Gracie Baked LLC et al v. GiftRocket, Inc.

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UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
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GRACIE BAKED LLC, WECARE RG,
INC., and MILLERCOBB LLC, on behalf
of themselves and all others similarly
situated,
Plaintiffs,
v.
GIFTROCKET, INC., TREMENDOUS,
INC., NICHOLAUS BAUM, KAPIL
KALE, JONATHAN PINES, BENJAMIN
KUBIC, SUNRISE BANKS, N.A.,
GIFTROCKET, LLC, TREMENDOUS
LLC, and TREMENDOUS PARENT, INC.,
Defendants.
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MEMORANDUM AND ORDER
22-CV-04019 (GRB) (VMS)
GARY R. BROWN, United States District Judge:
Plaintiffs Gracie Baked LLC, WeCare RG, Inc., and Millercobb LLC, on behalf of
themselves and all others similarly situated, bring this class action suit for damages and equitable
relief, alleging, in sum and substance, that defendants engaged in a scheme to sell consumers
money transfers packaged as gift cards bearing the imprimatur of certain businesses when, in fact,
the cards were simply money transfers unaffiliated with those businesses. Plaintiffs bring their
suit against several defendants: GiftRocket, Inc.; Tremendous, Inc.; Nicholas Baum, Kapil Kale,
and Jonathan Pines (GiftRocket’s founders); Benjamin Kubic (a corporate officer); Sunrise Bank,
N.A.; and GiftRocket, LLC, Tremendous, LLC, and Tremendous Parent, Inc., asserting claims
under the Lanham Act, the New York General Business Law, and the common law of unfair
competition. Defendant Kubic moved for summary judgment on all claims asserted against him,
FILED
CLERK
U.S. DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
LONG ISLAND OFFICE
12/22/2025 1:07 pm
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while plaintiffs similarly seek summary judgment on those claims. Both parties also request
attorneys’ fees under the Lanham Act. For the reasons that follow, these motions are denied.
BACKGROUND
About fifteen years ago, defendants Nicholas Baum, Kapil Kale, and Jonathan Pines
founded GiftRocket. See Pls.’ Resp. to Def.’s Rule 56 Stmt. ¶ 1 (“Rule 56.1 Stmt.”) (Dkt. #252-
1). The company’s website, GiftRocket.com, allowed purchasers to send money to a recipient and
“suggest” that the recipient use the money at a particular business. See Baum Decl. ¶ 4 (Dkt. #251-
5). These “suggestions” are not binding and the money transfers do not function as gift cards.
Defendants’ product can be characterized as the digital equivalent of a handwritten card saying “I
suggest you spend this at Chick-fil-A” along with a $20 bill. See Sec. Am. Compl. ¶¶ 76–77 (Dkt.
#137). Just as that $20 can be spent at McDonald’s, the zoo, or anywhere else, money received
through GiftRocket can also be spent somewhere wholly separate from the purchaser’s preferred
destination.
Plaintiffs allege that, despite the nonbinding “suggestions,” GiftRocket “misleadingly
markets itself as selling gift cards,” implying that the gift cards can be redeemed only at certain
businesses, and that GiftRocket is affiliated with the suggested business. Id. ¶¶ 6, 74. Plaintiffs
allege that GiftRocket tricked people into thinking that they were buying gift cards for specific
businesses when, in fact, “all that was purchased was just a very expensive way to transfer money.”
Id. ¶¶ 78, 82.1 Plaintiffs maintain that GiftRocket’s advertising strategy “explicitly uses the term
‘gift card,’” and that this tactic amounts to a simple “bait and switch . . . misdirect[ing] consumers
who are searching for real gift cards to a particular business to the GiftRocket website.” Id. ¶ 64.
1 According to the Amended Complaint, GiftRocket charged a flat $2 fee per transfer plus an additional fee of 5% of
the amount of the gift. Thus, it is alleged that a $100 gift cost the consumer $7, while services such as Paypal or
Venmo charge “little or nothing” for personal transfers. Am. Compl. ¶¶ 79-80.
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Ten years after the company’s founding, defendant Benjamin Kubic joined the business as
the Vice President of Business Operations. See Rule 56.1 Stmt. ¶ 3; Kubic Tr. 15:9–12 (Dkt. #251-
7). Kubic spent the lion’s share of his time working on a separate but related product—called
“Tremendous”—which also allowed purchasers to send money to designated recipients.2 See Rule
56.1 Stmt. ¶ 3–4; Baum Decl. ¶ 6. He oversaw several departments at Tremendous. See Kubic
Tr. 15:17–25. But Kubic was not firewalled from GiftRocket’s operations. He had some
involvement in operating the support team for GiftRocket.com, see Kale Tr. 12:19–13:3 (Dkt.
#252-9); Rule 56.1 Stmt. ¶ 15, worked with a banking partner for the business, see Kale Tr. at
51:15–20; Baum Tr. 18:5–19, 19:15–18 (Dkt. #252-20); Rule 56.1 Stmt. ¶ 15, and found an
alternate provider for business data crucial to GiftRocket’s product, see Kubic Tr. 220:5–21; Rule
56.1 Stmt. ¶ 15. Kubic always had a direct supervisor at GiftRocket. Rule 56.1 Stmt. ¶ 7.
Kubic played no role in the initial development of the GiftRocket product or creating the
allegedly misleading “suggestion” feature. See id. ¶ 9. His arrival at the company substantially
post-dated GiftRocket’s use of the phrase “gift card” in connection with its money transfer product.
Id. ¶ 11. Kubic owned shares of some of the defendant entities, though the parties offer different
interpretations as to the importance of that ownership. See id. ¶ 16.
Nevertheless, several facts serve to demonstrate his knowledge of the scheme and his key
role in its perpetuation. First, on February 7, 2022, Kubic asked an employee “do we have any
sort of page on GR letting business owners know where they can ask to have their businesses
removed?” See Ex. 30 (Dkt. #252-32). That employee responded “we do not . . . I think this is
essentially that’s how [GiftRocket] makes money.” Id. Later, in 2023, GiftRocket faced an
existential crisis when Yelp – the entity that provided GiftRocket with the data about businesses
2 The Tremendous product did not include the allegedly misleading “suggested use” feature. Baum Decl. ¶ 6.
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used to generate gift card “suggestions” – withdrew its support based on complaints. Rule 56.1
Stmt. ¶¶ 62-64. While the parties offer competing characterizations of the Kubic’s role, it is
undisputed that he unsuccessfully negotiated with Yelp to provide continued support and, when
that effort failed, identified and secured the support of Google Places to provide continued access
to data about businesses, allowing the GiftRocket gift card activity to continue. See Pls.’ Resp.
18; Ex. 43 (Dkt. #252-45); Ex. 46 (Dkt. #252-48); Kubic Tr. 220:5–223:16 (Dkt. #252-6); Rule
56.1 Stmt. ¶¶ 65-77. While facilitating this transition from Yelp to Google, Kubic wrote:
As far as I can tell, Google Places . . . doesn’t explicitly prohibit the [GiftRocket]
use case, but there are some general terms around misuse of IP that I’m sure they
could rely on to shut us down if they wanted to.
Ex. 46. GiftRocket used the Google Places data to populate its list of suggested businesses on its
website. Kubic Tr. 224:9–11. At another crucial juncture, Sunrise Bank, GiftRocket’s banking
partner, whose services were deemed “critical” to the operation, refused to renew its contract. Rule
56.1 Stmt. ¶ 79. Kubic unsuccessfully tried to convince Sunrise Bank to remain, led the search for
a new banking partner, located SouthState Bank, and retained responsibility for maintaining that
relationship. Id. ¶¶ 80-82.
In July 2022, Gracie Baked LLC and WeCare RG, Inc. brought a class action lawsuit
against GiftRocket, seeking “redress for Defendant’s systematic violations of federal and state
unfair competition laws.” Compl. ¶ 1 (Dkt. #1). About a month later, plaintiffs filed an amended
complaint adding Millercobb LLC as a plaintiff and several new defendants, including Kubic. See
First Am. Compl. ¶ 46 (Dkt. #29). The amended complaint also named GiftRocket’s three
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founders as defendants. See id. ¶¶ 40–44. And it added Tremendous, Inc. as a defendant because
GiftRocket “began submitting corporate filings” under this name in October 2022.3 Id. ¶ 38–39.
In March 2025, Kubic filed a motion for summary judgment. See Kubic Mot. (Dkt. #251).
As part of that motion, he requested attorney fees under the Lanham Act. Id. at 21–22. Plaintiffs
responded by cross-moving for summary judgment and attorneys’ fees. See Pls.’ Resp. 27–29
(Dkt. #252).
STANDARD OF REVIEW
Summary judgment is appropriate when “there is no genuine dispute as to any material fact
and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). “An issue of
fact is genuine if the evidence is such that a reasonable jury could return a verdict for the
nonmoving party.” Frost v. N.Y.C. Police Dep’t, 980 F.3d 231, 242 (2d Cir. 2020) (quoting SCR
Joint Venture L.P. v. Warshawsky, 559 F.3d 133, 137 (2d Cir. 2009)). “If the evidence is merely
colorable, or is not significantly probative, summary judgment may be granted.” Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 249–50 (1986) (citations omitted). The movant bears the burden
of showing “the absence of a genuine issue of material fact.” Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986). These determinations are further guided by the parties’ submissions of statements
of undisputed fact pursuant to Rule 56.1, which can help narrow the issues. Davis v. Town of
Hempstead, No. 14-CV-903 (JMA)(GRB), 2019 WL 235644, at *2 (E.D.N.Y. Jan. 16, 2019)
(discussing procedures surrounding Rule 56.1 statements))
3 In June 2023, defendant Tremendous, Inc. restructured into three entities: defendants GiftRocket LLC, Tremendous
LLC, and Tremendous Parent, Inc. Rule 56.1 Stmt. ¶ 17. GiftRocket LLC and Tremendous LLC are each wholly
owned by Tremendous Parent, Inc. Id. ¶ 18.
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DISCUSSION
I. Lanham Act Claims
Plaintiffs bring two claims under the Lanham Act: one for unfair competition and false
affiliation and another for false advertising. Sec. Am. Compl. ¶¶ 301, 312 (claims one and two).
Section 43 of the Lanham Act has become “the foremost federal vehicle for the assertion
of two major and distinct types of unfair competition: (1) infringement of even unregistered marks,
names and trade dress, and (2) ‘false advertising.’” 4 McCarthy on Trademarks and Unfair
Competition § 27:9 (5th ed.) (internal quotation marks omitted) (“McCarthy on Trademarks”).
Section 43 provides:
“(1) Any person who, on or in connection with any goods or services, or any
container for goods, uses in commerce any word, term, name, symbol, or device,
or any combination thereof, or any false designation of origin, false or misleading
description of fact, or false or misleading representation of fact, which—
“(A) is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person, or as to
the origin, sponsorship, or approval of his or her goods, services, or commercial
activities by another person, or
“(B) in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another person's
goods, services, or commercial activities,
“shall be liable in a civil action by any person who believes that he or she is or is
likely to be damaged by such act.”
15 U.S.C. § 1125(a). This provision “creates two distinct bases of liability: false association and
false advertising.” Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 122
(2014).
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Plaintiffs allege that Kubic is liable under both theories. Starting with false association:
plaintiffs allege that defendants here, including Kubic, “have engaged in conduct with regards to
the promotion of its GiftRocket Business Directory that falsely affiliates plaintiffs and class
members with GiftRocket, causing potential customers to purchase GiftRocket Prepaid Gifts
which cannot be used with plaintiffs and class members.” Sec. Am. Compl. ¶ 301. And as for
false advertising, plaintiffs claim that defendants “have engaged in a course of conduct with respect
to the advertising of its GiftRocket Business Directory that contains false and/or misleading
statements of fact, or omissions of essential facts, including those about Plaintiffs and class
members, which did not consent to partner with GiftRocket.” Id. ¶ 312. Kubic counters that he
cannot be held personally liable on either count because of what he characterizes as a minimal role
in GiftRocket’s allegedly unlawful conduct.
A trademark holder whose rights have been violated by a corporation may sue not only that
corporation, but also an officer of that corporation. “A corporate officer is individually liable for
the torts he personally commits and cannot shield himself behind a corporation when he is an
actual participant in the tort.” Donsco, Inc. v. Casper Corp., 587 F.2d 602, 606 (3d Cir. 1978).
Several district courts have limited such liability to situations in which that officer “is a moving,
active, conscious force behind the defendant corporation’s infringement.” Pado, Inc. v. SG
Trademark Holding Co. LLC, 537 F. Supp. 3d 414, 427 (E.D.N.Y. 2021) (citation omitted); see
Luxottica Grp., S.p.A. v. Airport Mini Mall, LLC, 932 F.3d 1303, 1317 n.8 (11th Cir. 2019)
(individual defendants may be held liable if they “were the ‘moving, active, conscious forces’”
behind infringement) (alteration adopted). Other courts have taken a somewhat broader view of
individual liability. See, e.g., Louis Vuitton Malletier S.A. v. Sunny Merch. Corp., 97 F. Supp. 3d
485, 501 (S.D.N.Y. 2015) (“A corporate officer is liable for trademark infringement if he ‘directs,
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controls, ratifies, participates in, or is the moving force behind the infringing activity’”), quoting
ABC Rug & Carpet Cleaning Serv., Inc. v. ABC Rug Cleaners, Inc., 2010 WL 10091076, at *13
(S.D.N.Y Feb. 10, 2010). The Second Circuit has, in an unpublished, non-precedential order,
seemingly adopted the “moving force” language as one acceptable formulation. Victorinox AG v.
B&F Sys., Inc., 709 F. App'x 44, 50 n.6 (2d Cir. 2017), as amended (Oct. 4, 2017) (“[W]e agree
with the district court that Meyer was an ‘active conscious force’ behind Defendants’
infringement.”).
What the Circuit has not done, however, is provide factors or a test to define this
formulation. In the absence of such a test, defendant attempts to cobble one together by examining
district court cases which courts found individual liability for infringing activities under these
sections. Hence, Kubic urges the Court to consider whether he was (1) “the sole shareholder and
employee, and therefore must have approved of the infringing act,” Mayes v. Summit Ent. Corp.,
287 F. Supp. 3d 200, 212 (E.D.N.Y. 2018); (2) a “direct participant in the infringing activity,” id.;
(3) “primarily responsible for designing, marketing and developing an infringing product,” Louis
Vuitton, 97 F. Supp. 3d at 501; and (4) an individual who “authorized and approved the acts of
unfair competition which are the basis of the corporation’s liability.” Cartier v. Aaron Faber, Inc.,
512 F. Supp. 2d 165, 170 (S.D.N.Y. 2007). Contending that none of these factors apply to him,
defendant seeks entry of summary judgment.
This argument fails for several reasons. First, the identified factors do not fully weigh in
Kubic’s favor. While he was not the sole shareholder, he had some ownership interest in several
corporate defendants. More importantly, a jury could find that, given his role in resourcing the
business data feed involving unconsenting businesses while recognizing that terms related to
“misuse of IP” that could “shut us down,” that Kubic was a “direct participant in the infringing
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activity.” Ex. 46. The same could be said of Kubic’s efforts to resuscitate the banking
relationships which powered the gift card scheme, aware that these activities were “essentially …
how GR makes money.” Pls.’ Resp. 11.
The fact that Kubic arrived well after implementation of the scheme, making it impossible
for him to have been responsible for its creation, is not dispositive. The gift card scheme, as
alleged, involved ongoing and evolving infringement against various businesses. Thus, by
procuring access to the Google Places database, Kubic provided GiftRocket with the ability to
commit new infringing acts against additional, previously unaffected trademark holders. In this
way, he could be compared with corporate officers who arranged for the purchase of infringing
products. Compare Cartier, 512 F. Supp. 2d at 170 (individual defendant liable when he
“personally arranged for” infringing watches “to be purchased, modified, and offered for sale”);
Chloe v. Queen Bee of Beverly Hills, LLC, No. 06-CV-3140 (RJH), 2011 WL 3678802, at *6
(S.D.N.Y. Aug. 19, 2011) (individual defendant liable when he “made the purchase decisions” and
“specifically purchased” certain counterfeit bags).
Kubic’s counsel emphasizes that “the GiftRocket product was designed and built more than
ten years before Mr. Kubic was hired.” Kubic Mot. at 13-14. Yet the nature of the claims and
GiftRocket’s evolving trademark infringement substantially undermine this argument. Louis
Vuitton provides a telling comparison: there, a single plaintiff brought an action against defendants
selling sunglasses with confusingly similar designs and marked with “LOUIS•V and LOUIS
VALENTIN.” Louis Vuitton, 97 F. Supp. 3d at 491. Thus, the plan to victimize the plaintiff began
at a discreet point in time. Here, by contrast, the GiftRocket model, which continually allowed
consumers to choose from hundreds of different vendors, there were, undoubtedly, additional acts
of alleged false association and false advertising as against previously unaffected businesses well
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after Kubic’s arrival. Thus, Kubic was present and allegedly involved at the inception of much of
the infringing activity.
Second, these four factors do not represent a comprehensive test, nor would such a list of
considerations likely be deemed exhaustive. For example, the court in Louis Vuitton discussed
extending liability to a corporate officer who “ratifies [or] participates in” infringing activities. 97
F. Supp. 3d at 501. Here, a jury might view some combination of these factors, along with other
considerations that may be introduced at trial, as a basis to find liability. Given the facts here, a
rational trier of fact may well render an affirmative verdict on the question of whether Kubic was
a “moving, active, conscious force” behind the infringement. Thus, Kubic is not entitled to
summary judgment.
Even more easily resolved is plaintiffs’ cross-motion for summary judgment against Kubic.
Substantively, plaintiffs argue the contrapositive of Kubic’s flawed position. Claiming that Kubic
was a corporate officer who “authorized and approved the acts of unfair competition” and was a
“direct participant” therein, plaintiffs contend the undisputed facts render him a “moving, active
conscious force” behind GiftRocket’s alleged infringement. Pls.’ Resp. at 21. However, just as
defendants incorrectly limit the “factors” underlying individual liability, a jury may, or may not,
draw the same inferences and conclusions urged by plaintiffs from the factual record here.
Therefore, plaintiffs are not entitled to summary judgment against Kubic.4
4 For the first time in their opposition to Kubic’s motion for summary judgment, Plaintiffs argue that Kubic is also
vicariously, jointly, and contributorily liable. Plaintiffs did not plead any of these theories of liability in their
complaint activity. But it is “well-settled”—both inside this Circuit and out—that “a party may not raise new
claims or theories of liability for the first time in opposition to summary judgment.” Nagel v. Cnty. of Orange,
No. 09-cv-9960 (CS), 2013 WL 1285465, at *5 (S.D.N.Y. Mar. 28, 2013); see, e.g., Bader v. Special Metals
Corp., 985 F. Supp. 2d 291, 319 (N.D.N.Y. 2013) (“[A] party may not raise new claims or theories of liability for
the first time in opposition to summary judgment.” (citation omitted)); Casseus v. Verizon N.Y., Inc., No. 08-cv-
4119, 2010 WL 2736935, at *14 (E.D.N.Y. July 9, 2010) (“[C]ourts generally do not consider claims or
completely new theories of liability asserted for the first time in opposition to summary judgment.”); Josey v.
John R. Hollingsworth Corp., 996 F.2d 632, 641–42 (3d Cir. 1993) (plaintiff who set forth one theory of liability
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Procedurally, plaintiffs’ motion proves bizarre, as the motion appears conditioned upon
prevailing on an as-yet-filed motion for summary judgment against other defendants. See, e.g. id.
at 6 (referring to “Plaintiff’s eventual affirmative summary judgment motions on liability” and
noting “Plaintiffs are not currently asking the Court to determine whether Plaintiffs have proven
their substantive claims.”). Given the constitutional bar against advisory opinions, it remains
unclear what plaintiffs are seeking. Whatever it is, it is denied.
As summary judgment is denied, imposition of attorneys’ fees under the Lanham Act is
plainly unwarranted.
II. New York General Business Law Claims
In Scholder v. Sioux Honey Ass'n Coop., No. 16-CV-5369 (GRB), 2022 WL 125742, at
*2–3 (E.D.N.Y. Jan. 13, 2022), this Court summarized the applicable legal standards for claims
arising under GBL § 349 and GBL § 350:
Section 349 of the New York General Business Law (“GBL”) prohibits “deceptive
acts and practices in the conduct of any business, trade or commerce or in furnishing
of any service.” N.Y. Gen. Bus. Law § 349. A deceptive act or practice is one that
is “likely to mislead a reasonable consumer acting reasonably under the
circumstances.” Maurizio v. Goldsmith, 230 F.3d 518, 521 (2d Cir. 2000). Section
350 prohibits “[f]alse advertising in the conduct of any business, trade or commerce
or in the furnishing of any service.” N.Y. Gen. Bus. Law § 350. False advertising
means “advertising, including labeling ... if such advertising is misleading in a
material respect.” Id. § 350-a(1). Both provisions permit “any person who has
been injured by reason of any violation” thereof to bring an action to recover
damages or to enjoin the deceptive act or practice, or both. Id. §§ 349(h), 350-e(3).
in his pleadings could not advance separate theory after discovery closed); Coleman v. Quaker Oats Co., 232 F.3d
1271, 1292 (9th Cir. 2000) (same). Cf. Gilmour v. Gates, McDonald & Co., 382 F.3d 1312, 1315 (11th Cir. 2004)
(“A plaintiff may not amend her complaint through argument in a brief opposing summary judgment.”). Plaintiffs
have accordingly forfeited their ability to argue that Kubic is vicariously, jointly, and contributorily liable.
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“The standard for recovery under General Business Law § 350, while specific to
false advertising, is otherwise identical to § 349.” Goshen v. Mut. Life Ins. Co. of
N.Y., 98 N.Y.2d 314, 324 n.1 (2002); see also Gristede's Foods Inc. v. Unkechauge
Nation, 532 F. Supp. 2d 439, 451 (E.D.N.Y. 2007) (the standards under Sections
349 and 350 are “substantively identical”). To state a claim under either section, “a
plaintiff must allege that a defendant has engaged in (1) consumer-oriented conduct
that is (2) materially misleading and that (3) plaintiff suffered injury as a result of
the allegedly deceptive act or practice.” Orlander v. Staples, Inc., 802 F.3d 289,
300 (2d Cir. 2015) (quoting Koch v. Acker, Merrall & Condit Co., 18 N.Y.3d 940,
941 (2009)).
Sioux Honey, 2022 WL 125742, at *2–3. Plaintiffs allege that defendants’ acts violated both
sections. Sec. Am. Compl. ¶¶ 325, 333.
“Under New York law, ‘a corporate officer who commits or participates in a tort, even if
it is in the course of his duties on behalf of the corporation, may be held individually liable.’”
Bano v. Union Carbide Corp., 273 F.3d 120, 133 (2d Cir. 2001) (quoting LoPresti v. Terwilliger,
126 F.3d 34, 42 (2d Cir. 1997)); see Mayfield v. Asta Funding, Inc., 95 F. Supp. 3d 685, 701
(S.D.N.Y. 2015) (same); Steven Madden Ltd. v. Jasmin Larian, LLC, 2019 WL 294767, at *6
(S.D.N.Y. Jan. 22, 2019) (same). A corporate officer may be held liable if he “personal[ly]
participat[ed]” in the unlawful activity. Pado, 537 F. Supp. 3d at 430 (citation omitted); accord
Reynolds, 136 F. Supp. 3d 503, 526 (S.D.N.Y. 2015) (requiring “personal participation, rather than
mere awareness or control”); Steven Madden, 2019 WL 294767, at *6 (same).
For the reasons set forth concerning the Lanham Act claims, whether Kubic personally
participated presents questions that cannot be resolved on summary judgment. See Davidcraft
Corp. v. Danu Int’l, Inc., No. 90-CV-6578, 1992 WL 162997, at *6 (S.D.N.Y. June 24, 1992)
(individual defendants liable when one committed “acts of tortious interference and unfair
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competition” and the other stole the plaintiff’s “office equipment and trade secrets”). Thus,
summary judgment is denied to defendant Kubic and plaintiffs.
III. Common Law Unfair Competition Claim
Plaintiffs maintain that the defendants “have engaged in a course of conduct with respect
to the advertising of GiftRocket that unfairly and falsely affiliates Plaintiffs and class members
with Defendant, diverting potential customers into purchasing GiftRocket Prepaid Gifts instead of
directly purchasing services from Plaintiffs and the class members.” Sec. Am. Compl. ¶ 340. To
plaintiffs, this conduct “constitutes unfair competition under common law.” Id. ¶ 342.
Because this claim rests on state law, the Court must “apply the choice-of-law rules of the
state in which the federal district court sits.” See Johnson v. Nextel Commc’ns Inc., 780 F.3d 128,
141 (2d Cir. 2015) (citing Klaxon v. Stentor Elec. Mfg. Co., 313 U.S. 487, 496 (1941)). Here, of
course, that is New York. The possible jurisdictions involved here are New York (the forum state,
and where plaintiff Gracie Baked is located), Texas (where plaintiff Millercobb is located), and
Pennsylvania (where plaintiff WeCare is located). Sec. Am. Compl. ¶¶ 28, 30, 31. There is no
actual conflict because, in each state, the legal standard for evaluating the common law tort of
unfair competition is “essentially the same as under the Lanham Act.” Universal Church, Inc. v.
Universal Life Church/ULC Monastery, No. 14-CV-5213 (NRB), 2017 WL 3669625, at *16
(S.D.N.Y. Aug. 8, 2017), aff’d sub nom. Universal Church, Inc. v. Toellner, 752 F. App’x 67 (2d
Cir. 2018); see Horseshoe Bay Resort Sales Co. v. Lake Lyndon B. Johnson Imp. Corp., 53 S.W.3d
799, 806 n.3 (Tex. App. 2001) (“A trademark infringement and unfair competition action under
Texas common law presents essentially no difference in issues than those under federal trademark
infringement actions.” (citation omitted)); Gideons Int’l, Inc. v. Gideon 300 Ministries, Inc., 94 F.
Supp. 2d 566, 580 (E.D. Pa. 1999) (“The test for common law trademark infringement and unfair
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competition is essentially the same as the test for infringement and unfair competition under the
Lanham Act.”). So, New York law applies.
“It is well-established that the elements necessary to prevail on causes of action for
trademark infringement and unfair competition under New York common law mirror the Lanham
Act claims.” Lorillard Tobacco Co. v. Jamelis Grocery, Inc., 378 F. Supp. 2d 448, 456 (S.D.N.Y.
2005); Pado, 537 F. Supp. 3d at 428 (same). Once again, then, neither Kubic nor plaintiffs have
demonstrated entitlement to summary judgment.
CONCLUSION
For the foregoing reasons, the motions for summary judgment and attorneys’ fees are
DENIED.
SO ORDERED.
/s/ Gary R. Brown
GARY R. BROWN
United States District Judge
Dated: December 22, 2025
Central Islip, New York
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