author: Pigott, J.

text:
    [880 NE2d 10, 849 NYS2d 489]
    In the Matter of Data Tree, LLC, Appellant, v Edward P. Romaine, as Suffolk County Clerk, Respondent.
    Argued November 14, 2007;
    decided December 18, 2007

      POINTS OF COUNSEL

      DLA Piper US LLP, New York City (Andrew L. Deutsch of counsel), for appellant.
    I. The Appellate Division erred in holding that once an agency makes a “plausible” claim of a Freedom of Information Law exemption, the burden of proof shifts to the requester to establish that the agency’s claim of exemption was erroneous or arbitrary and capricious. (Matter of Buffalo News v Buffalo Enter. Dev. Corp., 84 NY2d 488; Matter of M. Farbman & Sons v New York City Health & Hosps. Corp., 62 NY2d 75; Matter of Washington Post Co. v New York State Ins. Dept., 61 NY2d 557; Matter of Fink v Lefkowitz, 47 NY2d 567; Matter of Newsday, Inc. v Empire State Dev. Corp., 98 NY2d 359; Church of Scientology of N.Y. v State of New York, 46 NY2d 906; Matter of New York Times Co. v City of N.Y. Fire Dept., 4 NY3d 477; Matter of Westchester Rockland Newspapers v Kimball, 50 NY2d 575; Matter of Pennington v McMahon, 234 AD2d 624; Matter of Capital Newspapers Div. of Hearst Corp. v Burns, 109 AD2d 92, 67 NY2d 562.) II. The Freedom of Information Law’s privacy exemption does not apply to public land records. (People ex rel. German-American Loan & Trust Co. v Richards, 99 NY 620; Matter of Brownstone Publs. v New York City Dept. of Bldgs., 166 AD2d 294; New York Pub. Interest Research Group v Cohen, 188 Misc 2d 658; Matter of New York Times Co. v City of N.Y. Fire Dept., 4 NY3d 477.) III. The Appellate Division erred in holding that an agency may refuse to comply with a Freedom of Information Law request based upon speculation as to the motives of the requester. (Matter of M. Farbman & Sons v New York City Health & Hosps. Corp., 62 NY2d 75; Matter of Westchester Rockland Newspapers v Kimball, 50 NY2d 575; Matter of Washington Post Co. v New York State Ins. Dept., 61 NY2d 557; Matter of Capital Newspapers Div. of Hearst Corp. v Burns, 67 NY2d 562; Matter of Brownstone Publs. v New York City Dept. of Fin., 150 AD2d 185.) IV If Data Tree, LLC bore the burden of proof of disproving the County Clerk’s claim of a Freedom of Information Law exemption, it was entitled to a trial of contested issues of fact. (Matter of Wamsley v East Ramapo Cent. School Dist. Bd. of Educ., 281 AD2d 633; Matter of Cialdella v Board of Educ. of Community School Dist. No. 21 of City School Dist. of City of N.Y., 252 AD2d 582; Matter of Jerkens Truck & Equip. v City of Yonkers, 130 AD2d 576; Matter of Fink v Lefkowitz, 47 NY2d 567; Matter of New York Civ. Liberties Union v City of Schenectady, 2 NY3d 657; Matter of Doolan v Board of Coop. Educ. Servs., 2d Supervisory Dist. of Suffolk County, 48 NY2d 341.)

      Christine Malafi, County Attorney, Hauppauge (Christopher A. Jeffreys of counsel), for respondent.
    I. Compliance with petitioner’s request would be an unwarranted invasion of personal privacy. (Matter of Hanig v State of N.Y. Dept. of Motor Vehs., 79 NY2d 106; Matter of Person-Wolinsky Assoc. v Nyquist, 84 Misc 2d 930; Matter of Nicholas, 117 Misc 2d 630; Matter of Empire Realty Corp. v New York State Div. of Lottery, 230 AD2d 270; Matter of Capital Newspapers Div. of Hearst Corp. v Burns, 67 NY2d 562; Matter of Russo v Nassau County Community Coll., 81 NY2d 690; Matter of New York Times Co. v City of N.Y. Fire Dept., 4 NY3d 477; Matter of Goodstein v Shaw, 119 Misc 2d 400; Department of Air Force v Rose, 425 US 352; Wine Hobby USA, Inc. v United States Internal Revenue Serv., 502 F2d 133.) II. The information requested requires the creation of a record, which is not the purpose of the Freedom of Information Law. (Matter of Brownstone Publs. v New York City Dept. of Bldgs., 146 Misc 2d 376, 166 AD2d 294; Matter of Wattenmaker v New York State Employees' Retirement Sys., 95 AD2d 910, 60 NY2d 555; Matter of Cromwell v Ward, 183 AD2d 459; Matter of Guerrier v Hernandez-Cuebas, 165 AD2d 218, 78 NY2d 853; Matter of O’Shaughnessy v New York State Div. of State Police, 202 AD2d 508, 84 NY2d 807; Matter of Reubens v Murray, 194 AD2d 492; Matter of Gabriels v Curiale, 216 AD2d 850; Matter of Rattley v New York City Police Dept., 96 NY2d 873; Matter of Beechwood Restorative Care Ctr. v Signor, 5 NY3d 435.) III. Judicial records held by the County Clerk are not subject to the Freedom of Information Law. (Matter of Weston v Sloan, 84 NY2d 462; Matter of Newsday, Inc. v Empire State Dev. Corp., 98 NY2d 359; Matter of Stoll v New York State Coll. of Veterinary Medicine at Cornell Univ., 94 NY2d 162; Matter of Alderson v New York State Coll. of Agric. & Life Sciences at Cornell Univ., 4 NY3d 225; Matter of Citizens for Alternatives to Animal Labs v Board of Trustees of State Univ. of N.Y., 92 NY2d 357.) IV Petitioner cannot demonstrate that the County Clerk’s application of exemptions to the Freedom of Information Law was unreasonable, arbitrary or capricious. (Daily News Publ. Co. of Memphis, Tenn. v Office of Ct. Admin. of State of N.Y., 186 Misc 2d 424; Matter of Woytisek v Novello, 309 AD2d 869; Matter of Pell v Board of Educ. of Union Free School Dist. No. 1 of Towns of Scarsdale & Mamaroneck, Westchester County, 34 NY2d 222; Matter of 4M Holding Co. v Town Bd. of Town of Islip, 81 NY2d 1053; Matter of Lyons v Whitehead, 2 AD3d 638, 1 NY3d 509; Matter of Norton v Town of Islip, 17 AD3d 468.) V Petitioner’s request for a hearing in accordance with CPLR 410 and 7804 (h) is not preserved. (Miller v Village of Wappingers Falls, 289 AD2d 209; Matter of DelGaudio v Aetna Ins. Co., 262 AD2d 641; Matter of Sbuttoni, 16 AD3d 693; Matter of Nodine v Board of

      Trustees of Vil. of Baldwinsville, 44 AD2d 764; Matter of Ames v Johnston, 169 AD2d 84; Matter of 22 Park Place Coop. v Board of Assessors of County of Nassau, 102 AD2d 893; Matter of Reisman v Codd, 54 AD2d 878; Matter of Royal Bus. School v New York State Dept. of Educ., 141 AD2d 170; Matter of McCabe v County of Dutchess, 143 AD2d 670.)

      Cowan, Liebowitz & Latman, P.C., New York City (Robert W. Clarida of counsel), and Meyer, Klipper & Mohr, PLLC, Washington, D.C. (Michael R. Klipper, Christopher A. Mohr and David Ludwig of counsel), for American Business Media and others, amici curiae.
    I. The Appellate Division’s conclusion that the record custodian correctly invoked the privacy exemption under Public Officers Law § 87 (2) (b) results from a misreading and misapplication of both the Freedom of Information Law (FOIL) and this Court’s FOIL precedent. (Matter of Capital Newspapers, Div. of Hearst Corp. v Whalen, 69 NY2d 246; Matter of New York Times Co. v City of N.Y. Fire Dept., 4 NY3d 477; Matter of Hanig v State of N.Y. Dept. of Motor Vehs., 79 NY2d 106; Matter of Fink v Lefkowitz, 47 NY2d 567.) II. The Appellate Division’s reworking of the burden of proof rules regarding the availability of statutory exemptions to disclosure under the Freedom of Information Law is at odds with precedent and will lead to wholesale rejection of traditionally valid public record requests. (Matter of Capital Newspapers Div. of Hearst Corp. v Burns, 67 NY2d 562; Matter of Westchester Rockland Newspapers v Kimball, 50 NY2d 575; Matter of Newsday, Inc. v Empire State Dev. Corp., 98 NY2d 359.) III. The court below erred by crafting a new nonstatutory “purpose” or “data mining” exemption that is unsupported by the Freedom of Information Law or judicial precedent. (Matter of Capital Newspapers Div. of Hearst Corp. v Burns, 67 NY2d 562; Matter of Konigsberg v Coughlin, 68 NY2d 245; Matter of M. Farbman & Sons v New York City Health & Hosps. Corp., 62 NY2d 75.) IV The Appellate Division’s ruling impermissibly usurped the role of the Legislature by creating by judicial fiat a Freedom of Information Law exemption based upon the burdensome nature of a record request.

      Levine Sullivan Koch & Schulz, L.L.P., New York City (David A. Schulz of counsel), for Advance Publications, Inc. and others, amici curiae.
    I. The Appellate Division erred in placing the burden of proof on a Freedom of Information Law requester. (Matter of Capital Newspapers Div. of Hearst Corp. v Burns, 67 NY2d 562; Matter of M. Farbman & Sons v New York City

      Health & Hosps. Corp., 62 NY2d 75; Matter of Newsday, Inc. v Empire State Dev. Corp., 98 NY2d 359; Matter of Westchester Rockland Newspapers v Kimball, 50 NY2d 575; Matter of Fink v Lefkowitz, 47 NY2d 567; Matter of Washington Post Co. v New York State Ins. Dept., 61 NY2d 557; Miller v United States Dept. of State, 779 F2d 1378; Department of State v Ray, 502 US 164; John Doe Agency v John Doe Corp., 493 US 146; Department of Justice v Tax Analysts, 492 US 136.) II. The Appellate Division erred by applying different Freedom of Information Law standards to electronic files. (Matter of Russo v Nassau County Community Coll., 81 NY2d 690; Babigian v Evans, 104 Misc 2d 140, 97 AD2d 992; Matter of Guerrier v Hernandez-Cuebas, 165 AD2d 218, 78 NY2d 853; Matter of Scott, Sardano & Pomeranz v Records Access Officer of City of Syracuse, 65 NY2d 294; Matter of Gould v New York City Police Dept., 89 NY2d 267; New York Pub. Interest Research Group v Cohen, 188 Misc 2d 658; New York State Rifle & Pistol Assn. v Kelly, 13 Misc 3d 1225[A], 2006 NY Slip Op 51983[U]; Matter of Kryston v Board of Educ. of E. Ramapo Cent. School Dist., 77 AD2d 896.)

      Michael A. Cardozo, Corporation Counsel, New York City (Kristin M. Helmers and Alan G. Krams of counsel), for City of New York, amicus curiae.
    The Freedom of Information Law exemption provided for lists of names and addresses, sought for commercial or fund-raising purposes, applies even when the names and addresses are contained in public records. (Matter of Federation of N.Y. State Rifle & Pistol Clubs v New York City Police Dept., 73 NY2d 92; Matter of Hanig v State of N.Y. Dept. of Motor Vehs., 79 NY2d 106; Matter of Thomas v City of N.Y. Dept. of Hous. Preserv. & Dev., 12 Misc 3d 547; Matter of Szikszay v Buelow, 107 Misc 2d 886; Matter of Kwitny v McGuire, 102 Misc 2d 124, 77 AD2d 839, 53 NY2d 968.)
   OPINION OF THE COURT

Pigott, J.

The issue presented on this appeal is whether the Suffolk County Clerk is required by the Freedom of Information Law (FOIL) to provide certain land records requested by Data Tree, LLC, a commercial provider of on-line public land records, and if so, whether the records must be provided in the electronic format specified by Data Tree. We hold that questions of fact exist as to whether compliance with such request would require the Clerk to disclose information excluded under the privacy exemption of FOIL and whether the Clerk has the ability to comply with the request in the format sought by Data Tree. Therefore, we reverse the Appellate Division order denying disclosure and remit the matter to Supreme Court for those determinations.

I.

Data Tree is a national company that provides on-line public land records such as deeds, mortgages, liens, judgments, releases and maps, and maintains a database of nearly two billion documents, providing its customers with immediate electronic access to the information. Its customers are those entities who purchase, sell, finance and insure property. Data Tree obtains the public land records by requesting them from county clerks, or other public officials who have the responsibility of recording and archiving such documents, throughout the country.

In January 2004, Data Tree, pursuant to FOIL, wrote to the Records Access Officer of the Suffolk County Clerk’s Office requesting copies of various public land records from January 1, 1983 to the present. It asked the Clerk to provide these records in “Tiff images or images in the electronic format regularly maintained by the County ... on CD-ROM or other electronic storage medium regularly used by the County ... If electronic images are not maintained, then [in] microfilm [format].”

The Clerk failed to respond to the request within the five-day period required by Public Officers Law § 89 (3), thereby constructively denying the request. Upon Data Tree’s administrative appeal, the Suffolk County Attorney also denied the request, identifying three reasons: (1) the FOIL request would require rewriting and reformatting of the data, which the Clerk’s Office is not required to do; (2) disclosure would constitute an unwarranted invasion of personal privacy due to the volume of the records requested and the commercial nature of Data Tree’s business; and (3) the records are available for copying and/or downloading from the computer terminals at the Clerk’s Office.

Data Tree then brought the instant CPLR article 78 proceeding seeking a judgment directing the Clerk to provide the records sought along with costs and attorneys’ fees.

Supreme Court held that “[t]he Clerk’s Office has rightly denied petitioner’s request” (2005 NY Slip Op 30134[U], *3). It noted that many of the requested documents are available either by computer or in paper form at the Clerk’s Office or on its Web site. Additionally, the court adopted the argument of the Clerk that the bulk of the remaining documents could not be transferred to the requested form (TIFF) or any other electronic medium without creating a new record. It noted that the Clerk’s Office was not required to create a new record where none existed, “particularly when that would be at considerable expense to the taxpayers” (id. *4). Finally, the court granted Data Tree’s application “for access ... to the extent the documents are maintained and available in the Clerk’s Office, or on the internet” (id.). In essence, the court limited the relief sought by Data Tree to allowing it to attend the Clerk’s Office during regular business hours and make individual copies of the public documents and/or download the documents available on the Internet at Data Tree’s expense.

The Appellate Division affirmed, holding first that the Clerk’s Office established an exemption to FOIL, namely, that disclosure of the documents sought would entail an unwarranted invasion of personal privacy (36 AD3d 804 [2d Dept 2007]). The Appellate Division stated that the burden was on the Clerk to prove this exemption and that the Clerk here demonstrated “in a plausible fashion” that the exemption applied (id. at 805). The court then shifted the burden to Data Tree to establish that the claim of exemption was erroneous or that the Clerk acted in an arbitrary and capricious manner in attempting to invoke an exemption. The court held that Data Tree failed to meet that burden, stating:

“To the extent that the request was viewed by the Clerk as data mining, the Clerk determined that such request was clearly within the ambit of the enumerated exemptions to FOIL. In view of the rapid advances in technology, the misuse of that data for purposes unfathomable only a few short years ago is now possible. Whether such raw data (as opposed to the records actually maintained) should be available, and what constraints, if any, should be placed on that access, is a public policy better addressed by the appropriate legislative bodies” (id. at 805-806).

The Appellate Division noted that the right to access and copy such public records has not been construed to “require extraordinary efforts by the agency to provide the records in any manner requested and without regard to other statutorily mandated obligations to take prudent efforts to protect the guaranteed privacy interests of the citizens of the state” (id. at 806). Thus, it held that the Clerk’s refusal was justified in this case both as to the burden imposed and the legitimate desire to protect the privacy of the citizens of Suffolk County. We granted Data Tree leave to appeal.

II.

FOIL provides the public with broad “access to the records of government” (Public Officers Law § 84). The term “record” is defined to include:

“[A]ny information kept, held, filed, produced or reproduced by, with or for an agency or the state legislature, in any physical form whatsoever including, but not limited to, reports, statements, examinations, memoranda, opinions, folders, files, books, manuals, pamphlets, forms, papers, designs, drawings, maps, photos, letters, microfilms, computer tapes or discs, rules, regulations or codes” (Public Officers Law § 86 [4] [emphasis supplied]).

An agency must “make available for public inspection and copying all records” unless it can claim a specific exemption to disclosure (see Public Officers Law § 87 [2]; § 89 [3]). However, the exemptions are to be narrowly interpreted so that the public is granted maximum access to the records of government (Matter of Capital Newspapers, Div. of Hearst Corp. v Whalen, 69 NY2d 246, 252 [1987]).

In denying Data Tree’s FOIL request, the Clerk relied in part on the privacy exemption, which authorizes each agency to deny access to records or portions of such records that, if disclosed, would constitute an “unwarranted invasion of personal privacy” (Public Officers Law § 87 [2] [b]). The law defines an “unwarranted invasion of personal privacy” with a nonexclusive list of examples (see Public Officers Law § 89 [2] [b] [i]-[vi]).

Data Tree contends that the Appellate Division used an improper burden-shifting analysis to determine whether the privacy exemption applied in this case. We agree. FOIL is based on a presumption of access to the records, and an agency (in this case the Clerk) carries the burden of demonstrating that the exemption applies to the FOIL request (see Public Officers Law § 89 [4] [b]; Matter of Hanig v State of N.Y. Dept. of Motor Vehs., 79 NY2d 106, 109 [1992]). Contrary to the Appellate Division’s view, the Clerk must meet this burden in more than just a “plausible fashion.” In order to deny disclosure, the Clerk must show that the requested information “falls squarely within a FOIL exemption by articulating a particularized and specific justification for denying access” (Matter of Capital Newspapers Div. of Hearst Corp. v Burns, 67 NY2d 562, 566 [1986]; see Matter of M. Farbman & Sons v New York City Health & Hosps. Corp., 62 NY2d 75, 80 [1984]; Matter of Fink v Lefkowitz, 47 NY2d 567, 571 [1979]). If the Clerk fails to prove that a statutory exemption applies, FOIL “compels disclosure, not concealment” (Matter of Westchester Rockland Newspapers v Kimball, 50 NY2d 575, 580 [1980]). In short, the burden of proof rests solely with the Clerk to justify the denial of access to the requested records.

Similarly, it was error for the Appellate Division to conclude that as a matter of law the Clerk met its burden in establishing that the privacy exemption to FOIL applies in this case. Although the court failed to articulate the specific basis for its holding, it remarked that Data Tree is a commercial enterprise and was seeking the documents for “data mining” purposes. However, FOIL does not require the party requesting the information to show any particular need or purpose (see Matter of Daily Gazette Co. v City of Schenectady, 93 NY2d 145, 156 [1999]; Farbman, 62 NY2d at 80). Data Tree’s commercial motive for seeking the records is therefore irrelevant in this case and constitutes an improper basis for denying the FOIL request.

We note, however, that motive or purpose is not always irrelevant to a request pursuant to FOIL. Public Officers Law § 89 (2) (b) (iii) includes as an “unwarranted invasion of personal privacy” the “sale or release of lists of names and addresses if such lists would be used for commercial or fund-raising purposes” (emphasis added; see Matter of Federation of N.Y. State Rifle & Pistol Clubs v New York City Police Dept., 73 NY2d 92 [1989] [organization’s request denied under FOIL for use in direct mail membership solicitation of names and addresses of persons holding rifle or shotgun permits]). That particular exemption does not apply in this case however because Data Tree is not seeking a list of names and addresses to solicit any business. Rather, Data Tree is seeking public land records for commercial reproduction on line.

We conclude that a question of fact exists in this case as to whether the privacy exemption applies to the records because some of the documents requested may contain private information, such as Social Security numbers and dates of birth (see Matter of Seelig v Sielaff, 201 AD2d 298 [1st Dept 1994] [release of officers’ Social Security numbers in response to request pursuant to FOIL constituted unwarranted invasion of officers’ privacy]). However, even when a document subject to FOIL contains such private, protected information, agencies may be required to prepare a redacted version with the exempt material removed (see Public Officers Law § 89 [2] [c] [i]; see e.g. Matter of Scott, Sardano & Pomeranz v Records Access Officer of City of Syracuse, 65 NY2d 294 [1985]). We therefore remit this matter to Supreme Court to determine (upon an in camera inspection of a representative sample of the documents, if necessary) whether any of the records contain information exempt from disclosure on the basis of privacy, and whether that information can be redacted.

III.

As another basis for its denial of disclosure, the Clerk contends that Data Tree’s FOIL request requires the creation of a new record. An agency is not required to create records in order to comply with a FOIL request, as Public Officers Law § 89 (3) (a) provides: “Nothing in this article shall be construed to require any entity to prepare any record not possessed or maintained by such entity.” Thus, an agency has no obligation to accommodate a request to compile data in a preferable commercial electronic format when the agency does not maintain the records in such a manner.

Nonetheless, FOIL does not differentiate between records stored in paper form or those stored in electronic format. As stated earlier, the term “record” means, among other things, “computer tapes or discs.” Disclosure of records is not always necessarily made by the printing out of information on paper, but may require duplicating data to another storage medium, such as a compact disc. Thus, if the records are maintained electronically by an agency and are retrievable with reasonable effort, that agency is required to disclose the information. In such a situation, the agency is merely retrieving the electronic data that it has already compiled and copying it onto another electronic medium. On the other hand, if the agency does not maintain the records in a transferable electronic format, then the agency should not be required to create a new document to make its records transferable. A simple manipulation of the computer necessary to transfer existing records should not, if it does not involve significant time or expense, be treated as creation of a new document.

This does not mean, however, that an agency must accord a commercial entity any more or less access to records than any other citizen. Section 89 (3) of the Public Officers Law requires that upon receipt of a request, an agency has five business days in which it must either grant access to the records, deny access or furnish a written acknowledgment of the receipt of such request. When such acknowledgment is given, it must include a statement of the approximate date when the request will be granted or denied. Further, Public Officers Law § 87 provides that the agency may establish procedures including the time and place when such records will be made available, the persons from whom such records may be obtained and the fees for copies of records. Thus, there is no specific time period in which the agency must grant access to the records. Indeed, the time needed to comply with the request may be dependent on a number of factors, including the volume of the request and the retrieval methods. Therefore, complying with a commercial entity’s request for an enormous number of records may require substantial time and expense by the Clerk’s Office and may not, absent an agreement providing otherwise, require the Clerk to provide such records in a time other than that which is reasonable in view of the attendant circumstances.

Here, the Clerk argues that he does not maintain the information in the electronic form requested by Data Tree. The Clerk submitted the affidavit of the Director of Optical Imaging for the Suffolk County Clerk’s Office who avers that the Clerk’s Office would need to have a separate computer program written that would permit the information to be readable on a compact disc or other electronic means. He further states that under the current computer system he is unable to redact all of the private information prior to reproduction. In response, Data Tree proffered the affidavit of its senior software engineer, who claims, by giving examples, that the Clerk could comply with the FOIL request without any computer programming. Further, Data Tree emphasizes that its FOIL request merely asks that the records be provided in any “electronic format regularly maintained by the County.” Based on these submissions, questions of fact exist as to whether disclosure may be accomplished by merely retrieving information already maintained electronically by the Clerk’s Office or whether complying with Data Tree’s request would require creating a new record.

Further, privacy concerns may also exist with respect to the information contained in the electronic format requested by Data Tree. If such information cannot be reasonably redacted from the electronic records, then such records may not be subject to disclosure under FOIL. We therefore remit the matter to Supreme Court to consider these issues in determining whether the Clerk must comply by providing the records in an electronic format requested by Data Tree.

Accordingly, the order of the Appellate Division, insofar as appealed from, should be reversed, without costs, and the matter remitted to Supreme Court for further proceedings in accordance with this opinion.

Chief Judge Kaye and Judges Ciparick, Graffeo, Read, Smith and Jones concur.

Order, insofar as appealed from, reversed, etc.

       Indeed, the Legislature contemplated disclosure by electronic means when Public Officers Law § 89 (3) was amended by adding a new paragraph (b) to read:
      “All entities shall, provided such entity has reasonable means available, accept requests for records submitted in the form of electronic mail and shall respond to such requests by electronic mail, using forms, to the extent practicable, consistent with the form or forms developed by the committee on open government pursuant to subdivision one of this section and provided that the written requests do not seek a response in some other form.”


source: Caselaw Access Project

author: Read, J.

license: Public Domain

text:
    [880 NE2d 852, 850 NYS2d 366]
    ITC Limited et al., Appellants, v Punchgini, Inc., et al., Respondents.
    Argued November 13, 2007;
    decided December 13, 2007

      POINTS OF COUNSEL

      King & Spalding LLP, New York City (Ethan Horwitz, Jill Wasserman, Dana S. Gross and Charles A. Pannell, III, of counsel),-for appellant.
    I. New York’s unfair competition law prohibits the misappropriation of a mark, even of a foreign mark. (Ruder & Finn v Seaboard Sur. Co., 52 NY2d 663; International News Service v Associated Press, 248 US 215; Electrolux Corp. v Val-Worth, Inc., 6 NY2d 556; Taendsticksfabriks Akticbolagat Vulcan v Myers, 139 NY 364; Avon Periodicals v Ziff-Davis Publ. Co., 27 Misc 2d 160; Artype, Inc. v Zappulla, 228 F2d 695; Allied Maintenance Corp. v Allied Mech. Trades, 42 NY2d 538; Norwich Pharmacal Co. v Sterling Drug, Inc., 271 F2d 569; Lincoln Rest. Corp. v Wolfies Rest. Inc., 291 F2d 302; Flexitized, Inc. v National Flexitized Corp., 335 F2d 774.) II. The well-known marks doctrine is a type of unfair competition. (Grupo Gigante SA De CV v Dallo & Co., Inc., 391 F3d 1088; Vaudable v Montmartre, Inc., 20 Misc 2d 757; Maison Prunier v Prunier’s Rest. & Cafe, Inc., 159 Misc 551; Rosman v Trans World Airlines, 34 NY2d 385; United States v Belmont, 301 US 324.) III. Public policy favors recognizing the well-known marks doctrine. (Grupo Gigante SA De CV v Dallo &

      Co., Inc., 391 F3d 1088; Ambassador E., Inc. v Shelton Corners, Inc., 120 F Supp 551; International Bancorp, LLC v Societe des Bains de Mer et du Cercle des Etrangers a Monaco, 329 F3d 359.) IV The mark need only have sufficient secondary meaning to attract a misappropriation. (Allied Maintenance Corp. v Allied Mech. Trades, 42 NY2d 538; Flexitized, Inc. v National Flexitized Corp., 335 F2d 774; Santa’s Workshop, Inc. v Sterling, 282 App Div 328; Centaur Communications, Ltd. v A/S/M Communications, Inc., 830 F2d 1217; Vaudable v Montmartre, Inc., 20 Misc 2d 757; Harlequin Enters. Ltd. v Gulf & W. Corp., 644 F2d 946; Fund of Funds, Ltd. v First Am. Fund of Funds, Inc., 274 F Supp 517.) V The Second Circuit’s proposed standards should be rejected. (Tone Bros., Inc. v Sysco Corp., 28 F3d 1192; Shredded Wheat Co. v Humphrey Cornell Co., 250 F 960; Fleischmann Distilling Corp. v Maier Brewing Co., 314 F2d 149; Grupo Gigante SA De CV v Dallo & Co., Inc., 391 F3d 1088.)

      Kenyon & Kenyon LLP, New York City (Michelle Mancino Marsh, Michael J. Freno and Matthew Moersfelder of counsel), for respondents.
    I. New York should not recognize a famous foreign marks exception. (Hanover Star Milling Co. v Metcalf, 240 US 403; United Drug Co. v Theodore Rectanus Co., 248 US 90; Buti v Impressa Perosa, S.R.L., 139 F3d 98; Kos Pharms., Inc. v Andrx Corp., 369 F3d 700; Fuji Photo Film Co., Inc. v Shinohara Shoji Kabushiki Kaisha, 754 F2d 591; American Circuit Breaker Corp. v Oregon Breakers, Inc., 406 F3d 577; Grupo Gigante SA De CV v Dallo & Co., Inc., 391 F3d 1088; Person’s Co., Ltd. v Christman, 900 F2d 1565; Almacenes Exito S.A. v El Gallo Meat Mkt., Inc., 381 F Supp 2d 324; Spartan Food Sys., Inc. v HFS Corp., 813 F2d 1279.) II. Any famous foreign marks doctrine must require more than secondary meaning. (Japan Line, Ltd. v County of Los Angeles, 441 US 434; Board of Trustees of Univ. of Ill. v United States, 289 US 48; Wyndham Co. v Wyndham Hotel Co., 176 Misc 2d 116, 261 AD2d 242; Centaur Communications, Ltd. v A/S/M Communications, Inc., 830 F2d 1217; Alexander Ave. Kosher Rest. Corp. v Dragoon, 306 AD2d 298; Hotel Syracuse, Inc. v Motel Syracuse, Inc., 283 App Div 182, 309 NY 831; Vaudable v Montmartre, Inc., 20 Misc 2d 757; TCPIP Holding Co., Inc. v Haar Communications, Inc., 244 F3d 88; Thane Intl., Inc. v Trek Bicycle Corp., 305 F3d 894; Black & Decker Corp. v Dunsford, 944 F Supp 220.) III. ITC Limited cannot be permitted to change the questions presented for the first time in its appellate brief. (Maison Prunier v Prunier’s Rest. & Cafe, Inc., 159 Misc 551; Vaudable v Montmartre, Inc., 20 Misc 2d 757; Park ’N Fly, Inc. v Dollar Park & Fly, Inc.,
      469 US 189; Inwood Laboratories, Inc. v Ives Laboratories, Inc., 456 US 844; Duraco Prods., Inc. v Joy Plastic Enters., Ltd., 40 F3d 1431; Camelot Assoc. Corp. v Camelot Design & Dev., 298 AD2d 799; Allied Maintenance Corp. v Allied Mech. Trades, 42 NY2d 538; Bristol-Myers Squibb Co. v McNeil-P.P.C., Inc., 973 F2d 1033; Grupo Gigante SA De CV v Dallo & Co., Inc., 391 F3d 1088; Ruder & Finn v Seaboard Sur. Co., 52 NY2d 663.) IV Neither the Paris Convention for the Protection of Industrial Property nor the Agreement on Trade-Related Aspects of Intellectual Property Rights is relevant to New York law. (Mannington Mills, Inc. v Congoleum Corp., 595 F2d 1287; International Café, S.A.L. v Hard Rock Café Intl. [U.S.A.], Inc., 252 F3d 1274; Mattel, Inc. v MCA Records, Inc., 28 F Supp 2d 1120, 296 F3d 894; Empresa Cubana del Tabaco v Culbro Corp., 399 F3d 462; Grupo Gigante SA De CV v Dallo & Co., Inc., 391 F3d 1088; Almacenes Exito S.A. v El Gallo Meat Mkt., Inc., 381 F Supp 2d 324; Kemart Corp. v Printing Arts Research Lab., Inc., 269 F2d 375; In re Rath, 402 F3d 1207; United States v Pink, 315 US 203; United States v Belmont, 301 US 324.)

      Fross Zelnick Lehrman & Zissu, P.C., New York City (J. Allison Strickland and Laura Popp-Rosenberg of counsel), for American Intellectual Property Law Association, amicus curiae.
    I. New York common law recognizes the well-known marks doctrine. (A. Bourjois & Co. v Katzel, 260 US 689; Maison Prunier v Prunier’s Rest. & Cafe, Inc., 159 Misc 551; Vaudable v Montmartre, Inc., 20 Misc 2d 757; Almacenes Exito S.A. v El Gallo Meat Mkt., Inc., 381 F Supp 2d 324; Grupo Gigante SA De CV v Dallo & Co., Inc., 391 F3d 1088; De Beers LV Trademark Ltd. v DeBeers Diamond Syndicate Inc., 440 F Supp 2d 249; Avon Periodicals v Ziff-Davis Publ. Co., 27 Misc 2d 160; Gulden v Chance, 182 F 303; Qualitex Co. v Jacobson Products Co., 514 US 159; Moseley v V Secret Catalogue, Inc., 537 US 418.) II. The standards must be flexible, but the doctrine should require a foreign mark to be well known to at least one sector of the public. (Grupo Gigante SA De CV v Dallo & Co., Inc., 391 F3d 1088; Maison Prunier v Prunier’s Rest. & Cafe, Inc., 159 Misc 551; Vaudable v Montmartre, Inc., 20 Misc 2d 757; Two Pesos, Inc. v Taco Cabana, Inc., 505 US 763, 1244; Time, Inc. v Petersen Pub. Co. L.L.C., 173 F3d 113.)

      Dorsey & Whitney LLP, New York City (Bruce R. Ewing of counsel), Theodore H. Davis, Jr., and David C. Stimson for International Trademark Association, amicus curiae.
    I. New York has long maintained broad protections against unfair competition that this Court should not undermine. (Electrolux Corp. v Val-Worth, Inc., 6 NY2d 556; Ronson Art Metal Works v Gibson Lighter Mfg. Co., 3 AD2d 227; Taendsticksfabriks Akticbolagat Vulcan v Myers, 139 NY 364; Mitchel H. Mark Realty Corp. v Major Amusement Co., 180 App Div 549; Metropolitan Opera Assn., Inc. v Wagner-Nichols Recorder Corp., 199 Misc 786, 279 App Div 632; American Chain Co., Inc. v Carr Chain Works, Inc., 141 Misc 303; Fisher v Star Co., 231 NY 414; Norwich Pharmacal Co. v Sterling Drug, Inc., 271 F2d 569; Gotham Silk Hosiery Co. v Reingold, 223 App Div 260; Long’s Hat Stores Corp. v Long’s Clothes, 224 App Div 497.) II. New York courts have long recognized that the tort of unfair competition prohibits the misappropriation of goodwill and other property-interests of businesses located outside of the state. (Vaudable v Montmartre, Inc., 20 Misc 2d 757; Maison Prunier v Prunier’s Rest. & Cafe, Inc., 159 Misc 551; Lincoln Rest. Corp. v Wolfies Rest. Inc., 291 F2d 302; Ambassador E., Inc. v Shelton Corners, Inc., 120 F Supp 551; Hanover Star Milling Co. v Metcalf, 240 US 403; United Drug Co. v Theodore Rectanus Co., 248 US 90; Grupo Gigante SA De CV v Dallo & Co., Inc., 391 F3d 1088.) III. This Court should not involve itself in doctrinal disputes concerning the famous marks doctrine.
   OPINION OF THE COURT

Read, J.

The United States Court of Appeals for the Second Circuit has asked us to resolve two questions regarding New York common-law claims for unfair competition. We conclude that New York recognizes common-law unfair competition claims, but not the “famous” or “well-known” marks doctrine.

I.

ITC Limited, a corporation organized under the laws of India, owns and operates the Maurya Sheraton & Towers, a five-star luxury hotel in New Delhi, India, through its subsidiary, ITC Hotels Limited. One of the Maurya Sheraton’s seven restaurants is Bukhara, a five-star restaurant named after a city in Uzbekistan located on the famous Silk Road between China and the West. The New Delhi Bukhara, which has attained some measure of renown among those with an avid interest in fine cuisine, was named one of the 50 best restaurants in the world by London-based “Restaurant” magazine in 2002 and 2003. In the three decades since the New Delhi Bukhara opened in 1977, ITC has sought to capitalize on the restaurant’s prestige, with mixed results: although ITC has opened or franchised Bukhara restaurants in Hong Kong, Bangkok, Bahrain, Montreal, Bangladesh, Singapore, Kathmandu, Ajman and the United States, as of May 2004 only the original restaurant in New Delhi and the restaurants in Singapore, Kathmandu and Ajman remained in business.

ITC established a Bukhara restaurant in Manhattan in 1986; in 1987 a Bukhara restaurant was opened in Chicago by a franchisee. On October 13, 1987 ITC obtained United States trademark registration for a Bukhara mark in connection with restaurant services; however, ITC closed its Bukhara restaurant in Manhattan on December 17, 1991, and cancelled the Chicago restaurant’s franchise on August 28, 1997. ITC has not owned, operated or licensed any restaurant in the United States using the Bukhara mark since terminating the Chicago franchisee’s licensing agreement in 1997.

In 1999, defendants Raja Jhanjee, Vicky Vij, Dhandu Ram and Paragnesh Desai, together with Vij ay Roa, incorporated Punchgini, Inc. for the purpose of opening an Indian restaurant in midtown Manhattan, which they called Bukhara Grill. Jhanjee, Vij and Ram had all worked at the New Delhi Bukhara, and Vij had also worked at ITC’s Bukhara restaurant in Manhattan. As Vij explained the origin of the new restaurant’s name, in 1999 there was “no restaurant Bukhara in New York, and we just thought we [would] take the name” (ITC Ltd. v Punchgini, Inc., 482 F3d 135, 144 [2d Cir 2007]). In 2001, several Punchgini shareholders and defendants Mahendra Singh and Bachan Rawat, also alumni of ITC’s Bukhara, opened a second Indian restaurant in midtown Manhattan, called Bukhara Grill II (id.; ITC Ltd. v Punchgini, Inc., 373 F Supp 2d 275, 277 [SD NY 2005]). Defendants have identified five other restaurants in the United States using Bukhara in their names, including one in Brooklyn. These restaurants are not affiliated with ITC. In addition, defendants have learned of more than 20 Bukhara restaurants unrelated to ITC outside the United States, including restaurants located in Uzbekistan, Australia, Egypt, Pakistan, the United Kingdom and “a high-end . . . chain” in South Africa, which “also sells prepackaged foods under the ‘Bukhara’ name” and “owns the website www.bukhara.com.”

The Bukhara Grill features many of the New Delhi Bukhara’s signature dishes—which showcase the cuisine of the Northwest frontier region of India—and replicates many of its particular design elements. Indeed, one press report quoted Jhanjee as describing the Bukhara Grill as “quite like Delhi’s Bukhara,” commenting that “[t]he food is similar . . . and the waiters too are dressed in similar Pathani suits.”

On March 22, 2000, ITC’s attorney sent Jhanjee a letter accusing him of “passing off [his] new business [i.e., Bukhara Grill] as that of’ ITC, “piggy[ ]baek[ing] on the tremendous reputation” of ITC’s Bukhara restaurants, and “partak[ing] of the fame, goodwill and custom earned by [ITC], by the mere adoption of the identical name.” He demanded that Jhanjee acknowledge ITC’s exclusive rights to the Bukhara mark and refrain from further use of it; disclose how long he had used the Bukhara mark and render an accounting of sales and/or profits for this time period; and remit to ITC any such profits, plus estimated damages and attorneys’ fees.

Bukhara Grill’s counsel responded on March 30, 2000, observing that “preliminary investigation reveals that [ITC] does not presently use the mark BUKHARA in the United States nor has it been in use for more than two years.” Nevertheless, counsel suggested that discussions be pursued to avoid costly litigation. On June 22, 2000, Bukhara Grill’s counsel sent a follow-up letter, apparently to memorialize an oral request for ITC to “provide . . . proof of use of the alleged mark BUKHARA . . . in the United States over the last two years”; and to state that if there was no response “by June 28, 2000, we will assume that [ITC] has abandoned any rights it may have had in the alleged mark and any alleged claim against our client.”

On April 15, 2002, almost two years later, ITC’s attorney wrote to the Bukhara Grill’s counsel, complaining that there had been “[n]o formal response” to ITC’s 2000 cease-and-desist letter and reiterating ITC’s demands. On April 18, 2002, Bukhara Grill’s counsel replied, disputing the assertion that prior correspondence from ITC had been ignored, and reasserting abandonment, now claimed to have been “bolstered” by the passage of additional time.

On February 26, 2003, another 11 months later, ITC filed a lawsuit against defendants in the United States District Court for the Southern District of New York. The amended complaint alleged trademark infringement under section 32 (1) (a) of the Lanham Act (codified at 15 USC § 1114 [1] [a]); unfair competition and false advertising under sections 43 (a) and 44 (h) of the Lanham Act (codified at 15 USC § 1125 [a]; § 1126 [h]); and parallel actions under New York common law. As an affirmative defense, defendants charged ITC with abandonment of any rights in the United States to the Bukhara mark, and filed a counterclaim seeking cancellation of the mark’s registration on that ground.

Following discovery, defendants moved for summary judgment. As an initial matter, the District Court Judge ruled that ITC could not pursue a trademark infringement claim because the record conclusively demonstrated its abandonment of the Bukhara mark and dress for restaurants in the United States. He then considered ITC’s “assertions] that its unfair competition claims under section 43 (a) of the Lanham Act and the New York common law provide a basis for liability independent of trademark law”; that is, ITC claimed that “[e]ven if it abandoned the ‘Bukhara’ mark and dress within the United States ... it [was] nonetheless protected from unfair competition by virtue of the ‘well known’ or ‘famous’ marks doctrine” (373 F Supp 2d at 285-286).

“The very existence of th[e well-known marks] doctrine is controversial,” the District Court Judge opined, “as is its scope. Neither party cites, nor has the Court found, any Supreme Court or Second Circuit authority upholding liability on this theory, and it has been applied infrequently by the federal district courts” {id. at 286). He noted that the Ninth Circuit had recently countenanced the doctrine, but that it did so under “circumstances . . . arguably different from those in this case” (id., citing Grupo Gigante SA De CV v Dallo & Co., Inc., 391 F3d 1088 [9th Cir 2004] [apparently as matter of policy, court permitted Mexican grocery chain to establish whether its “Gigante” mark was sufficiently widely known among Mexican-Americans in Southern California to be protected from use by California grocery chain]).

The Judge, however, remarked that “[t]wo early cases in New York state courts, with fact patterns strikingly similar to the events alleged here by ITC, exemplify the doctrine” (373 F Supp 2d at 286, citing Maison Prunier v Prunier’s Rest. & Cafe, Inc., 159 Misc 551 [Sup Ct, NY County 1936]; Vaudable v Montmartre, Inc., 20 Misc 2d 757 [Sup Ct, NY County 1959]). But “[assuming without deciding that these cases support the existence of an unfair competition claim, even in the absence of a viable U.S. trademark, on the basis of a foreign mark that is ‘well known’ or ‘famous,’ it remains unclear how to determine what foreign marks are sufficiently ‘famous’ to qualify” (373 F Supp 2d at 287). After reviewing various possible standards for a mark to qualify for the putative doctrine, the District Court Judge recognized that an “apparent consensus” existed as to what “at the very least . . . must be established in the relevant American market for a mark to qualify under the ‘well known’ or ‘famous’ mark doctrine”; and that “ITC [had] failed even to establish a triable issue” under that minimum standard (id. at 288). He also concluded that ITC lacked standing to press its claim under the Lanham Act for false advertising. The District Court therefore granted defendants summary judgment dismissing ITC’s complaint in its entirety, and cancelled ITC’s registration of the Bukhara mark, as defendants had requested in their counterclaim.

On March 28, 2007, the Second Circuit affirmed the District Court’s award of summary judgment on ITC’s infringement, unfair competition and false advertising claims under federal law. The court acknowledged, however, that “New York common law allows a plaintiff to sue for unfair competition where a property right or a commercial advantage has been misappropriated,” and stated that “in light of ITC’s abandonment of the Bukhara mark and dress for restaurants in the United States, its common law assertion of a property right or a commercial advantage in these designations based on their foreign use depends on whether New York recognizes the famous marks doctrine in the circumstances here at issue” (482 F3d at 165 [internal quotation marks and citation omitted]).

Citing Vaudable and Prunier, two “decades-old trial court decisions” that are “routinely identif[ied] ... as foundational in the development of the famous marks doctrine” (id. at 166), the court observed that

“[n] either the New York Court of Appeals nor any intermediate New York appellate court. . . has ever specifically adopted the views expressed in [these cases] to accord common law protection to the owners of famous marks. Moreover, no New York court has clearly delineated a standard for determining when a mark becomes sufficiently famous to warrant protection” (id. at 165-166).

Further, “recognition of the famous marks doctrine as part of New York common law is plainly an important policy issue for a state that plays a pivotal role in international commerce” (id. at 166). Finally, because “certification [would] conclusively resolve the question of whether ITC’s state unfair competition claim was, in fact, properly dismissed” (id. at 166-167), the Second Circuit certified two questions to us regarding the New York common-law claims.

II.

Certified Question No. 1

“Does New York common law permit the owner of a famous mark or trade dress to assert property rights therein by virtue of the owner’s prior use of the mark or dress in a foreign country?” (482 F3d at 167.)

The Second Circuit’s first certified question calls upon us to define property rights in the context of a common-law unfair competition claim grounded on a theory of misappropriation (see 482 F3d at 165). Thus, we must consider whether a famous foreign mark constitutes property or a commercial advantage protected from unfair competition under New York law.

We have long recognized two theories of common-law unfair competition: palming off and misappropriation (see Electrolux Corp. v Val-Worth, Inc., 6 NY2d 556, 567-568 [1959] [discussing the acceptance of these theories of unfair competition in New York courts and collecting cases]). “Palming off’—that is, the sale of the goods of one manufacturer as those of another —was the first theory of unfair competition endorsed by New York courts, and “has been extended ... to situations where the parties are not even in competition” (Electrolux, 6 NY2d at 567, citing Elgin Nat. Watch Co. v Illinois Watch Case Co., 179 US 665, 674 [1901]; Neva-Wet Corp. v Never Wet Processing Corp., 277 NY 163, 168 [1938]; Cornell Univ. v Messing Bakeries, 285 App Div 490 [3d Dept 1955], affd without op 309 NY 722 [1955] [three additional citations, all either Court of Appeals opinions or Appellate Division opinions affirmed without opinion by this Court, omitted]).

After the United States Supreme Court sanctioned the misappropriation theory of unfair competition in International News Service v Associated Press (248 US 215 [1918]), “[t]he principle that one may not misappropriate the results of the skill, expenditures and labors of a competitor has . . . often been implemented in [New York] courts” (Electrolux, 6 NY2d at 567, citing Germanow v Standard Unbreakable Watch Crystals, Inc., 283 NY 1, 18 [1940]; Fisher v Star Co., 231 NY 414, 428 [1921]; see also Meyers v Waverly Fabrics, Div. of Schumacher & Co., 65 NY2d 75, 79-80 [1985] [acknowledging defendant’s possible liability for “violation of the law of unfair competition by misrepresenting the (uncopyrighted) design, which it knew to be plaintiffs, as its own” (numerous citations omitted)]; National Basketball Assn. v Motorola, Inc., 105 F3d 841, 847-853 [2d Cir 1997] [accepting misappropriation as a theory under New York common law]). Indeed, the New York cases cited by the District Court and the Second Circuit as embodying the famous or well-known marks doctrine in New York common law—Prunier and Vaudable—were, in fact, decided wholly on misappropriation theories.

In Prunier, the plaintiff operated celebrated haute cuisine restaurants in Paris and London, but none in the United States. The defendants opened a restaurant in New York and

“appropriated to themselves the plaintiff’s name. . . . Indeed, it was admitted . . . that the name was intentionally selected because of plaintiffs well-known reputation and good will which has been built up as the result of decades of honest business effort.
“The defendants den[ied], however, that they ever held themselves out as being Prunier’s of Paris” (159 Misc at 553).

The court upheld the legal viability of an unfair competition claim by the plaintiff—even though the two restaurants were not in direct competition—so long as “plaintiff's] contention] that its reputation extends far beyond the territorial limits of Paris and London and that it has a substantial following in New York city and in other parts of the world” was proved (id. at 559 [emphasis added]).

In Vaudable, the plaintiffs restaurant in Paris—Maxim’s— was internationally famous “in the high-class restaurant field” (20 Misc 2d at 758-759). The defendants “appropriate^] the good will plaintiffs [had] created in the name Maxim’s as a restaurant,” and were therefore held liable for unfair competition based on misappropriation even though the parties were “not in present actual competition” (id. at 759). “The trend of the law, both statutory and decisional,” the court opined, “has been to extend the scope of the doctrine of unfair competition, whose basic principle is that commercial unfairness should be restrained whenever it appears that there has been a misappropriation, for the advantage of one person, of a property right belonging to another” (id. at 759 [citations omitted]; see also Roy Export Co. v Columbia Broadcasting Sys., 672 F2d 1095, 1105 [2d Cir 1982] [with decline of general federal common law after inception of misappropriation branch of unfair competition tort in International News Service, “the doctrine was developed by the states, New York in particular; there it has flourished in a variety of factual settings”]).

While expositors of the famous marks doctrine point to Prunier and Vaudable (see 5 McCarthy on Trademarks and Unfair Competition § 29:4 n 2 [4th ed 2007] [citing Prunier and Vaudable as “(p)erhaps the most famous examples” of the “well known” marks doctrine]), Prunier and Vaudable themselves in no way explain or proclaim—let alone rely on—any famous or well-known marks doctrine for their holdings. Instead, Prunier and Vaudable fit logically and squarely within our time-honored misappropriation theory, which prohibits a defendant from using a plaintiffs property right or commercial advantage—in Prunier and Vaudable, the goodwill attached to a famous name—to compete unfairly against the plaintiff in New York.

Under New York law, “[a]n unfair competition claim involving misappropriation usually concerns the taking and use of the plaintiffs property to compete against the plaintiffs own use of the same property” (Roy Export, 672 F2d at 1105). The term “commercial advantage” has been used interchangeably with “property” within the meaning of the misappropriation theory (see Flexitized, Inc. v National Flexitized Corp., 335 F2d 774, 781-782 [2d Cir 1964]). What Prunier and Vaudable stand for, then, is the proposition that for certain kinds of businesses (particularly cachet goods/services with highly mobile clienteles), goodwill can, and does, cross state and national boundary lines.

Accordingly, while we answer “Yes” to the first certified question, we are not thereby recognizing the famous or well-known marks doctrine, or any other new theory of liability under the New York law of unfair competition. Instead, we simply reaffirm that when a business, through renown in New York, possesses goodwill constituting property or a commercial advantage in this state, that goodwill is protected from misappropriation under New York unfair competition law. This is so whether the business is domestic or foreign.

III.

Certified Question No. 2

“How famous must a foreign mark or trade dress be to permit its owner to sue for unfair competition?” (482 F3d at 167.)

Protection from misappropriation of a famous foreign mark presupposes the existence of actual goodwill in New York (see e.g. Roy Export, 672 F2d at 1105 [misappropriation under New York law usually requires use in state of plaintiff s property or commercial advantage to compete against plaintiff]). If a foreign plaintiff has no goodwill in this state to appropriate, there can be no viable claim for unfair competition under a theory of misappropriation. At the very least, a plaintiffs mark, when used in New York, must call to mind its goodwill. Otherwise, a plaintiffs property right or commercial advantage based on the goodwill associated with its mark is not appropriated in this state when its unregistered mark is used here. Thus, at a minimum, consumers of the good or service provided under a certain mark by a defendant in New York must primarily associate the mark with the foreign plaintiff (cf. Allied Maintenance Corp. v Allied Mech. Trades, 42 NY2d 538, 545 [1977]).

Whether consumers of a defendant’s goods or services primarily associate such goods or services with those provided by a foreign plaintiff is an inquiry that will, of necessity, vary with the facts of each case. Accordingly, we cannot—and do not— provide an exhaustive list of the factors relevant to such an inquiry. That said, some factors that would be relevant include evidence that the defendant intentionally associated its goods with those of the foreign plaintiff in the minds of the public, such as public statements or advertising stating or implying a connection with the foreign plaintiff; direct evidence, such as consumer surveys, indicating that consumers of defendant’s goods or services believe them to be associated with the plaintiff; and evidence of actual overlap between customers of the New York defendant and the foreign plaintiff.

If the customers of a New York defendant do not identify a mark with the foreign plaintiff, then no use is being made of the plaintiffs goodwill, and no cause of action lies under New York common law for unfair competition. As a result, to prevail against defendants on an unfair competition theory under New York law, ITC would have to show first, as an independent prerequisite, that defendants appropriated (i.e., deliberately copied), ITC’s Bukhara mark or dress for their New York restaurants. If they successfully make this showing, plaintiffs would then have to establish that the relevant consumer market for New York’s Bukhara restaurant primarily associates the Bukhara mark or dress with those Bukhara restaurants owned and operated by ITC.

Accordingly, the certified questions should be answered in accordance with this opinion.

Chief Judge Kaye and Judges Ciparick, Graffeo, Smith, Pigott and Jones concur.

Following certification of questions by the United States Court of Appeals for the Second Circuit and acceptance of the questions by this Court pursuant to section 500.27 of the Rules of Practice of the Court of Appeals (22 NYCRR 500.27), and after hearing argument by counsel for the parties and consideration of the briefs and the record submitted, certified questions answered in accordance with the opinion herein.

      . There is some ambiguity regarding the proper name for what has been variously called the “famous marks doctrine,” the “well-known marks doctrine” and the “famous mark doctrine” (see e.g. 5 McCarthy on Trademarks and Unfair Competition § 29:4 [4th ed 2007] [using the above names interchangeably]). Apparently, the use of “well-known” in place of “famous” took hold after the Lanham Act was amended by passage of the Federal Trademark Anti-Dilution Act of 2006, which uses “famous” as a term of art (see 15 USC § 1125 [c]). At any rate, “famous” and “well-known,” “mark” and “marks,” have been used interchangeably to describe the putative doctrine, and no distinction is intended by our choice of words here.

      . “One of the most obvious forms” of palming off “occurs when the copier of an article overtly and explicitly misrepresents its source [, for example], where [a] defendant. . . substituted its product for plaintiffs when customers specifically asked for plaintiff’s product” (Remco Indus., Inc. v Toyomenka, Inc., 286 F Supp 948, 954 [SD NY 1968], affd 397 F2d 977 [2d Cir 1968] [citation omitted]; see also Shaw v Time-Life Records, 38 NY2d 201, 206 [1975] [defendant “could not ‘palm off its records as being the personal work of’ plaintiff under New York unfair competition law]).