United States District Court, D. Delaware
David M. Powlen, Esquire and Kevin G. Collins of Barnes & Thornburg LLP, Wilmington, Delaware, Counsel for Plaintiff. Of James R. Burdett, Esquire, Joseph D. Lewis, Esquire and Mark R. Owens, Esquire of Barnes & Thornburg LLP.
Robert W. Whetzel, Esquire and Todd A. Coomes, Esquire of Richards, Layton & Finger, PA, Wilmington, Delaware, Counsel for Defendants. Of Alan H. Fein, Esquire and Joshua Munn, Esquire of Stearns Weaver Miller Weisler Alhadeff & Sitterson, P.A.
Sue L. Robinson, District Judge.
On December 3, 2010, Benihana of Tokyo, Inc. (" plaintiff" or " BOT" ) filed this complaint comprising six causes of action: (1) breach of contract; (2) specific performance; (3) conversion; (4) false designation of origin; (5) trademark infringement; and (6) declaratory judgment. (D.I. 1 at 6-12) Plaintiff amended its complaint on December 7, 2010. (D.I. 6) On February 4, 2011, defendants Benihana, Inc. (" BI" ) and Noodle Time, Inc. (" Noodle Time," collectively " defendants" ) filed a motion to dismiss plaintiff's amended complaint pursuant to Federal Rule of Civil Procedure 12(b)(6). (D.I. 11) In lieu of a responsive brief, plaintiff filed a motion to strike/exclude (D.I. 15), which the court granted in part and denied in part.
On December 13, 2011, the court granted in part and denied in part defendants' motion to dismiss. (D.I. 32) The court granted BOT leave to amend its complaint. On January 9, 2012, plaintiff filed its second amended complaint, alleging causes of action for: (1) breach of contract; (2) specific performance; (3) conversion; (4) false designation of origin (or false advertising); and (5) declaratory judgment. (D.I. 35) Defendants denied the allegations and asserted counterclaims against BOT for breach of contract. (D.I. 61)
Following a teleconference with the court, a scheduling order was entered, setting a discovery deadline of January 24, 2014. (D.I. 63) On February 14, 2014, defendants filed a motion for summary judgment. (D.I. 77) The matter is fully briefed. (D.I. 78, 79, 82, 83, 84, 86, 87) The court has jurisdiction pursuant to 28 U.S.C. § § 1331, 1332 and 1338.
Plaintiff is a New York corporation with a principal place of business in New York, New York. Defendant BI is a Delaware corporation and defendant Noodle Time is a Florida corporation. Both defendants have a principal place of business at the same address in Miami, Florida. Noodle Time is a subsidiary of BI.
BOT was founded by Rocky Aoki (" Aoki" ) in 1963 and opened its first Japanese teppanyaki steakhouse called " Benihana" in New York. The concept proved popular; by 1972 BOT owned, operated or licensed approximately 18 restaurants grossing $12 million. Several years later, Aoki formed Benihana National Corporation (" BNC" ), taking the company public to raise capital. Aoki served as chairman of both BNC and privately-held BOT, retaining 51% of BNC's common stock and keeping about 30 restaurants in BOT. Later, BNC announced that it would acquire BOT's operations in the United States and rights to BOT's trademarks. Defendant BI was formed, then acquired BNC in a 1995 merger transaction (" 1995 transaction" ). Aoki continued to serve as ...