The opinion of the court was delivered by: ROBERT SWEET, Senior District Judge
Defendant/Counterclaimant Capitolo di San Pietro in Vaticano
("Capitolo") has moved under Rule 56, Fed.R.Civ.P., for
summary judgment on certain of its counterclaims asserted against
counterclaim defendants New Renaissance Art, Inc. ("NewRen"),
E-21 Global, Inc. ("E-21"), Maxx International, Inc. ("Maxx"),
and Craig Franco ("Franco") (collectively, the "Sublicensees").
As set forth below, the motion is granted. Capitolo is entitled
to a judgment (1) declaring TSV's sublicense with NewRen
terminated and/or expired by its own terms as of February 7, 2001
(Count Two of the Answer and Counterclaims) and (2) finding
NewRen liable for false advertising in violation of Section 43(a)
of the Lanham Act (15 U.S.C. § 1125(a)) (Count Five of the Answer
Bangkok Crafts Corporation ("BCC") initiated this action
against Capitolo in the Supreme Court of the State of New York,
County of New York, and it was removed by Capitolo to this Court
on January 2, 2003.
Capitolo moved for partial summary judgment against BCC which
was granted by opinion and order of June 23, 2004 declaring a purported August 2000 renewal agreement void and the license
between Capitolo and BCC terminated as of February 7, 2001. See
Bangkok Crafts Corp. v. Capitolo di San Pietro in Vaticano, No.
03 Civ. 0015 (RWS), 2004 WL 1406076 (S.D.N.Y. June 23, 2004) (the
"June 23 Opinion").
Third-party defendants Gerald P. Colapinto ("Colapinto") and
Second Renaissance, LLC ("SRLLC") moved to dismiss the fraud,
unfair competition, and unjust enrichment claims of third-party
plaintiffs E-21, Franco, NewRen and Maxx, which motion was
granted in part by the order and opinion of August 18, 2004.
See Bangkok Crafts Corp. v. Capitolo Di San Pietro in
Vaticano, 331 F. Supp. 2d 247 (S.D.N.Y. 2004) (the "August 18
Capitolo also moved to dismiss Count Six of the
counterclaims/third party complaint (the "Counterclaim") asserted
by additional counterclaim defendants/third party plaintiffs
E-21, Franco, NewRen, and Maxx, as amended by third party
plaintiffs' first amendment to Count Six of the counterclaim (the
"Amendment"). This motion was granted by the order and opinion of
September 7, 2004. See Bangkok Crafts Corp. v. Capitolo di San
Pietro in Vaticano, No. 03 Civ. 0015 (RWS), 2004 U.S. Dist.
LEXIS 25235 (S.D.N.Y. Sep. 7, 2004) (the "September 7 Opinion"). Familiarity with the June 23, August 18 and September 7
Opinions is assumed, and those opinions describe the underlying
dispute between Capitolo, BCC and its sub-licensees.
On February 8, 2005, the parties resolved the present motion
with respect to E-21, Franco, and Maxx by way of a stipulation
endorsed by the Court. This motion, which was opposed only by
NewRen, was heard and marked fully submitted on February 9, 2005.
The facts are set forth in Capitolo's Local Civil Rule 56.1
statement and are not controverted by NewRen except as noted
On or about May 8, 1996, representatives for BCC and Capitolo
executed a license agreement under which Capitolo granted to BCC
an exclusive right and license, effective as of February 8, 1996,
to manufacture and sell reproductions of Capitolo's works of art
(the "Reproductions"). (See Declaration of David Dunn dated
January 24, 2005 ("Dunn Decl."), at Ex. A) (the "1996 License").
The territory of the 1996 license was defined as the continents
of North America, South America, Australia and Asia. The 1996
License permitted BCC to enter into sublicenses with unaffiliated
parties, provided that any sublicense did not conflict with the
terms or conditions of the license, and obligated BCC to pay
royalties to Capitolo equal to five percent of the fees BCC received from its
BCC conducted its licensing activities under the 1996 License
through its affiliate Treasures Of St. Peter's In The Vatican,
Ltd. ("TSV"), a legal entity owned by John Loata ("Loata"), to
which BCC is purported to have assigned certain rights under the
1996 License. The 1996 License terminated on February 7, 2001 as
determined by the June 23 Opinion. Bangkok Crafts Corp., 2004
WL 1406076, at *6.
BCC had contended that on August 28, 2000 it obtained
Capitolo's agreement to a new, vastly expanded license agreement
with a term renewable at BCC's election for up to 45 years,
notwithstanding Capitolo's position that there would be no
renewal and expansion of the 1996 License, and prompt repudiation
of the agreement upon first learning of its existence. (See
Dunn Decl. Ex. A) (the "2000 License"). The 2000 ...