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United States District Court, Southern District of New York

April 15, 2003


The opinion of the court was delivered by: Constance Baker Motley, United States District Judge


Plaintiff in this case, Agatha Brown ("Brown"), alleges that defendant Michel Quiniou ("Quiniou") and the companies he owns, Agatha Diffusion S.r.L. ("Diffusion") and Sixteen, Inc. ("Sixteen") (collectively, "Quiniou et al."), have infringed upon her trademark in the registered mark "AGATHA."*fn1

Defendants Quiniou et al. move this court to dismiss plaintiff's Complaint pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, on the basis of res judicata. For the reasons contained herein, defendants' Motion is hereby denied.


Instant Action

Plaintiff Brown is a fashion designer who has achieved considerable success in the fashion industry and who trademarked the name "AGATHA" in several different classes (orginally, class 025 (clothing) and class 018 (handbags). Later, she applied for registration of her mark in other classes as well).*fn3 Brown is a United States citizen who currently resides in Aruba. Defendant Michel Quiniou is the owner and director of the two corporate defendants in this case — defendant Diffusion and defendant Sixteen. Quiniou is a French citizen.

Plaintiff has enumerated nine causes of action, all stemming from Quiniou et al.'s use of the mark "AGATHA" in connection with their products.*fn4 The causes of action sound under the Federal Trademark Act, the Lanham Act and New York Law. Plaintiff seeks monetary damages as well as injunctive relief for, inter alia, trademark infringement, false designation of origin and unfair competition.

Previous Action

In 1986 Brown sued Quiniou for trademark infringement, alleging that his use of the word "AGATHA" on his products would cause consumers to become confused and believe that Brown was associated with his company. The suit was filed in the Southern District of New York and assigned to Judge Keenan, who subsequently denied her Motion for Summary Judgment. Central to his holding was that the appearance of plaintiff's registered trademark "AGATHA" did not appear, as a matter of law, confusingly similar to defendant's "AGATHA Paris":

[D]efendant's use of block letters in a peculiar style serves to distance . . . the two marks. . . . [D]efendant's use of the mark conveys a connection to France. The logos on defendant's boxes, ribbons, envelopes, bags and catalogs place the word "PARIS" and sometimes "BIJOUX" alongside the name Agatha. Defendant's advertisements and stores themselves impart an unmistakable relation to France. This deliberate attempt to convey an association with France tends to negate a likelihood of confusion and gives rise to another triable issue of fact.
Brown v. Ouiniou ("Brown I"), 744 F. Supp. 463, 471 (S.D.N.Y. 1990) (citations omitted).

After Judge Keenan denied her Motion, plaintiff withdrew her case with prejudice. Quiniou and Diffusion registered the design mark AGATHA, "in stylized form" as it appeared at the time of the lawsuit in class 014 for jewelry. See Complaint, Ex. C. The "peculiar style" referred to by Judge Keenan, id., was the typeface "Quentin," which has an antiquated wood-cut look. The mark appears as such:


Events Since 1986 Action

Plaintiff alleges that sometime after the 1986 lawsuit, "Diffusion abandoned the stylized design mark analyzed by Judge Keenan . . . and started using the word mark AGATHA in a very modern, stark typeface called `Avant Garde' practically identical to the [typeface] that Brown has used consistently from the early "80s to identify all her designs and [that] is a registered trademark." Complaint, ¶ 92. The new mark used by Quiniou et al. appears as such:


Plaintiff alleges that in addition to changing the typeface of its mark from Quentin to Avant Garde, defendants have stopped placing the words "PARIS" or "BIJOUX" next to "AGATHA" on their products and advertisements and have reduced them to an almost invisible shade on their web-sites. See Complaint, Ex.s A, D, respectively.

Plaintiff's mark, in the Premier typeface, appears (and has appeared since the early 1980s) as such:



Legal Standards — Rule 12(b)(6)

When deciding a motion to dismiss under Rule 12(b)(6), a court must accept as true all well-pleaded factual allegations of the complaint and draw all inferences in favor of the plaintiff. See City of Los Angeles v. Preferred Communications. Inc., 476 U.S. 488, 493 (1986); Mills v. Polar Molecular Corp., 12 F.3d 1170, 1174 (2d Cir. 1993). To prevent dismissal, the plaintiff must do more than plead mere "[c]onclusory allegations or legal conclusions masquerading as factual conclusions." Gebhardt v. Allspect. Inc., 96 F. Supp.2d 331, 333 (S.D.N.Y. 2000) (quoting 2 James Wm. Moore, Moore's Federal Practice, ¶ 12.34[a][b] (3d ed. 1997). A motion to dismiss should only be granted when "it appears beyond a doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief." Conley v. Gibson, 355 U.S. 41, 45-46 (1957); accord Cohen v. Koenig, 25 F.3d 1168, 1172 (2d Cir. 1994).

Res judicata

"Res judicata challenges may properly be raised via a motion to dismiss for failure to state a claim under Rule 12(b)(6)." Thompson v. County of Franklin, 15 F.3d 245, 253 (2d Cir. 1994) (citations omitted). The Second Circuit has held that res judicata, or "claim preclusion," "prevents a plaintiff from relitigating claims that were or could have been raised in a prior action against the same defendant where that action has reached a final judgment on the merits." L-Tec Elcs. Corp. v. Cougar Elec. Org., Inc., 198 F.3d 85, 87-88 (2d Cir. 1999); see also Greenberg v. Board of Governors of the Fed. Reserve Sys., 968 F.2d 164, 168 (2d Cir. 1992) (res judicata bars both "issues actually decided in determining the claim in the first action and . . . issues that could have been raised in the adjudication of that claim") (citation omitted).

The party invoking res judicata bears the burden of proving that the doctrine bars the second action. See Computer Associates Int'l v. Altai, 126 F.3d 365, 369 (2d Cir. 1997). A defendant attempting to assert claim preclusion must show that: (1) the previous action involved an adjudication on the merits; (2) the previous action involved the same defendants or those in privity with them; and (3) the claims asserted in the subsequent action actually were, or could have been raised in the prior action. See Pike v. Freeman, 266 F.3d 78, 91 (2d Cir. 2001) (quoting Monahan v. New York City Dep't of Corr., 214 F.3d 275, 285 (2d Cir.), cert. denied, 531 U.S. 1035 (2000)). The doctrine of claim preclusion holds that "a prior decision dismissed `on the merits' is binding in all subsequent litigation between the same parties on claims arising out of the same facts, even if based upon different legal theories or seeking different relief on issues which were or might have been litigated in the prior action but were not." Northern Ins. Co. of Am. v. Square D. Co., 201 F.3d 84, 87 (2d Cir. 2000) (citation omitted). Claim preclusion operates in two ways: it bars claims that were brought and decided in the prior litigation, and it bars all other claims relating to the same transaction against the same defendant that could have been brought at the same time. Id.

It is clear that defendants Quiniou et al. can satisfy the first and second requirements enumerated by the Second Circuit in Monahan and cited in Pike. First, that the previous action ended with a stipulated dismissal rather than a judgment on the merits is of no importance. "A stipulation of dismissal `with prejudice' as to a pending action is unambiguous: like any such dismissal it is deemed a final judgment on the merits for res judicata purposes. . . ." NBN Broadcasting, Inc. v. Sheridan Broadcasting Networks, Inc., 105 F.3d 72, 78 (2d Cir. 1997). Second, there is no question that defendant Quiniou was sued in the previous action and is in privity with defendants Diffusion and Sixteen. See Chase Manhattan Bank, N.A. v. Celotex Corp., 56 F.3d 343, 346 (2d Cir. 1995).

It is also clear, however, that defendants Quiniou et al. cannot satisfy the third Monahan/Pike requirement. They argue that both "the instant action and the previously dismissed action assert claims which spring from a common set of operative facts. The fundamental basis for both lawsuits remains the same — namely [d]efendants' alleged infringement of the AGATHA trademark." Quiniou et al.'s Mem. in Supp. at 14-15. Further, they note that "the pleading of subsequent acts will not defeat res judicata when these additional facts arise from the same core of operative facts." Waldman v. Kiryas Joel, 39 F. Supp.2d 370, 379 (S.D.N.Y. 1999). The essence of Brown's instant claims, however, are based on facts which occurred after she decided to withdraw her 1986 lawsuit and which do not spring from the same set of facts upon which her previous action was based.*fn5 While the words in the 1986 Complaint and the instant Complaint are similar, the latter pleads facts which sufficiently indicate that Brown is not challenging Quiniou et al.'s mere use of the mark "AGATHA", but rather their use of the mark in a style that is much closer to her own mark than the one that Judge Keenan considered in 1986. Since Brown alleges that defendants changed their mark after the original suit was terminated, defendants cannot show that "the claims asserted in the subsequent action actually were, or could have been raised in the prior action." See Pike, 266 F.3d at 91 (quoting Monahan, 214 F.3d at 285).

Defendants Quiniou et al. assert that Judge Keenan's decision in Brown I is irrelevant, since it was the stipulated dismissal that constitutes the final judgment relevant to the res judicata inquiry. The holding of Brown I is indeed of no moment for the instant Motion. The analysis, however, serves to illustrate how the facts plaintiff alleges today are different than those she alleged in 1986. In 1986, plaintiff sought to end defendant's use of the mark AGATHA altogether, regardless of the fact that it appeared substantially different because of it's "peculiar style" and its being accompanied by the words "PARIS" or "BIJOUX." Brown I, 744 F. Supp. 471 . Today, however, she seeks to end its use of the mark in a style that is much closer to her own.*fn6 Under defendants' analysis, if, following the stipulated dismissal in 1986, they had begun using Brown's registered mark exactly as it appears on her products, she would be without legal recourse since the doctrine of res judicata would bar her from suing them for using the mark AGATHA. That cannot be.

For the foregoing reasons, defendants Quiniou et al.'s Motion to Dismiss is denied.


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