The opinion of the court was delivered by: SWEET
Plaintiff Parfums Parquet, Incorporated ("PPI") has moved pursuant to Local Rule 3(j) for reargument of this Court's October 17, 1995 Opinion and to dismiss three counts against Counterclaim Defendant PPI-Canada in deference to an ongoing Canadian action. Specifically, it moves to reargue the motion to dismiss Counts X (tortious interference with contracts against the PPI Entities and Bonoma) and XVII (trademark cancellation under the Lanham Act against PPI) and to dismiss counts IV, X and XVI as against PPI-Canada in deference to the pending Canadian action. In addition, PPI asks for several clerical adjustments to the Opinion of October 17, 1995. For the reasons discussed below the motions are granted in part and denied in part.
The parties and prior proceedings are described fully in prior Opinions of this Court, familiarity with which is assumed. See Houbigant, Inc. v. ACB Mercantile, Inc., 185 Bankr. 680 (S.D.N.Y. 1995); Houbigant, Inc. v. ACB Mercantile, Inc., 1995 U.S. Dist. LEXIS 15287, 1995 WL 608451 (S.D.N.Y. October 17, 1995) (the "October Opinion").
Houbigant is a corporation organized and existing under the laws of Delaware, with its principal place of business in New York, New York.
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 ("Guiliano"), 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 Thomas Bonoma ("Bonoma") is Chairman and Chief Executive Officer of Renaissance and Chairman of PPI.
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. This adversary proceeding was withdrawn on consent from the Bankruptcy Court on May 17, 1995.
On May 5, PPI's affiliate, PPI-Canada, commenced an action against ACB in Canada alleging that ACB sold products ...