Empresa Cubana Del Tabaco v. Culbro Corp., 97 Civ. 8399(RWS).

• Decision Date: 14 March 2007
• Docket Number: No. 97 Civ. 8399(RWS).,97 Civ. 8399(RWS).
• Citation: 478 F.Supp.2d 513
• Parties: EMPRESA CUBANA DEL TABACO d.b.a. Cubatabaco, Plaintiff, v. CULBRO CORPORATION and General Cigar Co., Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

478 F.Supp.2d 513

EMPRESA CUBANA DEL TABACO d.b.a. Cubatabaco, Plaintiff, v. CULBRO CORPORATION and General Cigar Co., Inc., Defendants.

No. 97 Civ. 8399(RWS).

United States District Court, S.D. New York.

March 14, 2007.

COPYRIGHT MATERIAL OMITTED

Rabinowitz, Boudin, Standard, Krinsky & Lieberman, P.C., New York, NY, By: Michael Krinsky, David B. Goldstein, Christopher J. Klatell, for Plaintiff.

Dla Piper Rudnick Gray Cary U.S. LLP, New York, NY, By: Andrew L. Deutsch, Joshua S. Sohn, Morgan & Finnegan, L.L.P., New York, NY, By: Harry C. Marcus, Scott Greenberg, for Defendants.

OPINION

SWEET, District Judge.

Defendants General Cigar Co., Inc. and General Cigar Holdings, Inc. (collectively "General Cigar") have moved under 15 U.S.C. § 1119 and the Court's ancillary jurisdiction to amend the order of May 15, 2006 (the "May 15 Order") to direct the Patent and Trademark Office's Trademark Trial and Appeal Board (the "PTO's" and "TTAB") to dismiss the pending petition of plaintiff Empresa. Cubana del Tabaco ("Cubatabaco") for cancellation of General Cigar's registrations of COHIBA and to dismiss Cubatabaco's pending application before the PTO for registration of COHIBA; or, in the alternative, to enter final judgment granting such relief.

For the reasons set forth below, the motion is denied.

The Parties

Cubatabaco is a company organized under the laws of Cuba with its principal place of business in Havana, Cuba. Directly, and through its licensee, Habanos, S.A., Cubatabaco exports tobacco products from Cuba throughout the world, excluding the United States because of the current trade embargo. It was established by the Cuban government as an independent entity with its own assets and administration and is subject to the jurisdiction of a Cuban ministry.

Culbro has been merged into and is survived by General Cigar Holdings, Inc. General Cigar Holdings, Inc. is a Delaware corporation with its principal place of business in the county of New York. General Cigar Holdings, Inc. functions as a holding company for General Cigar Co., Inc.

General Cigar Co., Inca is a Delaware corporation with its principal place of business in Bloomfield, Connecticut. General Cigar Co., Inc. is in the business of manufacturing, marketing, advertising, and distributing tobacco products. General Cigar Co., Inc. and its predecessors in interest have been major U.S. manufacturers and distributors of cigars for more than a century.

Prior Proceedings

In January 1997, Cubatabaco applied to register the trademark COHIBA in the PTO and, at the same time, applied to the TTAB to cancel General Cigar's registrations. Later in 1997, General Cigar launched a COHIBA-branded cigar on a national scale. On November 12, 1997, Cubatabaco brought this action for an injunction, as well as for cancellation of General Cigar's registration. As provided for in TTAB Rule 2.117, 37 C.F.R. § 2.117, the TTAB cancellation proceedings were suspended pending the outcome of the federal court litigation. After a bench trial, General Cigar's use of COHIBA was enjoined and cancellation of General Cigar's registrations was ordered. Empresa Cubana del Tabaco v. Culbro Corp., No. 97 Civ. 8399(RWS), 2004 WL 925647 (S.D.N.Y. Apr.30, 2004); Empresa Cubana del Tabaco v. Culbro Corp., No. 97 Civ. 8399(RWS), 2004 WL 602295, at *20-21 (S.D.N.Y. Mar.26, 2004).

On appeal, General Cigar contended for the first time that the relief awarded by this Court violated Cuban Assets Control Regulations, 31 C.F.R. Part 515 (the "CACR"). On August 27, 2004, the Second Circuit requested that the United States submit its views. The United States submitted an amicus curiae brief on November 12, 2004, advising that the granted relief was compatible with the CACR even in the absence of a specific Office of Foreign Asset Control ("OFAC") license. (Klatell Decl., Aug. 22, 2006 ("Klatell Decl."), Ex. 2 at 5-6, 10.) The United States also submitted in its brief that Cubatabaco was entitled to certain of the relief on the facts found by this Court. (Id. at 12-13.)

The Court of Appeals determined that in the absence of a specific OFAC license, this Court's orders "would entail a transfer of property rights in the COHIBA mark to Cubatabaco in violation of the embargo." Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d 462, 471 (2d Cir.2005). The Court of Appeals did not, however reach the merits of this Court's decision. Cubatabaco's petition for rehearing and for rehearing en banc was denied on June 1, 2005.

After General Cigar raised the CACR issue on appeal, Cubatabaco filed a September 20, 2004 application with OFAC for a specific license retroactively authorizing Cubatabaco's acquisition of rights in the COHIBA trademark under the well-known marks doctrine, and retroactively authorizing this Court's issuance of relief in favor of Cubatabaco.

After the Court of Appeals' adverse decision, Cubatabaco petitioned the Supreme Court for a writ of certiorari. In response to the Court's request for its views, the United States advised the Court in a May 2006 amicus curiae brief that it considered the Second Circuit's decision to be in error but nonetheless urged the Supreme Court to deny review. The United States noted Cubatabaco's pending OFAC application to explain why the treaty, reciprocity, and foreign affairs concerns raised by Cubatabaco could be adequately addressed by the Executive in its discretion and thus were not reasons to grant review. The Supreme Court denied certiorari on June 15, 2006.

The Court of Appeals' mandate, issued on February 8, 2006, decreed that the district court's judgment be "AFFIRMED IN PART, REVERSED IN PART, and REMANDED in accordance with the opinion of this Court," which directed that the case be "remanded for entry of an order dismissing all remaining claims." Empresa, 399 F.3d at 486. The mandate was entered in the district court on February 23, 2006. Pursuant to the mandate, this Court entered an order on May 17, 2006, as instructed by the Court of Appeals, "that all remaining claims in the above-entitled action are dismissed."

On July 6, 2006, General Cigar filed the instant motion for orders dismissing Cubatabaco's petition to cancel General Cigar's registrations in the TTAB and denying Cubatabaco's application for registration of COHIBA in the PTO. The motion was heard on September 20, 2006.

Discussion

1. The Motion is Denied as Untimely

General Cigar has styled the instant motion as a motion to amend the May 15 Order or, in the alternative, as a motion for the entry of final judgment in this action. Since judgment has already been entered, either motion is untimely under Federal Rule of Civil Procedure 59(e). Fed.R.Civ.P. 59(e). Although General Cigar also calls for the exercise of ancillary jurisdiction, such jurisdiction is not applicable here.

a. Judgment Has Been Entered

The Court of Appeals issued its mandate on February 8, 2006. The mandate, labeled "JUDGMENT" at the top, was filed in the Southern District and entered on the docket by the Clerk on February 23, 2006. Additionally, an order implementing the Court of Appeals' mandate and dismissing all remaining claims in this action was signed on May 15, 2006, and entered on the docket on May 17, 2006.

Local Civil Rule 58.1 provides that:

Any order or judgment of an appellate court, when filed in the office of the clerk of the district court, shall automatically become the order or judgment of the district court ... except if such order or judgment of the appellate court requires further proceedings in the district court....

Local Civ. R. 58.1.

Entitled "Remand by an Appellate Court," Local Civil Rule 58.1 applies to situations where the Court of Appeals remands for further action. If remand for dismissal, without any actual additional proceedings involving the parties, constituted remand for "further proceedings" under the rule, then it would appear that every remand would require further proceedings. The Court of Appeals' judgment did not require "further proceedings," and therefore "automatically" became the judgment of the district court when entered in the district court on February 23, 2006. Local Civ. R. 58.1.

Even if the Court of Appeals' order that this Court enter "an order dismissing all remaining claims," Empresa, 399 F.3d at 486, is construed as requiring "further proceedings," judgment was still entered under Local Rule 58.1. Under the local rule, if "further proceedings" are required, "an order shall be entered making the order or judgment of the appellate court the order or judgment of the district court." Local Civ. R. 58.1. Such an order, dated May 15, 2006, was entered on the docket on May 17, 2006. The May 15 Order therefore made the Court of Appeals' judgment the judgment of the district court.

Furthermore, the May 15 Order satisfies the separate document requirement for entry of judgment. Fed.R.Civ.P. 58(a)(1); see also Axel Johnson Inc. v. Arthur Andersen & Co., 6 F.3d 78, 84 (2d Cir.1993); RR Village Ass'n, Inc. v. Denver Sewer Corp., 826 F.2d 1197, 1201 (2d Cir.1987). First, the May 15 Order is a document "separate from any judicial memorandum or opinion" that disposed of the issues in the case. Axel Johnson Inc., 6 F.3d at 84. Second, although the May 15 Order did not bear the title "judgment" as required in Kanematsw-Gosho, Ltd. v. M/T Messiniaki Aigli, 805 F.2d 47, 48-49 (2d Cir.1986), it was "a one-sentence order" which the Second Circuit has described as "satisfy[ing] the separate-document requirement." RR Village Ass'n, Inc., 826 F.2d at 1201.

Therefore, based on the foregoing analysis, the May 15 Order constitutes a judgment in this action.

b. A Post-Judgment Motion Is Untimely

Although not citing to any rule of civil procedure, General Cigar has styled its motion as a motion to amend the May 15 Order, which it has been determined constitutes a judgment in this action. Therefore, the motion is controlled by Rule 59(e), Fed.R.Civ.P. According...