MANHATTAN (CN) – Taking its landlord of 25 years to court over the use of the name Webster Hall, the tenant behind the iconic New York City nightclub wants a federal judge to name it owner of the trademark.
Webster Hall is one of New York City's oldest nightclubs and just named "Nightclub of the Year" last month by the concert industry website Pollstar.com.
As explained in the March 7 complaint, the building on East 11th Street in Manhattan was erected in 1886 but went by the names Casa Galicia and The Ritz in the 1970s and ’80s.
Webster Hall Entertainment Group says its predecessor began leasing the building in 1992 and reclaimed the name after the 20-year hiatus. Now after over two decades of business, it says its landlord Unity Gallega of the United States is asserting rights to the name.
Unity Gallega reversed course, according to the complaint, because Webster Hall Entertainment Group has been exploring the sale of its business assets to a third party.
Seeing dollar signs, Unity Gallega wrote to the tenant last month that it would “consider licensing any such registered mark(s) to the tenant of the demised premises or a successor tenant.”
When Webster Hall Entertainment reminded Unity that it abandoned the trademark, according to the complaint, Unity threatened to sue.
“The fact is, however, that defendants have never ‘licensed’ the ‘Webster Hall’ name or the Webster Hall marks to Webster Hall Entertainment,” the complaint states. “Indeed, under black letter U.S. trademark law, a trademark licensor is under a legal obligation to exercise quality control over any licensed use of its trademark by a licensee. Simply put, defendants played no role concerning, and exercised no quality control over, Webster Hall Entertainment’s decades-long use of Webster Hall and Webster Hall New York City, or the other Webster Hall marks.”
The 13-page complaint brings three counts for declaratory judgment, asking a federal judge to find that it is the noninfringing owner of the trademark and that there has been no trademark dilution or unfair competition.
Webster Hall Entertainment Corp. is represented by Brendan O'Rourke at Proskauer Rose.
A representative of Unity Gallega declined to comment when reached by telephone Wednesday afternoon.
U.S. District Judge Paul Gardephe will preside over the case.
The private Spanish social club that Unity Gallega ran at the Greenwich Village locale in the 1970s continues to operate under Unity Gallega's ownership in Astoria, Queens.
When it was called The Ritz in the ’80s, the nightclub focused on rock and new wave acts, including the American debut performance by U2 and an infamous near-riot in response to the post-Sex Pistols art-punk act Public Image Limited.
The Ritz was one of the first nightclubs to incorporate a state-of-the-art video projection component, which was later copied by most nightclubs that followed.
Webster Hall notes that Unity Gallega never challenged it at any point during the registration process for the Webster Hall marks dating back to 1995.
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