The opinion of the court was delivered by: CONNER
Defendants Gucci Shops, Inc., Guccio Gucci S.p.A., Maurizio Gucci and Domenico De Sole have moved for an order (1) dismissing this action pursuant to rule 12(b)(6), Fed. R. Civ. P., for failure to state a claim; (2) declaring that the allegations set forth in the complaint in this action do not state an affirmative defense to the counterclaims of defendant Gucci Shops, Inc. in Paolo Gucci v. Gucci Shops, Inc., 83 Civ. 4453 (WCC), pending before this Court; and (3) awarding defendants their costs and attorney's fees incurred in bringing this motion.
For purposes of the motion to dismiss, the allegations of the Complaint, which are set forth below, must be accepted as true. Plaintiff Paolo Gucci is a citizen of Haiti. He was employed by defendant Guccio Gucci from 1952 through 1978. He was later employed by defendant Gucci Shops from 1978 until 1980, when he was fired. While employed by Guccio Gucci, plaintiff designed various Gucci products. After his termination by Gucci Shops in 1980, plaintiff embarked on a career as an independent designer of consumer products. Plaintiff has identified the products of his design with his name and trademark "PAOLO GUCCI." Plaintiff has been seeking licensees, manufacturers and distributors for products and services of his design. During 1983 and 1984, he obtained commitments from various manufacturers and distributors to GUCCI. However, according to his Complaint, plaintiff has been prevented from realizing his commercial objectives as a result of actions by the defendants.
Defendant Guccio Gucci is an Italian corporation that began doing business in the early 1900s. Guccio Gucci manufactures leather goods and other consumer products, all of which bear the name and trademark "GUCCI." Defendant Gucci Shops is a New York corporation, which was incorporated in 1953, and has been selling and distributing "GUCCI" products in the United States since 1953. Gucci Shops is the owner of several United States trademark registrations for the name and trademark "GUCCI".
Defendant Maurizio Gucci is the President and a director of defendant Guccio Gucci. He has been President and a member of the board of Guccio Gucci since 1984. In addition, Maurizio Gucci is the Chairman of the Board of Gucci Shops. Furthermore, Maurizio Gucci is the actual or beneficial owner of 50% of the shares of both Guccio Gucci and Gucci Shops and effectively controls the business activities of both companies.
Defendant Domenico De Sole is the President and a director of Gucci Shops. In addition, he is the personal attorney of Maurizio Gucci and a member of the law firm Patton, Boggs & Blow which has represented both Guccio Gucci and Gucci Shops in various matters in the United States.
The gravamen of plaintiff's Complaint is that defendants Guccio Gucci and Gucci Shops, and their officers Maurizio Gucci and Domenico De Sole, engaged in a "combination and conspiracy" in violation of the federal antitrust laws to prevent plaintiff from using his name "PAOLO GUCCI" in any commercial endeavor which might compete with the business of Gucci Shops, involving related or even non-related products and services. Specifically, plaintiff's assert the defendants Maurizio Gucci and Domenico De Sole, "jointly and on behalf of Guccio Gucci and Gucci Shops, directed Patton, Boggs & Blow to write letters to all manufacturers, distributors and licensees of plaintiff demanding that they cease doing business with plaintiff under threat of trademark infringement litigation."
In Copperweld Corp. v. Independence Tube Corp., 467 U.S. 752, 104 S. Ct. 2731, 81 L. Ed. 2d 628 (1984), the Supreme Court held that the coordinated acts of a parent and its wholly owned subsidiary cannot, in the legal sense contemplated by section 1 of the Sherman Act, 15 U.S.C. § 1 (1982), constitute a combination or conspiracy. In Copperweld, the plaintiff, David Grohne, had formed a new corporation, Independence Tube Company, to compete in the steel tubing market with Regal Tube Company, a wholly owned subsidiary of Copperweld Corporation. Evidently concerned about this new competitor, Copperweld and Regal Tube took a number of steps to discourage those contemplating doing business with Independence Tube. As an example, they sent a letter to parties with whom Grohne was attempting to deal, warning of their intent to protect their rights under the terms of their purchase agreement and to protect the trade secrets they had purchased from Lear Siegler. After receiving this letter, Yoder Company cancelled a contract with Grohne under which the former was to supply a tubing mill. The plaintiff alleged an unlawful conspiracy between Copperweld Corporation and Regal Tube, a wholly-owned but separately incorporated subsidiary. In support of its claim, the plaintiff relied on the so-called "intraenterprise conspiracy doctrine," which holds that affiliated business entities are capable of conspiring with each other if they are separately incorporated.
The Supreme Court rejected the "intraenterprise conspiracy" doctrine because it "looks to the form of an enterprise's structure and ignores the reality." Id. at 2743. The Court reasoned that the participants in an intraenterprise agreement have a "complete unity of interest" and "their general corporate actions are guided or determined not by two separate corporate consciousnesses, but one." Id. at 2742. The Court concluded that when a parent corporation and its wholly-owned subsidiary agree upon a course of action, there is no violation of section 1 of the Sherman Act since "there is no sudden joining of economic resources that had previously served different interests." Id. See also Areeda, "Intraenterprise Conspiracy In Decline," 97 Harv. L. Rev. 451 (1983); VII P. Areeda, Antitrust Law, Chapter 14E.
While the immediate issue before the Supreme Court in Copperweld was whether a parent could conspire with its wholly-owned subsidiary, the Court explained the rationale for its decision in the following passage:
If a parent and a wholly-owned subsidiary do "agree" to a course of action, there is no sudden joining of economic resources that had previously served different interests, and ...