The opinion of the court was delivered by: ROBERT SWEET, Senior District Judge
The defendant/counterclaimant Capitolo di San Pietro
("Capitolo") has moved under Rule 56, Fed.R.Civ.P., for
summary judgment on its unjust enrichment claim against plaintiff
Bangkok Crafts Corporation ("BCC") and counterclaim defendant
Treasures of St. Peter's in the Vatican ("TSV"). BCC and TSV have
moved under Rule 56 and Rules 12(c) and 9(b) to dismiss the
unjust enrichment claim, Lanham Act claims, and New York unfair
competition claim of Capitolo. For the reasons set forth below,
the motion of Capitolo for partial summary judgment is granted,
and the motion of BCC and TSV is denied in part.
The prior proceedings in this action have been set forth in the
companion order and opinion of this date, familiarity with which
The instant motions were heard and marked fully submitted on
February 9, 2005. The Facts
The facts are set forth in the statements of the parties and
are not in dispute except as noted below.
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").
BCC conducted its sublicensing activities through its affiliate
company Treasures Of St. Peter's In The Vatican, Ltd. ("TSV").
TSV is a separate legal entity owned by BCC principal John Loata
("Loata"), to which BCC purported to assign certain rights under
the 1996 License.
On or about August 28, 2000, BCC allegedly obtained Capitolo's
agreement to a new, vastly expanded license agreement with a term
renewable at BCC's election for up to forty-five years (the "2000
License"). This 2000 license authorized the marketing and
manufacturing of reproductions of works of art owned by the
Capitolo and located in the Vatican Treasury Museum. The term of
the 2000 Agreement was fifteen years with two fifteen-year
options to renew, for a total of forty-five years. BCC has also contended that representatives of Capitolo
requested and received cash payments in connection with the
supposed negotiation and execution of the 2000 License. BCC
alleges that it delivered the sum of $580,000 to Capitolo in
exchange for the rights provided by the 2000 License. On two
occasions, BCC allegedly wired funds to a bank in Rome, and on
both occasions, Virgilio Noe (Archpriest of Capitolo) ("Noe") was
offered a bank check, once in the amount of $500,000, and once in
the amount of $480,000. These contentions are challenged by
Capitolo. In granting Capitolo's motion for partial summary
judgment on its claims against BCC and TSV for declaratory
judgment and breach of contract, this Court concluded that
"[t]here is no competent evidence of any payments to Capitolo on
behalf of BCC in order to obtain the alleged 2000 License, or any
request or demand for such payments from Capitolo. Loata's
testimony is entirely hearsay." See Bangkok Crafts Corp. v.
Capitolo di San Pietro in Vaticano, No. 03 Civ. 0015 (RWS), 2004
WL 1406076, at *5 (S.D.N.Y. June 23, 2004) (the "June 23
During the period surrounding the execution of the 2000
License, Loata corresponded with Mr. Vittorio Caporale and Mr.
Giuseppe Guarino, both of whom represented that they were
authorized to deal with BCC on behalf of Capitolo with respect to
the issuance of the 2000 License and the renewal of the 1996
License. This Court has previously concluded that BCC has failed
to submit any admissible evidence to support its claim that individuals acting on its behalf undertook negotiations with
respect to the 2000 License. See id.
The 2000 License was executed by Loata on behalf of BCC and
Loata submitted certified sales reports on or about June 30,
2000, December 7, 2000, February 9, 2001, and March 30, 2001.
The signatures of Noe and Monsignor Giuseppe Bordin (then
Camerlengo Maggiore), the individuals that have been alleged to
have signed the 2000 License on behalf of Capitolo, have been
determined to be forgeries and the 2000 License has been declared
void ab initio. Id. at *6.
BCC allegedly received a letter dated January 2, 2001, from
Cardinal Angelo Sodano ("Sodano"), who was and is currently the
Secretary of State of the Vatican and the second highest ranking
member of the government of Vatican City. The letter represented
that the 2000 License was valid and that it ended in 2045. It
also stated that the 2000 License would commence upon the
expiration of the 1996 License on June 21, 2001.
BCC received a letter dated January 8, 2001 from Cardinal
Camillo Ruini ("Ruini"), the Vicar of the Diocese of Rome, which
stated that there were unresolved issues within the Vatican with
respect to the 2000 License. The letter advised BCC to continue
to operate under the 1996 License through June 21, 2001, at which
time the 2000 License would be operative.
By letter dated February 2, 2001, Loata informed Sodano that
per Sodano's instructions, BCC would continue to operate under
the 1996 License. Loata's letter acknowledged Sodano's statement
in his letter of January 2, 2001 that the 1996 License would
remain in effect until June 21, 2001, at which time the 2000
agreement would supersede the 1996 License and remain in effect
By letter dated February 2, 2001, BCC informed Ruini that per
Ruini's advice, BCC would continue to operate under the 1996
License pending resolution of the issues concerning the 2000
License. BCC apparently relied on Ruini's apparent authority with
respect to the propriety of continuing to operate pursuant to the
terms of the 1996 License. The authenticity of Ruini's signature
has not been verified.
On February 7, 2001, the 1996 License terminated at the end of
its initial five-year term. See Bangkok Crafts, 2004 WL
1406076, at *6. The June 23 Opinion determined that Capitolo
properly terminated the 1996 License as a result of BCC's
repeated material breaches of the agreement. Id. at *7-8.
BCC and TSV continued their sublicensing activities
notwithstanding the termination of the 1996 License on February
7, 2001. Since September 2000, BCC and TSV have received royalty
payments and fees from purported sublicenses for sales activities
that took place both before and ...