Montblanc-Simplo GmbH v. Colibri Corp., 07-CV-5422 (KAM)(RLM)

• Citation: 739 F.Supp.2d 143
• Decision Date: 07 September 2010
• Docket Number: No. 07-CV-5422 (KAM)(RLM),07-CV-5422 (KAM)(RLM)
• Parties: MONTBLANC-SIMPLO GMBH, et al., Plaintiffs, v. COLIBRI CORPORATION, et al., Defendants.
• Court: U.S. District Court — Eastern District of New York

739 F.Supp.2d 143

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.

Sept. 7, 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

KIYO A. MATSUMOTO, District Judge.

Presently before the court is plaintiffs' motion for reconsideration of this court's Permanent Injunction entered March 18, 2010, pursuant to Rule 59(e) of the Federal Rules of Civil Procedure and Local Civil Rule 6.3 of this court. (See Doc. No. 49, Not. of Mot. for Reconsideration; Doc. No. 50, Mem. of Law in Supp. of Request for Reconsideration ("Recons. Mem."); Doc. No. 47, Permanent Inj.) For the foregoing reasons, plaintiffs' motion for reconsideration is denied.

BACKGROUND

On December 28, 2007, plaintiffs Montblanc-Simplo GmbH, Montblanc North America, LLC, Cartier International, N.V. and Panerai, a division of Richemont N.A., Inc. (collectively, "plaintiffs") brought suit against defendants Colibri Corporation and The Colibri Group, Inc. (collectively, "defendant") for trademark, trade dress and copyright infringement, alleging that defendant manufactured, offered for sale, sold, and distributed items bearing the trade dress or copyrighted designs of plaintiffs' Starwalker and Panerai Luminor product lines. (Doc. No. 1, Compl. ¶¶ 1, 33.) On January 21, 2009, in the midst of discovery, defendant's counsel informed the court that his client could not participate in discovery because it had been placed into involuntary receivership in state court. (Doc. No. 23, 1/21/09 Letter.) Thereafter, plaintiffs moved for an entry of default against defendant, including injunctive relief (Doc. No. 29, 3/3/09 Letter; Doc. No. 33, Mot. for Entry of Default J.), and the receiver confirmed that it would not be defending the action. (Doc. No. 30, 3/04/09 Minute Entry; Doc. No. 36, 11/17/09 Letter.) The motion for default judgment and for a permanent injunction was referred to Magistrate Judge Mann for a Report and Recommendation. (10/26/09 Order.)

On January 19, 2010, based on the undisputed allegations in the Complaint, Magistrate Judge Mann issued a Report and Recommendation, recommending that default judgment be entered against defendant for infringement of plaintiffs' Starwalker pen trade dress rights and that defendant be permanently enjoined from infringing plaintiffs' Starwalker pen trade dress rights.¹ (Doc. No. 42, Report and Recommendation ("R & R") at 2, 10-14, 18-21.) This recommendation was based on, inter alia, Magistrate Judge Mann's finding that the plaintiffs have a protectable trade dress right in the "combination of all or almost all" of four elements, which together give the Starwalker pen "a distinct overall look and commercial impression," ² and based on the undisputed allegations that: (1) defendant "manufactured, sold, offered for sale and distributed pens ... bearing ... the [Starwalker] trade dress ... or a colorable imitation thereof;" (2) in connection with the sale of these goods, defendant falsely represented that the goods offered were duly authorized and licensed by plaintiffs; and (3) defendant's use of colorableimitations of the Starwalker trade dress created a likelihood that consumers would be confused or deceived into believing that the imitations were plaintiffs' products, or sponsored or approved by plaintiffs. (R & R at 4; Compl. ¶¶ 10, 33, 37.) Magistrate Judge Mann then recommended that the court enter a permanent injunction against defendant, "enjoining defendant and any successors in interest from infringing plaintiffs' trade dress, but limiting such injunction to those products that properly fall within the descriptions of the Starwalker Pen ... trade dress designs," as described in the Report and Recommendation. (R & R at 21 (emphasis added).)

This court adopted the Report and Recommendation in its entirety and ordered plaintiffs to submit a modified Proposed Permanent Injunction, limiting injunctive relief to those products that properly fell within the description of the trade dress designs set forth in Magistrate Judge Mann's Report and Recommendation. (Doc. No. 44, Order Adopting R & R at 2.) In response, plaintiffs submitted a modified Proposed Permanent Injunction, which included, for the first time,³ inter alia, a reference to "Colibri Product Number GRB-4200." (Proposed Permanent Inj. at 4-5.)

As plaintiffs had made repeated references in their Complaint and Memorandum in Support of their Motion for Default Judgment to "pens," but no specific reference to Colibri Product Number GRB-4200 in either of these documents, the court requested further identifying information, including photographs of, inter alia, Colibri Product Number GRB-4200 and specifically ordered the plaintiffs to explain how that product fell within the description of protectable trade dress designs for the Starwalker pens as set forth in Magistrate Judge Mann's Report and Recommendation. (3/4/10 Order.) In response, plaintiffs offered a photograph of Colibri Product Number GRB-4200 and argued that it "bears a colorable imitation of and falls within the scope of" plaintiffs' trade dress designs for the Starwalker pens as follows: "like Plaintiffs' pens, Defendant['s] pen bears a similar distinctive grid design consisting of small rectangular areas laid out around the entire length of the pen" and "the grid design consists of steel-colored edges and black background, with the long edges of the rectangular area laid along the length of the pen." (Doc. No. 46, Response to Court's March 4, 2010 Order ("Response") at 1-2.) Citing Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 1004 (2d Cir.1997), the plaintiffs argued that the court must focus on "the general impressions conveyed to the public by the appearance of the products" instead of dissecting the product's various elements and further argued that Colibri Product Number GRB-4200 is "sufficiently similar" to plaintiffs' Starwalker pen trade dress such that it is "likely to cause confusion or mistake or to deceive as to the source or sponsorship of such items." (Response at 2-3.) The plaintiffs' supplemental papers did not offer arguments or submit evidence supporting any of the other factors to assess likelihood of confusion set forth in Fun-Damental Too, Ltd.⁴

After reviewing Magistrate Judge Mann's Report and Recommendation andall of the plaintiffs' submissions, including plaintiffs' post-Report and Recommendation submissions, this court declined to include Colibri Product Number GRB-4200 in the Permanent Injunction, finding that "[t]he only feature common to both the Colibri pen, Product Number GRB-4200, and Montblanc's Starwalker Pen is the black and steel grid design" and "that the Colibri pen, Product Number GRB-4200, does not create the same general overall impression as Montblanc's Starwalker Pen such that a consumer who has seen the Starwalker trade dress would be confused upon later seeing Colibri's pen." (Doc. No. 47, Permanent Inj. at 4 n. 1.)

Plaintiffs urge the court to reconsider its determination regarding Colibri Product Number GRB-4200, arguing that this court misinterpreted the factual findings set forth in Magistrate Judge Mann's January 19, 2010 Report and Recommendation when it excluded Colibri Product Number GRB-4200 from the Permanent Injunction. (Recons. Mem. at 1.) Plaintiffs further argue that failure to modify the Permanent Injunction will result in an injustice to plaintiffs. ( Id. at 2.) Accordingly, the plaintiffs request that the Permanent Injunction be modified to include Colibri Product Number GRB-4200 and that the court strike footnote one of the Permanent Injunction in its entirety. ( Id.)

DISCUSSION

I. Law

Reconsideration of a previous order by the court is an "extraordinary remedy to be employed sparingly in the interests of finality and conservation of scarce judicial resources." In re Health Mgmt. Sys., Inc. Sec. Litig., 113 F.Supp.2d 613, 614 (S.D.N.Y.2000) (citations and quotation marks omitted). Accordingly, in the Second Circuit, a Rule 59(e) motion to alter or amend a judgment, like a motion for reconsideration or reargument under Local Civil Rule 6.3, will generally be denied unless the moving party can point to controlling decisions or data that the court overlooked, and which the movant could reasonably believe would have altered the court's original decision. Shrader v. CSX Transp., Inc., 70 F.3d 255, 257 (2d Cir.1995); see also Shearard v. Geithner, No. 09-CV-0963, 2010 WL 2243414, at *1 (E.D.N.Y. May 30, 2010); Local Rule 6.3. "The major grounds justifying reconsideration are 'an intervening change in controlling law, the availability of new evidence, or the need to correct a clear error or prevent manifest injustice.' " Cordero v. Astrue, 574 F.Supp.2d 373, 379-80 (S.D.N.Y.2008) (quoting Virgin Atl. Airways, Ltd. v. Nat'l Mediation Bd., 956 F.2d 1245, 1255 (2d Cir.1992)).

"A motion for reconsideration may not be used to advance new facts, issues or arguments not previously presented to the Court, nor may it be used as a vehicle for relitigating issues already decided by the Court." Davidson v. Scully, 172 F.Supp.2d 458, 461 (S.D.N.Y.2001); see also Hall v. North Bellmore Union Free School Dist., No. 08-CV-1999, 2010 WL 2267399, at *1 (E.D.N.Y. May 30, 2010) ("Reconsideration is not a proper tool to repackage and relitigate arguments and issues already considered by the Court in deciding the original motion."); Torres v. Carry, 672 F.Supp.2d 346, 348 (S.D.N.Y.2009) ("A court must narrowly construe and strictly apply Rule 6.3 so as to avoid duplicative rulings on previously considered issues and to prevent Rule 6.3 from being used to advance different theories not previously argued, or as a...