In re Houbigant, Inc., 95 Civ. 2467 (RWS).
| Citation | 914 F. Supp. 997 |
| Decision Date | 17 January 1996 |
| Docket Number | No. 95 Civ. 2467 (RWS).,95 Civ. 2467 (RWS). |
| Parties | In re HOUBIGANT, INC., et al., Debtors. HOUBIGANT, INC. and Parfums Parquet, Inc., Plaintiffs, v. ACB MERCANTILE, INC., ACB Fragrances and Cosmetics, Inc., Giacomo Giuliano, Augustine Celaya and Gilles Pellerin, V & B Distributors, Canada, Inc., Harold Schiff, A. Rosenblum Sales, Inc., and Rosenblum, Defendants. ACB MERCANTILE, INC. and ACB Fragrances and Cosmetics, Inc., Counterclaim-Plaintiffs, v. HOUBIGANT, INC., Parfums Parquet, Houbigant, (1995) Ltd. (f.k.a. 3088766) Canada, Ltd., Michael Sherman, Luigi Massironi, Robert Graber, Thomas Bonoma, Renaissance Cosmetics, Inc., Kidd Kamm & Company, CTC International Group, Ltd., Brad Robinson and Chemical Bank New Jersey, N.A. (as agent for itself and National Westminster Bank U.S.A.), Counterclaim Defendants. |
| Court | United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York |
Parker Chapin Flattau & Klimpl, LLP (Barry J. Brett, Stephen G. Rinehart, Gilbert C. Hoover, IV, of counsel), New York City, for Plaintiff/Counterclaim Defendants Parfums Parquet, Houbigant Ltee, Thomas Bonoma, Renaissance Cosmetics, Kidd Kamm, CTC Intl. and Brad Robinson.
Marcus Montgomery P.C. (Sam P. Israel, of counsel), New York City, for Defendant ACB Mercantile Inc.
Kaye, Scholer, Fierman Hays & Handler (Karen E. Katzman, Thomas A. Smart, Scott M. Berman, Elizabeth Forman, Yoon Hi Greene, of counsel), New York City, for Plaintiff/Counterclaim Defendants Michael Sherman, Luigi Massironi and Robert Graber.
Plaintiff Parfums Parquet, Incorporated ("PPI") has moved pursuant to Local Rule 3(j) for reargument of this Court's October 17, 1995 Opinion and to dismiss three counts against Counterclaim Defendant PPI-Canada in deference to an ongoing Canadian action. Specifically, it moves to reargue the motion to dismiss Counts X (tortious interference with contracts against the PPI Entities and Bonoma) and XVII (trademark cancellation under the Lanham Act against PPI) and to dismiss counts IV, X and XVI as against PPI-Canada in deference to the pending Canadian action. In addition, PPI asks for several clerical adjustments to the Opinion of October 17, 1995. For the reasons discussed below the motions are granted in part and denied in part.
The parties and prior proceedings are described fully in prior Opinions of this Court, familiarity with which is assumed. See Houbigant, Inc. v. ACB Mercantile, Inc., 185 B.R. 680 (S.D.N.Y.1995); Houbigant, Inc. v. ACB Mercantile, Inc., 914 F.Supp. 964 (S.D.N.Y.1995) (the "October Opinion").
Houbigant is a corporation organized and existing under the laws of Delaware, with its principal place of business in New York, New York.
PPI is a corporation organized and existing under the laws of Delaware, with its principal place of business in New York, New York. On June 2, 1994 the Bankruptcy Court authorized Houbigant to implement and effectuate a license agreement with PPI1. In exchange for royalty payments, Houbigant granted to PPI the exclusive right and license in "the Territory2" to: a) manufacture in the Territory the Products covered by the Trademarks (the "Licensed Products"); b) distribute, use and sell throughout the Territory the Licensed Products; and c) use the Trademarks in conjunction with the Licensed Products and all advertising and letterheads and collateral promotional material in the Territory. PPI was Houbigant's exclusive United States licensee.
Defendant ACB Mercantile, Inc. ("ACB Mercantile") is a Canadian corporation with its principal place of business in Quebec, Canada.
Defendant ACB Fragrances and Cosmetics, Inc. ("ACB Fragrances") is a Canadian corporation with its principal place of business in Quebec, Canada. ACB Mercantile and ACB Fragrances are collectively referred to as "ACB companies." ACB companies are Houbigant creditors in the Bankruptcy proceedings. ACB Fragrances and Houbigant entered into a series of agreements in April 1993 by which Houbigant granted ACB Fragrances an exclusive license to manufacture, sell, and distribute certain Houbigant products in Canada. An asset purchase agreement dated December 12, 1994 (the "Asset Purchase Agreement") conveyed ACB Fragrance's business to Counterclaim Defendant PPI-Canada, a Canadian affiliate of plaintiff PPI.
Defendant Augustine Celaya ("Celaya"), an officer and principal shareholder of ACB Mercantile, is an individual residing in Texas.
Defendant Giacomo Giuliano ("Guiliano"), an officer and principal shareholder of ACB Mercantile, is an individual residing in Quebec.
Defendant Gilles Pellerin ("Pellerin"), an officer and principal shareholder of ACB Mercantile, is an individual residing in Quebec. The ACB Companies and Celaya, Guiliano, and Pellerin are collectively referred to as the "ACB Defendants."
Counterclaim Defendant PPI-Canada is a Canadian corporation and a wholly-owned subsidiary of plaintiff, PPI. According to the Counterclaims, PPI-Canada has offices in Cambridge, Massachusetts and transacts business both directly and through its parent-corporations, PPI and Renaissance, within the Southern District of New York.
Counterclaim Defendant Renaissance Cosmetics Inc. ("Renaissance"), is a corporation engaged in various aspects of the fragrance business and owns all of the common stock of plaintiff, PPI. Renaissance conducts substantial business in New York.
Counterclaim Defendant Kidd Kamm & Co. ("Kidd Kamm") is a Connecticut company, and an affiliate of Renaissance, PPI and PPI-Canada. Kidd Kamm creates and invests in entities that manufacture and distribute fragrances in the United States and abroad and it conducts substantial business with this District. Kidd Kamm, PPI, PPI-Canada and Renaissance are referred to collectively as the PPI Entities.
Counterclaim Defendant Thomas Bonoma ("Bonoma") is Chairman and Chief Executive Officer of Renaissance and Chairman of PPI.
Houbigant and PPI filed an adversary proceeding in Bankruptcy Court in the Southern District of New York on April 4, 1995 pursuant to section 105(a) of Title XI of the United States Code, alleging violations of the Lanham Act, various statutes of the State of New York and the common law, seeking damages and to enjoin the ACB defendants from infringing upon rights in certain Houbigant trademarks, unfair competition and injuring their business reputations or diluting the distinctive quality of the trademarks. This adversary proceeding was withdrawn on consent from the Bankruptcy Court on May 17, 1995.
On May 5, PPI's affiliate, PPI-Canada, commenced an action against ACB in Canada alleging that ACB sold products infringing Houbigant's trademarks.
On June 16, 1995 ACB filed an answer and counterclaims against Houbigant, PPI, and third-party defendants Luigi Massironi, Robert Graber, Thomas Bonoma, Renaissance, PPI Canada (a wholly owned subsidiary of plaintiff PPI), Kidd Kamm & Company, CTC International Group, Brad Robinson, Chemical, and Michael Sherman. These third-party defendants are not parties in the bankruptcy proceeding. The seventeen Counterclaims allege fraud against Houbigant, Massironi, Sherman and Graber (Count I), violations of the Canadian Trademark Act against Houbigant (Count II), breaches of fiduciary duties against Houbigant, Massironi, Sherman and Graber (Count III), breaches of covenants of good faith and fair dealing against Houbigant, Chemical and the PPI Entities (Count IV), civil conspiracy to defraud against all counterclaim defendants except Chemical, Robinson and CTC (Count V), unfair competition under the Lanham Act against Houbigant, Massironi, Sherman and Graber (Count VI); injury to business under New York Business Law against Houbigant, Massironi, Sherman and Graber (Count VII), violation of New York Business Law regarding false advertising against all counterclaim defendants except Chemical, Robinson and CTC (Count VIII); common law unfair competition against Houbigant, Massironi, Sherman and Graber (Count IX); tortious interference with contracts against Houbigant, the PPI Entities, Bonoma, Sherman and Massironi (Count X); defamation per se against Houbigant, PPI, PPI-Canada, Bonoma, CTC, Robinson and Sherman (Count XI); defamation under the Canadian Trademarks Act against Houbigant, the PPI Entities, Bonoma, CTC, Robinson and Sherman (Count XII); contractual indemnification against Houbigant (XIII); indemnification implied in law against Houbigant (Count XIV), post petition breaches of contract against Houbigant and PPI-Canada (Counts XV and XVI, respectively); and trademark cancellation under the Lanham Act against Houbigant and PPI (Count XVII).
In the original motion to dismiss, PPI3 moved to dismiss Counts IV, V, VIII, X — XII, XVI and XVII. The October Opinion granted the motion to dismiss Counts IV (against all but PPI-Canada), V, VIII, XI, and XII. This left claims of breaches of covenants of good faith and fair dealing against PPI-Canada (Count IV); tortious interference with contracts against the PPI Entities and Bonoma (Count X); post petition breaches of contract against PPI-Canada (XVI); and trademark cancellation under the Lanham Act against PPI (Count XVII) in addition to those claims which PPI had not moved to dismiss. PPI now moves to reargue the failure to dismiss Counts X and XVII and moves to dismiss Counts IV, X and XVI as against PPI-Canada in deference to the pending Canadian action.
The October Opinion also denied ACB's motion to dismiss for forum non-conveniens.
On November 3, 1995 the Honorable James L. Garrity, of the Bankruptcy Court issued an Opinion which resolved the issues remanded from this Court. See In re Houbigant, 188 B.R. 347 (Bankr.S.D.N.Y.1995). While that Opinion does not affect the present motions directly, it is noted here in order to create a full record of these complicated proceedings.
On November 7, 1995 PPI filed these motions for reargument, to dismiss and for clerical revisions. Oral argument was heard on...
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