The opinion of the court was delivered by: SWEET
The ACB Defendants
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.
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 PPI
In exchange for royalty payments, Houbigant granted to PPI the exclusive right and license in "the Territory
" 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 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.
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.
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, 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 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 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).
A stipulation and order of settlement between plaintiffs and non-ACB defendants named in Houbigant's complaint, including A. Rosenblum Sales, Bernard Rosenblum, Harold Schiff, and V&B distributors Canada was signed by the Honorable John S. Martin, acting in his Part One capacity, on July 14, 1995.
The claims in the Complaint remaining against ACB after the settlement with the non-ACB defendants include: violations of the Lanham Act § 32, 15 U.S.C. § 1114 (Claim I); violations of the Lanham Act § 32(a), 15 U.S.C. § 1125(a) (Claim II); common law trademark infringement (Claim III); violations of the Tariff Act, 19 U.S.C. § 1526(a) (Claim 4); injury to business under New York General Business Law ("GBL") § 368-d (Claim 5); intent to deceive (New York GBL § 133) (Claim 6); for deceptive practices and false advertising (New York GBL §§ 349(a), 350, 350-a) (Claim 7). In addition, PPI alleges the following claims against the ACB defendants: violations of the Lanham Act § 32, 15 U.S.C. § 1114 (Claim 8); violations of the Lanham Act § 32(a), 15 U.S.C. § 1125(a) (Claim 9); common law trademark infringement (Claim 10); injury to business under New York General Business Law ("GBL") § 368-d (Claim 11); intent to deceive (New York GBL § 133) (Claim 12); for deceptive practices and false advertising (New York GBL §§ 349(a), 350, 350-a) (Claim 13); tortious interference with business relations (Claim 15). Finally PPI, claiming rights as a third party beneficiary of the license agreement between ACB Mercantile and Houbigant, alleges damages for a breach of the agreement (Claim 16) and as a third party beneficiary for an alleged breach of the Asset purchase Agreement against the ACB Companies, Giuliano, Celaya and Pellerin (Claim 17).
Between July 14 and July 24, 1995 motions were made by Houbigant, PPI, Chemical Bank and ACB to dismiss the claims against each of them by the opposing party. Houbigant'S motion to remand this proceeding back to Bankruptcy Court was filed on July 17, 1995. The parties briefed these motions extensively with reply briefs filed to each of the five sets of motions. Argument was heard for several hours on August 3, 1995, and the motions were considered fully submitted at that time.
By opinion of August 24, 1995 Houbigant's motion to have this adversary proceeding remanded to Bankruptcy Court in toto was denied. Issues pertaining to administrative and filing deadlines were remanded to the Bankruptcy Court. Decision was reserved on the four motions to dismiss, which are her by resolved.
The Complaint states that:
36. On ... September 30, 1994 the ACB Companies executed a Letter of Intent whereby they agreed in principle to negotiate a transaction whereby all of the assets of the ACB Companies would be sold to an affiliated company of PPI, known as 3088766 Canada Limited ("PPI Canada"). During the period between the signing of the Letter of Intent and the closing of the asset purchase transaction, the ACB Companies expressly agreed and undertook not to engage in any transaction outside the regular course of business and to preserve and maintain the assets of the ACB companies.
37. On December 12, 1994, an Asset Purchase Agreement was entered into between PPI Canada, as Purchaser, the ACB companies, as Sellers, and Augustine Celaya, Jack Giuliano and Gilles Pellerin as shareholders of all of the common stock of the ACB Companies. Pursuant to the Asset Purchase Agreement, PPI Canada agreed to pay the sum of $ 8,000,000 (Canadian) and assume certain liabilities, in exchange for all of the assets of the ACB Companies (the "Acquired Assets"). The Acquired Assets included all of the ACB Companies' intellectual property and all rights under existing distribution agreements and license agreements, including the rights to manufacture and distribute Houbigant's trademarked products in Canada under the Canadian License. The agreements contained restrictive covenants against ongoing competition by the sellers and their shareholders.
The complaint alleges that in violation of the agreements, and at the direction of Giuliano, Pellerin and Celaya, in October through December 1994
the ACB companies manufactured large quantities of fragrances and toiletries appearing to be Licensed Products, but which were counterfeit products of inferior quality designed for sale in the United States and that these goods were "materially different from and inferior to, the genuine Chantilly fragrance." The complaint further alleges that the manufacture of these products was not reflected on the books and records of the ACB Companies delivered to PPI under the Asset Purchase Agreement. These actions were, according to Plaintiffs, in violation of Houbigant's trademark rights, of the Canadian License and of PPI's exclusive U.S. license. It is further alleged that at least 150,000 bottles of this Chantilly (product code 13406--not a product code utilized for Canadian production) were imported into the United States and that certain quantities were sold to distributors in the New York City area where they are being marketed and sold to the public as genuine Houbigant trademarked fragrances. It is further alleged that prior to shipment into the United States each of the counterfeit Chantilly products was altered by affixing a label on the package indicating the size and content in accordance with United States labeling requirements, not appropriate for products intended for sale in Canada.
The complaint also alleges that on June 3, 1994 the ACB Companies transmitted by facsimile a copy of the Chantilly carton showing a United States label to be affixed to a carton made in Canada to an American dealer in diverted goods. Plaintiffs allege that in July, ACB Companies purchased the equivalent of a ten-year supply of purse spray bottles, that in November they produced enough bulk perfume to fill 66,000 spray bottles, designated by product codes (13044 and 13047) which were not Canadian codes, purchased labels appropriate for United States products in November and cartons for them in December, but that when PPI gained access to the Canadian warehouses on December 12, 1994 there were only 5,760 bottles in inventory and no records indicating sale of the product.
The complaint alleges that in November and December 1994, the ACB Companies manufactured 100,000 units of counterfeit Chantilly in the 75 milliliter size bearing the non-Canadian product code 13999 and that there are allegedly no records reflecting the sale of this product and none remains in inventory.
The complaint alleges that all of the "counterfeit" product was inferior to those made in accordance with the Houbigant standards and those made in the United States by PPI or those made by PPI-Canada for sale in Canada.
The Counterclaims' Allegations
Pursuant to two agreements, both dated April 1, 1993, Houbigant sold ACB all of the outstanding stock of what was then its Canadian Affiliate, Houbigant Ltee (the "Sale Agreement") and granted to ACB the exclusive rights to manufacture, sell and distribute Houbigant's Parfum Parquet Division fragrance products throughout the territory of Canada and to use Houbigant "trademarks" in connection with those products (the "ACB License Agreement")
According to plaintiffs, the agreements expressly restricted the distribution of the products licensed thereunder to Canada. complaint P35 The ACB License Agreement has a term of ten years, renewable for five years.
Consideration provided to Houbigant by ACB in exchange for these exclusive rights included an agreement to pay over a four year period certain of Houbigant's existing liabilities in the amount of $ 1,230,000.
ACB asserts that Houbigant and ACB agreed that the substantive laws of the Province of Quebec would govern controversies and issues arising under and in relation to the ACB License Agreement and the Sale Agreement and that in paragraph 25 "the parties further agreed . . . that all disputes concerning the contract would be resolved by mandatory and binding arbitration."
By agreements dated October 22, 1993, Chemical Bank, which held a lien on all of Houbigant's assets, approved the transactions between Houbigant and ACB. To obtain that approval, ACB alleges that Houbigant assigned to Chemical its rights, title and interest in and to any amounts to be paid by ACB under the ACB License Agreement, and ACB agreed to make all payments due to Houbigant under the terms of the ACB License Agreement directly to Chemical. According to ACB, the parties to these agreements agreed that disputes would be governed by the law of Quebec.
For the first six months of the ACB License Agreement, ACB asserts that it successfully manufactured and that its distribution affiliate, Houbigant Ltee, successfully sold Houbigant's Parfum Parquet fragrances in Canada. In December 1993, the counterclaim complaint alleges that in breach of the License Agreement Houbigant ceased providing ACB with the essential oils it needed to manufacture the Parfum Parquet fragrances. This allegedly caused a reduction in production, an inability to fill orders, lost profits and damage to ACB's relationship with its customers.
After ACB secured an alternate supplier for the oils, ACB alleges that Houbigant undertook no action to examine the quality of the goods and that in December Houbigant shut down its quality control department.
In April 1994, ACB asserts that it discovered massive amounts of Parfum Parquet fragrance products manufactured in England offered for sale in Canada. ACB notified Houbigant and Chemical as well as Sherman, Graber and Massironi about the appearance of these goods and "demanded, under the express terms of the License Agreement, that they take action to foreclose the further influx of such goods." According to the complaint, the only response was from Massironi who advised ACB's principals that Houbigant knew nothing about the origin of the British goods.
In order to compete with the lower priced British goods, Houbigant Ltee asserts that it had no choice but to reduce its prices and sell more goods to a wider customer base.
After entering into to the ACB License Agreement, but before Chemical Bank approved the deal, Houbigant sold "massive quantities of Parfums Parquet products to certain distributors who were free to resell the goods anywhere in the world."
The counterclaims further assert that beginning in June 1993, Massironi authorized a series of "naked" licenses on behalf of various wholly-owned subsidiaries which authorized "third-parties to make and sell Parfums Parquet fragrances -- including Chantilly and Raffinee -- worldwide, "without trademark restrictions" and according to specifications of the licensee's own choosing." These agreements were made with several European fragrance companies and collectively referred to in the counterclaim as the "Unilex Agreements."
With regard to the PPI License, the counterclaim complaint alleges that PPI, a subsidiary of Renaissance, entered into a license agreement with Houbigant on May 2, 1994 which granted PPI the exclusive rights to exploit Parfums Parquet products throughout the Western hemisphere, with the sole exception of Canada. PPI discovered enormous quantities of gray market product in its region. After PPI "came to understand that, although not disclosed by Houbigant before it entered into its agreement with PPI, Houbigant (and its affiliates) was the source of its gray market, secondary and 'knock off' competition," it negotiated for world-wide rights, with the exception of Canada. On August 10, 1994, PPI entered into such and agreement with Houbigant.
"Concerned with the importation of goods apparently emanating from Canada, PPI also resolved to acquire ACB's rights under the ACB License Agreement so as to complete its worldwide rights to exploit Houbigant's Parfums Parquet division fragrances."
On September 30, 1994 ACB and Renaissance, PPI's parent company, signed a non-binding letter of intent that "anticipated the consummation of a sale of ACB's assets to PPI later that year." The asset purchase agreement between the companies was signed on December 12, 1994. Pursuant to the agreement "ACB sold all of its known assets, including its exclusive rights under the ACB License Agreement to Houbigant (1995) Ltd., (referred to herein as "PPI-Canada"), an affiliate of PPI." According to the counterclaim complaint, all disputes arising under the ACB-PPI Agreement are to be governed by the laws of Quebec, Canada.
By the terms of the ACB-PPI Agreement, PPI agreed to pay $ 830,000 due to Houbigant under the ACB License and Sale Agreements. Thus, upon the closing of the ACB-PPI Agreement, PPI-Canada paid Chemical Bank, as Houbigant's assignee and as required under the Bank Agreement, $ 830,000 (by wire transfer of Canadian dollars), which amount represented the bulk of ACB's financial obligations to Houbigant under the ACB License and Sale Agreements. Chemical Bank has also continued to accept royalty payments from PPI-Canada in accordance with the terms of the ACB License Agreement as assigned.
The ACB License Agreement contained a provision that Houbigant's prior written consent was required for any assignment of the underlying license rights. The contract also provided that Houbigant's consent could not be "unreasonably withheld." PPI warranted in the ACB-PPI agreement that it would obtain Houbigant's consent to the assignment.
A month after Chemical Bank accepted various payments directly from PPI-Canada in accordance with the ACB-PPI Agreement, Houbigant expressly refused to consent to the assignment. Houbigant then sent letters to ACB alleging that ACB was in default of obligations under the License Agreement, reserving the right to terminate the agreement. Having refused to consent to the ACB-PPI Agreement, Houbigant and PPI-Canada "entered into a 'side agreement' with PPI-Canada, whereby the parties expressly acknowledged that an assignment had occurred but agreed to enter into a new Canadian license agreement, in complete disregard for ACB's assignment and its rights under both the ACB License Agreement and the ACB-PPI Agreement ..."
On March 13, 1995 Houbigant filed a notice of a hearing in Bankruptcy Court to "implement and effectuate a License Modification Agreement" with PPI. The revised License Agreement provided that PPI would pay Houbigant $ 2.7 million after an agreement between Houbigant and PPI for the Canadian territory became effective. ACB filed objections to the motion which, in part, noted the problem of the conflicting exclusive licenses -- one with ACB and one proposed with PPI-Canada.
Having abandoned its attempt to effectuate a new agreement between Houbigant and PPI-Canada, ACB states that the PPI Entities continued their threats to sue ACB and rescind the ACB-PPI agreement when in March 1995, the PPI entities, with Houbigant's assent, hired an investigation firm to develop claims against ACB.
ACB maintains that the goods produced in Canada, the subject of Plaintiffs' Complaint, were not counterfeit, but authorized under the license agreement and sold to one of the settling defendants, V&B, a Canadian fragrance distributor. ACB asserts that all of the goods made by ACB were authorized and conformed to specifications.
According to the Defendants, Houbigant has exercised no quality control since at least July 1993 and is "simply in no position to argue that any of its so-called trademarks were infringed by the manufacture and sale of 'nonconforming' products."
At an April 4 Hearing before the Bankruptcy Court, Houbigant failed to reveal that certain named distributors were, with Houbigant's approval, selling goods purchased overseas in both Canada and the United States, that the goods varied greatly from those offered for sale by PPI and ACB, that neither PPI or Houbigant ever took legal action against these other distributors on the basis of trademark violation or otherwise. The counterclaim admits that Plaintiffs did take out advertisements contending that the goods were "knock-offs."
Finally, the counterclaim complaint alleges that it was Houbigant's intention to conceal the Unilex Agreements until such time as all claims against it were barred by a Bankruptcy Court bar date. Defendants only learned about Houbigant's misconduct from third parties in March 1995.
Houbigant has registered trademarks for the following perfumes: Chantilly (Registration Number ("#") 865,906), Lutece (# 1,311,856"), Raffinee (# 1,264,630), Houbigant Raffinee (# 1,256,522), Demi-jour (# 1,488,987), Monsieur Musk (# 1,566,699), Presence (#309,266).
Standards for Reviewing Motion to Dismiss under Rule 12(b)(6)
In reviewing a motion to dismiss under Fed. R. Civ. P. 12(b)(6), the trial court's function is, "to assess the legal feasibility of the complaint, not to assay the weight of the evidence which might be offered . . . ." Geisler v. Petrocelli, 616 F.2d 636, 639 (2d Cir. 1980). A motion to dismiss should not be granted unless, after viewing the plaintiff's allegations in a favorable light, "it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief." Walker v. City of New York, 974 F.2d 293, 298 (2d Cir. 1992) (quoting Ricciuti v. New York City Transit Auth., 941 F.2d 119, 123 (2d Cir. 1991), cert. denied, 507 U.S. 972, 113 S. Ct. 1412, 122 L. Ed. 2d 784 (1993)).
ACB moves to dismiss the complaint against it on several grounds. First, ACB claims that the Court lacks personal jurisdiction over the ACB defendants. Second, if there is personal jurisdiction, ACB asserts that Canada and not the Southern District of New York is the appropriate forum. Finally, they assert that plaintiffs have not, and in fact cannot, state cognizable trademark infringement or unfair competition claims against the ACB Defendants under the Lanham-Trademark Act or New York common laws, or the ancillary claims.
Jurisdiction Has Been Sufficiently Alleged
In order to demonstrate personal jurisdiction sufficiently to defeat a motion to dismiss, a plaintiff need only make a prima facie showing that jurisdiction exists. See Hoffritz for Cutlery, Inc. v. Amajac, Ltd., 763 F.2d 55, 57 (2d Cir. 1985). Plaintiffs' complaint and affidavits are to be construed, and any doubts are to be resolved in the light most favorable to the Plaintiff. Editorial Musical Latino Americana, S.A. v. Mar International Records, Inc., 829 F. Supp. 62, 64 (S.D.N.Y. 1993); see also Scheuer v. Rhodes, 416 U.S. 232, 236, 94 S. Ct. 1683, 1686 40 L. Ed. 2d 90 (1974) (on motion to dismiss pleadings are considered in light most favorable to pleader).
To determine personal jurisdiction over a non-domiciliary in a federal question case, this Court applies the long-arm statute of the forum state. See Hubbell v. Pass & Seymour, Inc., 883 F. Supp. 955, 961 (S.D.N.Y. 1995); Business Trends Analysts v. Freedonia Group, Inc., 650 F. Supp. 1452, 1455 (S.D.N.Y. 1987); U.S. v. First Nat'l City Bank, 379 U.S. 378, 381, 85 S. Ct. 528, 530, 13 L. Ed. 2d 365 (1965).
New York's long-arm statute provides:
As to a cause of action arising from any of the acts enumerated in this section, a court may exercise personal jurisdiction over any non-domiciliary, or his executor or administrator, who in person or through an agent: 1. transacts any business within the state or contracts anywhere to supply goods or services in the state; or 2. commits a tortious act within the state; or 3. commits a tortious act without the state causing injury to person or property within the state, ... if he (i) regularly does or solicits business, or engages in any other persistent course of conduct, or derives substantial revenue from goods used or consumed or services rendered, in the state, or (ii) expects or should reasonably expect the act to have consequences in the state and derives substantial revenue from interstate or international commerce . . .
N.Y. Civ. Prac. L. & R. § 302(a) (McKinney 1993) ("CPLR § 302(a)").
Offering one copy of an infringing work for sale in New York, even if there is no actual sale, constitutes commission of a tortious act within the state sufficient to imbue this Court with personal jurisdiction over the infringers. See Business Trends, 650 F. Supp. at 1455-56 (shipment of one copy into New York; actual sale not necessary); Metropa Co. v. Choi, 458 F. Supp. 1052, 1054 (S.D.N.Y. 1978) (trademark infringement; only New York contact of California defendant was mail order shipment of two wigs); Honda Assocs., Inc. v. Nozawa Trading, Inc., 374 F. Supp. 886, 888-89 (S.D.N.Y. 1974) (trademark infringement, actual sale not necessary; only New York contact of California defendant was mail order shipment of 3 karate uniforms valued at $ 37). This Court has jurisdiction even if the products for sale are offered through independent brokers in New York. See CPLR 302(a) ("in person or through an agent"); Heritage House Frame & Moulding Co. v. Boyce Highlands Furniture Co., 88 F.R.D. 172, 173 (E.D.N.Y. 1980). Other courts have upheld jurisdiction under 302(a)(1) based on contracts to ship goods "F.O.B." from a foreign port, provided goods are ultimately destined for delivery in New York. See e.g., Cleopatra, 652 F. Supp. 1254, 1257-58.
Defendants are also subject to personal jurisdiction based on 302(a)(3) which establishes jurisdiction over a person who "commits a tortious act without the state causing injury to person or property within the state, ... if he ... expects or should reasonably expect the act to have consequences in the state and derives substantial revenue from interstate or international commerce ..." N.Y. Civ. Prac. L. & R. § 302(a) (McKinney 1993) ("CPLR § 302(a)." The New York courts have held that loss of customers or business constitutes an "injury" for the purpose of determining jurisdiction under CPLR Section 302(a)(3). See Sybron v. Wetzel, 46 N.Y.2d 197, 413 N.Y.S.2d 127, 385 N.E.2d 1055 (1978).
Thus allegations that the ACB companies at the direction of Celaya, Giuliano, and Pellerin produced at least 18,920 liters of a fragrance identified as "Chantilly Eau de Toilette" and that at least 150,000 bottles were imported into the United States and that certain quantities were sold in the New York City area is sufficient to assert prima facie jurisdiction. Furthermore, the officers of a corporation are subject to jurisdiction under section 302(a)(1) if the corporation engages in purposeful activity in New York out of which the claim arises with the knowledge and consent of the individual officers and for their benefit. See, e.g., Retail Software Services, Inc. v. Lashlee, 854 F.2d 18 (2d Cir. 1988).
Thus, there are sufficient allegations in the complaint to support prima facie jurisdiction over the individual defendants, alleged to be officers and principal shareholders of ACB Mercantile who "personally authorized, profited from, directed" the acts alleged in the complaint that form the basis for claims of trademark infringement.
Additionally, the ACB defendants have waived their right to challenge in personam jurisdiction. "Appearing and seeking affirmative relief from the Court is the paradigm of such a waiver." Andros Compania Maritima, S.A. v. Intertanker Ltd., 718 F. Supp. 1215, 1217 (S.D.N.Y. 1989). When ACB filed its Answer and Amended Complaint and included ten additional counterclaim defendants, it waived its right to object to the jurisdiction of this court. See e.g., Cargill, Inc. v. Sabine Trading & Shipping Co., 756 F.2d 224, 229 (2d Cir. 1985) (in diversity action, looking to state law to determine waiver of jurisdictional defenses by assertion of counterclaim where no controlling federal rule could be found): Textile Technology Exchange v. Davis, 81 N.Y.2d 56, 595 N.Y.S.2d 729, 611 N.E.2d 768 (1993) (holding that defendant wived affirmative defense of lack of personal jurisdiction by asserting counterclaim unrelated to the claim asserted by plaintiff). While the counterclaims are not unrelated to the claims, they need not have been raised in this action.
"While the plaintiff ultimately bears the burden of establishing the existence of jurisdiction over defendants by a preponderance of the evidence, the burden should not be imposed on the plaintiff at the pleading stage ..." Hubbell v. Pass & Seymour, Inc., 883 F. Supp. 955, 962 (S.D.N.Y. 1995) quoting Soviet Pan Am Travel Effort v. Travel Comm. Inc., 756 F. Supp. 126, 130 (S.D.N.Y. 1991). In the absence of an evidentiary hearing or further factual development through discovery, the pleadings and affidavits must be construed in the light most ...