Preview
FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023
NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024
SUPREME COURT OF THE STATE OF NEW YORK
COUNTY OF NEW YORK
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IN RE APPLICATION OF: NAFTALI ROTENSTREICH and
CHABAD OF GRAMERCY PARK, Index No.: 655503/2023
Petitioners, Motion Seq. 02
-against-
SHAYA LESCHES and YJP FOUNDATION INC.,
Respondents.
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RESPONDENTS’ MEMORANDUM OF LAW IN OPPOSITION TO PETITIONERS’
MOTION TO DISQUALIFY COHEN TAUBER SPIEVACK & WAGNER P.C.
Cohen Tauber Spievack & Wagner P.C.
420 Lexington Avenue, Suite 2400
New York, NY 10170
Tel.: 212-586-5800
Counsel for Respondents Shaya Lesches and YJP Foundation Inc.
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TABLE OF CONTENTS
TABLE OF AUTHORITIES........................................................................................................... ii
PRELIMINARY STATEMENT...................................................................................................... 1
RELEVANT FACTS ....................................................................................................................... 2
ARGUMENT .................................................................................................................................. 7
I. STANDARD OF REVIEW FOR DISQUALIFICATION OF COUNSEL ............................ 7
II. PETITIONERS FAIL TO ESTABLISH GROUNDS FOR DISQUALIFICATION
OF CTSW ............................................................................................................................... 8
A. CGP Is Not a Current Client of CTSW ............................................................................... 8
B. CTSW’s Prior Finite Representation of CGP is Unrelated to this Special Proceeding .... 10
C. CTSW’s Representation of GCP For Purposes of the Registration or Renewal of
the Trademark is Not Adverse to the Issues in this Special Proceeding and CTSW
Did Not Have Access to Confidential Material from GCP Related to this Special
Proceeding......................................................................................................................... 12
CONCLUSION ............................................................................................................................. 17
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TABLE OF AUTHORITIES
Page(s)
Cases
Akagi v. Turin Hous. Dev. Fund Co., Inc.,
13 CIV. 5258 (KPF), 2017 WL 1076345 (S.D.N.Y. Mar. 22, 2017) ................................13, 14
Applied Tech. Ltd. v. Watermaster of Am., Inc.,
07 CIV3759LTSMHD, 2009 WL 804127 (S.D.N.Y. Mar. 26, 2009) .......................................9
Bd. of Managers of McCaren Park Mews Condominium v. McCaren Park Mews
LLC,
41 Misc. 3d 1224(A) (N.Y. Sup. 2013) ...................................................................................15
Burda Media, Inc. v Blumenberg,
97 CIV. 7167 (RWS), 1999 WL 1021104 (S.D.N.Y. Nov. 8, 1999) .......................................14
Develop Don't Destroy Brooklyn v. Empire State Dev. Corp.,
31 A.D.3d 144 (1st Dep't 2006) ...........................................................................................8, 17
Dominguez v. Community Health Plan of Suffolk, Inc.,
284 A.D.2d 294 (2d Dep’t. 2001) ............................................................................................16
In Abbondanza v. Siegel,
209 A.D.2d 1023 (4th Dep’t 1994) ..........................................................................................15
Jamaica Pub. Serv. Co. Ltd. v. AIU Ins. Co.,
92 N.Y.2d 631 (1998) ................................................................................................................7
Jamie v. Jamie,
309 A.D.2d 605 (1st Dep’t 2003) ............................................................................................12
Lightning Park, Inc. v. Wise Lerman & Katz, P.C.,
197 A.D.2d 52 (1st Dep’t 1994) ..............................................................................................10
Lovitch v. Lovitch,
64 A.D.3d 710 (2d Dep’t 2009) ...............................................................................................16
Matter of N.Y.C. Transit Auth. v. Transp. Workers' Union of Am., Local 100,
AFL-CIO,
6 N.Y.3d 332 (2005) ................................................................................................................12
Matter of New York State Correctional Officers and Police Benev. Ass'n, Inc. v
State
94 N.Y.2d 321, 328 (1999) ......................................................................................................11
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Revise Clothing, Inc. v. Joe’s Jeans Subsidiary, Inc.,
687 F. Supp. 2d 381 (S.D.N.Y. 2010)..................................................................................9, 10
S & S Hotel Ventures Ltd. P’ship v. 777 S.H. Corp.,
69 N.Y.2d 437 (1987) ................................................................................................................7
Skanska USA Bldg. Inc. v. Atl. Yards B2 Owner, LLC,
146 A.D.3d 1 (1st Dep’t 2016) ..................................................................................................7
Solow v. W.R. Grace & Co.,
83 N.Y.2d 303 (1994) ......................................................................................................7, 8, 10
Tekni-Plex, Inc. v. Meyner and Landis,
89 N.Y.2d 123 (1996) ..............................................................................................................14
Ullmann-Schneider v. Lacher & Lovell-Taylor PC,
110 A.D.3d 469 (1st Dep’t 2013) ..............................................................................................7
Wiederman v Halpert,
172 A.D.3d 1442 (2d Dep’t 2019) .....................................................................................14, 15
In re Will of McElroy,
34 Misc. 3d 689 (Sur. Ct. 2011)...............................................................................................15
Other Authorities
CPLR 7511...........................................................................................................................5, 11, 12
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Respondents Shaya Lesches (“Lesches”) and YJP Foundation Inc. (“YJPF,” together with
Lesches, “Respondents”) submit this memorandum of law in opposition to petitioners Naftali
Rotenstreich (“Rotenstreich”) and Chabad of Gramercy Park’s (“CGP,” together with
Rotenstreich, “Petitioners”) motion to disqualify Cohen Tauber Spievack & Wagner P.C.
(“CTSW”) from representing Respondents in this special proceeding (the “Motion”).
PRELIMINARY STATEMENT
The Motion is the latest in Petitioners’ ongoing attempts to avoid or delay confirmation of
an arbitration award issued by a Zabla panel on September 26, 2023, in favor of YJPF (the
“Award”) and avoid their obligation to comply with the Award. On the basis of six hours of
work done by CTSW in 2017 to register the YJP trademark and thirty minutes of work in 2023 to
renew the mark, all of which was wholly unrelated to the arbitration and the Petition, and with
absolutely no confidential information provided by Petitioners to CTSW – Petitioners move to
disqualify CSTW from representing Respondents in this special proceeding.
The Motion relies solely on revisionist history. Petitioners falsely contend that CGP has
been a continuous client of CTSW from 2017 to the present and that the YJP trademark was the
subject of the arbitration. Neither is true.
First, CGP is not a current client of CTSW and was not a continuous client of CTSW
from 2017 to the present. CTSW represented CGP in the very limited and finite task of filing the
trademark application for the mark “YJP” in 2017 (CTSW performed 6 hours of work) and filing
the renewal of the trademark in 2023 (CTSW performed 30 minutes of work) on October 13,
2023. Indeed, the relationship between CTSW and CGP was so limited and fleeting that
Rotenstreich did not even remember that CTSW had handled the trademark application for the
YJP mark and claims that he did not know that CTSW had filed the trademark renewal.
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Second, the YJP trademark was not the subject of the arbitration. After dedicating most
of their application for a preliminary injunction arguing that the subject matter of the arbitration
was limited solely to the “narrow scope” of CGP’s Hazmana to Lesches – which does not
include any claims related to the YJP trademark – Petitioners now reverse course and claim that
the “very subject matter” of the arbitration was Lesches’ purported misappropriation of
Petitioners’ “intellectual property and trademarks.” But neither the Hazmana nor the Award, nor
any of Petitioners’ prior papers refer to this, or any, trademark. Other than the Motion, the first
time Petitioners referred to the YJP trademark was on December 29, 2023, in their motion to
amend the Petition wherein they improperly sought to enjoin Respondents’ use of the YJP mark
(notwithstanding that the use of the YJP mark was not the subject of the Award and therefore not
before the Court in this special proceeding). Even if Respondents’ use of the YJP mark had been
the subject of the arbitration (and it was not) it still would be completely unrelated to any work
done by CTSW with respect to the registration or renewal of that trademark.
For the foregoing and other reasons set forth below, Petitioners’ motion to disqualify
should be denied.
RELEVANT FACTS1
CTSW’s Filing of the YJP Trademark Application and Renewal
In late 2016, Lesches introduced CTSW partner Y. Jerry Cohen (“Cohen”) to
Rotenstreich and CGP for the purposes of registering a trademark for the mark “YJP.”
(Affirmation of Y. Jerry Cohen dated January 19, 2024 (“Cohen Aff.”) ¶ 3.) On March 30, 2017,
CTSW filed the application on behalf of CGP. CTSW handled the matter pro bono and spent a
Petitioners devote a substantial portion of the Motion rehashing their opposition to the Award –
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which is irrelevant to the disqualification issue.
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total of 6 hours working on the trademark application. (Id. 5.) There were no objections, and the
trademark was registered on November 7, 2017. (Id.)
CTSW did not perform any further work at that time – nor was there any additional work
for CTSW to perform. (Id. ¶ 6.) On November 14, 2017, after the trademark was registered,
Cohen sent Rotenstreich a letter enclosing the Certificate of Registration issued by the United
States Patent and Trademark Office (“USPTO”) and informed him that renewals must be filed
between the 5th and 6th year following the registration dates and that there are also 9 and 10-year
renewal filings. (Cohen Aff. ¶ 7; Affirmation of Sari E. Kolatch, dated January 19, 2024
(“Kolatch Aff.”) Ex. 2.) Cohen recommended that CGP retain a service that sends advanced
notice of the filing dates to track the renewal dates, suggested a specific service, and offered to
provide additional contact information upon request. (Id.)
Thus, it was clear from Cohen’s letter that CTSW would not be responsible for any
further work with respect to the trademark – including tracking the renewal dates. (Id. ¶ 8.)
On November 7, 2022, CTSW received an electronic notification from the USPTO that
the trademark registration for “YJP” was due to be renewed on or before November 7, 2023.
(Cohen Aff. ¶ 9.)
Also on November 7, 2022, Cohen forwarded the USPTO email to Lesches, copying
Rotenstreich, and asked if they wanted the trademark renewed, as follows:
Goo[d] morning Shaya. We received the email below from the USPTO regarding
renewing the “Chabad of Gramercy Park” trademark. Please let us know if you would
like to have the trademark renewed.
(Cohen Aff. ¶ 11; Kolatch Aff. Ex. 3.) Lesches responded “Yes, that would be much
appreciated.” (Id. ¶ 12; Kolatch Aff. Ex. 4.) Rotenstreich was copied on Lesches’ response
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email. (Id.) He did not object to Lesches’ request to renew the trademark or otherwise respond
to CTSW’s or Lesches’ emails. (Cohen Aff. ¶ 12.)2
The USPTO’s renewal reminder was sent a year before the renewal deadline. (Id. ¶ 14.)
Although CTSW obtained approval to renew the trademark on November 7, 2022, it did not
complete the renewal until closer to the expiration date. On or about September 13, 2023,
CTSW associate Daniel Arbov filed the renewal of the YJP trademark for CGP. (Id.) The entire
process took 30 minutes. (Id.) Nobody from CTSW spoke to Rotenstreich or Lesches, relying
on the email approval CTSW obtained in November 2022. (Id.) That was the extent of CTSW’s
representation of CGP with respect to the trademark renewal.
At the time that it filed the renewal application neither Cohen nor Arbov – nor anyone
else at CTSW – was aware of any dispute between Lesches and Rotenstreich, or that they were
involved in an arbitration that involved CGP and YJP. (Id. ¶ 16. ) CTSW did not represent or
advise any of the parties during the arbitration. (Id.) CTSW has never received any confidential
information from Rotenstreich with respect to any matter, including the trademark. (Id. ¶ 17.)
YJPF and Lesches’ Retention of CTSW
On November 7, 2023, Petitioners initiated this special proceeding against Lesches to
vacate the Award and moved, by order to show cause, for (a) a temporary restraining order
(“TRO”) enjoining a special meeting of the YJPF board to remove Rotenstreich from the board;
In a desperate attempt to create a conflict where none exists, Petitioners opine that CTSW
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purposely did not contact CGP to determine if the YJP mark was still in use when it received the
renewal notice because “their other client YJPF was using the CGP trademark without CGP’s
consent.” (See Mov. Br. at p. 9 n. 2) (emphasis in original). This argument fails given the email
correspondence that conclusively proves that Rotenstreich was informed of the renewal notice
and of Lesches’ request to have the mark renewed. (Kolatch Aff. Ex. 4.) If the use of the mark
was without CGP’s consent, Rotenstreich could have and would have either objected to the
renewal or objected to Lesches providing instruction to CTSW regarding the mark. He did
neither.
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and (b) a preliminary injunction staying compliance with the Award. Although Petitioners
initiated this special proceeding against Lesches in his personal capacity, the Award that
Petitioners seek to vacate is for the benefit of YJPF, not Lesches personally.
The Award
On September 26, 2023, the Zabla arbitration panel issued the Award. (NYSCEF Doc.
No. 12.) The Award made certain factual findings with respect to a variety of issues pertaining to
YJPF and ruled that CGP must transfer title to the premises located at 105-07 East 16th Street
(the “Mansion”) to YJPF. (Id.) If it were unable to transfer title as a result of complications from
a jumbo mortgage, YJPF shall have use of the Mansion for as long as it sees fit in exchange for
monthly payments. (Id.) The Award also addressed compensation that CGP must pay to YJPF
depending on the disposition of the Mansion. (Id.) The Award neither made any findings
regarding, nor even referred, to any trademark or other intellectual property.
The Petition to Vacate
Rotenstreich and GCP filed a Petition pursuant to CPLR 7511. The Petition seeks to (i)
vacate the award; (ii) enjoin Lesches from taking any action in reliance on the Award, including
holding a meeting to remove Rotenstreich from the YJPF board; (iii) enjoin Lesches from using
the Mansion; and (iv) enjoin Lesches from using any of the funds in the YJPF bank account.
(NYSCEF Doc. No. 1.) The Petition neither referred to, nor sought any relief related to, any
trademark or intellectual property. (Id.)
On November 16, 2023, this Court denied injunctive relief on the grounds that Petitioners
had not established a likelihood of success on the merits of the Petition. (NYSCEF Doc. No.
34.)
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Kasowitz Conversation with CTSW Partner Stephen Wagner
In late November 2023, while this special proceeding was pending, counsel for
Petitioners asked three of the YJPF directors for an opportunity to speak with the them..
(Affirmation of Stephen Wagner, dated January 19, 2024 (“Wagner Aff.”) ¶ 3.) The directors
subsequently informed the Kasowitz Firm that they would speak to them provided CTSW,
counsel for YJPF, was present on the call. (Id.) The call was scheduled for December 1, 2023.
(Id. ¶ 4.)
On November 29, 2023, Kasowitz attorney Jack Atkin called Wagner regarding the fact
that CTSW was going to be participating on the call with the YJPF directors. Atkin asked
Wagner if he thought it was a conflict to represent YJPF since CTSW represented Lesches in the
special proceeding and Kasowitz (presumably on behalf of Rotenstreich) would be making
allegations of Lesches’ financial improprieties. Mr. Atkin stated that if CTSW represented the
organization alone, it would look at those allegations in a certain way, but because it also
represented Lesches, a conflict might exist. (Id. ¶ 5.) Wagner informed Atkin that he was not
aware of any conflict. Atkin did not refer in any way to CTSW’s filing of the YJP trademark
application or renewal.3
The meeting with the directors took place on December 1, 2023. The Kasowitz
attorneys attending the meeting made no claim of Lesches’ purported financial improprieties but
The November 29, 2023, conversation between Kasowitz and CTSW is a red herring and
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wholly unrelated to the Motion. Nor could it be since Rotenstreich claims that he did not even
realize that CGP had ever been represented by CTSW until December 7th -- a week after the
conversation between Atkin and Wagner. The purported “conflict” raised at the time related
solely to CTSW’s representation of YJPF and Lesches – not YJPF and CGP. (Wagner Aff. ¶¶ 5-
7.) There was no reason for CTSW to inform Kasowitz about its prior representation of CGP
with respect to the trademark application because (1) presumably Rotenstreich knew CTSW
handled that trademark application and renewal and (2) it had nothing to do with this case.
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merely implored the directors to keep Rotenstreich on the YJPF board at least until after the
December 8, 2024, conference with the Court. (Kolatch Aff. ¶ 6.)
The Amended Petition
On December 29, 2023, Petitioners moved to amend the Petition. On January 12, 2024,
Petitioners filed the Amended Petition pursuant to a so ordered stipulation. The Amended
Petition seeks to enjoin Respondents from using the YJP mark notwithstanding that it was not
the subject of the Award and is not before this Court in this proceeding. (Kolatch Aff. Ex. 1, ¶
6(ii).)
ARGUMENT
I. STANDARD OF REVIEW FOR DISQUALIFICATION OF COUNSEL
A party has a right to be represented by counsel of its choice, and any restrictions on that
right “must be carefully scrutinized.” Skanska USA Bldg. Inc. v. Atl. Yards B2 Owner, LLC, 146
A.D.3d 1 (1st Dep’t 2016). The party seeking disqualification bears a “heavy burden” of
showing that the drastic measure of disqualification is warranted. Ullmann-Schneider v. Lacher
& Lovell-Taylor PC, 110 A.D.3d 469, 469-70 (1st Dep’t 2013) (internal citations omitted). That
is also true because disqualification motions (like this one) based on a non-existent “conflict” are
often made for tactical purposes and are disfavored. See, e.g., S & S Hotel Ventures Ltd. P’ship
v. 777 S.H. Corp., 69 N.Y.2d 437, 443 (1987) (“[D]isqualification of a plaintiff's law firm can
stall and derail the proceedings, redounding to the strategic advantage of one party over
another.”); See also Jamaica Pub. Serv. Co. Ltd. v. AIU Ins. Co., 92 N.Y.2d 631, 638 (1998)
(“Allowing a party seeking disqualification to meet its burden by generalized assertions . . .
would . . . encourage the strategic use of such motions.”); Solow v. W.R. Grace & Co., 83 N.Y.2d
303, 310 (1994) (“This Court and others have expressed concern that such disqualification
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motions may be used frivolously as a litigation tactic when there is no real concern that a
confidence has been abused.”).
Motions (like this one) based on the possibility or “appearance” of impropriety are
particularly disfavored. Develop Don't Destroy Brooklyn v. Empire State Dev. Corp., 31 A.D.3d
144, 153 (1st Dep't 2006) (“[T]he mere appearance of impropriety alone is insufficient to warrant
disqualification. [T]he appearance of impropriety must be balanced against a party’s right to the
counsel of its choice as well as the possibility that the motion for disqualification may be
motivated purely by tactical considerations.”)
To warrant disqualification, the moving party must establish the following: (1) the
existence of a prior attorney-client relationship; (2) a substantial relationship between the prior
and current representations; and (3) that the issues in litigation and the subject matter of the prior
representation are adverse to the current representation, or counsel has had access to confidential
material substantially related to the litigation. Solow, 83 N.Y.2d at 308. Petitioners fail to meet
that burden.
II. PETITIONERS FAIL TO ESTABLISH GROUNDS FOR DISQUALIFICATION
OF CTSW
A. CGP Is Not a Current Client of CTSW
CGP is not a current client of CTSW. (Cohen Aff. ¶ 15.) Petitioners contend that
CTSW’s representation of CGP was continuous from 2017 to the present because it was
“monitoring” the trademark and is listed as “attorney of record” on the USPTO website.
Petitioners are incorrect on the facts and the law, and this contention is, at best, disingenuous,
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given that Petitioners claims that they first learned that CTSW represented CGP on December 7,
2023.4 (Rotenstreich Aff. ¶ 42.)
Petitioners are trying to capitalize on the very limited work CTSW performed on CGP’s
behalf in two isolated time periods to deprive Respondents of the attorney of their choice.
CTSW’s representation of CGP in 2017 was limited to filing an application for the mark “YJP.”
(Cohen Aff. ¶¶ 6,7.) Contrary to Petitioners’ claim, CTSW did not “monitor” the registered
trademark from 2017 to the present. (Id.) CTSW listing as attorney of record on the application
or renewal does not constitute an ongoing representation. See Applied Tech. Ltd. v. Watermaster
of Am., Inc., 07 CIV3759LTSMHD, 2009 WL 804127, at *6 (S.D.N.Y. Mar. 26, 2009) (rejecting
argument that lawyer listed as “attorney of record” on plaintiff’s trademark application with the
USPTO constituted ongoing representation, holding that the registration of a trademark is a
“finite task” which does not constitute ongoing representation.); see also, Revise Clothing, Inc. v.
Joe’s Jeans Subsidiary, Inc., 687 F. Supp. 2d 381, 391 (S.D.N.Y. 2010) (a firm’s preliminary
trademark searches that consumed “all of one and three-quarter hours of attorney time” is “de
minimis legal work, performed as a courtesy for an existing client” and “is not sufficient to
transform a limited engagement into a general retainer.”)
Beyond that, the letter CTSW sent to CGP in 2017 made clear that it was CGP’s
responsibility to track the trademark renewal dates and suggested a service that it could engage
for that purpose. (Cohen Aff. ¶ 7; Kolatch Aff. Ex. 2.) For the same reasons CTSW’s renewal of
the trademark on October 13, 2023 – a “finite task” that took 30 minutes – does not create an
Petitioners distort CTSW’s December 14, 2023, letter to Petitioner’s counsel. (See Mov. Br. at
4
p. 13.) CTSW clearly stated that CGP “is not a current client of this firm and there is no conflict
in our representation of Rabbi Lesches and YJPF in this proceeding.” (Affirmation of Mitchell
Schrage, dated December 15, 2023 (“Schrage Aff.”), Ex. L, NYSCEF Doc. 57.)
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“ongoing representation” simply because CTSW is listed as attorney of record. Revise Clothing,
687 F. Supp. 2d at 11 (settlement agreement that identified the law firm as the entity to be
notified in the event of default does not extend an attorney-client relationship that has otherwise
terminated.)
CTSW did not drop CGP “like a hot potato” as Petitioners repeatedly claim. It cannot
“drop” a client that it does not represent. It does not represent CGP and was not representing
CGP at the time it was retained by Respondents. The entire premise for Petitioners’ claim of
“continuous representation” is based solely on CTSW named as attorney of record on the
USPTO website. As shown above, that does not constitute ongoing representation.
B. CTSW’s Prior Finite Representation of CGP is Unrelated to this Special
Proceeding
The second prong that Petitioners must satisfy to support disqualification is that “there is
a substantial relationship between the prior and current representations.” Solow, 83 N.Y.2d at
308. “In order to meet the ‘substantial relationship’ test, the issues in the present litigation must
be ‘identical to’ or ‘essentially the same’ as those in the prior case before disqualification will be
granted.” Lightning Park, Inc. v. Wise Lerman & Katz, P.C., 197 A.D.2d 52, 55 (1st Dep’t 1994)
(reversing disqualification of counsel where movant failed to meet his burden to establish a
substantial relationship between the issues in a present litigation and the subject matter of the
prior representation).
Petitioners’ attempt to recast this matter as involving a trademark dispute is both incorrect
and irrelevant. After spending most of its first motion for injunctive relief contending that the
only issues the Zabla panel was allowed to decide was what was contained in the “narrow scope”
of the Hazmana (NYSCEF Doc. No. 1, ¶¶ 17, 21, 22), which notably makes no reference to any
trademark, Petitioners now attempt to recast the arbitration and this special proceeding as actions
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relating to Lesches’ misappropriation of Chabad’s trademark. (Mov. Br.5 at 4.) The 11th hour
addition of a claim in the Amended Petition to enjoin Respondents’ use of the trademark cannot
alter the facts.
Neither the Hazmana, the Agreement to Arbitrate, nor the Award, makes any reference to
the YJP Trademark. Nor did the Petition, or any of the documents, affidavits, memoranda, and
exhibits Petitioners filed in support of its application for a temporary restraining order and
preliminary injunction on November 7, 2023.
Moreover, even if the Award did relate to the YJP trademark – and it did not – that issue
is not before this Court in this Special Proceeding. The sole issue to be determined is whether
Petitioners can meet their heavy burden to establish, by clear and convincing evidence, one of
the four limited and narrow grounds for vacatur set forth in CPLR 7511.
The Court may not consider the merits of the underlying arbitration award or reject the
factual findings of the Zabla panel (which in all events did not relate to the YJP, or any,
trademark). As the Court of Appeals held in Matter of New York State Correctional Officers and
Police Benev. Ass'n, Inc. v State,
A court cannot examine the merits of an arbitration award and substitute its judgment for
that of the arbitrator simply because it believes its interpretation would be the better one.
Indeed, even in circumstances where an arbitrator makes errors of law or fact, courts will
not assume the role of overseers to conform the award to their sense of justice.
94 N.Y.2d 321, 328 (1999).
Here, there is no, much less a substantial, relationship between CTSW’s representation of
CGP for the limited purpose of filing a renewal of a registered trademark, and its representation
“Mov. Br.” refers to the Memorandum of Law in Support of Petitioners’ Order to Show Cause
5
to Disqualify Cohen Tauber Spievack & Wager P.C. filed on December 15, 2023 (NYSCEF Doc.
43).
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of Respondents in this special proceeding. The only issue before this Court is whether
Petitioners can meet their burden to establish one of the very limited grounds pursuant to CPLR
7511 for vacatur of the Award. It has absolutely nothing to do with the renewal of the registered
trademark. Nor was registration or renewal of the YJP trademark a subject matter of the
Arbitration.
Accordingly, there is no basis to disqualify CTSW. See Jamie v. Jamie, 309 A.D.2d 605,
606 (1st Dep’t 2003) (disqualification of law firm not warranted where its “previous services
peripherally concerned property at issue” but the moving party failed to show either a
“substantial relationship between the subject matter of such prior services” and the current
claims or that counsel had received confidential information substantially related to the subject
matter.)
C. CTSW’s Representation of GCP For Purposes of the Registration or
Renewal of the Trademark is Not Adverse to the Issues in this Special
Proceeding and CTSW Did Not Have Access to Confidential Material from
GCP Related to this Special Proceeding
Petitioners’ conclusory assertion that CTSW’s representation of CGP for purposes of
registering or renewing the YJP trademark is adverse to the issues in this proceeding is
nonsensical. The issue with respect to a trademark registration and renewal is whether the mark
meets the requirements of the USPTO. The issue in this proceeding is whether Petitioners can
establish the limited grounds for vacatur of an arbitration award pursuant to CPLR 7511. See
Matter of N.Y.C. Transit Auth. v. Transp. Workers' Union of Am., Local 100, AFL-CIO, 6 N.Y.3d
332, 336 (2005) ( “Courts may vacate an arbitrator’s award only on the grounds stated in CPLR
7511(b).”) There is absolutely no connection between the two matters.
Petitioners do not claim that CTSW has any confidential information from them as a
result of its filing the trademark application. Rotenstreich seems to have little to no memory of
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CTSW handling the trademark application at all. The affidavit he submitted in support of this
motion primarily rehashes all of his complaints about the arbitration before the Zabla panel. To
the extent he mentions CTSW at all, he does not even claim to have had any contact with anyone
at the firm, identify any attorney he spoke with, or claim to have provided any confidential
information to anyone at CTSW. In fact, Rotenstreich claims he did not even know that CTSW
had represented CGP on the trademark application or renewal until December 7, 2023.
Rotenstreich’s claim that CTSW did not inform him of the renewal notice from the
USPTO is demonstrably false. CTSW sent an email to Lesches and Rotenstreich about the
renewal and forwarded the email from the USPTO. (Cohen Aff. ¶ 10; Kolatch Aff. Ex. 4.) And
Lesches copied Rotesntreich on his responsive email requesting renewal of the trademark.
(Cohen Aff. ¶ 11; Kolatch Aff. Ex. 4.) 6 But his claimed lack of knowledge regarding the
trademark renewal or CTSW’s representation of CGP with respect to the renewal underscores
that CTSW is not privy to any privileged information related to this special proceeding as a result
of its filing the trademark application and renewal.
The cases relied on by Petitioners only underscore how inappropriate disqualification is
here. For example, in Akagi v. Turin Hous. Dev. Fund Co., Inc., 13 CIV. 5258 (KPF), 2017 WL
1076345 (S.D.N.Y. Mar. 22, 2017), one law firm represented two parties, both of whom were
defendants in a particular federal litigation. During the course of that litigation, the law firm then
represented one of those parties in a state lawsuit against the other party, in a case directly
related to the pending litigation. (Id. at *1.) The Court disqualified the firm because at the time
6
According to the Award, Rotenstreich admitted that he has not been involved with YJP for the
prior five years; thus, it is not surprising that he would not have taken any role or interest in the
trademark renewal. (See NYSCEF Doc. 12.)
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the law firm filed the state lawsuit, it was concurrently representing both parties in the federal
action, stating as follows:
[T]he claims from [the] State-Court Complaint are in substance, if not form, cross-claims
related to the Federal Action. They arise[] out of the Federal Action, and they relate[] to
the property that is the subject of the [Federal Action].
Id. at *13. The court concluded that the law firm was representing a cross-claim defendant and
cross-claim plaintiff at the same time, notwithstanding their differing interests at the time. Id. at
14.
Indeed, the Akagi court noted that courts disqualify attorneys “only in essentially two
kinds of cases: [i] where an attorney’s conflict of interests ... undermines the court’s confidence
in the vigor of the attorney’s representation of his client, or more commonly [ii] where the
attorney is at least potentially in a position to use privileged information concerning the other
side through prior representation.” Id. at *9. Neither of those issues are present here.
In Burda Media, Inc. v Blumenberg, 97 CIV. 7167 (RWS), 1999 WL 1021104 (S.D.N.Y.
Nov. 8, 1999) the attorney had represented the parties seeking his disqualification and the party
opposing his disqualification in that same litigation and therefore satisfied the “substantial
relationship” test between the prior and current representations. (Id. at * 3)
In Tekni-Plex, Inc. v. Meyner and Landis, 89 N.Y.2d 123, 134 (1996), unlike here, the
law firm representing defendant had represented plaintiff’s predecessor entity for 20 years,
including on matters “substantially related” to its current representation of defendant. The law
firm’s representation of defendant in that case clearly created the potential for it to use the former
client’s confidences against it. Id. at 136.
In Wiederman v Halpert, 172 A.D.3d 1442 (2d Dep’t 2019) plaintiff’s attorney had
previously represented defendants in a prior litigation and the court found “defendants
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established that the nature of their prior relationship with the plaintiff's attorney and the
confidential matters they revealed to the attorney resulted in a substantial risk of prejudice such
that the very appearance of a conflict of interest was sufficient to warrant disqualification.” Id. at
1444. In Bd. of Managers of McCaren Park Mews Condominium v. McCaren Park Mews LLC,
41 Misc. 3d 1224(A) (N.Y. Sup. 2013) plaintiff’s lawyer had represented defendant in two prior
litigations that were “substantially related” to the current lawsuit and the attorney “was privy to
protected confidences of [defendant], and reasonable probability of disclosure exist[ed] if [the
attorney] continue[d] to represent plaintiff.” Id. at *6,7.
In Abbondanza v. Siegel, 209 A.D.2d 1023, 1023 (4th Dep’t 1994) the firm had
represented the party moving for disqualification “on a variety of personal and business matters
over a 25–year period,” and had “an ongoing attorney-client relationship with [him] while it was
representing plaintiffs in their action against him.” Id. During the relevant time period, (i) he
sought the firm’s advice concerning two legal matters; (ii) the firm was annually updating the
books of a corporate client wholly owned by him; and (ii) the firm was storing his will in the
firm’s vault which named a partner in the firm as contingent executor of his estate. Id. The
Court found that fact that a firm partner was a contingent executor of his estate, by itself,
established an ongoing fiduciary relationship between the firm and the client.
In re Will of McElroy, 34 Misc. 3d 689, 692 (Sur. Ct. 2011) concerned a lawyer
representing the proponent of a will who had long represented the daughter of the decedent who
was a person under a disability whose interests were adversely affected by the relief requested by
the proponent of the will. The attorney was disqualified because the clients had “differing
interests” and there was a possibility of conflicted loyalties. Id.
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Recognizing that CTSW’s filing of the trademark application and renewal for the YJP
mark is not substantially related (or related at all) to the narrow issues in this special proceeding,
Petitioners contend that this Court should disqualify CTSW anyway because of the “appearance
of impropriety.” (Mov. Br. at 16.) This contention, however, is based on incorrect (or false)
facts and inapposite case law. First, as previously noted, neither this special proceeding, nor the
Award which it seeks to vacate, has anything to do with the registration or renewal of the YJP
mark.
Second, also as previously noted, Petitioners’ speculation that CTSW acted without
authorization to renew the trademark to provide some advantage to YJPF is demonstrably false.
Putting aside that Petitioners do not explain how renewing CGP’s ownership of the YJP mark
can possible help YJPF given that the relationship between the parties soured, Rotenstreich was
informed of
Preview
FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 SUPREME COURT OF THE STATE OF NEW YORK COUNTY OF NEW YORK --------------------------------------------------------------------------X IN RE APPLICATION OF: NAFTALI ROTENSTREICH and CHABAD OF GRAMERCY PARK, Index No.: 655503/2023 Petitioners, Motion Seq. 02 -against- SHAYA LESCHES and YJP FOUNDATION INC., Respondents. --------------------------------------------------------------------------X RESPONDENTS’ MEMORANDUM OF LAW IN OPPOSITION TO PETITIONERS’ MOTION TO DISQUALIFY COHEN TAUBER SPIEVACK & WAGNER P.C. Cohen Tauber Spievack & Wagner P.C. 420 Lexington Avenue, Suite 2400 New York, NY 10170 Tel.: 212-586-5800 Counsel for Respondents Shaya Lesches and YJP Foundation Inc. 1 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 TABLE OF CONTENTS TABLE OF AUTHORITIES........................................................................................................... ii PRELIMINARY STATEMENT...................................................................................................... 1 RELEVANT FACTS ....................................................................................................................... 2 ARGUMENT .................................................................................................................................. 7 I. STANDARD OF REVIEW FOR DISQUALIFICATION OF COUNSEL ............................ 7 II. PETITIONERS FAIL TO ESTABLISH GROUNDS FOR DISQUALIFICATION OF CTSW ............................................................................................................................... 8 A. CGP Is Not a Current Client of CTSW ............................................................................... 8 B. CTSW’s Prior Finite Representation of CGP is Unrelated to this Special Proceeding .... 10 C. CTSW’s Representation of GCP For Purposes of the Registration or Renewal of the Trademark is Not Adverse to the Issues in this Special Proceeding and CTSW Did Not Have Access to Confidential Material from GCP Related to this Special Proceeding......................................................................................................................... 12 CONCLUSION ............................................................................................................................. 17 i 2 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 TABLE OF AUTHORITIES Page(s) Cases Akagi v. Turin Hous. Dev. Fund Co., Inc., 13 CIV. 5258 (KPF), 2017 WL 1076345 (S.D.N.Y. Mar. 22, 2017) ................................13, 14 Applied Tech. Ltd. v. Watermaster of Am., Inc., 07 CIV3759LTSMHD, 2009 WL 804127 (S.D.N.Y. Mar. 26, 2009) .......................................9 Bd. of Managers of McCaren Park Mews Condominium v. McCaren Park Mews LLC, 41 Misc. 3d 1224(A) (N.Y. Sup. 2013) ...................................................................................15 Burda Media, Inc. v Blumenberg, 97 CIV. 7167 (RWS), 1999 WL 1021104 (S.D.N.Y. Nov. 8, 1999) .......................................14 Develop Don't Destroy Brooklyn v. Empire State Dev. Corp., 31 A.D.3d 144 (1st Dep't 2006) ...........................................................................................8, 17 Dominguez v. Community Health Plan of Suffolk, Inc., 284 A.D.2d 294 (2d Dep’t. 2001) ............................................................................................16 In Abbondanza v. Siegel, 209 A.D.2d 1023 (4th Dep’t 1994) ..........................................................................................15 Jamaica Pub. Serv. Co. Ltd. v. AIU Ins. Co., 92 N.Y.2d 631 (1998) ................................................................................................................7 Jamie v. Jamie, 309 A.D.2d 605 (1st Dep’t 2003) ............................................................................................12 Lightning Park, Inc. v. Wise Lerman & Katz, P.C., 197 A.D.2d 52 (1st Dep’t 1994) ..............................................................................................10 Lovitch v. Lovitch, 64 A.D.3d 710 (2d Dep’t 2009) ...............................................................................................16 Matter of N.Y.C. Transit Auth. v. Transp. Workers' Union of Am., Local 100, AFL-CIO, 6 N.Y.3d 332 (2005) ................................................................................................................12 Matter of New York State Correctional Officers and Police Benev. Ass'n, Inc. v State 94 N.Y.2d 321, 328 (1999) ......................................................................................................11 ii 3 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 Revise Clothing, Inc. v. Joe’s Jeans Subsidiary, Inc., 687 F. Supp. 2d 381 (S.D.N.Y. 2010)..................................................................................9, 10 S & S Hotel Ventures Ltd. P’ship v. 777 S.H. Corp., 69 N.Y.2d 437 (1987) ................................................................................................................7 Skanska USA Bldg. Inc. v. Atl. Yards B2 Owner, LLC, 146 A.D.3d 1 (1st Dep’t 2016) ..................................................................................................7 Solow v. W.R. Grace & Co., 83 N.Y.2d 303 (1994) ......................................................................................................7, 8, 10 Tekni-Plex, Inc. v. Meyner and Landis, 89 N.Y.2d 123 (1996) ..............................................................................................................14 Ullmann-Schneider v. Lacher & Lovell-Taylor PC, 110 A.D.3d 469 (1st Dep’t 2013) ..............................................................................................7 Wiederman v Halpert, 172 A.D.3d 1442 (2d Dep’t 2019) .....................................................................................14, 15 In re Will of McElroy, 34 Misc. 3d 689 (Sur. Ct. 2011)...............................................................................................15 Other Authorities CPLR 7511...........................................................................................................................5, 11, 12 iii 4 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 Respondents Shaya Lesches (“Lesches”) and YJP Foundation Inc. (“YJPF,” together with Lesches, “Respondents”) submit this memorandum of law in opposition to petitioners Naftali Rotenstreich (“Rotenstreich”) and Chabad of Gramercy Park’s (“CGP,” together with Rotenstreich, “Petitioners”) motion to disqualify Cohen Tauber Spievack & Wagner P.C. (“CTSW”) from representing Respondents in this special proceeding (the “Motion”). PRELIMINARY STATEMENT The Motion is the latest in Petitioners’ ongoing attempts to avoid or delay confirmation of an arbitration award issued by a Zabla panel on September 26, 2023, in favor of YJPF (the “Award”) and avoid their obligation to comply with the Award. On the basis of six hours of work done by CTSW in 2017 to register the YJP trademark and thirty minutes of work in 2023 to renew the mark, all of which was wholly unrelated to the arbitration and the Petition, and with absolutely no confidential information provided by Petitioners to CTSW – Petitioners move to disqualify CSTW from representing Respondents in this special proceeding. The Motion relies solely on revisionist history. Petitioners falsely contend that CGP has been a continuous client of CTSW from 2017 to the present and that the YJP trademark was the subject of the arbitration. Neither is true. First, CGP is not a current client of CTSW and was not a continuous client of CTSW from 2017 to the present. CTSW represented CGP in the very limited and finite task of filing the trademark application for the mark “YJP” in 2017 (CTSW performed 6 hours of work) and filing the renewal of the trademark in 2023 (CTSW performed 30 minutes of work) on October 13, 2023. Indeed, the relationship between CTSW and CGP was so limited and fleeting that Rotenstreich did not even remember that CTSW had handled the trademark application for the YJP mark and claims that he did not know that CTSW had filed the trademark renewal. 5 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 Second, the YJP trademark was not the subject of the arbitration. After dedicating most of their application for a preliminary injunction arguing that the subject matter of the arbitration was limited solely to the “narrow scope” of CGP’s Hazmana to Lesches – which does not include any claims related to the YJP trademark – Petitioners now reverse course and claim that the “very subject matter” of the arbitration was Lesches’ purported misappropriation of Petitioners’ “intellectual property and trademarks.” But neither the Hazmana nor the Award, nor any of Petitioners’ prior papers refer to this, or any, trademark. Other than the Motion, the first time Petitioners referred to the YJP trademark was on December 29, 2023, in their motion to amend the Petition wherein they improperly sought to enjoin Respondents’ use of the YJP mark (notwithstanding that the use of the YJP mark was not the subject of the Award and therefore not before the Court in this special proceeding). Even if Respondents’ use of the YJP mark had been the subject of the arbitration (and it was not) it still would be completely unrelated to any work done by CTSW with respect to the registration or renewal of that trademark. For the foregoing and other reasons set forth below, Petitioners’ motion to disqualify should be denied. RELEVANT FACTS1 CTSW’s Filing of the YJP Trademark Application and Renewal In late 2016, Lesches introduced CTSW partner Y. Jerry Cohen (“Cohen”) to Rotenstreich and CGP for the purposes of registering a trademark for the mark “YJP.” (Affirmation of Y. Jerry Cohen dated January 19, 2024 (“Cohen Aff.”) ¶ 3.) On March 30, 2017, CTSW filed the application on behalf of CGP. CTSW handled the matter pro bono and spent a Petitioners devote a substantial portion of the Motion rehashing their opposition to the Award – 1 which is irrelevant to the disqualification issue. 2 6 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 total of 6 hours working on the trademark application. (Id. 5.) There were no objections, and the trademark was registered on November 7, 2017. (Id.) CTSW did not perform any further work at that time – nor was there any additional work for CTSW to perform. (Id. ¶ 6.) On November 14, 2017, after the trademark was registered, Cohen sent Rotenstreich a letter enclosing the Certificate of Registration issued by the United States Patent and Trademark Office (“USPTO”) and informed him that renewals must be filed between the 5th and 6th year following the registration dates and that there are also 9 and 10-year renewal filings. (Cohen Aff. ¶ 7; Affirmation of Sari E. Kolatch, dated January 19, 2024 (“Kolatch Aff.”) Ex. 2.) Cohen recommended that CGP retain a service that sends advanced notice of the filing dates to track the renewal dates, suggested a specific service, and offered to provide additional contact information upon request. (Id.) Thus, it was clear from Cohen’s letter that CTSW would not be responsible for any further work with respect to the trademark – including tracking the renewal dates. (Id. ¶ 8.) On November 7, 2022, CTSW received an electronic notification from the USPTO that the trademark registration for “YJP” was due to be renewed on or before November 7, 2023. (Cohen Aff. ¶ 9.) Also on November 7, 2022, Cohen forwarded the USPTO email to Lesches, copying Rotenstreich, and asked if they wanted the trademark renewed, as follows: Goo[d] morning Shaya. We received the email below from the USPTO regarding renewing the “Chabad of Gramercy Park” trademark. Please let us know if you would like to have the trademark renewed. (Cohen Aff. ¶ 11; Kolatch Aff. Ex. 3.) Lesches responded “Yes, that would be much appreciated.” (Id. ¶ 12; Kolatch Aff. Ex. 4.) Rotenstreich was copied on Lesches’ response 3 7 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 email. (Id.) He did not object to Lesches’ request to renew the trademark or otherwise respond to CTSW’s or Lesches’ emails. (Cohen Aff. ¶ 12.)2 The USPTO’s renewal reminder was sent a year before the renewal deadline. (Id. ¶ 14.) Although CTSW obtained approval to renew the trademark on November 7, 2022, it did not complete the renewal until closer to the expiration date. On or about September 13, 2023, CTSW associate Daniel Arbov filed the renewal of the YJP trademark for CGP. (Id.) The entire process took 30 minutes. (Id.) Nobody from CTSW spoke to Rotenstreich or Lesches, relying on the email approval CTSW obtained in November 2022. (Id.) That was the extent of CTSW’s representation of CGP with respect to the trademark renewal. At the time that it filed the renewal application neither Cohen nor Arbov – nor anyone else at CTSW – was aware of any dispute between Lesches and Rotenstreich, or that they were involved in an arbitration that involved CGP and YJP. (Id. ¶ 16. ) CTSW did not represent or advise any of the parties during the arbitration. (Id.) CTSW has never received any confidential information from Rotenstreich with respect to any matter, including the trademark. (Id. ¶ 17.) YJPF and Lesches’ Retention of CTSW On November 7, 2023, Petitioners initiated this special proceeding against Lesches to vacate the Award and moved, by order to show cause, for (a) a temporary restraining order (“TRO”) enjoining a special meeting of the YJPF board to remove Rotenstreich from the board; In a desperate attempt to create a conflict where none exists, Petitioners opine that CTSW 2 purposely did not contact CGP to determine if the YJP mark was still in use when it received the renewal notice because “their other client YJPF was using the CGP trademark without CGP’s consent.” (See Mov. Br. at p. 9 n. 2) (emphasis in original). This argument fails given the email correspondence that conclusively proves that Rotenstreich was informed of the renewal notice and of Lesches’ request to have the mark renewed. (Kolatch Aff. Ex. 4.) If the use of the mark was without CGP’s consent, Rotenstreich could have and would have either objected to the renewal or objected to Lesches providing instruction to CTSW regarding the mark. He did neither. 4 8 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 and (b) a preliminary injunction staying compliance with the Award. Although Petitioners initiated this special proceeding against Lesches in his personal capacity, the Award that Petitioners seek to vacate is for the benefit of YJPF, not Lesches personally. The Award On September 26, 2023, the Zabla arbitration panel issued the Award. (NYSCEF Doc. No. 12.) The Award made certain factual findings with respect to a variety of issues pertaining to YJPF and ruled that CGP must transfer title to the premises located at 105-07 East 16th Street (the “Mansion”) to YJPF. (Id.) If it were unable to transfer title as a result of complications from a jumbo mortgage, YJPF shall have use of the Mansion for as long as it sees fit in exchange for monthly payments. (Id.) The Award also addressed compensation that CGP must pay to YJPF depending on the disposition of the Mansion. (Id.) The Award neither made any findings regarding, nor even referred, to any trademark or other intellectual property. The Petition to Vacate Rotenstreich and GCP filed a Petition pursuant to CPLR 7511. The Petition seeks to (i) vacate the award; (ii) enjoin Lesches from taking any action in reliance on the Award, including holding a meeting to remove Rotenstreich from the YJPF board; (iii) enjoin Lesches from using the Mansion; and (iv) enjoin Lesches from using any of the funds in the YJPF bank account. (NYSCEF Doc. No. 1.) The Petition neither referred to, nor sought any relief related to, any trademark or intellectual property. (Id.) On November 16, 2023, this Court denied injunctive relief on the grounds that Petitioners had not established a likelihood of success on the merits of the Petition. (NYSCEF Doc. No. 34.) 5 9 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 Kasowitz Conversation with CTSW Partner Stephen Wagner In late November 2023, while this special proceeding was pending, counsel for Petitioners asked three of the YJPF directors for an opportunity to speak with the them.. (Affirmation of Stephen Wagner, dated January 19, 2024 (“Wagner Aff.”) ¶ 3.) The directors subsequently informed the Kasowitz Firm that they would speak to them provided CTSW, counsel for YJPF, was present on the call. (Id.) The call was scheduled for December 1, 2023. (Id. ¶ 4.) On November 29, 2023, Kasowitz attorney Jack Atkin called Wagner regarding the fact that CTSW was going to be participating on the call with the YJPF directors. Atkin asked Wagner if he thought it was a conflict to represent YJPF since CTSW represented Lesches in the special proceeding and Kasowitz (presumably on behalf of Rotenstreich) would be making allegations of Lesches’ financial improprieties. Mr. Atkin stated that if CTSW represented the organization alone, it would look at those allegations in a certain way, but because it also represented Lesches, a conflict might exist. (Id. ¶ 5.) Wagner informed Atkin that he was not aware of any conflict. Atkin did not refer in any way to CTSW’s filing of the YJP trademark application or renewal.3 The meeting with the directors took place on December 1, 2023. The Kasowitz attorneys attending the meeting made no claim of Lesches’ purported financial improprieties but The November 29, 2023, conversation between Kasowitz and CTSW is a red herring and 3 wholly unrelated to the Motion. Nor could it be since Rotenstreich claims that he did not even realize that CGP had ever been represented by CTSW until December 7th -- a week after the conversation between Atkin and Wagner. The purported “conflict” raised at the time related solely to CTSW’s representation of YJPF and Lesches – not YJPF and CGP. (Wagner Aff. ¶¶ 5- 7.) There was no reason for CTSW to inform Kasowitz about its prior representation of CGP with respect to the trademark application because (1) presumably Rotenstreich knew CTSW handled that trademark application and renewal and (2) it had nothing to do with this case. 6 10 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 merely implored the directors to keep Rotenstreich on the YJPF board at least until after the December 8, 2024, conference with the Court. (Kolatch Aff. ¶ 6.) The Amended Petition On December 29, 2023, Petitioners moved to amend the Petition. On January 12, 2024, Petitioners filed the Amended Petition pursuant to a so ordered stipulation. The Amended Petition seeks to enjoin Respondents from using the YJP mark notwithstanding that it was not the subject of the Award and is not before this Court in this proceeding. (Kolatch Aff. Ex. 1, ¶ 6(ii).) ARGUMENT I. STANDARD OF REVIEW FOR DISQUALIFICATION OF COUNSEL A party has a right to be represented by counsel of its choice, and any restrictions on that right “must be carefully scrutinized.” Skanska USA Bldg. Inc. v. Atl. Yards B2 Owner, LLC, 146 A.D.3d 1 (1st Dep’t 2016). The party seeking disqualification bears a “heavy burden” of showing that the drastic measure of disqualification is warranted. Ullmann-Schneider v. Lacher & Lovell-Taylor PC, 110 A.D.3d 469, 469-70 (1st Dep’t 2013) (internal citations omitted). That is also true because disqualification motions (like this one) based on a non-existent “conflict” are often made for tactical purposes and are disfavored. See, e.g., S & S Hotel Ventures Ltd. P’ship v. 777 S.H. Corp., 69 N.Y.2d 437, 443 (1987) (“[D]isqualification of a plaintiff's law firm can stall and derail the proceedings, redounding to the strategic advantage of one party over another.”); See also Jamaica Pub. Serv. Co. Ltd. v. AIU Ins. Co., 92 N.Y.2d 631, 638 (1998) (“Allowing a party seeking disqualification to meet its burden by generalized assertions . . . would . . . encourage the strategic use of such motions.”); Solow v. W.R. Grace & Co., 83 N.Y.2d 303, 310 (1994) (“This Court and others have expressed concern that such disqualification 7 11 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 motions may be used frivolously as a litigation tactic when there is no real concern that a confidence has been abused.”). Motions (like this one) based on the possibility or “appearance” of impropriety are particularly disfavored. Develop Don't Destroy Brooklyn v. Empire State Dev. Corp., 31 A.D.3d 144, 153 (1st Dep't 2006) (“[T]he mere appearance of impropriety alone is insufficient to warrant disqualification. [T]he appearance of impropriety must be balanced against a party’s right to the counsel of its choice as well as the possibility that the motion for disqualification may be motivated purely by tactical considerations.”) To warrant disqualification, the moving party must establish the following: (1) the existence of a prior attorney-client relationship; (2) a substantial relationship between the prior and current representations; and (3) that the issues in litigation and the subject matter of the prior representation are adverse to the current representation, or counsel has had access to confidential material substantially related to the litigation. Solow, 83 N.Y.2d at 308. Petitioners fail to meet that burden. II. PETITIONERS FAIL TO ESTABLISH GROUNDS FOR DISQUALIFICATION OF CTSW A. CGP Is Not a Current Client of CTSW CGP is not a current client of CTSW. (Cohen Aff. ¶ 15.) Petitioners contend that CTSW’s representation of CGP was continuous from 2017 to the present because it was “monitoring” the trademark and is listed as “attorney of record” on the USPTO website. Petitioners are incorrect on the facts and the law, and this contention is, at best, disingenuous, 8 12 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 given that Petitioners claims that they first learned that CTSW represented CGP on December 7, 2023.4 (Rotenstreich Aff. ¶ 42.) Petitioners are trying to capitalize on the very limited work CTSW performed on CGP’s behalf in two isolated time periods to deprive Respondents of the attorney of their choice. CTSW’s representation of CGP in 2017 was limited to filing an application for the mark “YJP.” (Cohen Aff. ¶¶ 6,7.) Contrary to Petitioners’ claim, CTSW did not “monitor” the registered trademark from 2017 to the present. (Id.) CTSW listing as attorney of record on the application or renewal does not constitute an ongoing representation. See Applied Tech. Ltd. v. Watermaster of Am., Inc., 07 CIV3759LTSMHD, 2009 WL 804127, at *6 (S.D.N.Y. Mar. 26, 2009) (rejecting argument that lawyer listed as “attorney of record” on plaintiff’s trademark application with the USPTO constituted ongoing representation, holding that the registration of a trademark is a “finite task” which does not constitute ongoing representation.); see also, Revise Clothing, Inc. v. Joe’s Jeans Subsidiary, Inc., 687 F. Supp. 2d 381, 391 (S.D.N.Y. 2010) (a firm’s preliminary trademark searches that consumed “all of one and three-quarter hours of attorney time” is “de minimis legal work, performed as a courtesy for an existing client” and “is not sufficient to transform a limited engagement into a general retainer.”) Beyond that, the letter CTSW sent to CGP in 2017 made clear that it was CGP’s responsibility to track the trademark renewal dates and suggested a service that it could engage for that purpose. (Cohen Aff. ¶ 7; Kolatch Aff. Ex. 2.) For the same reasons CTSW’s renewal of the trademark on October 13, 2023 – a “finite task” that took 30 minutes – does not create an Petitioners distort CTSW’s December 14, 2023, letter to Petitioner’s counsel. (See Mov. Br. at 4 p. 13.) CTSW clearly stated that CGP “is not a current client of this firm and there is no conflict in our representation of Rabbi Lesches and YJPF in this proceeding.” (Affirmation of Mitchell Schrage, dated December 15, 2023 (“Schrage Aff.”), Ex. L, NYSCEF Doc. 57.) 9 13 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 “ongoing representation” simply because CTSW is listed as attorney of record. Revise Clothing, 687 F. Supp. 2d at 11 (settlement agreement that identified the law firm as the entity to be notified in the event of default does not extend an attorney-client relationship that has otherwise terminated.) CTSW did not drop CGP “like a hot potato” as Petitioners repeatedly claim. It cannot “drop” a client that it does not represent. It does not represent CGP and was not representing CGP at the time it was retained by Respondents. The entire premise for Petitioners’ claim of “continuous representation” is based solely on CTSW named as attorney of record on the USPTO website. As shown above, that does not constitute ongoing representation. B. CTSW’s Prior Finite Representation of CGP is Unrelated to this Special Proceeding The second prong that Petitioners must satisfy to support disqualification is that “there is a substantial relationship between the prior and current representations.” Solow, 83 N.Y.2d at 308. “In order to meet the ‘substantial relationship’ test, the issues in the present litigation must be ‘identical to’ or ‘essentially the same’ as those in the prior case before disqualification will be granted.” Lightning Park, Inc. v. Wise Lerman & Katz, P.C., 197 A.D.2d 52, 55 (1st Dep’t 1994) (reversing disqualification of counsel where movant failed to meet his burden to establish a substantial relationship between the issues in a present litigation and the subject matter of the prior representation). Petitioners’ attempt to recast this matter as involving a trademark dispute is both incorrect and irrelevant. After spending most of its first motion for injunctive relief contending that the only issues the Zabla panel was allowed to decide was what was contained in the “narrow scope” of the Hazmana (NYSCEF Doc. No. 1, ¶¶ 17, 21, 22), which notably makes no reference to any trademark, Petitioners now attempt to recast the arbitration and this special proceeding as actions 10 14 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 relating to Lesches’ misappropriation of Chabad’s trademark. (Mov. Br.5 at 4.) The 11th hour addition of a claim in the Amended Petition to enjoin Respondents’ use of the trademark cannot alter the facts. Neither the Hazmana, the Agreement to Arbitrate, nor the Award, makes any reference to the YJP Trademark. Nor did the Petition, or any of the documents, affidavits, memoranda, and exhibits Petitioners filed in support of its application for a temporary restraining order and preliminary injunction on November 7, 2023. Moreover, even if the Award did relate to the YJP trademark – and it did not – that issue is not before this Court in this Special Proceeding. The sole issue to be determined is whether Petitioners can meet their heavy burden to establish, by clear and convincing evidence, one of the four limited and narrow grounds for vacatur set forth in CPLR 7511. The Court may not consider the merits of the underlying arbitration award or reject the factual findings of the Zabla panel (which in all events did not relate to the YJP, or any, trademark). As the Court of Appeals held in Matter of New York State Correctional Officers and Police Benev. Ass'n, Inc. v State, A court cannot examine the merits of an arbitration award and substitute its judgment for that of the arbitrator simply because it believes its interpretation would be the better one. Indeed, even in circumstances where an arbitrator makes errors of law or fact, courts will not assume the role of overseers to conform the award to their sense of justice. 94 N.Y.2d 321, 328 (1999). Here, there is no, much less a substantial, relationship between CTSW’s representation of CGP for the limited purpose of filing a renewal of a registered trademark, and its representation “Mov. Br.” refers to the Memorandum of Law in Support of Petitioners’ Order to Show Cause 5 to Disqualify Cohen Tauber Spievack & Wager P.C. filed on December 15, 2023 (NYSCEF Doc. 43). 11 15 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 of Respondents in this special proceeding. The only issue before this Court is whether Petitioners can meet their burden to establish one of the very limited grounds pursuant to CPLR 7511 for vacatur of the Award. It has absolutely nothing to do with the renewal of the registered trademark. Nor was registration or renewal of the YJP trademark a subject matter of the Arbitration. Accordingly, there is no basis to disqualify CTSW. See Jamie v. Jamie, 309 A.D.2d 605, 606 (1st Dep’t 2003) (disqualification of law firm not warranted where its “previous services peripherally concerned property at issue” but the moving party failed to show either a “substantial relationship between the subject matter of such prior services” and the current claims or that counsel had received confidential information substantially related to the subject matter.) C. CTSW’s Representation of GCP For Purposes of the Registration or Renewal of the Trademark is Not Adverse to the Issues in this Special Proceeding and CTSW Did Not Have Access to Confidential Material from GCP Related to this Special Proceeding Petitioners’ conclusory assertion that CTSW’s representation of CGP for purposes of registering or renewing the YJP trademark is adverse to the issues in this proceeding is nonsensical. The issue with respect to a trademark registration and renewal is whether the mark meets the requirements of the USPTO. The issue in this proceeding is whether Petitioners can establish the limited grounds for vacatur of an arbitration award pursuant to CPLR 7511. See Matter of N.Y.C. Transit Auth. v. Transp. Workers' Union of Am., Local 100, AFL-CIO, 6 N.Y.3d 332, 336 (2005) ( “Courts may vacate an arbitrator’s award only on the grounds stated in CPLR 7511(b).”) There is absolutely no connection between the two matters. Petitioners do not claim that CTSW has any confidential information from them as a result of its filing the trademark application. Rotenstreich seems to have little to no memory of 12 16 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 CTSW handling the trademark application at all. The affidavit he submitted in support of this motion primarily rehashes all of his complaints about the arbitration before the Zabla panel. To the extent he mentions CTSW at all, he does not even claim to have had any contact with anyone at the firm, identify any attorney he spoke with, or claim to have provided any confidential information to anyone at CTSW. In fact, Rotenstreich claims he did not even know that CTSW had represented CGP on the trademark application or renewal until December 7, 2023. Rotenstreich’s claim that CTSW did not inform him of the renewal notice from the USPTO is demonstrably false. CTSW sent an email to Lesches and Rotenstreich about the renewal and forwarded the email from the USPTO. (Cohen Aff. ¶ 10; Kolatch Aff. Ex. 4.) And Lesches copied Rotesntreich on his responsive email requesting renewal of the trademark. (Cohen Aff. ¶ 11; Kolatch Aff. Ex. 4.) 6 But his claimed lack of knowledge regarding the trademark renewal or CTSW’s representation of CGP with respect to the renewal underscores that CTSW is not privy to any privileged information related to this special proceeding as a result of its filing the trademark application and renewal. The cases relied on by Petitioners only underscore how inappropriate disqualification is here. For example, in Akagi v. Turin Hous. Dev. Fund Co., Inc., 13 CIV. 5258 (KPF), 2017 WL 1076345 (S.D.N.Y. Mar. 22, 2017), one law firm represented two parties, both of whom were defendants in a particular federal litigation. During the course of that litigation, the law firm then represented one of those parties in a state lawsuit against the other party, in a case directly related to the pending litigation. (Id. at *1.) The Court disqualified the firm because at the time 6 According to the Award, Rotenstreich admitted that he has not been involved with YJP for the prior five years; thus, it is not surprising that he would not have taken any role or interest in the trademark renewal. (See NYSCEF Doc. 12.) 13 17 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 the law firm filed the state lawsuit, it was concurrently representing both parties in the federal action, stating as follows: [T]he claims from [the] State-Court Complaint are in substance, if not form, cross-claims related to the Federal Action. They arise[] out of the Federal Action, and they relate[] to the property that is the subject of the [Federal Action]. Id. at *13. The court concluded that the law firm was representing a cross-claim defendant and cross-claim plaintiff at the same time, notwithstanding their differing interests at the time. Id. at 14. Indeed, the Akagi court noted that courts disqualify attorneys “only in essentially two kinds of cases: [i] where an attorney’s conflict of interests ... undermines the court’s confidence in the vigor of the attorney’s representation of his client, or more commonly [ii] where the attorney is at least potentially in a position to use privileged information concerning the other side through prior representation.” Id. at *9. Neither of those issues are present here. In Burda Media, Inc. v Blumenberg, 97 CIV. 7167 (RWS), 1999 WL 1021104 (S.D.N.Y. Nov. 8, 1999) the attorney had represented the parties seeking his disqualification and the party opposing his disqualification in that same litigation and therefore satisfied the “substantial relationship” test between the prior and current representations. (Id. at * 3) In Tekni-Plex, Inc. v. Meyner and Landis, 89 N.Y.2d 123, 134 (1996), unlike here, the law firm representing defendant had represented plaintiff’s predecessor entity for 20 years, including on matters “substantially related” to its current representation of defendant. The law firm’s representation of defendant in that case clearly created the potential for it to use the former client’s confidences against it. Id. at 136. In Wiederman v Halpert, 172 A.D.3d 1442 (2d Dep’t 2019) plaintiff’s attorney had previously represented defendants in a prior litigation and the court found “defendants 14 18 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 established that the nature of their prior relationship with the plaintiff's attorney and the confidential matters they revealed to the attorney resulted in a substantial risk of prejudice such that the very appearance of a conflict of interest was sufficient to warrant disqualification.” Id. at 1444. In Bd. of Managers of McCaren Park Mews Condominium v. McCaren Park Mews LLC, 41 Misc. 3d 1224(A) (N.Y. Sup. 2013) plaintiff’s lawyer had represented defendant in two prior litigations that were “substantially related” to the current lawsuit and the attorney “was privy to protected confidences of [defendant], and reasonable probability of disclosure exist[ed] if [the attorney] continue[d] to represent plaintiff.” Id. at *6,7. In Abbondanza v. Siegel, 209 A.D.2d 1023, 1023 (4th Dep’t 1994) the firm had represented the party moving for disqualification “on a variety of personal and business matters over a 25–year period,” and had “an ongoing attorney-client relationship with [him] while it was representing plaintiffs in their action against him.” Id. During the relevant time period, (i) he sought the firm’s advice concerning two legal matters; (ii) the firm was annually updating the books of a corporate client wholly owned by him; and (ii) the firm was storing his will in the firm’s vault which named a partner in the firm as contingent executor of his estate. Id. The Court found that fact that a firm partner was a contingent executor of his estate, by itself, established an ongoing fiduciary relationship between the firm and the client. In re Will of McElroy, 34 Misc. 3d 689, 692 (Sur. Ct. 2011) concerned a lawyer representing the proponent of a will who had long represented the daughter of the decedent who was a person under a disability whose interests were adversely affected by the relief requested by the proponent of the will. The attorney was disqualified because the clients had “differing interests” and there was a possibility of conflicted loyalties. Id. 15 19 of 22 FILED: NEW YORK COUNTY CLERK 01/19/2024 03:14 PM INDEX NO. 655503/2023 NYSCEF DOC. NO. 78 RECEIVED NYSCEF: 01/19/2024 Recognizing that CTSW’s filing of the trademark application and renewal for the YJP mark is not substantially related (or related at all) to the narrow issues in this special proceeding, Petitioners contend that this Court should disqualify CTSW anyway because of the “appearance of impropriety.” (Mov. Br. at 16.) This contention, however, is based on incorrect (or false) facts and inapposite case law. First, as previously noted, neither this special proceeding, nor the Award which it seeks to vacate, has anything to do with the registration or renewal of the YJP mark. Second, also as previously noted, Petitioners’ speculation that CTSW acted without authorization to renew the trademark to provide some advantage to YJPF is demonstrably false. Putting aside that Petitioners do not explain how renewing CGP’s ownership of the YJP mark can possible help YJPF given that the relationship between the parties soured, Rotenstreich was informed of