UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

EMPIRE BONDING AGENCY, INC.,

Plaintiff,

 v.

JOE MASTRAPA, BAIL YES, INC., ITS

FOR ALL MEDIA GROUP, and DOES 1

through 10 

Defendants.

Civil Action No. 07 CV 5732 (GBD/DFE)

PLAINTIFF’S MEMORANDUM OF LAW IN SUPPORT OF

 ITS MOTION TO DISMISS DEFENDANTS’ COUNTERCLAIM

GOTTLIEB, RACKMAN & REISMAN, P.C.

George Gottlieb, Esq.

Marc P. Misthal, Esq.

Yuval H. Marcus, Esq.

270 Madison Avenue

New York, New York 10016

(212) 684-3900

Counsel For Plaintiff 

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Plaintiff and counterclaim-defendant Empire Bonding Agency, Inc.

(“Empire”) respectfully submits this Memorandum of Law in support of its motion

to dismiss defendants and counterclaim-plaintiffs Joe Mastrapa’s, Bail Yes Inc.’s

and It’s For All Media Group’s Counterclaim pursuant to Fed. R. Civ. P. 12(b) (6).

INTRODUCTION

This is an action for trademark infringement and cybersquatting relating to

defendants’ infringing use of plaintiff’s trademark EMPIRE in connection with bail

bonding services and their unauthorized registration and use of the following

domain names that incorporate plaintiff’s EMPIRE trademark: 

<empirebailbonds.com>, <empirebailbonding.com> and

<empirestatebailbonds.com>. 

Defendants have asserted a counterclaim for “Breach of Contract”

purportedly against the plaintiff, Empire. None of the facts alleged in the

Counterclaim, however, relate to any actions taken by Empire. Indeed, the only

allegations of any wrongdoing in the Counterclaim relate to the actions of a

person who is not a party to this action and are completely unrelated to the

claims asserted by plaintiff. This motion seeks the dismissal of defendants’

counterclaim. As discussed below, dismissal of the counterclaim is appropriate

because defendants have failed to comply with Fed. R. Civ. P. 13 because the

counterclaim does not allege or state any claim against the plaintiff, Empire. 

Since the allegations of the Counterclaim are insufficient to state a claim against

the plaintiff, Empire, the Court should grant Empire’s motion.

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I. THE ALLEGATIONS OF THE COUNTERCLAIMS

Empire and its affiliated companies are a family owned bail bonding

agency that has been in operation since 1999 and have been duly licensed by

the New York State Insurance Department. Empire and its affiliated companies

have been highly successful and currently have locations in Queens, Staten

Island, Brooklyn, Nassau and Suffolk counties. (Complaint, ¶ 9). 

In their counterclaim, defendants’ allege that Michelle Esquinzi is the

owner of Empire. (Counterclaim, ¶ 28). They then proceed to allege facts that

relate to certain business transactions that occurred in the years 1998-2000

between Ms. Esquinazi and defendant counter-plaintiff Joe Mastrapa, but which

do not relate to Empire. (Counterclaim, ¶¶ 29-36). In particular, the counterclaim

alleges that in 1999, Ms. Esquinazi and Mr. Mastrapa entered into a bail bonding

agency agreement. (Counterclaim, ¶¶ 29-30). Mr. Mastrapa also allegedly

entered into an agreement with Ms. Esquinazi’s nephew, Jason Fordin, where

Mastrapa was the general agent and Fordin was a sub agent. (Counterclaim, ¶

31). According to defendants, Esquinazi was responsible to notify Mastrapa of

any bond forfeitures where Mastrapa was the general agent and to indemnify him

for any losses. (Counterclaim, ¶¶ 32-34). Defendants further allege that

because five bonds written by Fordin with Mastrapa as general agent were

forfeited in the amount of $63,500, “Esquinazi breached her agreement with

Mastrapa by failing to notify him of such forfeiture.” (Counterclaim, ¶¶ 35-36). As

a result of such breach by Esquinazi, (which Mastrapa claims he was not aware

of until 2005) Mastrapa claims to have been damaged “in the approximate

amount of $90,000.” (Counterclaim, ¶¶ 36-38). 

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II. STANDARD OF REVIEW FOR A MOTION TO DISMISS

The purpose of a motion to dismiss pursuant to Rule 12 (b) (6) is to

assess the sufficiency of the allegations of the pleading. Sims v. Artuz, 230 F.3d

14, 20 (2d Cir. 2000). In determining whether the pleading is legally sufficient,

the material facts alleged in the pleading are presumed to be true and all factual

inferences must be drawn in the nonmoving party’s favor and against the moving

party. Branham v. Meachum, 77 F.3d. 626, 628 (2d Cir. 1996). A court should

dismiss a pleading pursuant to Rule 12 (b) (6) where, as here, it appears beyond

a doubt that the nonmoving party can prove no set of facts in support of its claim

which would entitle it to relief. Shepard Industries, Inc. v. 135 East 57th Street,

LLC, 1999 U.S. Dist. LEXIS 14431, *7 (S.D.N.Y. Sept. 15, 1999). 

III. DEFENDANTS FAIL TO PROPERLY PLEAD A COUNTERCLAIM

FOR BREACH OF CONTRACT AGAINST PLAINTIFF EMPIRE

Counterclaims are governed by Rule 13 of the Federal Rules of Civil

Procedure which provides, in relevant part: “A pleading shall state as a

counterclaim any claim which at the time of the serving of the pleading the

pleader has against any opposing party. . . .” (Emphasis added). Thus, a

counterclaim may only be asserted against an “opposing party”, namely one who

is already a party in the action. "A counterclaim . . . may not be directed solely

against persons who are not already parties to the original action, but must

involve at least one existing party." Lisa B., Inc. v. Reilly Co., Inc., No. 90 Civ.

1583, 1991 U.S. Dist. LEXIS 5468 (S.D.N.Y. Apr. 24, 1991) quoting, 6 Wright

and Miller, Federal Practice and Procedure 1435 at 270-71 (1990).

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A counterclaim should be dismissed, where, as here, the allegations in the

counterclaim are not asserted against the plaintiff but rather against a person or

entity that is not a party to the action. For example, in MII Exports, Inc. v.

Feingold, No. 90-3224, 1990 U.S. Dist. LEXIS 13045 (E.D. Pa. Oct. 2, 1990), the

Court dismissed a counterclaim asserted by a defendant based on facts similar

to those here. The Court’s analysis is instructive:

MII further contends that Feingold's counterclaims must be dismissed

because they involve claims lodged solely against the additional

parties and not against the original party. All counterclaims are initially

limited to existing "opposing parties." Penguin, 39 Fed.R.Serv.2d at

871, citing 3 Moore's Federal Practice para. 13.06[1] (2d ed. 1983).

Thus, an additional party may not be joined to an action by asserting

a counterclaim that is not asserted against an original party. Id; See

also Arch. Coatings Assoc. v. Applied Coatings Int'l, 103 F.R.D. 442,

446 (E.D.Pa. 1984). MII argues that count III of counterclaim I,

counterclaim II, count II of counterclaim III and count II of counterclaim

VI should be dismissed on this ground.

A review of the pleadings shows that Feingold's allegation in

counterclaim II that Keytank and Keystone interfered with his contract

does not constitute a claim against MII. Neither Keytank nor Keystone

is an original party to the suit. Therefore, this counterclaim must be

dismissed.

The facts here are very similar. The allegations asserted by defendants in

their Counterclaim that Ms. Esquinazi breached an agreement with defendant

Mastrapa do not state a claim against the plaintiff Empire. The Counterclaim is

devoid of any allegations of any wrongdoing whatsoever by Empire. There is no

allegation that Empire breached a contract or that it was even a party to a

contract. Accordingly, since there are no allegations of a breach of contract by

the plaintiff, Empire, defendants’ counterclaim for breach of contract should be

dismissed.

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CONCLUSION

For the reasons set forth, Empire’s motion to dismiss the Counterclaim

should be granted.

Respectfully submitted,

GOTTLIEB, RACKMAN & REISMAN, P.C.

George Gottlieb, Esq. (GG-5761)

Marc P. Misthal, Esq. (MM-6636)

Yuval H. Marcus, Esq. (YM-5348)

Attorneys for Plaintiff

270 Madison Avenue

New York, New York 10016

(212) 684-3900

By: s/ George Gottlieb/ 

 George Gottlieb (GG-5761)

 

Dated: October 18, 2007

New York, New York

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