MONTBLANC-SIMPLO GMBH v. COLIBRI CORP.

• Decision Date: 26 February 2010
• Docket Number: No. 07-CV-5422 (KAM)(RLM).,07-CV-5422 (KAM)(RLM).
• Citation: 692 F. Supp.2d 245
• Parties: MONTBLANC-SIMPLO GMBH, et al., Plaintiffs, v. COLIBRI CORPORATION, et al., Defendants.
• Court: U.S. District Court — Eastern District of New York

692 F. Supp.2d 245

MONTBLANC-SIMPLO GMBH, et al., Plaintiffs, v. COLIBRI CORPORATION, et al., Defendants.

No. 07-CV-5422 (KAM)(RLM).

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

February 26, 2010.

Gianfranco G. Mitrione, Paul D. Ackerman, Robert M. Wasnofski, Jr., Dorsey & Whitney LLP, New York, NY, for Plaintiffs.

Barry M. Viuker, Morris, Duffy, Alonso & Faley, New York, NY, Nicholas Nesgos, Posternak, Blankstein & Lund, LLP, Boston, MA, for Defendants.

MEMORANDUM AND ORDER

MATSUMOTO, District Judge:

Presently before the court is a Report and Recommendation issued by Magistrate Judge Roanne L. Mann on January 19, 2010, recommending that the court grant in part and deny in part plaintiffs' motion for default judgment and enjoin defendant and its successors in interest from future infringement of plaintiffs' trade dress designs for the Starwalker Pen and Panerai Luminor watches. (Doc. No. 42.) Notice of the Report and Recommendation was sent electronically to all parties via the court's electronic filing system on January 19, 2010. Pursuant to this court's February 4, 2010 Order, plaintiffs served a copy of the Report and Recommendation on the defendant's receiver and filed a certificate of service on February 5, 2010. (Doc. No. 43.) As explicitly noted at the end of the Report and Recommendation and in this court's February 4, 2010 Order, the parties had a right to file written objections to the Report and Recommendation within fourteen days of receipt of it. (Doc. No. 42 at 21; 2/4/10 Order.) The statutory period for filing objections for all parties has lapsed, and no objections to Magistrate Judge Mann's Report and Recommendation have been filed.

In reviewing a Report and Recommendation, the district court "may accept, reject, or modify, in whole or in part, the findings or recommendations made by the magistrate judge." 28 U.S.C. § 636(b)(1)(C). Where no objection to the Report and Recommendation has been filed, the district court "need only satisfy itself that that there is no clear error on the face of the record." Urena v. New York, 160 F.Supp.2d 606, 609-10 (S.D.N.Y. 2001) (quoting Nelson v. Smith, 618 F.Supp. 1186, 1189 (S.D.N.Y.1985)).

Upon a careful review of the Report and Recommendation, and considering that defendant has failed to object to any of Magistrate Judge Mann's well-reasoned recommendations, the court finds no clear error in Magistrate Judge Mann's Report and Recommendation and hereby affirms and adopts the Report and Recommendation as the opinion of the court.

Plaintiffs are directed to submit a modified proposed permanent injunction, limiting injunctive relief to those products which properly fall within the description of the trade dress designs for the Starwalker Pen and Panerai Luminor watches as set forth in Judge Mann's Report and Recommendation and adopted in full by this court. Plaintiffs shall file the modified proposed permanent injunction via ECF no later than 3/2/10.

SO ORDERED.

REPORT AND RECOMMENDATION

ROANNE L. MANN, United States Magistrate Judge:

Plaintiffs Montblanc-Simplo GmbH ("Montblanc-Simplo"), Montblanc North America, LLC ("Montblanc N.A."), Cartier International, N.V. ("Cartier"), and Panerai, division of Richemont, N.A., Inc. ("Panerai") (collectively, "plaintiffs"), brought suit against defendants Colibri Corporation and the Colibri Group, Inc. (collectively "defendant" or "Colibri") for trademark, trade dress, and copyright infringement. Plaintiffs allege that defendant manufactured, offered for sale, sold, and distributed items bearing the trade dress or copyrighted designs of their Starwalker and Panerai Luminor product lines. Compl. 1133. On July 8, 2008, the undersigned magistrate judge referred the case for mediation, see Order Referring Case for Mediation, Docket Entry ("D.E.") # 10, which was scheduled to occur on March 4, 2009. See Joint Status Report, D.E. # 22. Prior to the scheduled mediation date, counsel for both parties informed this Court that Colibri had closed down, released its employees, and, by order of the Superior Court of Rhode Island, been placed into involuntary receivership. See 1/21/09 Def. Letter, D.E. # 23; 2/3/09 Pl. Letter, D.E. # 24; 2/6/09 Letter on behalf of Allan M. Shine, Receiver of Colibri Group ("2/6/09 Receiver's Letter"), D.E. # 26; 3/31/09 Letter on behalf of Allan M. Shine, Receiver of Colibri Corporation ("3/31/09 Receiver's Letter"), D.E. # 31.

After the Colibri receiver failed to comply with this Court's order directing him to either respond to plaintiffs' discovery demands or notify the Court that he either would not be defending the case or had reached an agreement in principle to settle the case, see 2/12/09 Endorsed Order, D.E. # 28, plaintiffs moved for entry of default as a sanction pursuant to Rule 37 of the Federal Rules of Civil Procedure. See 3/3/09 Pl. Mot., D.E. # 29. The receiver and plaintiffs attempted without success to resolve the matter, see generally 4/2/09 Endorsed Order, D.E. # 31, resulting in a motion by plaintiffs for default judgment, see 4/17/09 Pl. Mot., and an order by the Honorable Kiyo A. Matsumoto referring the matter to the undersigned magistrate judge for a Report and Recommendation. See 10/26/09 Docket Entry. On November 17, 2009, the receiver confirmed by letter that he was not authorized to participate further in the litigation. See 11/17/09 Receiver's Letter, D.E. # 36.

For the reasons that follow, this Court respectfully recommends that a default judgment be entered against defendant on certain aspects of plaintiffs' trade dress claims, and that defendant be permanently enjoined from infringing plaintiffs' Skywalker Pen and Panerai Luminor trade dresses as outlined below.

FACTUAL BACKGROUND

Plaintiffs Montblanc-Simplo and Montblanc NA are sister corporations with the same corporate parent, the former of which is located in Germany, and the latter in the United States. Compl. ¶¶ 2, 3. Montblanc NA is the exclusive licensee and distributor in the United States for Montblanc brand writing instruments and related products, all of which are designed, manufactured, and packaged by its German counterpart, Montblanc-Simplo. Id.

Montblanc-Simplo owns a United States trademark in the Starwalker Pen Design. See U.S. TM Reg. No. 3,659,753, D.E. # 35-1. The Starwalker trade dress consists of a combination of elements that "together give the pens a distinct overall look and commercial impression." Compl. ¶ 10. These include: (1) a body with a primarily uniform radius that bulges out in its lower portion and then tapers down to a point; (2) a translucent rounded dome at the top of the pen; (3) a grid design along the body that consists of small black rectangular areas with steel-colored edges, with the long edges of the rectangular areas laid along the length of the pen; and (4) at the midpoint of the length of the lower bulging portion of the pen, a "tripleband design in steel-colored metal" around the pen's circumference, with a middle band thicker than those bands above and below it. Id. Plaintiffs claim that the Montblanc brand and its various trademarks have become "famous symbols of quality and luxury" around the globe, id. ¶ 9, and that the "public has come to recognize the Starwalker trade dress as distinctive of this line of Montblanc pens" and as indicative of the source of such pens. Id. ¶ 11.

Plaintiff Cartier is a Netherlands corporation that also owns trademarks and the trade dress for a luxury line of products. See Compl. ¶ 4, 22, 23. These include designs for watches that are licensed to Panerai for distribution in the United States under the "Panerai" brand name. Id.

Of relevance to plaintiffs' claims here is the trade dress for the "Panerai Luminor" line of watches, certain aspects of which have been registered as a trademark at the United States Patent and Trademark Office. See Compl. ¶ 27; U.S. TM Reg. No. 3,178,943, D.E. # 35-1. The necessary elements include: (1) a large watch case, at least 38 millimeters in diameter, that is thicker than most watches and cushion-shaped, with a round frame that encompasses a watch dial surrounded by a square portion having bowed-out sides and rounded corners, each of which slopes downward, with the lowest point of the case being at the corner; (2) a round bezel, beveled such that it slopes downward from the inside to the outside of the case, surrounding the dial and proximate to the edge of the case at the 3, 6, 9, and 12 o'clock positions, enhancing the effect of the lowering of the four corners of the case; (3) two pairs of thick, downwardly sloping extensions used to hold the watch strap; (4) a dial with oversized numerals and/or markers at the hour positions around the watch; (5) baton-shaped, luminescent hands; (6) an oversized round winding crown with tooth-like striations; and (7) a bridge that extends over the winding crown reaching above and below. See Compl. ¶ 24. Cartier also owns a separate, additional trademark for the Panerai Luminor (winding crown) bridge design itself. See U.S. TM Reg. No. 2,323,571, D.E. # 35-1.

Plaintiffs allege that the Colibri defendants, headquartered in Rhode Island, "manufactured, sold, offered for sale and distributed pens, pocket watches, and other accessories" bearing one or more of the Starwalker or Panerai trade dress or copyrighted designs without a license or authorization from plaintiffs. Compl. ¶¶ 33, 34. Specifically, plaintiffs allege that Colibri "affixed, applied, or used in connection with the sale of its goods, false descriptions and representations, which tended to falsely ... describe or represent that the goods and services offered" were somehow duly authorized and licensed by plaintiffs. Id. ¶ 37. These products presented as "colorable imitations" of the Starwalker and Panerai trade dresses, id., and included jewelry evocative of the Starwalker pen, 11/18/09 Pl. Letter Br. at 2, D.E. # 35, and watches with the distinctive marks of the Panerai...