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Martal Cosmetics, Ltd. v. Int'l Beauty Exchange

July 24, 2007

MARTAL COSMETICS, LTD., PLAINTIFF ,
v.
INT'L BEAUTY EXCHANGE, ET AL., DEFENDANTS.



The opinion of the court was delivered by: James Orenstein, Magistrate Judge

ORDER

By notice dated March 14, 2007, defendants I.B.E. Cosmetics, Inc., I.C.E. Marketing Corp., K.A.K. Group, Inc., Homeboys International, Inc., Homeboys Discount, Inc., Harry Aini and Michael Aini (collectively, the "NY Defendants") moved pursuant to Federal Rule of Civil Procedure ("Rule") 60(b)(2) for relief they describe as "an Order reconsidering and vacating [my] Report and Recommendation and Order" dated September 22, 2006. Docket Entry ("DE") 359 ("NY Def. Memo."). By notice dated March 19, 2007, defendants International Beauty Exchange, Inc. and Symcha Horowitz (collectively, the "FL Defendants") filed a virtually identical motion. DE 365 ("FL Def. Memo."). The Honorable Sandra J. Feuerstein, United States District Judge, referred the motions to me for decision. Electronic Order dated June 14, 2007. In the interim, on April 18, 2007, the defendants collectively moved to reopen discovery for reasons that overlap almost entirely with those underlying their Rule 60 motions. DE 355. I granted the application of plaintiff Martal, Inc. ("Martal") to hold the latter motion in abeyance pending resolution of the Rule 60(b)(2) motions. Electronic Order dated April 30, 2007. For the reasons set forth below, I deny each of the Rule 60 motions. Having done so, I conclude that the defendants motion to re-open discovery is similarly meritless, and therefore deny it without requiring Martal to submit its response.

I. Background

In my Report and Recommendation and Order dated September 22, 2006, DE 338,*fn1 with

which I assume the reader's familiarity, I recounted at length the background facts and circumstances of this litigation. Accordingly, for purposes of resolving the instant motions, I recite here only those facts relevant to the disputes now before me.

A. Martal's Trademark Registrations

Martal is a British corporation founded by Marcus Sarner ("Sarner") that sells a variety of health and beauty products under the "Symba" trademark. Docket Entry ("DE") 10 (Amended Complaint) ¶ 1. Two such products are at issue in this litigation: Symba medicated soap ("Symba Soap") and Symba Skin-Lite Smooth Cream ("Symba Cream"). Id. ¶ 27.

On July 9, 1984, Martal applied to the United States Patent and Trademark Office ("PTO") to register to use the trademark "Symba" on Symba Soap. See NY Def. Memo., Ex. D ("091 Application"). In support of its application, Martal stated that the mark was first used on the soaps before October 1974, and that it was first used in commerce with the United States in January 1984. Id. On December 14, 1984, the PTO asked Martal, among other things, whether its products complied with the Federal Food, Drug, and Cosmetic Act. 091 Application. In April 1985, attorney David S. Woronoff ("Woronoff"), who held power of attorney for Martal with respect to the application, forwarded the PTO's inquiry to A.J. Axe ("Axe"), Sarner's United Kingdom trademark agent. Axe responded on April 29, 1985 as follows:

[The goods] were not in compliance with the requirements of the Federal Food, Drug & Cosmetic Act regarding labeling, at the time this application was made. A small batch of goods were sent into the U.S. from Canada in January 1984, to test the market, and bore the labeling used in Canada/Great Britain. No further supplies have been despatched, and none were on sale in the U.S. at the time of the application. Supplies destined for sale in the U.S. will be properly labeled when they arrive there, which will be quite soon. The goods have of course been on sale in Great Britain since at least October 1974, and continue to be on sale here and in other countries.... I am not sure how that situation will affect the application; the Applicant has been awaiting the result of this application before committing resources to labeling and packaging, literature and so forth. I therefore have to leave it to you to put the best interpretation on it responding to the Action.

NY Def. Memo., Ex. E. ("Axe Letter").

Woronoff responded to the PTO's inquiry in June 1985. Among other things, he stated that he would soon have in his possession packaging which is believed to be in full compliance with federal labeling requirements ... [and that he was] uncertain if the original packaging used for a small test marketing program was in compliance with federal regulations.

091 Application. The PTO registered the mark as Registration No. 1,372,091 (the "091 Registration") on November 26, 1985. Id. Martal applied separately to register the trademark "Symba" on a variety of other toiletries; the PTO registered that mark as Registration No. 1,480,368 (the "368 Registration").

B. Discovery Prior To My Order Of September 22, 2006

Martal filed this action on November 15, 2001, charging the defendants with manufacturing counterfeit versions of Martal's products, including soaps, lotions, and other toiletries under the Symba mark. See DE 1 (Complaint). At the initial discovery planning conference on March 5, 2002, the late Honorable A. Simon Chrein, United States Magistrate Judge, to whom the case was then assigned, ruled that before the defendants deposed Sarner, Martal's founder and sole corporate representative, they would first be permitted to depose attorney Michael Kessler, an investigator employed by Martal, as well as a witness designated by Martal pursuant to Rule 30(b)(6). DE 33. Judge Chrein further ordered that Sarner would testify in London, either by telephone or, at the defendants' election and largely at Martal's expense, in person. Id.

On August 21, 2002, the defendants served a notice pursuant to Rule 30(b)(6) that required Martal to designate, and to produce for deposition in New York, a witness who could testify on a broad range of topics, including the pleadings in this action, Sarner's medical history, and Martal's investigations of suspected counterfeiting. See DE 367 ("Pl. Opp'n"), Ex. H. When Martal responded that Sarner was the only witness competent to testify on those matters and refused to produce Sarner in New York, the defendants moved to compel. See id. After hearing argument, Judge Chrein ordered the defendants to complete their deposition of Sarner by February 29, 2003, and affirmed his earlier order requiring that Sarner testify in London by telephone or, at Martal's expense, in person. DE 135.

The parties scheduled Sarner's deposition for February 2003, and agreed to take his testimony in person in London. See Pl. Opp'n, Ex. K. Later, however, the defendants decided to cancel that deposition, and proposed instead to take his Sarner's deposition upon written questions. Id.; see Fed. R. Civ. P. 31. Martal agreed to that proposal, and Sarner's written deposition concluded in September 2003. See Pl. Opp'n at 10; NY Def. Memo., Ex. F. Despite having agreed to take Sarner's written deposition, the defendants continued to seek an opportunity to subject Sarner to oral questioning as well. In March 2004, Judge Chrein denied the defendants' application to participate in a deposition of Sarner that was scheduled to occur in connection with litigation pending elsewhere. See DE 285-DE 292. Two months later, the defendants sought permission ...


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