Buti v. Perosa, S.R.L.
| Decision Date | 24 February 1998 |
| Docket Number | D,No. 97,97 |
| Citation | 139 F.3d 98,45 U.S.P.Q.2d 1985 |
| Parties | Tommaso BUTI; Fashion World Company, Plaintiffs-Counter-Defendants-Appellees, v. Impressa PEROSA, S.R.L., Defendant-Counter-Claimant-Appellant. ocket 96-9630. |
| Court | U.S. Court of Appeals — Second Circuit |
David Jaroslawicz, New York City (Robert J. Tolchin, Jaroslawicz & Jaros, of counsel), for Defendant-Counter-Claimant-Appellant.
Judd Burstein, Burstein & Fass, New York City (Samuel I. Burstyn, Miami, FL, Miguel M. de la O, de la O, Marko & Wang, Miami, FL, Robert W. Cinque, Cinque & Cinque, New York City, on the brief), for Plaintiffs-Counter-Defendants-Appellees.
Before KEARSE and CABRANES, Circuit Judges, and COTE, District Judge. *
Defendant Impressa Perosa, S.R.L. ("Impressa") appeals from an August 9, 1996 Memorandum Decision of the United States District Court for the Southern District of New York (Schwartz, J.) granting summary judgment to plaintiffs Tommaso Buti and Fashion World Company (referred to collectively as "Buti") on their claim for a declaratory judgment that Impressa has no rights under federal trademark law in the name "Fashion Cafe" for restaurant services and clothing in the United States. The District
Court also granted summary judgment to Buti on Impressa's counterclaims, dismissing with prejudice the federal trademark counterclaims and declining to exercise supplemental jurisdiction over, and thus dismissing without prejudice, the state law counterclaims. The District Court's opinion adopted, and relied heavily upon, the Report and Recommendation ("Report") of Magistrate Judge Peck, with the exception of a recommendation to impose sanctions against Impressa, which the District Court denied. For the reasons set forth below, we affirm in full the decision of the District Court.
As Magistrate Judge Peck observed in his Report, none of the parties' various disputes regarding the record facts are material to the core legal issue that both sides agree governs this case, namely, whether Buti or Impressa first used the contested mark "Fashion Cafe" in "commerce," within the meaning of the Lanham Act. See Buti v. Impressa Perosa, S.R.L., 935 F.Supp. 458, 464 (S.D.N.Y.1996).
In 1987, Impressa opened an establishment called the Fashion Cafe, which the Report describes as "a 'bar with a cafeteria,' not a restaurant," in Milan, Italy. Along with his interest in that business, Impressa's principal, Giorgio Santambrogio ("Santambrogio"), also is part owner of several other Italian concerns, including a modeling agency known as Fashion Model Management, and a restaurant called the Grand Fashion Cafe, which formally opened in Milan in February 1995; neither of the latter businesses is at issue in this case. Impressa registered the trademark Fashion Cafe in Italy in April 1988, and Santambrogio asserts that he purchased the name from Impressa several years thereafter for the purpose of developing such establishments around the world.
It is undisputed that Impressa never opened a Fashion Cafe or any other restaurant or store in the United States, nor did the company ever conduct any formal advertising or public relations campaign in this country for its Milan Fashion Cafe. Nevertheless, Santambrogio did submit evidence that he promoted the Fashion Cafe during visits to the United States by distributing "literally thousands of T-shirts, cards, and key chains with the [Milan] Fashion Cafe name and logo to persons associated with the modeling and fashion industry which entitled them to free meals" at the Fashion Cafe. Id. at 466 (alteration in original). Santambrogio also maintains that he actively negotiated with at least one well-known restaurateur for the purpose of opening a Fashion Cafe "theme restaurant" in New York City; in addition, he claims to have devised a plan to put a Fashion Cafe establishment in hotels in major cities throughout the United States, but admits taking no actual steps to implement this "fantasy," which existed only "in [his] brain." Id. at 466 & n. 6.
In May 1993, Buti opened a restaurant, also called the Fashion Cafe, in Miami Beach, Florida. In the summer of 1994, he commenced a plan to open a "franchise" of Fashion Cafe theme restaurants, which would focus on the fashion model industry by displaying fashion photographs and tapes of televised fashion shows, and marketing associated apparel and souvenirs. Pursuant to that plan, Buti hired a law firm to perform a trademark search of the Fashion Cafe name, and when the search revealed no use or registration of the name in the United States, he filed an application with the Patent and Trademark Office to register the mark Fashion Cafe. Anticipating a spring 1995 opening for his New York City Fashion Cafe, Buti publicized the restaurant's December 1994 groundbreaking through publicity and promotions involving, inter alia, appearances by well-known models, all of which "generated thousands of television, newspaper and magazine articles worldwide." Id. at 465. The New York Fashion Cafe formally opened in April 1995, another opened thereafter in New Orleans, and several more were under construction as of the time of the District Court litigation.
In December 1994, upon learning of Buti's planned opening of his Fashion Cafe in New York, Impressa attempted to register that name with the Patent and Trademark Office. In January 1995, counsel for Impressa sent a "cease and desist" letter to Buti, threatening litigation if he did not refrain from using the Impressa answered and asserted five counterclaims, alleging that Buti (i) infringed on Impressa's rights in the Fashion Cafe name, giving rise to a claim for false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (ii) misappropriated Impressa's concepts and the name Fashion Cafe; (iii) engaged in unfair and deceptive business practices in violation of New York General Business Law Section 349 et seq.; (iv) committed acts constituting common law unfair competition; and (v) caused Impressa such harm through the aforementioned conduct as to entitle Impressa to an injunction. After Buti moved to dismiss the counterclaims, pursuant to Rule 12(b)(6), Fed.R.Civ.P., Impressa filed an amended answer and counterclaims, adding a sixth counterclaim alleging that Buti made false representations in his application for trademark registration, in violation of Section 38 of the Lanham Act, 15 U.S.C. § 1120.
Fashion Cafe name. Buti responded by filing the present action, on May 17, 1995, alleging federal question jurisdiction and naming Impressa as the sole defendant. The Complaint seeks primarily a declaratory judgment "[t]hat Defendant does not have rights in the trademark 'Fashion Cafe' for restaurant services or clothing in the United States." The Complaint also requests various other forms of equitable relief, including a declaration that Buti did not compete unfairly with Impressa, nor infringe Impressa's trademark rights (if any) in the Fashion Cafe name, by advertising or operating Buti's restaurants; a declaration that Buti did not misrepresent the origin of his restaurant services; and an injunction preventing Impressa from filing or threatening to file an infringement suit against Buti. 1
After the close of discovery, Buti moved for summary judgment on his declaratory judgment claim and in addition requested that his motion to dismiss the counterclaims be converted to one for summary judgment, under Rule 56, Fed.R.Civ.P.; that request was granted, and Buti submitted additional papers in support of the latter motion. Although Impressa failed to move for summary judgment on its own claims, its opposition to Buti's motion did contain a request that the court "search the record" and grant Impressa summary judgment on the counterclaims; the District Court therefore considered the motions before it to be cross-motions for summary judgment.
Magistrate Judge Peck, to whom the motions were referred, recommended that the District Court grant Buti's motion for summary judgment, awarding him a declaratory judgment that Impressa has no rights in the mark Fashion Cafe in the United States, and dismissing all of Impressa's counterclaims. The determinative conclusion, with respect to both the declaratory judgment claim and the federal trademark counterclaims, was that Impressa did not "use" the Fashion Cafe name "in commerce" within the meaning of the Lanham Act prior to Buti's registration and use of the name. Specifically, Magistrate Judge Peck found, based largely on decisions of the Trademark Trial and Appeal Board ("TTAB"), that Santambrogio's efforts in the United States to advertise and promote the Milan Fashion Cafe were insufficient to satisfy the statutory standard for "use in commerce" because the restaurant services associated with that advertising were provided solely in Milan, Italy, outside the scope of United States "commerce." The District Court adopted in full these core conclusions regarding the trademark claims, and in addition adopted the recommendation to refrain from exercising supplemental jurisdiction over Impressa's state law counterclaims. Thus the District Court awarded Buti a declaratory judgment, dismissed Impressa's federal counterclaims with prejudice, and dismissed the state law counterclaims without prejudice.
Even when viewed in the light most favorable to Impressa, as is required here pursuant to our de novo review of the grant of summary judgment to Buti, see Samuels v. Mockry, 77 F.3d 34, 35 (2d Cir.1996), the record in this case makes clear that no genuine dispute exists as to any material factual "Use in Commerce"
issue, and that Buti was and is entitled to judgment as a matter of law. The parties' agreement concerning the essential facts and governing legal framework leave the issue on appeal quite narrow. Both sides agree that the critical question in determining...
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