In re Houbigant, Inc., No. 95 Civ. 2467 (RWS).

CourtUnited States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
Citation914 F. Supp. 964
Decision Date17 October 1995
PartiesIn 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.
Docket NumberNo. 95 Civ. 2467 (RWS).

914 F. Supp. 964

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.

No. 95 Civ. 2467 (RWS).

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

October 17, 1995.


914 F. Supp. 965
COPYRIGHT MATERIAL OMITTED
914 F. Supp. 966
COPYRIGHT MATERIAL OMITTED
914 F. Supp. 967
COPYRIGHT MATERIAL OMITTED
914 F. Supp. 968
COPYRIGHT MATERIAL OMITTED
914 F. Supp. 969
COPYRIGHT MATERIAL OMITTED
914 F. Supp. 970
COPYRIGHT MATERIAL OMITTED
914 F. Supp. 971
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

Parker Chapin Flattau & Klimpl, LLP (Stephen G. Rinehart, Barry J. Brett, Michael D. Friedman, 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.

Stroock, Stroock & Lavan (Brian M. Cogan, James A. Shifren, of counsel), New York City, for Counterclaim Defendant Chemical Bank.

Marcus Montgomery Wolfson, P.C. (Sam P. Israel, Lisa Buckley, of counsel), New York City, for defendant ACB Mercantile Inc.

OPINION

SWEET, District Judge.

The ACB Defendants1 have moved to dismiss the complaint of Plaintiff/Debtor Houbigant, Inc. ("Houbigant"). Houbigant and Plaintiff PPI have each moved to dismiss all of the counterclaims asserted against them by ACB. Counterclaim-Defendant Chemical Bank ("Chemical") has moved to dismiss the claim asserted against it by ACB. For the reasons discussed herein, the motions are denied in part and granted in part.

Parties

Houbigant is a corporation organized and existing under the laws of Delaware, with its principal place of business in New York, New York. Houbigant is the parent of a group of domestic and foreign companies which marketed and distributed perfumes and toiletries worldwide. On November 18, 1993 (the "Filing Date"), Houbigant and certain of its affiliates (collectively the "Debtors") filed voluntary petitions in this District for relief under Chapter 11 of the Bankruptcy Code. Since that time they have continued in possession and control of their businesses and assets as debtors in possession.

914 F. Supp. 972
Since filing the petition, Houbigant discontinued its design, marketing and distribution operations and became a trademark licensor. In re Houbigant, Inc., 182 B.R. 958 (Bankr. S.D.N.Y.1995)

Plaintiff Parfums Parquet, Incorporated ("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 PPI2. In exchange for royalty payments, Houbigant granted to PPI the exclusive right and license in "the Territory3" 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 ("Giuliano"), 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.

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 Luigi Massironi ("Massironi") is the Chief Operating Officer of Houbigant. Massironi joins the motion to dismiss ACB's counterclaims, while reserving his right to contest service.

Counterclaim Defendant Michael Sherman ("Sherman") is a reorganization specialist and is Executive Vice President of Houbigant in charge of bankruptcy matters. Sherman joins the motion to dismiss ACB's counterclaims, while reserving his right to contest

914 F. Supp. 973
service. Plaintiffs allege that Sherman was not and was not alleged to be associated with Houbigant prior to the Filing Date, November 18, 1993

Counterclaim Defendant Thomas Bonoma ("Bonoma") is Chairman and Chief Executive Officer of Renaissance and Chairman of PPI.

Counterclaim Defendant Chemical (as agent for itself and National Westminster Bank U.S.A.) is a banking corporation that conducts business worldwide. The Counterclaims allege that Chemical holds a security interest in most if not all of Houbigant's assets, including the alleged trademarks that are the subject of this action and have been actively involved in the day to day management of Houbigant's business affairs since at least October 1993.

Counterclaim Defendant Robert Graber ("Graber") was the Chief Financial Officer of Houbigant until January 1995.

Counterclaim Defendant CTC International Group, Ltd. ("CTC") is a detection and surveillance company, which maintains an office in West Palm Beach, Florida.

Counterclaim Defendant Brad Robinson ("Robinson") is an employee of CTC.

Prior Proceedings

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 11 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.

On April 11, 1995 the defendants moved to withdraw the reference to the District Court. By order to show cause, signed on April 11, 1995, the motion was set for hearing on April 14, 1995. On April 14, the parties appeared before this Court, and an order was entered postponing argument on the motion until May 3, 19954.

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 May 17, 1995, the parties appeared before the Court and the motion to withdraw adversary proceeding from the Bankruptcy Court was granted, with no opposition voiced, on consent of all parties.

On May 26, 1995, the plaintiffs filed the First Amended Complaint (the "Complaint"), no answer having yet been filed by the defendants. The complaint recites seventeen claims and names the ACB companies, Celaya, Giuliano, Pellerin, V & B Distributors, Harold Schiff, A. Rosenblum Sales, Inc., and Bernard Rosenblum as defendants.

By Order of the Bankruptcy Court dated June 14, 1995, Houbigant's "Third Amended Joint Disclosure Statement Under Section 1125 of the Bankruptcy Code," was approved, and Houbigant and its affiliated debtors were authorized to commence the process of soliciting acceptances of the Plan.

On June 16, 1995 ACB filed an answer and counterclaims against Houbigant, PPI, and third-party defendants Luigi Massironi, Robert Grabet, 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...

To continue reading

Request your trial
69 practice notes
  • Bear, Stearns Funding v. Interface Group-Nevada, No. 03 Civ. 8259(CSH).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • 21 Marzo 2005
    ...covenant is also the predicate for a claim of breach of an express provision of the underlying contract. See In re Houbigant Inc., 914 F.Supp. 964, 989 (S.D.N.Y.1995). In order to determine whether the breach of contract and breach of covenant of good faith and fair dealing counterclaims ar......
  • In re Express Scripts, Inc., Pbm Litigation, Master Case No. 4:05-MD-01672-SNL.
    • United States
    • United States District Courts. 8th Circuit. United States District Court (Eastern District of Missouri)
    • 31 Octubre 2007
    ...the implied covenant because plaintiff had alleged the same conduct in its claim for breach of contract (citing In re Houbigant, Inc., 914 F.Supp. 964, 989 (D.N.Y.1995) (violation of implied covenant was predicate for claim for breach of express contract provision) and Sauer v. Xerox Corp.,......
  • Sebastian Intern., Inc. v. Russolillo, No. 00-03476-CM.
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Central District of California
    • 25 Agosto 2000
    ...See 19 U.S.C. § 1526(c). Liability under this statute is not limited to the importer. See e.g. Houbigant, Inc. v. ACB Mercantile, Inc., 914 F.Supp. 964, 982 (S.D.N.Y.1995) (denying defendants' motion to dismiss observing "The complaint alleges that the [] defendants were responsible for and......
  • Voda v. Cordis Corp., No. 05-1238.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • 1 Febrero 2007
    ...applied the Kenyan comparative negligence law and case law of the East African 476 F.3d 908 Court of Appeals. In In re Houbigant, Inc., 914 F.Supp. 964 (S.D.N.Y.1995) the district court applied various provisions of the Canadian Trade-Marks Act, and also applied the laws of the Province of ......
  • Request a trial to view additional results
68 cases
  • LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A., 14 Civ. 4869 (PAE)
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • 13 Septiembre 2016
    ...investigations; and (2) risked unnecessary cancellation of health care center's contract), Houbigant, Inc. v. ACB Mercantile, 914 F.Supp. 964, 984 (S.D.N.Y.1995) (public harm requirement satisfied where defendants were part of unlawful scheme to export and sell counterfeit items), and Weigh......
  • Bear, Stearns Funding v. Interface Group-Nevada, No. 03 Civ. 8259(CSH).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • 21 Marzo 2005
    ...covenant is also the predicate for a claim of breach of an express provision of the underlying contract. See In re Houbigant Inc., 914 F.Supp. 964, 989 (S.D.N.Y.1995). In order to determine whether the breach of contract and breach of covenant of good faith and fair dealing counterclaims ar......
  • Telebrands Corp. v. Del Laboratories Inc., No. 09 Civ. 1001(NRB).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • 15 Junio 2010
    ...definition. See Tap Publications v. Chinese Yellow Pages (New York) Inc., 925 F.Supp. 212, 217 (S.D.N.Y.1996); In re Houbigant, Inc., 914 F.Supp. 964, 990 (S.D.N.Y.1995), clarified in part, 914 F.Supp. 997 (S.D.N.Y.1996); 6 see also J. 719 F.Supp.2d 293 Thomas McCarthy, 6 McCarthy on Tradem......
  • Grgurev v. Licul, 1:15–cv–9805–GHW
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • 26 Enero 2017
    ...likely to succeed on merits of § 349 claim premised on likelihood of confusion between marks); Houbigant, Inc. v. ACB Mercantile, Inc. , 914 F.Supp. 964, 984 (S.D.N.Y. 1995) (holding that plaintiffs stated a § 349 claim where they alleged that defendants imported counterfeit good "with......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT