The opinion of the court was delivered by: Ward, District Judge.
Plaintiffs Consolidated Cigar Corporation ("Consolidated") and
Cuban Cigar Brands, N.V. ("CCB") move pursuant to Fed.R.Civ.P. 56
for summary judgment against defendants Monte Cristi de Tabacos,
c.x.a. ("MCdT") and Julio Perez Gonzalez ("Perez") (collectively
"MCdT Defendants") on plaintiffs' trademark counterfeiting,
dilution, and infringement claims. The claims arise out of the
MCdT Defendants' alleged sale of counterfeit Montecristo cigars
("MCdT cigars") to U.S. importers and distributors for
distribution in the United States, and out of the MCdT
Defendants' alleged use of infringing trade names "Montecristi,"
"Monte Cristi," "Monte Cristi de Tabacos, c.x.a." and "Monte
Cristi, R.D." For the reasons stated below, the Court grants
plaintiffs' motion for summary judgment on all claims.*fn1
Plaintiffs filed their complaint on June 7, 1996, and obtained
a permanent injunction against defendant WD Distributors on June
27, 1996. The instant motion was filed on August 4, 1998.
Plaintiffs have not moved for summary judgment against defendants
Francisco Fiorinelli or Joseph Baleaz, Jr., who have not been
served, or defendant Pamela Vargas.
On January 29, 1998, the Court granted permission for the MCdT
Defendants' counsel to withdraw. The Court granted the MCdT
Defendants until March 6, 1998 to retain new counsel and directed
that if new counsel had not appeared by that date, plaintiffs
could proceed to litigate the case. By letter dated February 11,
1998, the MCdT Defendants informed the Court that for financial
reasons they were unable to retain new counsel. On May 7, 1999,
the Court ordered MCdT to appear by an attorney on or before June
7, 1999. No attorney has appeared for MCdT to date. Because
corporations may not proceed without an attorney, see Rowland v.
California Men's Colony, 506 U.S. 194, 201-02, 113 S.Ct. 716,
121 L.Ed.2d 656 (1993), the Court directs the entry of a default
against defendant MCdT.
Consolidated, a Delaware corporation with its principal place
of business in Florida, manufactures, distributes, and sells
cigars under numerous well-known trademarks. Consolidated owns a
majority interest in CCB, a corporation which has a Florida
office and which is organized and existing under the laws of the
Netherlands Antilles. CCB manufactures, distributes, and sells
cigars in the United States and abroad, directly and/or through
its licensees. In addition, CCB owns several famous premier cigar
brands, including the flagship MONTECRISTO cigar. MONTECRISTO
cigars are imported and distributed in the United States
exclusively by Consolidated. At all times relevant to this
litigation, MONTECRISTO cigars have been manufactured by a
subsidiary of Consolidated in the Dominican Republic.
Perez, who maintains an office in the Dominican Republic, is an
equity owner and managing director of MCdT, supervising and
controlling MCdT's activities. MCdT, a cigar manufacturer, is a
corporation organized and existing under the laws of the
Dominican Republic, with an office located in that country.
MCdT's cigar brands include counterfeit "Montecristo" cigars
("MCdT cigars"), some of which are packaged in trade dress
virtually identical to CCB's MONTECRISTO trade dress, using
counterfeit facsimiles of CCB's MONTECRISTO trademarks. In
addition, MCdT uses the trade names "Montecristi," "Monte
Cristi," "Monte Cristi de Tabacos, c.x.a.," and "Monte Cristi,
R.D." ("Monte Cristi Trade Names").
The Monte Cristi Trade Names have been used in advertisements
and media reports that have been published and distributed in the
United States and on the internet. MCdT cigars were also listed
in the 1998 edition of the Tobacco Retailers' Almanac, a widely
distributed tobacco industry publication, as "Montecristi" brand
B. Plaintiffs' Trademarks
CCB owns U.S. Trademark Registrations for the trademark
MONTECRISTO, the trademark MONTE CRISTO, and the Crossed-Sword
Design. Since at least 1935, CCB, through its licensees and its
predecessor-in-interest, has used these trademarks in commerce in
and with the United States. The MONTECRISTO cigar brand is widely
regarded as one of the premium cigars. CCB's MONTECRISTO mark is
used on its packaging, in advertisements, and on the internet.
The MONTECRISTO brand has also been advertised widely in a
variety of national magazines.
CCB packages MONTECRISTO brand cigars in a trade dress which
consists of a paper-covered plywood box, with the mark MONTE
CRISTO and Crossed-Sword Design appearing in red, black, and gold
against a yellow field ("MONTECRISTO Trade Dress"). Each box's
side panel contains the mark MONTECRISTO in red and gold
lettering, and the inside of the box's top cover bears the mark
MONTECRISTO in red and gold lettering, with the mark MONTE CRISTO
and Crossed-Sword Design appearing in red, black, and gold
against a yellow field. A sheet of paper, visible when the box is
open, rests on top of the cigars and contains the mark
MONTECRISTO. Each individual MONTECRISTO brand cigar is packaged
with a cigar band on which appears the trademark MONTECRISTO.
Both the cigar band and the Crossed-Sword Design contain the
notation "M & G," referring to CCB's predecessor-in-interest,
Menendez Garcia y Compania Limitada ("Menendez Garcia"). As noted
above, through its licensees and Menendez Garcia, plaintiff CCB
has used the MONTECRISTO Trademarks since at least 1935 in
connection with its sale of premium cigars in the United States.
This action stems from the MCdT Defendants' efforts to
distribute MCdT cigars in the United States. In 1995, Perez
solicited his then-friend Fiorinelli to set up a distribution
network in New York for various kinds of cigars, including MCdT
cigars. Perez gave Fiorinelli (1) a presentation case labeled
"Monte Cristi de Tabacos," containing sample MCdT cigars, for use
in presentations to prospective customers in New York; (2) a
suitcase full of packages and boxes of MCdT cigars in yellow
boxes virtually identical to CCB's MONTECRISTO Trade Dress; and
(3) MCdT's sales prices for these products.
When he arrived in New York, Fiorinelli obtained the assistance
of his niece, Vargas, in establishing a distribution network in
New York for MCdT. During the summer and fall of 1995,
Fiorinelli, and eventually Vargas, contacted potential customers
in New York and New Jersey, offering to sell them MCdT cigars.
After a brief hiatus in these activities, MCdT sent Vargas a new
set of price lists for MCdT cigars in March of 1996. Later that
month, Perez gave Fiorinelli a written description of the various
MCdT cigar brands, with instructions that he fax these
descriptions to Vargas for her to use in her New York sales
efforts. Upon receipt of
the price lists, Vargas wrote a form solicitation letter to send
to tobacco retailers.
On or around March 11, 1996, Vargas sent a package from the
Bronx, New York to Arnold's Tobacco Shop in New York, New York
containing an offer from WD Distributors to supply Arnold's with
MCdT cigars. The package contained (1) a box of MCdT cigars which
Fiorinelli had received from Perez and brought to New York; (2) a
cellophane wrapped package of MCdT cigars which Fiorinelli had
received from Perez; and (3) a box of cigars with the trade name
"Monte Cristi de Tabacos, c.x.a." printed on it.
In or around March of 1996, Vargas also sent packages to two
additional tobacco retailers, one located in New York and the
other located in New Jersey. These packages included, among other
things, a letter soliciting orders for MCdT's cigars, sample MCdT
cigars from the supply that Perez had provided Fiorinelli, and a
price list and order form for MCdT cigars.
Shortly after the above events, Vargas traveled to the
Dominican Republic. While there, she learned that CCB was trying
to serve her in connection with a trademark infringement lawsuit
based on her distribution of MCdT cigars. When she informed Perez
of this pending lawsuit, he encouraged her to continue
distributing MCdT cigars in the United States, and told her that
CCB had no basis for asserting that she could not distribute
In addition to the above activities, the MCdT Defendants made
other deliberate efforts to distribute MCdT cigars in the United
States. One such effort involved the sale of MCdT cigars to Rocco
Zagarella ("Zagarella") of Boston, Massachusetts, for his company
Waterfront Beer & Wine ("Waterfront"). In January, 1996, Perez
personally accepted Zagarella's order by telephone for a total of
thirty boxes of MCdT cigars, which MCdT shipped directly to the
United States from the Dominican Republic. In early February of
1996, one of the MCdT Defendants' shipments to Waterfront was
detained by U.S. Customs. MCdT managers assured Zagarella that
MCdT was the legitimate owner of the MONTECRISTO brand, and that
"many people" were importing MCdT cigars into the United States.
MCdT also attempted to assist Zagarella to convince Customs to
allow him to import the MCdT cigars, giving Zagarella a letter
stating that "the name of Montecristo derives from the name of
the factory of cigars Monte Cristi de Tabacos, C.X.A. in the
Dominican Republic . . ."
After the February, 1996 detention of MCdT's shipment to
Waterfront, Zagarella visited MCdT in the Dominican Republic, and
showed MCdT's representatives the U.S. Customs Notice of
Detention stating that the detention was based on possible
infringement of the MONTECRISTO trademark. MCdT's representatives
expressed bewilderment as to why the MCdT cigars had been
detained. After this, MCdT sent two additional shipments
containing at least seventy boxes of MCdT cigars to Waterfront.
Some of these boxes were virtually identical to CCB's MONTECRISTO
Trade Dress; others were packaged in wood boxes marked with MONTE
CRISTO, MONTECRISTO and the Crossed-Sword Design trademark. All
of the boxes were marked, "Monte Cristi de Tabacos."
In addition to the above-detailed distribution efforts, the
MCdT Defendants supplied MCdT cigars to importers in Washington
State; Mount Sinai, New York; and Queens, New York, among other
locations within the United States. In one case, the MCdT
Defendants provided Queens-based cigar distributor Victor ...