prior to the December 1999 entry of the injunction.
IV. The Parties' Motions
As noted above, both parties move for summary judgment.
Plaintiff argues that the facts, as set forth above, entitle the
partnership to summary judgment on liability. Defendants seek
judgment on the federal causes of action on the ground that the
Plaintiff knew it never had any valid federal trademark rights
in the name "Champagne" and therefore, cannot enforce any
alleged right to the mark here.
Dismissal of the state law partnership claims are sought on
the ground that the parties were never, in fact, a partnership,
but were a group of independent contractors. In the alternative,
once the federal claim is thus disposed of, Defendants seek
dismissal, as a matter of discretion, of the state law causes of
After outlining the applicable legal principles, the court
will turn to the merits of the motions.
I. Legal Principles
A. Standard For Motion for Summary Judgment
When a party is entitled to judgment as a matter of law, and
the case presents no material triable issue of fact, the court
will grant summary judgment to the moving party. Fed.R.Civ.P.
56(c); See also Celotex Corp. v. Catrett, 477 U.S. 317,
322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Upon a motion for
summary judgment, the court's role is not to determine the
validity of the issue before the court, but rather to determine
if a genuine issue of fact exists. See Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202
(1986). It is upon the moving party to demonstrate that no
material triable issue of fact exists. See Celotex, 477 U.S.
at 323, 106 S.Ct. 2548. All inferences and ambiguities must be
resolved in favor of the nonmoving party. See D'Amico v. City
of New York, 132 F.3d 145, 149 (2d Cir. 1998).
B. Elements of a Plaintiffs Federal Claim
To establish a claim for trademark infringement a plaintiff
must prove: (1) ownership of a valid mark that is entitled to
the protection of the law, and (2) that the use of the protected
mark, by the defendant, is likely to cause confusion within the
consuming public. See Estee Lauder, Inc. v. The Gap, Inc.,
108 F.3d 1503, 1508 (2d Cir. 1997); The Sports Auth. v. Prime
Hospitality Corp., 89 F.3d 955, 960 (2d Cir. 1996).
A Lanham Act claim for unfair competition pursuant to
15 U.S.C. § 1125(a), on the other hand, does not require proof of a
federally registered trademark. EMI Catalogue Partnership v.
Hill, Holliday, Connors, Cosmopulos, 228 F.3d 56, 61 (2d Cir.
2000); L. & J.G. Stickley, Inc. v. Canal Dover Furniture Co.,
Inc., 79 F.3d 258, 262 (2d Cir. 1996). Instead, such a claim
requires a plaintiff requires to show: (1) the false or
misleading use of any word, name symbol or device in connection
with goods or service; (2) in interstate commerce; (3) in a
manner that is likely to cause confusion or deception as to,
inter alia, affiliation. 15 U.S.C. § 1125(a); see L. & J.G.
Stickley, Inc., 79 F.3d at 262; High Point Accessories, Inc.
v. Sells-Floto, Inc., 1998 WL 213189 *4 (S.D.N.Y. April 29,
1998). The purpose of the Lanham Act is, inter alia, to
"prevent consumer confusion regarding a product's source. . . ."
EMI, 228 F.3d at 61, quoting, Centaur Communications, Ltd. v.
A/S/MI Communications, Inc., 830 F.2d 1217, 1220 (2d Cir.
II. Disposition of the Motions
The parties' submissions are replete with facts in dispute.
One fact, however, is clear. No party here ever owned a
federally registered trademark in the name "Champagne." Indeed,
the trademark search and subsequent discussion with the holder
of the mark made clear that no such registration could have been
obtained. Thus, the one thing that is clear is that the
Plaintiff partnership has no claim as the registrant of a
federally registered trademark. Accordingly, it is clear that
there can be no claim under this theory.
Because, as noted above, a Lanham Act claim for unfair
competition under 15 U.S.C. § 1125(a), does not require that the
mark sought to be protected be a registered trademark, it might
be argued that the Plaintiff partnership can pursue this matter
as a claim of unfair competition. In view of the facts of this
lawsuit, however, the court disagrees.
When the parties hereto were a group, they endeavored to
register the name "Champagne" and thereby obtain the exclusive
right to use that name — a right they could have enforced by
this court. Having been unable to secure that right (because the
trademark was owned by another), Plaintiff here ought not be
allowed to pursue what amounts to the same claim, dressed up as
a claim for unfair competition. While it is true that the Lanham
Act does not require that the mark sought to be protected from
confusion be a registered trademark, the court will not allow a
party to seek protection for a mark through a claim of unfair
competition when that party is fully aware that he has no
federally protectible right to the mark as a trademark. Because
the Plaintiff partnership's complaint is based wholly on the
alleged misuse of the name "Champagne," the court holds that a
Lanham Act claim, whatever the theory, may not be pursued.
For the foregoing reasons, the Plaintiffs motion for summary
judgment is denied and Defendants' motion for summary judgment
is granted. The court declines to exercise its discretion to
assert jurisdiction over Plaintiffs state law claims and such
claims are accordingly dismissed. The Clerk of the Court is
directed to terminate the cross motions for summary judgment and
to close the file in this case.