Schieffelin & Co. v. Jack Co. of Boca, Inc., 89 Civ. 2941 (BN).
| Decision Date | 31 March 1994 |
| Docket Number | No. 89 Civ. 2941 (BN).,89 Civ. 2941 (BN). |
| Parties | SCHIEFFELIN & CO., Plaintiff, v. The JACK COMPANY OF BOCA, INC., and John P. Calderaio, individually and doing business as The Jack Co., Inc., Defendants. |
| Court | U.S. District Court — Southern District of New York |
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Robin, Blecker, Daley & Driscoll, New York City, for plaintiff; Marie V. Driscoll, Douglas A. Coblens, of counsel.
Scully, Scott, Murphy & Presser, Garden City, NY, for defendants; John S. Sensny, Kenneth L. King, of counsel.
Law Office of Harry W. Barron, Boca Raton, FL, for defendants; Harry W. Barron, of counsel.
OPINION, FINDINGS OF FACT AND CONCLUSIONS OF LAW
Schieffelin & Co. brings this action for trademark infringement, common law unfair competition, trade dress infringement and trademark dilution in connection with defendants' marketing of a popcorn product under the mark "DOM POPINGNON — CHAMPOP". Schieffelin holds federally registered and incontestible trademarks in the phrase "CUVÉE DOM PÉRIGNON" and in a shield design label appearing on the front of its champagne bottles. Defendants' product, also sold in champagne bottles, is identified by a shield design label that bears a close physical resemblance to Schieffelin's label.2
Specifically, Schieffelin's complaint sets forth four separate causes of action: (1) infringement of Schieffelin's federally registered trademarks in violation of section 32 of the Federal Trademark Act (the "Lanham Act"), 15 U.S.C. § 1114(1) (1988); (2) false designation of the source and origin of the DOM POPINGNON product in violation of section 43(a) of the Act, 15 U.S.C. § 1125(a); (3) unfair competition under the common law of the State of New York; and (4) trademark dilution in violation of the New York "anti-dilution" statute, New York General Business Law, § 368-d (McKinney 1986 & Supp.1994).
Prior to trial, defendants moved to dismiss the complaint for lack of personal jurisdiction, improper venue, and on the ground that, as to several counts in the complaint, Schieffelin had failed to state a claim upon which relief could be granted, because defendants' product was a "classic" parody. The court denied defendants' motion, holding in particular that the Champop product was not so obvious a parody as to permit dismissal under Fed.R.Civ.P. 12(b)(6); rather, whether the parody would be sufficiently strong to overcome the potential for consumer confusion was an issue of fact to be decided at trial. See Schieffelin & Co. v. The Jack Company of Boca, Inc., 725 F.Supp. 1314, 1324 (S.D.N.Y.1989) (Leisure, J.) The court likewise denied a subsequent motion by defendants for summary judgment, but granted Schieffelin's motion for summary judgment as to defendants' claim that the DOM PÉRIGNON trademark had been abandoned.
The record in this case consists of, among other things, the transcript of the live testimony of twelve witnesses for Schieffelin and one witness for defendants, as well as a total of 75 exhibits.
Schieffelin presented the testimony of the following witnesses. John Pellaton, Vice President and Product Group Director at Schieffelin & Somerset, testified concerning Schieffelin's marketing strategy for the DOM PÉRIGNON product. Richard Leventhal, President of Fedway Associates, gave additional evidence concerning the public perception of DOM PÉRIGNON. Schieffelin offered the expert testimony of Ronald Silver, President of Target Research Company, and Leonard Wood, owner of Multi-Sponsor Surveys. Silver and Wood related the results of three surveys conducted on behalf of Schieffelin to test the market recognition of DOM PÉRIGNON and the likelihood of confusion regarding the source of DOM POPINGNON. Schieffelin's other witnesses were: Roger Dagorn, a Master Sommelier and the maitre d' at the Chanterelle restaurant in the Tribeca section of Lower Manhattan; Laura Cooney and Renee Harwood, both of Equifax Quick Test; Jean-Louis Carbonnier, Director of Communications at the Champagne News Information Bureau; Douglas Coblens, Esq.; Seymour Adler, an investigator; Martin Beran, Esq.; and John P. Calderaio. The latter also testified on behalf of defendants.
The court has jurisdiction pursuant to 28 U.S.C. § 1338 and 15 U.S.C. §§ 1501, et seq. A bench trial was conducted by the writer from September 7 to 10, 1993. The following constitute the court's findings of fact and conclusions of law under Fed.R.Civ.P. 52(a).
Schieffelin & Co. is a Delaware corporation with an office and place of business in New York City, and is the distributor of the internationally famous champagne DOM PÉRIGNON. The corporate defendant in this action, The Jack Company of Boca, Inc., is a Florida corporation with an office and place of business in Boca Raton, Florida. John P. Calderaio, the individual defendant, is a resident of Boca Raton and owns 50% of the stock of The Jack Company, of which he is the President. Calderaio exercises full responsibility for the business decisions of The Jack Company.
Dom (Pierre) Pérignon is the name of a sixteenth century Benedictine monk at the Abbey of Hautvillers in the province of Champagne, France. It is popularly believed that Dom Pérignon, who presided over the vineyards at the abbey, discovered the method for producing the particular variety of sparkling white wine now known as champagne.
Dom Pérignon's name is part of a federally registered trademark owned by Schieffelin, and used in connection with the sale of a distinctive champagne produced by Moet & Chandon, a French producer of sparkling white wines.3 Moet & Chandon and Schieffelin are controlled by a common parent, Moet Hennessey, France. See Plaintiff's Exhibit 47. Since 1936, the year when DOM PÉRIGNON champagne was initially marketed in the United States, the exclusive distribution of DOM PÉRIGNON champagne under the trademark CUVÉE DOM PÉRIGNON has been either by Schieffelin (acting on its own behalf or through a joint venture known as Schieffelin & Somerset Co.) or by a predecessor in title. Although the term "CUVÉE" is included as part of Schieffelin's federally registered trademark, the product is commonly referred to as DOM PÉRIGNON, and it is so described in restaurant menus, retail catalogs and books wherein DOM PÉRIGNON is mentioned.
In marketing DOM PÉRIGNON, Schieffelin has sought to associate its product with a conception of both scarcity and wealth. Indeed, DOM PÉRIGNON first came to the United States on the maiden voyage of the Normandie in 1936, where it was used to toast the New Year. Three years later, the noted French chef, Henri Soulé, served DOM PÉRIGNON champagne at the 1939 World's Fair. DOM PÉRIGNON was subsequently provided at a select number of French restaurants, and could be obtained by retail sale only from Sherry-Lehmann's, a large wine and spirits merchant in New York. Presently, DOM PÉRIGNON is available for purchase in wine and liquor stores, as well as supermarkets and membership clubs where permitted by law. It continues, however, to enjoy an image of scarcity, despite its wide distribution in American commerce.
The testimony of Pellaton and Leventhal established that Schieffelin's champagne is used by people of all socio-economic backgrounds to celebrate major personal and commercial events. Nevertheless, DOM PÉRIGNON continues to be regarded as a distinctive and highly prestigious champagne, and is associated in the minds of the purchasing public with wealthy and famous people. Schieffelin has succeeded in cultivating DOM PÉRIGNON's aura of fame and wealth by means of a careful marketing strategy. Several bottles were donated, for example, to Presidents Bush and Mitterand, General Colin Powell and others, with the inscription "Peace through Strength," to recognize their leadership during the recent military action by the United Nations in the Persian Gulf. Schieffelin also permits United Airlines to advertise DOM PÉRIGNON in connection with its first class air passenger service.
According to Pellaton, Schieffelin does not aggressively advertise its champagne in the media; rather, it has discretely promoted the "pristine" image of its champagne by controlling the manner and context in which it is presented to the public. For example, DOM PÉRIGNON has appeared in motion pictures, such as the popular James Bond series. Permission is granted to use DOM PÉRIGNON only after review and approval of scripts by Schieffelin, which subsequently sends a representative to the set to ensure that the bottle is properly displayed, opened and used. Schieffelin also tightly controls the use of its trademarks by others, such as United Airlines, which was required on several occasions to amend its advertisements before finally obtaining approval. With the exception of United Airlines, Schieffelin routinely refuses to license or approve the use of the DOM PÉRIGNON marks by any other entity.
To illustrate its sedulous defense of its marks, Schieffelin offered into evidence an advertisement for Tagg, a fragrance for men, which had been published in the November 1988 issue of Gentlemen's Quarterly ("GQ"). In the center of the advertisement was a bottle of defendants' DOM POPINGNON product. See Plaintiff's Exhibit 8. Pellaton testified that Schieffelin would never authorize the use of DOM PÉRIGNON in such an advertisement, since it would be contrary to his company's marketing policy to encourage an association between Dom Pérignon and so-called "cheap products." Record at 64.
In June 1986, Calderaio was employed as a valet parker at the Boca Raton Hotel & Club, where he apparently developed a distaste for the condescension of the wealthy patrons of that establishment. Calderaio, then twenty-one and newly married, was eager to form his own company. He became aware of an enterprise which marketed a popcorn product called "Le Pop" in wine bottles. Soon thereafter, Calderaio glanced at a bottle of DOM...
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