Water Street provided it first secures the written approval of the Landlord as to the size, design and location of said 44a sign and what is to be printed thereon. Before erecting any such sign, Tenant,at its cost and expense, will secure any permit that may be required by the gov- ernmental authorities having jurisdiction for the construction, installation and maintenance of any such signs. 47. Tenant covenants and agrees that in any and all advertising of the business of Tenant conducted in or from the De- mised Premises whether through written, typewritten, mimeographed or printed circulars, radio programs, notices in the public press and publications, signs or by means of any other advertising media, Tenant will in no way state or imply that the building or buildings owned and main- tained by Landlord are in any way the property of Tenant or of the restaurant operated by it in the Demised Premises. 45a Tenant further covenants and agrees that it will not alter or distort the account of any historical fact respecting the Demised Premises or the buildings of which they are a part in any of its ad- vertising through any of the above described media or through any other media. Advertising material used and paid for by Tenant should describe the business of Tenant conducted in the De- mised Premises, described in lease dated November 22, 1965 only as "Fraunces Tavern Restaurant" .. . The right to use the name "Fraunces Tavern Restaurant" in connection with Tenant's business shall be limited to the restaurant business con- ducted in the Demised Premises and to no other business or location and such right shall terminate upon the expiration or earlier termination of this lease. 46a APPENDIX G STOGOP REALTY CO., INC., and Others, Appellants, v. MARIE ANTOINETYE HOTEL COMPANY, Respondent First Department, July 6, 1926 (217 AD 555) [headnotes omitted] APPEAL by the plaintiffs, Stogop Realty Co., Inc., and others, from a judg ment of the Supreme Court in favor of the defendant, entered in the office of the clerk of the county of New York on the lst day of July, 1924, upon the report of a referee appointed to hear and deter- mine the whole issues. [Appearance of counsel omitted] WAGNER, J. This action was brought to enjoin the defendant from using the name Marie Antoi- nette, or any simulation thereof, in connection with an hotel, and to secure 47a relief specified in the complaint. The facts in this record are practically un- disputed and the only question before the court is one of law. In 1892 one William L. Flanagan owned the premises at the northwest corner of Sixt y-sixth street and Broadway in the city of New York. During the years 1893 and 1894 he erected a building upon these premises, which was specially constructed for the purposes and uses of an hotel. During the course of construction Mr. Flanagan determined to adopt and to appro priate the name "Marie Antoinette" to designate this hotel building, and with this purpose in view caused such name to be cut into the stone work over the en- trance to the building where it still remains. The initials "M.A." were wrought into the design of the ornamental iron gates and grill work at the entrance to 48a the building, all of which are still in place and these letters were upon all the door knobs, upon the iron gratings and the elevator doors, upon the lighting fixtures, decorations and on other parts of the building. When completed, the building was an eight-story structure containing approximately 159 guest rooms, excluding bathrooms, and was in all other respects fully and adequately equipped for the operatim of a first-class hotel. It was completely furnished by Mr Flanagan, the linens being imported and having a crest with the initials "M.A." woven threin, and the dishes and furniture were also marked with the same letters. After some advertising, the hotel was opened to the public by Mr. Flanagan on October ll, 1894, and for the succeeding eight years, and until October 12, 1902, he or his representatives conducted the establish- 49a ment as an hotel. During this period it was the only hotel in New York known by that name. On July 19, 1901, said Flanagan, the owner, made a deed of his property, in- cluding the Hotel Marie Antoinette, to certain trustees under which deed the trustees became the owners in fee of said hotel premises and the owners and proprietors of the hotel business. This deed was accompanied by a declaration of trust which provided, among other things, that the trust deed should become void upon the death of William L. Flanagan. This occrred on January 18, 1903. Prior to 1903 there was a vacant lot to the north of the"Hotel Marie Antoin- ette" at the southwest corner of Sixty- seventh street and Broadway, which lot, together with the "Hotel Marie Antoinette” building just described, covered the 50a entire frontage on the westerly side of Broadway which lot, together with the "Hotel Marie Antoinette" building just described, covered the entire frontage on the westerly side of Broadway between Sixty-sixth and Sixty-seventh streets. The Sixty-seventh street lot was owned by a New York corporation known as the Boule- vard Corporation. On February 19, 1902, a lease for tewnty-one years was made between Albert R. Keen, as lessee, and William L. Flana- gan personally and the Flanagan trustees under the deed of trust, as lessors, covering the Sixty-sixth street premises together "with the building thereon erected, known as the Hotel Marie Antoi- nette, together with the right to the party of the second part [lessee] to the exclusive use of the name ‘Marie Antoi- nette' for the purposes of said hotel, 5la together with all the personal property therein contained, an inventory of which is to be hereto annexed signed by the parties hereto, with the appurtenances, for the term of 21 years from the lst day of October, 1902." Among other provisions, this lease contained the following: "It is hereby agreed between the par- ties hereto that connections may be made between the said premises and the adjoin- ing building to be erected on the north thereof in such locations as the said party of the second part [lessee] may deem desirable, but on plans submitted to the parties of the first part by the party of the second part and approved by them; provided, however, and it is hereby agreed, that the above leased premises shall be restored to their original condition by and at the expense of the party of the 52a second part at the expiration or earlier termination of this lease or a renewal thereof. "It is further agreed by and between the parties hereto at the termination of this lease or any renewals thereof which may be agreed upon that the name ‘Marie Antoinette’ and the right to use the same shall revertto and become the sole pro- perty of the parties of the first part {lessors], their successors or assigns kkk "And the said party of the second part [lessee] further covenants and agrees to use said premises for the purposes of a first-class hotel and for no other pur- pose." By another instrumwnt in writing, bear- the same date as this lease, executed by the trustees and Flanagan, as parties of the first part and said Albert R. Keen, 53a as party of the second part, it was pro- vided as follows: "WHEREAS, as an inducement to the par- ties of the first part to make and enter into said lease with the party of the second part, the said party of the second part hereby agrees to procure a lease of premises adjoining the demised premises on the north [67th Street premises], upon which a twelve-story hotel is to be erected, which said lease, together with the lease of the hotel Marie Antoinette are to be assigned to a company or cor- poration to be organized by the said party of the second part on or before October lst, 1902, *** "NOW, THEREFORE, for an in considera- tion of one dollar *** the parties of the first part hereby consent to the assignment of the lease of said hotel Marie Antoinette by the party of the 54a second part to the said corporation so to be formed. "The said party of the second part hereby agrers to organize and incorporate said corporation on or before October lst 1902, and to assign the lease of said hotel Marie Antoinette, together with the lease of the aforesaid adjacent premises to said corporation. "The party of the second part further agrees that upon the organization of said corporation, he will procure said corpo- ration to accept assignments of said leases, and to assume and agree to pay the rents reserved therein and to keep and perform all the covenants therein contained, and contained in this agree- ment." (Brackets ours.) Mr. Keen complied with the provisions of this agreement and obtained a lease for twenty-one years of the Sixty~-seventh 55a street premises, which, on March 4, 1902, he assigned to the defendant herein, Marie Antoinette Hotel Company. To this company he also assigned the lease of "Hotel Marie Antoinette" (the Sixty- sixth street premises) by an assignment jointly executed by Keen and the defend- ant. By such instrument the defendant does “assume and agree to perform, ful- fill and carry out the agreements, cove- nants, conditions and provisions which in the said ‘indenture of lease are by the said Albert R. Keen agreed to be per- formed." It is, therefore, apparent that when the lease was made, defendant's assignor, and thereafter defendant, had notice and expressly agreed that their right to use the name "Marie Antoinette" would cease and terminate at the end of such lease. From and after October 1, 1902, the 56a defendant hotel company managed and ope- rated the "Marie Antoinette Hotel", es- tablished at Sixty-sixth street and Broadway. About April 15, 1903, a twelve-story hotel building having been erected on the Sixty-seventh street pre- mises, adjoining the "Marie Antoinette Hotel," connections were made between the two structures and the new building was advertised and announced as "the new addition to Hotel Marie Antoinette." The two buildings were jointly opera- ted by the defendant as the "Marie An- toinette Hotel" until October 1, 1923, when the lease covering the orignal "Marie Antoinette Hotel" premises expired, and was not renewed. Since October 1, 1923, the defendant corporation has continued operating an hotel in the structure at Sixty-seventh street and Broadway, and in connection 57a therewith is using the name "Hotel Marie Antoinette." An «