The following papers numbered 1 to 70 were read on the above referenced motions. Plaintiff moves (Seq. #10) for an order pursuant to CPLR 3212 granting summary judgment. Defendant moves (Seq. #11) for an order pursuant to CPLR 3212 granting summary judgment and dismissing plaintiff’s claims, and pursuant to CPLR 3211(a)(5) dismissing plaintiff’s claims as barred by the statute of limitations, and for such other and further relief as this Court may deem just and proper. PAPERS NUMBERED Notice of Motion (Seq. #10) / Affirmation in Support / Memorandum of Law in Support / Exhibits 1-46 Affirmation in Opposition and in Support 47 Notice of Motion (Seq. #11) / Affirmation in Opposition and in Support / Exhibits 48-51 Affidavit in Opposition / Memorandum of Law in Opposition / Exhibits 52-69 Affirmation in Reply 70 DECISION AND ORDER Plaintiff pro se commenced this action on September 27, 2019 seeking punitive damages relating to alleged defamatory statements published on defendant’s website. Plaintiff also seeks injunctive relief directing defendant to immediately remove the alleged defamatory statements and to stop tagging plaintiff’s name (NYSCEF doc #1). Plaintiff filed a prior motion for summary judgment, which was denied with leave to renew upon the conclusion of discovery (Smith, J.) (NYSCEF doc #60). A note of issue was filed in this matter on August 26, 2022. By Decision and Order dated December 1, 2022, this Court granted defendant’s motion for leave to amend her answer to assert the statute of limitations as an affirmative defense (NYSCEF doc #416). Defendant’s amended answer was filed on December 6, 2022 (NYSCEF doc #420). Statute of Limitations Defendant moves to dismiss on the ground that plaintiff’s claims are barred by the statute of limitations. The statute of limitations for defamation is one year from the date of publication (CPLR 215[3]). “Republication, retriggering the period of limitations, occurs upon a separate aggregate publication from the original, on a different occasion, which is not merely ‘a delayed circulation of the original edition’” (Firth v. State of New York, 98 NY2d 365, 371 [2002], quoting Rinaldi v. Viking Penguin, 52 NY2d 422, 435 [1982]). Republication justifies renewing the statute of limitations when the subsequent publication is intended to and actually reaches a new audience (Firth, 98 NY2d at 371). Republication of a defamatory statement in a later edition of a book, magazine or newspaper may give rise to a new cause of action (Kroboth v. Calero, 2020 NY Misc LEXIS 6723 [Sup Ct, Queens County 2020], citing Rinaldi, 52 NY2d at 433-435). In Firth, the Court of Appeals found that the mere addition of unrelated information to a website does not constitute republication of defamatory material, as it cannot be inferred that the addition was made either with the intent or the result of communicating the earlier and separate defamatory information to a new audience (98 NY2d at 365). However, an allegation that the same defamatory material was moved to a new website is sufficient to state a claim for republication to a new audience (Morelli v. Wey, 2016 NY Slip Op 32487[U][Sup Ct, New York County 2016], citing Firth, 306 AD2d at 367]; Giuffre v. DiLeo, 90 AD3d 602 [2d Dept 2011]; Restatement [Second] of Torts 577A, Comment d; cf. Biro v. Conde Nast, 171 AD3d 463 [1st Dept 2019]). Plaintiff established that the action was timely commenced on September 27, 2019. Defendant testified at her deposition that the last time the content of the website underwent any significant change was on April 28, 2017 (Plaintiff’s Exhibit 245, p. 257; NYSCEF doc #32). She then testified that “in 2018 [she] had two separate pages, homepage and book summary page, and then in 2019, [she] just took the book summary page and tacked it into whatever was on the homepage” (Plaintiff’s Exhibit 245, p. 263). It appears that defendant’s intent in posting the book summary page to a new website, and the result, was to communicate the information in the book summary page, including the alleged defamatory content, to a new audience (see Firth 306 AD2d at 666). Under these circumstances, the posting of the book summary page on defendant’s home page constitutes republication, which started the statute of limitations running anew in 2019 (id.). As such, the third affirmative defense, asserting plaintiff’s claims are barred by the statute of limitations, is dismissed. Defamation Both parties seek summary judgment on the defamation claims. “The proponent of a summary judgment motion must make a prima facie showing of entitlement to judgment as a matter of law, tendering sufficient evidence to eliminate any material issues of fact from the case. Failure to make such a showing requires denial of the motion, regardless of the sufficiency of the opposing papers” (Winegrad v. New York Univ. Med. Ctr, 64 NY2d 851, 853 [1985][internal citations omitted]). Once this showing has been made, the burden shifts to the party opposing the motion to produce evidence in admissible form sufficient to establish the existence of a triable issue of fact (Alvarez v. Prospect Hosp., 68 NY2d 320 [1986]). The evidence must be viewed in a light most favorable to the nonmoving party and it should be given the benefit of all favorable inferences (Gonzalez v. Metropolitan Life Ins. Co., 269 AD2d 495 [2d Dept 2000]). “[T]he motion must be denied if there is even arguably any doubt as to the existence of a triable issue” (Baker v. Briarcliff School Dist., 205 AD2d 652, 653 [2d Dept 1994]). “A motion for summary judgment should not be granted where the facts are in dispute, where conflicting inferences may be drawn from the evidence, or where there are issues of credibility” (Ruiz v. Griffin, 71 AD3d 1112, 1115 [2d Dept 2010][internal quotations omitted]; Civil Serv. Empls. Assn. v. County of Nassau, 144 AD3d 1077 [2d Dept 2016]). However, “[a] shadowy semblance of an issue or bald conclusory assertions, even if believable, are not enough to defeat a motion for summary judgment” (Costello v. Saidmehr, 236 AD2d 437 [2d Dept 1997][internal quotations omitted]). Plaintiff contends that defendant published false statements on her website regarding acts performed in his profession, which constitutes defamation per se (Affidavit in Support, p. 22). Plaintiff states that he became aware of these defamatory statements when he discovered them through a Google search of his name in May 2019. He states at that time the Google search returned the following result and hyperlink: Federal trademark fraud “Ulla-Maija” mark — Book Project… https://www.lotusoflapland.com>document-2 Federal Trademark Fraud 2002-2012: “Ulla-Maija” Trademark. Picture. Ulla-Maija Trademark Fraud by Charles Bunstine. Picture. Continues (NYSCEF doc #79). On May 26, 2019, plaintiff sent a cease and desist email to the defendant. The email requested that Ms. Kivimaki cease publication of the false statement about Charles W. Bunstine II immediately (NYSCEF doc #91). On the subject website, defendant references her upcoming memoir. The website states, in part, “[e]ven her trademark, which is her Finnish first name, Ulla-Maija, was stolen. Fraudulent documents were filed at the United States Patent & Trademark Office” (see https://www.lotusoflapland.com) (hereinafter “the website”). A link on the website, titled “view fraudulent federal trademark filing documents of ‘Ulla-Maija’ trademark (USPTO),” links to the following webpage: https://www.lotusoflapland.com/document-2.html (hereinafter “the webpage”). The webpage has a heading “Federal Trademark Fraud 2002-2012: ‘Ulla-Maija’ Trademark” (NYSCEF doc #100). The fifth document on the webpage is a letter on Ulla-Maija Couture letterhead, date stamped May 5, 2003, to the examining attorney, Commissioner for Trademarks from plaintiff Charles W. Bunstine II, Chairman & Chief Executive Officer of Ulla- Maija, Inc. The letter references an application to register a trademark for the company and states “[t]he application is for a name not representing an individual living or dead. It is a common Finnish first name.” An August 3, 2011 correspondence from the U.S. Patent and Trademark Office (USPTO) states that “the applied-for mark contains the name Ulla-Maija and appears to identify a particular living individual; however, the application does not include this named party’s written consent to registration of the name as a trademark/service mark. Written consent is required for registration of a mark containing a name, including a pseudonym, stage name or nickname, or signature, if the name or signature identifies a particular living individual” (NYSCEF doc #100).1 These portions of both correspondence are highlighted with a red box on the webpage. Plaintiff contends that that there has been no finding, including by the USPTO, that the federal trademark filings related to the Ulla-Maija trademark are fraudulent (Bunstine Affidavit, p. 26). Defendant moves for summary judgment, arguing plaintiff cannot establish a prima facie case for defamation per se (Ramkissoon Affirmation, p. 3). Defendant states that the purpose of the website is to give a synopsis of a book that defendant is intending to publish about her life. Defendant admits that the webpage contains references to plaintiff’s name, but argues that these references are in public documents that are posted on the webpage (Ramkissoon Affirmation, p. 3). The elements of a cause of action for defamation are a false statement that tends to expose a person to public contempt, hatred, ridicule, aversion or disgrace, published without privilege or authorization to a third party, constituting fault as judged by, at a minimum, a negligence standard, and it must either cause special harm or constitute defamation per se (Laguerre v. Maurice, 192 AD3d 44 [2d Dept 2020]; Salvatore v. Kumar, 45 AD3d 560 [2d Dept 2007]). Pursuant to the strict pleading requirements, the particular words complained of must be set forth in the complaint, which must also contain the time, place and manner of the allegedly false statements and specify to whom such statements were made (CPLR 3016[a]; Arvanitakis v. Lester, 145 AD3d 650 [2d Dept 2016]). A false statement constitutes defamation per se when it tends to injure another in his or her trade, business, or profession (Joo Tae Yoo v. Choi, 210 AD3d 1062 [2d Dept 2022]; Matter of Konig v. WordPress.com, 112 AD3d 936 [2d Dept 2013]). “[W]ords which affect a person in his or her profession by imputing to him or her any kind of fraud, dishonesty, misconduct or unfitness in conducting one’s profession may be actionable” (Wasserman v. Haller, 216 AD2d 289, 289 [2d Dept 1995]). While a plaintiff alleging defamation generally must plead and prove special damages, there is no such requirement when a published statement constitutes defamation per se (LeBlanc v. Skinner, 103 AD3d 202 [2d Dept 2012]). Truth is a complete defense to a defamation claim, regardless of the harm done by the statement. Truth need not be established to an extreme literal degree. Where the defamatory material on which the action is based is substantially true with minor inaccuracies, the defamation claim must fail (Love v. William Morrow & Co., 193 AD2d 586 [2d Dept 1993]). The test to determine whether a statement is substantially true is “whether the statement as published would have a different effect on the mind of the reader from that which the pleaded truth would have produced” (Udell v. NYP Holdings, Inc., 169 AD3d 954, 956 [2d Dept 2019]; Love, 193 AD2d at 588). Defendant established, prima facie, her entitlement to judgment as a matter of law. The alleged defamatory statements portray plaintiff as having filed fraudulent federal trademark documents. In defamation actions, generally words are to be construed in their ordinary meaning and in context (Davis v. Boeheim, 24 NY3d 262 [2014]). Federal trademark fraud is knowingly making a false representation regarding a material fact with the intent to induce reliance on the misrepresentation (see Excelled Sheepskin & Leather Coat Corp. v. Oregon Brewing Co., 897 F3d 413 [2d Cir 2018]). The webpage contains a letter from plaintiff to the examining attorney, Commissioner for Trademarks, date stamped May 5, 2003, stating in part “the application is for a name not representing an individual living or dead” (hereinafter the May 2003 letter) (NYSCEF doc #100). When questioned on this representation at his deposition plaintiff testified that in 2003 Ulla-Maija Kivimaki was a designer for the label U for Kivimaki, Inc., and any work of Ulla- Maija, Inc. had nothing to do with the individual (Defendant’s Exhibit B, p. 146). Defendant testified at her deposition that she founded Ulla-Maija, Inc. and owned one hundred percent of the corporation when she founded it (Plaintiff’s Exhibit 245, p. 43). Defendant testified that Ulla-Maija, Inc. was incorporated on March 4, 1994 (Defendant’s Exhibit A, p. 48). She testified that Ulla-Maija Holding LLC is a company that Ms. Kivimaki formed in March 1997 (Defendant’s Exhibit B, p. 43). The Court’s file on NYSCEF includes a License Agreement, dated May 5, 1997, between Ulla-Maija Holding LLC, as licensor, and Ulla-Maija, Inc., as licensee. The agreement states the Ulla-Maija Holding LLC is the owner of the trademark and trade name “Ulla-Maija” for use in connection with the design, manufacture and sale of wedding gowns and formal wear. In the agreement, the licensor grants the licensee a license to use the trademark, subject to certain terms and conditions. The agreement provides at paragraph 4.2 that the licensee agrees never to challenge the validity of the licensor’s ownership of the trademark and licensee shall refrain from any registration or entry of the trademark or the name of licensor in any registry or media, electronic or otherwise, except for the entry of the name Ulla-Maija, Inc. in telephone book, on the internet, or in any trade or similar directory. The agreement further states in paragraph 4.3 that only the licensor may file and prosecute trademark applications regarding the licensee’s use of the trademark, unless the licensee is requested to file an application by licensor (NYSCEF doc #188, p. 36). Plaintiff testified that he first met Ms. Kivimaki in January 1998. At that time, she was President of Ulla-Maija, Inc. and she was on the Board of Directors (Defendant’s Exhibit B, p. 27, 30, 31). Ms. Kivimaki was the designer of the bridal and evening wear manufactured by Ulla-Maija, Inc. (Defendant’s Exhibit B, p. 33). In January 1998, Mr. Bunstine was engaged as a consultant for Ulla-Maija, Inc. by the two other board members (Defendant’s Exhibit B, p. 28). He became President and Chairman of the company on June 6, 2000 (Defendant’s Exhibit B, p. 19). Plaintiff testified that the trademark was published for opposition on December 2, 2003, no one opposed the mark, and it was registered to Ulla-Maija, Inc. on February 24, 2004 (Defendant’s Exhibit B, p. 156).2 Based on the parties’ deposition testimony, it is clear that the May 2003 letter contains a false representation of a material fact. Specifically, plaintiff misrepresented that “the application is for a name not representing an individual living or dead.” Ulla-Maija Holding LLC was created for the purpose of owning and holding the mark (Defendant’s Exhibit A, p. 273-274; NYSCEF doc #188, p. 22). By creating the LLC and entering into the license agreement Ms. Kivimaki took steps to protect the trademark and trade name “Ulla-Maija.” Regardless of the structure of parties’ business dealings in May 2003, it is clear that the subject trademark application for “Ulla-Maija” was for a name representing a particular living individual, Ulla-Maija Kivimaki. This Court need not address whether fraudulent trademark registration can be proven by clear and convincing evidence (see Excelled Sheepskin, 897 F3d at 413). The sole issue before this Court is the parties’ motions for summary judgment on the defamation claims. Defendant’s submissions and the documents on the subject webpage demonstrate that plaintiff made a misrepresentation of a material fact in the May 2003 letter. The alleged defamatory statements on Ms. Kivimaki’s website and webpage are nonactionable substantially true statements (see Udell, 169 AD3d at 954). Under these circumstances, plaintiff cannot establish a prima facie case of defamation. In opposition, plaintiff fails to raise a triable issue of fact. Plaintiff argues Ulla-Maija, Inc. commenced an action in Federal Court alleging violation of Ulla-Maija, Inc.’s trademark rights, Ulla-Maija, Inc. v. Kivimaki (SD NY, 02 Civ. 3640). Plaintiff states a September 18, 2002 order in that matter “definitively dealt with trademark rights to the ‘Ulla-Maija’ trademark.” By order dated September 18, 2002 (Schwartz, J.), the Court directed a temporary arrangement under which defendants Ulla-Maji Kivimaki, Ulla-Maija Holdings LLC and Kivimaki, Inc. could conduct business pending the outcome of defendants’ motion for a preliminary injunction. The order states it will continue in force and effect until the Court has issued an order deciding defendants’ motion for a preliminary injunction (NYSCEF doc #83). A January 24, 2003 entry in the docket indicates a January 23, 2003 order was issued denying defendants’ motion for a preliminary injunction as moot because the September 18, 2002 order resolved the substantive issues in defendants’ motion for a preliminary injunction. There are numerous entries on the docket after that date (NYSCEF doc #111, p. 9, 12). The parties filed motions summary judgment in the federal action. The Court issued an order dated September 30, 2005 (Griesa, J.), noting that the issues involved in the summary judgment motions arose largely out of provisions in the license agreement requiring Ulla-Maija, Inc. to adhere to certain quality standards in both dresses and promotional materials. The Court found defendants provided invalid notice of termination and did not effect termination of the license agreement. The Court granted plaintiff’s motion for summary judgment to the limited extent that defendants’ third counterclaim alleging termination of the license agreement was dismissed (NYSCEF doc #188, p. 31). The federal action was ultimately administratively closed (NYSCEF doc #111, p. 12). Contrary to plaintiff’s assertion, these two orders in the federal action did not definitively resolve the parties’ rights to the “Ulla-Maija” trademark. Insofar as any additional contentions of the parties are not specifically addressed herein, the parties’ contentions have been considered and are without merit. Accordingly, it is hereby ORDERED that plaintiff’s motion for summary judgment is denied; and it is further ORDERED that defendant’s motion for summary judgment is granted and the complaint is dismissed; and it is further ORDERED that within ten (10) days of the date hereof, defendant shall serve a copy of this decision and order with notice of entry upon all parties and file proof of service on NYSCEF. The foregoing constitutes the Decision and Order of the Court. Dated: February 6, 2023
