Geliman, S.A. v. Design Ideas, Limited

Filing 72

MEMORANDUM ORDER ADOPTING REPORT AND RECOMMENDATION for 32 Motion to Dismiss filed by Design Ideas, Limited, 61 Report and Recommendations. For the foregoing reasons, in addition to the reasons articulated in Judge Katz's thorough and well- reasoned Report, the Court grants Defendant's motion to dismiss the action for lack of subject-matter jurisdiction and denies Defendant's request for sanctions. The dismissal of this action is without prejudice. The Clerk of Court is respectfully requested to terminate Docket Entry No. 32, enter judgment accordingly, and close this case. SO ORDERED. (Signed by Judge Laura Taylor Swain on 2/11/2009) (tve)

Download PDF
U N IT E D STATES DISTRICT COURT S O U T H E R N DISTRICT OF NEW YORK - -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- x G E LIM A N , S.A., P l a i n t i f f, -vD E S IG N IDEAS, LIMITED, D efen d an t. - -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- x M EM ORANDUM ORDER ADOPTING R EPORT AND RECOMMENDATION N o . 05 Civ. 7102 (LTS)(THK) On February 11, 2008, Magistrate Judge Theodore H. Katz issued a Report and Recommendation ("Report") recommending that this action be dismissed with prejudice for lack of subject matter jurisdiction, and that the request by Defendant Design Ideas, Limited ("DI" or "Defendant") to vacate pursuant to the Court's inherent sanction authority a settlement agreement previously concluded by the parties be denied. Timely objections to the Report were received from Defendant, Plaintiff Geliman, S.A. ("Geliman" or "Plaintiff") filed a response to Defendant's objections without making any objections of its own, and Defendant timely filed a reply. The Court has reviewed thoroughly all of these submissions. When reviewing a Report and Recommendation, the Court "may accept, reject, or modify, in whole or in part, the findings or recommendations made by the magistrate judge." 28 U.S.C.A. § 636(b)(1)(C) (West Supp. 2006). The court must make a de novo determination to the extent that a party makes specific objections to a magistrate's findings. United States v. Male Juvenile, 121 F.3d 34, 38 (2d Cir. 1997). To the extent, however, that the party makes only GelimanRR.wpd version 2/11/09 1 conclusory or general objections, or simply reiterates the original arguments, the Court will review the Report strictly for clear error. See Pearson-Fraser v. Bell Atl., No. 01 Civ. 2343 (WK), 2003 WL 43367, at *1 (S.D.N.Y. Jan. 6, 2003); Camardo v. Gen. Motors Hourly-Rate Employees Pension Plan, 806 F. Supp. 380, 382 (W.D.N.Y. 1992); Vargas v. Keane, No. 93 Civ. 7852 (MBM), 1994 WL 693885 at *1 (S.D.N.Y. Dec. 12, 1994). Objections to a Report and Recommendation must be specific and clearly aimed at particular findings in the magistrate judge's proposal. Camardo, 806 F. Supp. at 381-82. The Court has considered thoroughly Defendant's objections. Familiarity with the con tents of the Report is presumed. For the following reasons, the Court adopts the Report's recommendations other than the recommendation that the dismissal be with prejudice, grants D efend ant's motion to dismiss the action for lack of subject-matter jurisdiction, and denies D efend ant's request for sanctions. D efend ant's objections assert that the Report erred as follows: 1) the Report failed to decide whether Defendant was entitled to attorneys' fees and costs pursuant to the Court's in h eren t sanction authority, Section 1117(a) of the Lanham Act, and/or 28 U.S.C. § 1919; 2) the R e po rt erroneously concluded that the Court had no authority to vacate a private settlement agreem en t where no subject matter jurisdiction exists over the action; and 3) to the extent that the R epo rt's recommendation that no subject matter jurisdiction exists might be interpreted as a co n clu sio n that the Assignment Agreement was a valid conveyance of rights from Geliman to D yna m ic Window, such an interpretation is incorrect. GelimanRR.wpd version 2/11/09 2 A tto rn eys' fees and costs D efen d an t argues that the Report failed to address whether Defendant should be aw ard ed attorneys' fees and costs pursuant to the Court's inherent sanction authority, Section 11 17 (a) of the Lanham Act, and/or 28 U.S.C. § 1919. Defendant's arguments for an award of fees an d costs are premised largely on the same arguments rejected by the Report in reaching its recom m end ation that the Court deny Defendant's request for vacatur of the settlement, but are also p re m ised on specific challenges to some of the findings and conclusions made by the Report in aid of its recommendation that Defendant's request for vacatur be denied. Defendant disputes principally the Report's finding that Geliman's failure to d isclo se the Assignment Agreement was not evidence of Geliman's bad faith intent to delay or pro lon g the litigation. However, Defendant does not dispute that an oral settlement agreement was reach ed mere days after the first amended complaint was filed and that, as the Report found, by the tim e the Assignment Agreement was executed, the parties had already agreed to most of the settlem en t terms. Geliman proffered a declaration by one of its principals that the settlement agr eem en t referred to "Geliman" as including several persons and entities, including Dynamic W ind ow , the entity to which ownership rights were assigned. The principal averred that, because the settlement terms included Dynamic Window anyway and most of the settlement terms had already been reached, he did not believe that the post-settlement assignment of ownership was re lev an t to this litigation and therefore he believed there was no need for Geliman to inform its cou nsel about the Assignment Agreement. Defendant proffers nothing, beyond generalized specu lation s, to counter Geliman's declaration or to show that Geliman in fact acted in bad faith. See Oliveri v. Thompson, 803 F.2d 1265, 1272 (2d Cir. 1986) ("we have declined to uphold aw ards under the bad-faith exception absent both clear evidence that the challenged actions are . . . GelimanRR.wpd version 2/11/09 3 for reasons of harassment . . . and a high degree of specificity in the factual findings of the lower cou rts.") (quotations and citations omitted). Moreover, Defendant's citations to Schreiber Foods, In c. v. Beatrice Cheese Inc., 402 F.3d 1198, 1206 (Fed. Cir. 2005), and similar cases involving the un disclosed assignment of rights pending ongoing litigation are unavailing, since no such settlem en t agreement was reached in those cases before or around the time of assignment, and the co n tin u ed prosecution of those cases clearly did not involve the party to whom the rights at issue w e re assigned. Therefore, the undersigned concurs in Judge Katz's conclusions that Geliman's failu re to disclose the Assignment Agreement was not the product of bad faith and thus, no sanction s, either in the form of vacatur of the settlement agreement or in the form of attorney's fees and costs, are warranted on that basis. D efen d an t also disputes the Report's finding that Geliman's failure to disclose the A ssignm ent Agreement "did not hamper this Court's ability to adjudicate the matters in issue" (R ep o rt at 29), arguing that Geliman's delay in disclosing the Assignment Agreement resulted in nearly two years of wasted judicial resources. However, the Report made that finding in the course of rejecting the argument that Geliman committed fraud on the court. See King v. First American In v estigatio n s, Inc., 287 F.3d 91, 95 (2d Cir. 2002) ("Fraud on the court should embrace only the sp ecies of fraud which does or attempts to, defile the court itself . . . .") (internal citations and q u o tatio n marks omitted). Because the Court finds, for the reasons explained throughout this O rd er, that Geliman did not act in bad faith when it failed to disclose the Assignment Agreement soo n after it was signed, no fraud against the court has been demonstrated. As such, the judicial reso u rces expended post-assignment were not "wasted" in the sense that they were the result of frau d , and the mere fact that such judicial resources were expended is insufficient grounds for sanction s relief in the form of fees and costs. GelimanRR.wpd version 2/11/09 4 T he Court also rejects Defendant's challenges to the Report's findings that G elim an 's failure to file this action under the correct party's name and its failure to correct the com plaint's misstatement that Geliman owned the trademarks were not committed in bad faith. Having reviewed the record de novo, the Court concurs with the Report's reasoning that Geliman h ad nothing to gain by failing to reveal that its principals, rather than the company itself, owned the trad em ark s. Accordingly, no sanctions in any form are warranted based on the misstatement of the co rr ect party in the complaint. D efend ant argues that the Report's finding that Geliman's filing for bankruptcy was n o t done in bad faith misapprehends the nature of Defendant's argument, which is that Geliman's failure to disclose the bankruptcy filing, along with alleged misrepresentations to the bankruptcy tru stee, was part of a fraudulent scheme designed to, inter alia, continue obtaining royalty payments from Defendant and transfer assets to Dynamic Window out of the reach of Geliman's creditors. Defendant, however, points to nothing in the oral settlement agreement that would suggest that D efen d an t's obligations to make royalty payments would cease upon a declaration of bankruptcy, n o r does Defendant point to anything in Argentinian law that would suggest that a declaration of b a n k r u p tc y would result in the cancellation of Defendant's obligation to pay royalties. Nor is there an y evidence that such legal consequences, even if possible, were so obvious to Geliman that its failure to disclose the bankruptcy proceedings immediately is probative of bad faith. Defendant complains that, while Geliman's principals told the bankruptcy trustee in a letter dated August 8, 2007, that "Geliman had asserted no claims on its own behalf in this litigatio n " (Br. at 9), Geliman twice represented to the Court that "it had in fact asserted claims on its own behalf." (Id.) However, the representations in this action upon which Defendant relies relate specifically to standing (i.e., "Geliman has standing to assert 43(a) claims for infringement GelimanRR.wpd version 2/11/09 5 an d unfair competition," "Geliman S.A. had standing to bring some of the claims asserted in this law su it") . The representation to the bankruptcy trustee that Geliman was not bringing claims on its o w n behalf and the representations to the Court that Geliman had standing to bring this action are no t contradictory and are actually consistent with the averment by one of Geliman's principals that h e believed at the time the litigation was commenced that Geliman could bring trademark in frin gem en t claims in a representative capacity on behalf of its principals. (See Report at 25 (citin g declaration).) Therefore, no bad faith may properly be inferred from these sets of represen tation s. Lastly, Defendant's proffer that Geliman's motive was to convince the trustee that th e settlement proceeds were not part of Geliman's estate is based wholly on speculation. For th ese reasons, the Court adopts the Report's finding that Geliman's actions in connection with the b an k ru p tcy proceeding were not done in bad faith. T h e Court has reviewed the portions of the Report to which Defendant lodges no sp ecific objection and finds no clear error. For all the foregoing reasons, the Court declines to ex e rcise its inherent sanction authority to award attorneys' fees and costs or to vacate the settlem en t agreement. D e fe n d a n t next argues that the Report failed to consider whether sanctions were w arran ted under Section 1117(a) of the Lanham Act. However, as the cases cited by Defendant the m selv es demonstrate, a party is entitled to fees and costs pursuant to 15 U.S.C. § 1117(a) only " [w ]h en a violation of any right of the registrant of a mark . . . shall have been established in any civil action . . . ." 15 U.S.C.A. § 1117(a) (West Supp. 2008). No such violation has been estab lish ed in this case; therefore no relief pursuant to Section 1117(a) is warranted. Moreover, the ad m issio n by Geliman's counsel that he should have exerted more effort to ascertain the ownership issue is not tantamount to an admission that no effort to investigate the facts of the complaint was GelimanRR.wpd version 2/11/09 6 m ad e at all, and thus does not warrant an award of fees and costs. See Viola Sportswear, Inc. v. M im u n , 574 F. Supp. 619, 620 (E.D.N.Y. 1983) ("No effort was made by the plaintiff to make any in v estigatio n of the facts prior to filing the complaint"). Therefore, even if an award of fees and co sts were authorized under Section 1117(a) absent a finding that a violation occurred, which it is no t, Defendant proffers no evidence of bad faith or utterly undue diligence that would warrant an aw ard of fees and costs, nor is any award warranted based on any argument premised on alleged b ad faith, for the reasons already discussed. Las tly, Defendant argues that an award of fees and costs is appropriate pursuant to 2 8 U.S.C. § 1919, which provides, in pertinent part that, "[w]henever any action or suit is dism issed in any district court, . . . such court may order the payment of just costs." 28 U.S.C.A. § 1 9 1 9 (West 2006). See Correspondent Servs. Corp. v. JVW Inv., Ltd., No. 99 Civ. 8934 (RWS), 2 0 0 4 WL 2181087, *15 (S.D.N.Y. Sept. 29, 2004) ("just costs" may include attorneys' fees in so m e cases). Defendant, however, proffers no argument specifically explaining why it believes it is entitled to fees and costs pursuant to this statute, nor does the Court conclude that any award of fees and costs is warranted pursuant to this statute, since, as discussed thoroughly above and in the R ep o rt, there has been no showing of bad faith on the part of Geliman or its counsel. V acatu r of the Settlement Agreement D efen d an t argues that the Report's refusal to recommend vacatur of the settlement agr eem en t was erroneously premised on a finding that Geliman's alleged fraud "did not come to ligh t" until after the settlement agreement, as well as doubts about whether a court has the authority to vacate a private settlement agreement after finding that there was no subject-matter jurisdiction ex isted of the underlying action. The Court, however, does not read the Report's mere mention GelimanRR.wpd version 2/11/09 7 tha t certain developments "came to light after the initial settlement was reached" (Report at 23) to b e the basis on which it recommended denial of Defendant's vacatur request; in any case, as the C o u rt has already explained thoroughly, there is no finding of bad faith and therefore, sanctions in a n y form and under the authorities cited by Defendant are unwarranted. Therefore, the Court ad o p ts the Report's recommendation that Defendant's request for vacatur of the settlement agreem en t be denied. W h eth er the Assignment Agreement is Valid N eith er party disputes the Report's findings that Geliman executed the Assignment A greem ent with Dynamic Window, which assigned the trademark rights to Dynamic Window as w ell as Geliman's rights under the settlement agreement with Defendant, that the settlement agreem en t between the parties released both Geliman and Defendant from all claims that were or co u ld have been asserted prior to the settlement agreement, that Geliman no longer had standing to a ss er t claims under either the Lanham Act or the settlement agreement, and that there was therefore n o case or controversy between Geliman and Defendant, requiring dismissal of the instant action fo r lack of subject-matter jurisdiction. The Court finds no clear error in that recommendation and ado pts it accordingly. Defendant, however, seeking to prevent Geliman from using dismissal of this action as a shield against any action accusing Geliman of fraudulently conveying assets to Dynamic W in d o w prior to bankruptcy, argues in a footnote (Br. at 4-5 n.3) that the Report's reco m m en d atio n (if adopted) should not be interpreted as a finding that the Assignment Agreement w as a valid conveyance of rights from Geliman to Dynamic Window. Geliman, on the other hand, argues that the Report's recommendation implicitly finds that the Assignment Agreement was GelimanRR.wpd version 2/11/09 8

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.


Why Is My Information Online?