Borghese Trademarks Inc. et al v. Borghese et al

Filing 138

MEMORANDUM AND ORDER granting in part and denying in part 73 Motion for Partial Summary Judgment; granting in part and denying in part 81 Motion for Partial Summary Judgment; terminating 105 Motion to Strike Document 76 ; terminating 109 Mo tion to Strike Document 84 ; terminating 115 Motion to Strike Document 98 . Plaintiffs motion for partial summary judgment is GRANTED in part and DENIED in part, as follows: All of Defendants Counterclaims are dismissed. Summary judgment is den ied as to the rest of Plaintiffs motion. Defendants motion for partial summary judgment is also GRANTED in part and DENIED in part, as follows: Plaintiffs breach of contract claims against MME are dismissed. Summary judgment is denied as to the rest of Defendants motion. The Clerk of the Court is directed to close the motions at Docket Nos. 73, 81, 105, 109, and 115. (Signed by Judge J. Paul Oetken on 1/14/2013) (ft) Modified on 1/14/2013 (ft).

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
--------------------------------------------------------------X
:
BORGHESE TRADEMARKS INC.,
:
BORGHESE INC., and BORGHESE
:
INTERNATIONAL LIMITED,
:
:
Plaintiffs,
:
:
-against:
:
FRANCESCO BORGHESE, AMANDA
:
BORGHESE, SCIPIONE BORGHESE,
:
LORENZO BORGHESE, KATIE BORGHESE, :
MULTIMEDIA EXPOSURE INC., GT
:
PARTNERS LIMITED, PERLIER INC., EBPD :
LLC, ORLANE INC. and HSN INC.,
:
:
Defendants. :
:
------------------------------------------------------------- X

10 Civ. 5552 (JPO) (AJP)
MEMORANDUM AND
ORDER

J. PAUL OETKEN, District Judge:
This action involves several claims and counterclaims between plaintiffs Borghese
Trademarks Inc. (“BTI”), Borghese Inc., and Borghese International Limited (“BIL”)
(collectively, “Plaintiffs” or “Borghese”) and defendants Francesco Borghese, Amanda
Borghese, Scipione Borghese, Lorenzo Borghese, Katie Borghese, Multimedia Exposure, Inc.
(“MME”), GT Partners Limited, Perlier, Inc., EBPD, LLC, Orlane, Inc., and HSN, Inc. (“HSN”)
(collectively, “Defendants”) under, inter alia, the Lanham Act, codified at 15 U.S.C. §§ 1051 et
seq.
Plaintiffs market and sell products including cosmetics, skin, hair, and nail care products,
and other consumer goods all sold under the Borghese name trademark (the “Borghese-branded
products”). (Dkt. No. 74 (“Pls.’ Statement of Undisputed Fact” (“SUF”)); see also Pls.’ Ex. 120

1

(“Mosbacher Dep.”) at 14:24-15:4.) Plaintiffs brought this action as a result of Defendants’
alleged use of Plaintiffs’ trademarks in connection with Defendants’ sale, advertising, marketing,
and promotion of home fragrances and bath, body, and skin care products for humans and pets.
(Dkt. No. 1 (“Compl.”) at ¶ 25.) Also at the center of this action is a 1993 agreement between
the parties (Id. at Ex. A (“the 1993 Agreement”)), which each side claims has been breached by
the other.
Plaintiffs and Defendants have both moved for partial summary judgment. In their
motion, Plaintiffs argue (1) that Francesco Borghese is liable for breach of contract as a matter of
law, and (2) that Defendants’ counterclaims for false advertising, breach of contract, and unjust
enrichment all fail as a matter of law. Defendants argue in their motion (1) that Plaintiffs’ claims
for trademark infringement are barred by the doctrine of laches, (2) that Plaintiffs have no
intellectual property right in the Borghese family history, and (3) that Plaintiffs cannot make out
prima facie breach of contract claims against either MME or Francesco Borghese. For the
reasons that follow, both motions are granted in part and denied in part.
I.

Background
This litigation concerns the value of the intellectual property of the Borghese family

name. Indeed, Plaintiffs claim that the Borgheses’ rich family history “gives allure and cache” to
the “Borghese” Brand. (Compl. at ¶ 35.) The Borghese family lineage is replete with prominent
figures, including Pope Paul V, Cardinal Scipione Borghese, Pauline Bonaparte (the sister of
Napoleon) and numerous princes and princesses. (Dkt. No. 83 (“Defs.’ SUF”) at ¶¶ 13-14.) In
the modern era, the Borghese family is perhaps best known for one such princess, Princess
Marcella Borghese (“the Princess”), who began the family legacy in the beauty industry. (Id. at
¶ 20; Pls.’ SUF at ¶ 4.)

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A.

Origin and Growth of the Borghese Brand

In 1937, and after marrying Prince Paolo Borghese, the Princess began having her
cosmetics specially made for her. (Pls.’ SUF at ¶ 7.) As a fashion and beauty icon the world
over, in the late 1950s Princess Marcella Borghese attracted the attention of Charles Revson,
founder of Revlon Overseas Corporation, C.A. (“Revlon”). (Compl. at Ex. G.) The two entered
into a partnership on October 16, 1957, to create a Princess Marcella Borghese line of cosmetics
from the secret recipe for cosmetics and skin creams that she had commissioned. (Pls.’ Ex. 3
(the “1957 Agreement”).) On January 1, 1958, the contract between Revlon and Princess
Marcella Borghese took effect and the Borghese cosmetics line was officially born. (Id. at 1.)
The contract guaranteed a four-year partnership, ending December 31, 1962. (Id. at 1.)
From 1958 until 1976, Princess Marcella Borghese controlled the Borghese brand, and
with help from her partnership with Revlon, advertised, promoted, marketed, distributed, and
sold Borghese products in the United States. (1957 Agreement; Pls.’ Ex. 121 (“Petrocelli Dep.”)
at 301:17-24.) On July 1, 1976, Revlon acquired all of Princess Marcella Borghese’s right, title,
and interest in and to “the words and phrases BORGHESE, MARCELLA BORGHESE,
PRINCESS MARCELLA BORGHESE, and all counterparts, renewals, substitutions,
simulations and variations thereof, whether used as a personal name, trade name or trademark”
and any registrations and applications for the same along with the associated good will. (Pls.’
SUF at ¶¶ 13, 16; Pls.’ Ex. 4 (“the 1976 Agreement”) at ¶¶ 1-2.) Through the execution of the
1976 Agreement, Revlon also gained exclusive license to the Princess’ family history and crest.
(1976 Agreement at ¶ 6.) Unlike the previous 1957 Agreement, the 1976 Agreement bound the
signatories—Prince Paolo Borghese and the Princess—as well as their heirs. (Id. at ¶ 11.)

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In 1990, the Princess and Revlon amended the 1976 Agreement, incorporating the same
terms as the previous contract. (Pls.’ Ex. 6 (“1990 Agreement”).) Pursuant to the amended 1990
Agreement, the Princess acknowledged that Revlon was the sole owner of the trademarks
“BORGHESE,” “MARCELLA BORGHESE,” and “PRINCESS MARCELLA BORGHESE” as
they applied to “men’s and women’s fragrances, cosmetics, beauty treatment products, skin and
hair care products, sun tan preparations, nail care products, and jewelry, clothing and clothing
accessories sold in conjunction with and to promote such products.” (1990 Agreement at ¶ 1.)
B.

The 1993 Settlement Agreement

On January 17, 1992, Revlon assigned the 1976 Agreement and the 1990 Agreement to
Halston Borghese International Limited (“HBIL”). (1993 Agreement at Preamble ¶ 4.)
Following HBIL’s purchase of the Borghese brand from Revlon, there was “some disagreement
between [the Princess and her sons Livio and Francesco Borghese] and HBIL concerning the
meaning of the 1990 Agreement and its assignment, with the 1976 Agreement, to HBIL. (Id. at
Preamble ¶¶ 5.) To “resolve their differences amicably,” the disputing parties executed the 1993
Agreement, which conveyed ownership of certain intellectual property rights to HBIL, now
Plaintiff BIL. (Id. at Preamble ¶ 6; id. at § II.A.)
Under the 1993 Agreement, the Princess and Francesco Borghese receive royalty
payments in connection with the sale of cosmetic products until one year following the
Princess’s death, and for the sale of non-cosmetic products for the remainder of Francesco’s life.
(Id. at § III.B.) In exchange, the Agreement provides that HBIL receives the following rights in
the “Borghese Name”:

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To the extent Princess Marcella Borghese and her Eligible
Descendants 1 have the authority to do so, the Princess has
assigned, transferred and conveyed all the right, title and interest of
the Princess in and to the BORGHESE name as applied to any and
all consumer products. Notwithstanding the foregoing, the
Princess does not represent, warrant or covenant that the Princess
has assigned to HBIL the exclusive right, title or interest in or to
the BORGHESE name as it is applied to Other Consumer
Products.
(Id. at § IV.H.) Elsewhere, the Agreement explains that “[t]he Princess [as defined] has no right
whatsoever to own, use or license any of the Intellectual Property, except to the extent that such
ownership and use would not be inconsistent with the rights of HBIL as set forth herein.” (Id. at
§ II.D.) It also provides that the signatories from the Borghese family must “refrain from being
engaged by or interested in any other business, firm or corporation which directly or indirectly is
in competition with HBIL in its business of selling . . . consumer products and services related
thereto, without the prior written approval of HBIL.” (Id. at § IV.G.)
The Agreement also includes the following obligation of the signatory Defendants:
A. Protection of Intellectual Property. The Princess [as defined]
shall do whatever HBIL reasonably requests to obtain and protect
HBIL’s Intellectual Property . . . Further, the Princess [as defined]
will, at HBIL’s request and expense, assist in the enforcement of
Intellectual Property against infringing uses by others as may be
deemed reasonably necessary by HBIL. The Princess [as defined]
shall promptly inform HBIL of any suspected infringements of
which the Princess has actual knowledge.
(Id. at § IV.A.)
Finally, the Agreement contains the following provision concerning the duty of HBIL to
maintain a certain quality of their products (“the Quality Provision”):

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The parties agree that the 1993Agreement binds not only the Princess herself but also Livio and
Francesco Borghese. (See 1993 Agreement at § V.) The 1993 Agreement defines “Princess” to
include her “Eligible Descendants [defined as Livio and Francesco] and any corporate or other
legal entities under their respective control.” (1993 Agreement at § I.K.)
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D. Quality: In order to ensure that the Princess is not subjected to
public ridicule or contempt, HBIL agrees that the Intellectual
Property shall be used only on consumer products, and services
related thereto, of a quality customarily sold or provided through
stores of high reputation and prestige; provided, however, that
neither the foregoing, nor anything else in this Agreement, shall
limit or be construed as limiting HBIL’s ownership rights in and to
the Intellectual Property.
(Id. at § III.G.)
C.

Modern History of the Borghese Brand

To this day, the Borghese-branded products are available throughout the world.
(Petrocelli Dep. at 101:21-23.) In the United States, Borghese-branded products are sold at
cosmetics boutiques and department stores, including Bloomingdale’s and Lord & Taylor. (Pls.’
Ex. 122 (“Palladino Dep.”) at 179:11-14.) Certain Borghese products under the “Kirkland
Signature, by Borghese” brand (“KS By Borghese”) are now available nationwide at Costco
stores, and at more than 17,000 pharmacies nationwide, including CVS, Walgreens, Rite Aid,
and Duane Reade. (Pls.’ SUF at ¶ 33; Compl. at ¶ 56.) Borghese also has a presence in the
television shopping world; beginning in 2010, its products were also available for sale on QVC
(Pls.’ SUF at ¶ 31.)

In addition, Borghese products have expanded beyond cosmetics and skin

and nail care products to include eyewear products also available throughout the United States
and distributed in more than 5,000 stores. (Compl. at ¶ 59.)
D.

The Defendants
1.

Borghese Family Members

The Princess’s oldest son, Francesco, is married to Amanda Borghese. Francesco and
Amanda have two sons, Scipione (also referred to as “Skip”) and Lorenzo Borghese. Katie
Borghese is Scipione’s wife and Francesco’s daughter-in-law. (Defs.’ SUF at ¶¶ 8-12.) These
persons are the individual Defendants in this case.
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2.

Defendant MME

Multimedia Exposure, Inc. (“MME”), a defendant corporation, was founded in 1996 by
Francesco, Amanda, and Scipione Borghese. (Pls.’ Ex. 116 (“MME Dep.”) at 44:4-9.) MME
has two different businesses, one involving the sale of its products on television and the other
involving consulting work, which includes counseling clients regarding the sale of their products
on television, negotiation of contracts, and review of accounts receivable. (Pls.’ Ex. 115
(“Francesco Dep.”) at 25:2-9.)
In addition, MME owns, manufactures, and markets a range of brands and product lines.
Under the “Italian Pet Spa by Lorenzo Borghese” name, Lorenzo and MME sold a variety of
high-end pet skin care products to Petco. (Pls.’ Ex. 62.) Lorenzo and MME also sold pet skin
care products under the name “La Dolce Vita by Prince Lorenzo Borghese” to PetSmart. (Pls.’
Ex. 63.) The Casa di Francesca products use a crest to brand the products, but it is not the
Borghese crest. (Pls.’ Ex. 66.) The Casa di Francesca products, launched on November 7, 2008,
are “a collection of home fragrances and accessories inspired by the exotic aromas proprietress
Francesca brought home to her Italian family in the 1600s from her adventurous grand tour of
old world Europe.” (Pls.’ Ex. 93 (quoting HSN “Brand Strategy Summary”).) Francesco,
Amanda, Lorenzo, Scipione, MME, and HSN (collectively, the “Royal Treatment Defendants”)
advertise, market, promote, distribute, offer to sell, and sell Royal Treatment Products. (Dkt. No.
16 (“Answer”) at ¶ 78.)
In or about 2009 or early 2010, Lorenzo became the Executive Vice President of MME.
(Pls.’ Ex. 18.) Since September 11, 2009, Scipione Borghese has served the President of MME
and Lorenzo as the Secretary. (Pls.’ Ex. 17.) The two men own all of the outstanding shares of
MME stock. (Id.) From September 11, 2009 through at least January 28, 2011, Amanda

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Borghese served as Vice President of MME, handling sales, marketing, and public relations.
(Id.)
3.

HSN and MME Partnership

MME is the “vendor of record” for several products to HSN, a company in the business
of television and online sales broadcasting live all day, seven days a week, 364 days a year.
(MME Dep. at 92: 7-10; Pls.’ Ex. 15.) Since 2002, Lorenzo has appeared on HSN as an on-air
guest 2 for Royal Treatment Products. (MME Dep. at 16:22-25; Countercls., Ex. 2 at ¶30.) Katie
and Amanda have appeared as HSN on-air guests on behalf of products for which MME is the
vendor as well. (MME Dep. at 16:19-21; Ex. 123 (“Tappan Dep.”) at 29:9-19.)
The Borghese family provided to HSN the background information about themselves and
their family to be used in connection with their on-air appearances. (Pls.’ Ex. 47; Pls.’ Ex. 117
(“Scipione Dep.”) at 88:22-89:13.)
4.

Perlier, Elariia, Orlane, EBPD

Perlier and its affiliated entities own the brands and product lines marketed and sold
under the names of Italian Bath & Body, Italian Beauty, Perlier, and Elariia (collectively, “Italian
Bath & Body Products”). (Pls.’ SUF at ¶ 67.) Orlane is in the business of selling high-end skin
care products and services. (Id. at ¶ 68.) EBPD is in the business of distributing Perlier and
Elariia products in the United States and is a wholly owned subsidiary of Orlane. (Id. at ¶ 69.)
From 1984 to around 1994, Francesco owned La Perfumerie, Inc. (“LPI”), which distributed
Perlier products in the United States. (Id. at ¶ 70.)
These companies share many connections. From 1990 to 1995, LPI shared employees
and office space with Orlane. (Id. at ¶¶ 72-73.) Francesco Borghese acted as president of Orlane
2

HSN defines an “on-air guest” or “brand ambassador” as the representative of the brand who
appears on live television to sell the product. (Pls.’ SUF at ¶ 44.)
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from 1986 to 1994. (Id. at ¶ 74.) He then served as president of Perlier from 1994 to 2001. (Id.
at ¶ 75.) Orlane, EBPD, and Perlier share some employees. (Id. at ¶ 80.) From 1995 through
the mid-2000s, Perlier, Inc. was the distributor of Perlier products in the United States. (Id. at ¶
81.) EBPD took over the role of U.S. distributor of Perlier and Elariia products in the mid2000’s. (Id. at ¶ 82.) Currently, EBPD is the “vendor of record” for the sale of Perlier and
Elariia products to HSN. (Pls.’ Ex. at 119 (“Sandbach Dep.”) at 226:15-17.)
Francesco, Amanda, Scipione, Lorenzo, MME, Perlier, EBPD, Orlane, and HSN
(collectively, the “Italian Bath & Body Defendants”) advertise, market, promote, distribute, and
sell the Italian Bath & Body Products. (Pls.’ SUF at ¶ 84.) Since 1991, Scipione Borghese has
held the responsibility for Perlier’s advertising, marketing, branding, and promotion strategy as it
related to the Italian Bath & Body Products. (Id. at ¶ 88.)
On December 31, 2001, Scipione individually, and then Borgh, Inc., a company wholly
owned by Scipione, executed a consulting agreement with Perlier to represent both Perlier and
Elariia as the on-air guest for HSN in connection with the Italian Bath & Body Products. (Id. at
¶ 86.) Similarly, Amanda Borghese entered an agreement individually with Perlier to represent
Perlier and Elariia as the on-air guest on HSN in connection with the same products. (Id. at ¶
87.)
5.

Francesco Borghese’s Involvement

Francesco is the founder of MME and a current member of its board. (Pls.’ SUF. at ¶¶
120, 128.) To the present day, Francesco is an advisor to MME and since 2004 has been on the
company’s payroll, earning approximately $75,000 annually. (Id. at ¶¶ 128-30.) Francesco has
also served as treasurer of MME, and some evidence indicates that he is still a company officer.
(Pls.’ Ex. 23.) Since 2003, Francesco has also earned approximately $10,000 per month from

9

Borgh, Inc. for aiding Scipione in negotiating his consulting agreement with defendant Perlier,
and it is stipulated that he will continue to earn that amount for “as long as [Scipione is] with
Perlier.” (Scipione Dep. at 191:10-23.) Francesco was also listed as an MME contact for the pet
products sold at PetSmart. (Pls.’ SUF at ¶ 132; Pls.’ Ex. 24 at D404447.) In September 2009,
the ownership structure of MME was changed for “family planning reasons”; Scipione and
Lorenzo became the sole shareholders of MME on September 11, 2009, to the exclusion of
Francesco Borghese. (Pls.’ SUF at ¶¶ 134-36.)
6.

Lorenzo Borghese’s Television Appearance

Lorenzo’s involvement in this lawsuit stems not only from his business ventures, but also
from his time as the star of “The Bachelor: Rome,” the ninth season of the hit ABC reality
television series “The Bachelor.” 3
In April 2006, Lorenzo spoke with representatives of Borghese about the possibility of
Lorenzo promoting the Borghese brand on The Bachelor: Rome. (Pls.’ Ex. 118 (“Lorenzo
Dep.”) at 37:25-38:21.) In connection with these negotiations, ABC shot a segment of Lorenzo
in the Borghese offices. (Petrocelli Dep. at 394:4-395:7.) Nonetheless, negotiations broke off,
and the parties made no agreement as to how the footage should be used. However, a ten-second
promotional segment filmed at Plaintiffs’ offices was aired on the talk show Extra on October 2,
2006, in anticipation of the first episode of the season. (Pls.’ Ex. 113.) In the clip, Lorenzo
walks past the Borghese signage in the Borghese offices. (Id.) However, no Borghese products
are featured in the segment. (Id.)

3

The Court takes judicial notice that, after a tense two-hour season finale, Lorenzo selected
Jennifer Wilson as that season’s winner. See Reality TV World Staff, “Bachelor Rome” Ends
with Lorenzo Borghese Picking Jennifer Wilson (Nov. 28, 2006),
http://www.realitytvworld.com/news/bachelor-rome-ends-with-lorenzo-borghese-pickingjennifer-wilson-4435.php.
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E.

Procedural Background

Plaintiffs commenced this lawsuit on July 21, 2010. The underlying action seeks
preliminary and permanent injunctive and monetary relief for (a) trademark infringement
pursuant to 15 U.S.C. § 1114; (b) trademark infringement, false designation of origin, and unfair
competition pursuant to 15 U.S.C. § 1125(a); (c) state trademark infringement and unfair
competition; (d) deceptive trade practices under N.Y. Gen. Bus. Law § 349; (e) breach of
contract under New York common law; (f) trademark dilution under N.Y. Gen. Bus Law § 3601; and (g) unjust enrichment under New York state common law. (Compl. at ¶ 31.)
Defendants filed an Answer on September 27, 2010, asserting twenty-one (21)
affirmative defenses. (Answer and Countercls.) Defendants also asserted five counter-claims:
(1) unfair competition, false representations, and false advertising pursuant to 15 U.S.C. §
1125(a); (2) breach of contract relating to the 1993 Settlement Agreement between the parties;
(3) deceptive acts and practices and false advertising under N.Y. Gen. Bus. Law. §§ 349-50; (4)
common law unfair competition; and (5) unjust enrichment. Id. at ¶¶ 60-83.
On January 17, 2012, both parties moved for partial summary judgment. (Dkt. No. 78
(“Pls.’ Mem.”); Dkt No. 82. (“Defs.’ Mem.”).) The parties opposed each others’ motions on
January 31, 2012 (Dkt. No. 87 (“Defs.’ Opp’n.”); Dkt. No. 92 (“Pls.’ Opp’n.”) and replied on
February 22, 2012. (Dkt. No. 97 (“Pls.’ Reply”); Dkt. No. 101 (“Defs.’ Reply”).) These motions
are currently before this Court.
II.

Summary Judgment Standard
Pursuant to Federal Rule of Civil Procedure 56, summary judgment “is appropriate when

the evidence shows that there is no genuine issue of material fact and that the moving party is
entitled to a judgment as a matter of law.” Chanel, Inc. v. Veronique Idea Corp., 795 F. Supp.

11

2d 262, 265-66 (S.D.N.Y. 2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247
(1986)) (internal quotation marks omitted). In such cases, the non-moving party must respond to
the adverse party’s pleading with “specific facts showing that there is a genuine issue for trial.”
Anderson, 477 U.S. at 248. The Supreme Court has instructed that an issue of fact is “genuine”
if the evidence presented “is such that a reasonable jury could return a verdict for the nonmoving
party.” Id.
The initial burden of a movant on summary judgment, or partial summary judgment, is to
provide evidence on “each material element of his claim or defense” illustrating his entitlement
to relief. Vt. Teddy Bear Co. v. 1-800 Beargram Co., 373 F.3d 241, 244 (2d Cir. 2004). A fact is
“material” if it “might affect the outcome of the suit under the governing law.” Anderson, 477
U.S. at 248.
The Court must view all evidence and facts “in the light most favorable to the nonmoving party and draw all reasonable inferences in its favor.” In re Old Carco LLC, 470 B.R.
688, 699-00 (S.D.N.Y. 2012) (quoting Allen v. Coughlin, 64 F.3d 77, 79 (2d Cir. 1995)). To
prevail on a claim for summary judgment, it must be shown that “no reasonable trier of fact
could find in favor of the nonmoving party.” Id.; accord Matsushita Elec. Indus. Co. v. Zenith
Radio Corp., 475 U.S. 574, 587-88 (1986). The nonmoving party must advance more than mere
“conclusory statements, conjecture, or speculation” to successfully defeat a motion for summary
judgment. Kulak v. City of New York, 88 F.3d 63, 71 (2d Cir. 1996) (citing Matsushita, 475 U.S.
at 587); see also Anderson, 477 U.S. at 249-50 (“If the evidence is merely colorable, or is not
significantly probative, summary judgment may be granted.” (internal citations omitted)).

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III.

Defendants’ Motion for Summary Judgment
Defendants have moved for summary judgment, contending that (1) Plaintiffs’ trademark

claims are barred by laches, (2) Plaintiffs cannot make out a prima facie case for unjust
enrichment under the Lanham Act, (3) Defendants did not assign to Plaintiffs the rights to the
Borghese family history via the 1993 Agreement, (4) MME is not bound by the 1993 Agreement,
and (5) Plaintiffs cannot make out a breach of contract claim against Francesco Borghese.
A.

Trademark Infringement and the Doctrine of Laches

Defendants have moved for summary judgment on all of Plaintiffs’ trademark claims
(Counts I-IV) based on Defendants’ “use of their surname and family history when promoting
PERLIER and ELARIIA products on HSN.” (Defs.’ MSJ at 3.) Defendants contend that all such
claims are barred by laches.
Laches is an equitable doctrine which, when properly invoked, can serve as a complete
defense to state and federal trademark infringement claims. Saratoga Vichy Spring Co. v.
Lehman, 625 F.2d 1037, 1040-41 (2d Cir. 1980). In Lanham Act cases, this Court has granted
motions for summary judgment based upon laches defenses. See, e.g., Eppendorf-Netheler-Hinz
GmbH v. Enterton Co., 89 F. Supp. 2d 483 (S.D.N.Y. 2000) (granting defendants’ motion for
partial summary judgment based on laches). Be that as it may, a laches defense “usually requires
the kind of record only created by full trial on the merits.” Kamat v. Kurtha, No. 05 Civ. 10618
(KMW)(THK), 2008 WL 5505880, at *6 (S.D.N.Y. Apr. 14, 2008) (citing Country Floors, Inc.
v. P’ship Composed of Gepner and Ford, 930 F.2d 1056 (3d Cir. 1991)). Because the “equitable
nature of laches necessarily requires that the resolution be based on the circumstances peculiar to
each case . . . [t]he inquiry is a factual one.” Tri-Star Pictures, Inc. v. Leisure Time Prods., B.V.,
17 F.3d 38, 44 (2d Cir. 1994) (citations omitted).

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In order to successfully invoke a laches defense, Defendants must prove (1) “that plaintiff
had knowledge of defendant’s use of its marks,” (2) “that plaintiff inexcusably delayed in taking
action with respect thereto,” and (3) “that defendant will be prejudiced by permitting plaintiff
inequitably to assert its rights at this time.” Saratoga Vichy Spring Co., 625 F.2d at 1040
(internal citations omitted). Additionally, the Court cannot permit a laches defense if Defendants
have acted in bad faith. See Hermes Int’l v. Lederer de Paris Fifth Ave. Inc., 219 F.3d 104, 107
(2d Cir. 2000) (explaining that “intentional infringement is a dispositive, threshold inquiry that
bars further consideration of the laches defense, not a mere factor to be weighed in balancing the
equities, as the district court did in this case.”) Laches is presumed if the Lanham Act violation
persists for six years before a claim is filed. Conopo, Inc. v. Campbell Soup Co., 95 F.3d 187,
191 (2d Cir. 1996); Deere & Co. v. MTD Holdings, Inc., No. 00 Civ. 5936 (LMM), 2004 WL
324890, at *18 (S.D.N.Y. Feb. 19, 2004). “This six-year period will begin to run once the
plaintiff is aware of the facts underlying its cause of action.” Id. (citations omitted).
Defendants contend that the doctrine of laches bars infringement claims relating to the
use of the Borghese surname and family history in the promotion of Perlier and Elariia products
on HSN, because the complained-of use has existed for two decades, and Plaintiffs knew, or
should have known, of such use. Defendants have submitted a video montage of QVC and HSN
clips from the 1990s containing passing references to Scipione and Amanda’s surnames and
titles, as well as some brief references to the family history of the Borgheses, “one of Italy’s
founding families,” and to the Borghese museum. (Defs.’ Ex. M). Scipione Borghese has also
submitted a declaration averring that he and his mother have “consistently used [their] names and
titles” and “referred to [their] family history as part of [their] sales efforts. (Dkt. No. 84
(“Scipione Decl.”) at ¶¶ 14-15.) Plaintiffs, by contrast, argue that the complained-of

14

infringement dates back not to the 1990s, but to November 2005. This, according to Plaintiffs ,
is the actual period in which Defendants began to use Plaintiffs’ trademarks and to reference the
history of the Borghese brand. (Pls.’ Opp’n. at 4.)
This Court agrees with Plaintiffs that, given the brevity of the montage put forth by
Defendants and the conclusory nature of Scipione Borghese’s declaration, the question whether
any substantial infringements took place before 2005 cannot be determined as a matter of law.
Plaintiffs have put forth evidence indicating that the first attempts by Lorenzo, in connection
with Royal Treatment, to associate himself on air with the Princess and “the Borghese cosmetic
line” were made in December 2004, and the first such maneuvering during the promotion of
Defendants’ Italian Bath and Body product line occurred in November 2005. (Pls.’ Ex. 218 at
11-12.) Such references to the Princess, her cosmetic line, and their connections to the Borghese
Defendants happened quite frequently thereafter. (See, e.g., id. at 14, 17-18 (similar references
on December 6, 2006, November 1, 2007, January 24, 2008, March 7, 2008, April 4, 2008, and
April 28, 2008.)) As far as this Court can determine, however, Defendants made no references to
the Princess or her cosmetic line, on either QVC or HSN, before the end of 2004.
Even if Defendants’ conduct had persisted for several decades, Defendants would also
need to demonstrate that Plaintiffs knew or should have known about this conduct. Defendants
argue that Plaintiffs were on notice of any past use because the Borghese family signatories to
the 1993 Agreement reserved the right to “appear in a video or appear on television and/or radio
programs,” which should have prompted the Plaintiff to inquire as to the family members’ desire
to be on television. 4 (1993 Agreement at § II.D.) Defendants also contend that “Plaintiffs had to

4

Defendants have cited Second Circuit precedent indicating the existence of a duty to inquire.
See RBC Nice Bearings, Inc. v. Peer Bearing Co., 410 Fed.Appx. 362, 365 (2d Cir. 2010) (citing
Johnston v. Standard Min. Co., 148 U.S. 360, 370 (1893)) (“[T]he law is well settled that where
15

have known by 2000 [that Defendants used the family name and heritage] when they hired Neil
Petrocelli as Marketing Director.” (Defs.’ Mem. at 4.) For their part, Plaintiffs claim that they
had no knowledge of the infringements until September 30, 2009. (Pls.’ SUF at ¶ 142; Pls.’ Ex.
203).
Irrespective of whether Defendants have proffered enough evidence to show as a matter
of law that Defendants used the Borghese and Princess Marcella Borghese marks in the 1990s,
this Court cannot conclude, undisputedly as a matter of law, that Plaintiffs knew or should have
known of these past infringements. 5 It is one thing to expect a company to monitor for
infringements; it is quite another to expect it to spot several isolated minutes of infomercial
footage over several years. While Defendant is correct that a party claiming infringement can be
charged “with such knowledge as he might have obtained upon inquiry,” inquiry notice is
triggered only if “the facts already known by [plaintiff] were such as to put upon a man of
ordinary intelligence the duty of inquiry.” Polaroid Corp. v. Polarad Elecs. Corp., 182 F. Supp.
350, 355 (S.D.N.Y. 1960) (citing Johnston v. Standard Mining Co., 148 U.S. 360, 370 (1893).

the question of laches is in issue the plaintiff is chargeable with such knowledge as he might
have obtained upon inquiry, provided the facts already known by him were such as to put upon a
man of ordinary intelligence the duty of inquiry.”); Black Diamond Sportswear, Inc. v. Black
Diamond Equip, Ltd., No. 06 Civ. 3508, 2007 WL 2914452 (2d Cir. Oct. 5, 2007). However,
these are cases, distinguishable from the case at bar, in which plaintiffs had every reason to know
about the infringer’s conduct. For instance, in Black Diamond, the infringer’s products directly
competed with the plaintiff’s years before the latter brought its claim, and the two companies
marketed their goods in the same magazines and trade shows. Id. at *3.
5

Moreover, it is not necessarily the case that the statute of limitations begins to run at the time of
discovery. Instead, “a plaintiff should not be obligated to sue until its right to protection has
ripened such that plaintiff knew or should have known, not simply that the defendant was using
the potentially offending mark, but that plaintiff had a provable infringement claim against
defendant.” ProFitness Physical Therapy Ctr v. Pro-Fit Orthopedic and Sports Physical
Therapy P.C., 314 F.3d 62, 70 (2d Cir. 2002) (citing Kellogg Co. v. Exxon Corp., v, 209 F.3d
562, 570-71 (6th Cir. 2000)). Thus, to the extent that Plaintiffs were aware of earlier, minor
infringements, such incidents do not necessarily commence the six-year clock.
16

Nor does this Court find persuasive Defendants’ argument that knowledge of the HSN
footage should be imputed to Defendants through Borghese’s current vice president, Neil
Petrocelli, because Petrocelli worked for LPI, the distributor of Perlier products, from 19982000. Petrocelli’s deposition testimony indicates that, while at LPI, he had no involvement with
the branding or selling of Perlier on television, and that he never saw a taping of Amanda and
Scipione’s television appearances. (Pls.’ Ex. 216 (“Petrocelli Dep. II”) at 46:2-48:8.) This Court
fails to see how the fact that “[a]t least as early as 2000 . . . [Petrocelli] knew that Scipione
Borghese sold cosmetic products on television” necessarily proves that Petrocelli, and by
extension Plaintiffs, knew of the potential infringements. (Defs.’ Reply at 3.) Defendants have
not put forward evidence sufficient to show beyond genuine dispute that Plaintiffs knew or
should have known of Defendants’ pre-2005 use of the Borghese trademark.
Even if Defendants had shown that laches was applicable under the standard test, this
Court would not bar Plaintiffs’ claim here; as is explained in section III.B.2, infra, viewing the
facts in the light most favorable to Plaintiffs, the evidence indicates that there is at least a
genuine dispute of fact as to whether Defendants have acted in good faith. See Cuban Cigar
Brands N.V. v. Upmann Int’l., Inc., 457 F. Supp. 1090, 1098-99 (S.D.N.Y. 1978) (explaining that
the burden for establishing good faith falls upon the party invoking the affirmative defense of
laches).
Thus, this Court cannot conclude at this stage of the litigation that Plaintiffs’ suit is
barred by laches.

17

B.

Plaintiffs’ Unjust Enrichment Claim

Defendants next move for summary judgment on Plaintiffs’ Claim X, concerning the
alleged unjust enrichment of Defendants at Plaintiffs’ expense. (See Compl. at ¶ 136.)
Pursuant to § 35(a) of the Lanham Act:
When a violation of any right of the registrant of a mark registered
in the Patent and Trademark Office, a violation under section
1125(a) or (d) of this title, or a willful violation under section
1125(c) of this title, shall have been established in any civil action
arising under this chapter, the plaintiff shall be entitled, subject to
the provisions of sections 1111 and 1114 of this title, and subject
to the principles of equity, to recover (1) defendant’s profits, (2)
any damages sustained by the plaintiff, and (3) the costs of the
action.
15 U.S.C. § 1117(a). In order to succeed on its Lanham Act claim for unjust enrichment in this
Circuit, a plaintiff must prove: (1) that the infringer acted in bad faith; and (2) either (a) actual
consumer confusion or (b) intentional deception on the part of the defendant. Int’l Star Class
Yacht Racing Ass’n. v. Tommy Hilfiger, U.S.A., Inc., 80 F.3d 749, 753 (2d Cir. 1996)); Boosey &
Hawkes Music Publishers, Ltd. v. Walt Disney Co., 145 F.3d 481, 493 (2d Cir. 1998). 6 The
Second Circuit has cautioned district courts against making factual determinations about the
validity of infringement claims at the summary judgment stage of the litigation. See, e.g., DC
Comics Inc. v. Reel Fantasy, Inc., 696 F.2d 24, 26 (2d Cir. 1982) (reversing the lower court for
making factual determinations and thereby “disregard[ing] well-known principles of summary
judgment”); American Int’l. Group, Inc. v. London American Int’l. Corp., 664 F.2d 348, 353 (2d
6

The law of the Circuit regarding the requisite showing for receiving damages under this statute
is, in light of the Trademark Act of 1999, somewhat unclear, and a division exists in this District
over whether pre-Amendment Second Circuit case law remains intact. See Chanel, Inc v.
Veronique Idea Corp., 795 F. Supp. 2d 262, 268-69 (S.D.N.Y. 2011) (discussing the split within
the Southern District of New York). This Court concludes that Second Circuit precedent from
before the 1999 Amendment remains good law, for the reasons given by Judge Cote in
Mastercard Int’l, Inc. v. First Nat’l. Bank of Omaha, Inc., No. 02 Civ. 3691 (DLC), 03 Civ.
707(DLC), 2004 WL 326708, at *10-11 (Feb. 23, 2004).
18

Cir. 1981). Keeping this in mind, this Court must determine whether, at trial, a reasonable jury
would be able to find that confusion and bad faith were present here.
1.

Confusion

While this Court can decide the issue of consumer confusion at the summary judgment
stage “if the court is satisfied that the products . . . are so dissimilar that no question of fact is
presented,” “[q]uestions regarding the likelihood of confusion are normally factual in nature”
and are thus are often not amenable to disposition by summary judgment. R.F.M.A.S., Inc. v.
Mimi So, 619 F. Supp. 2d 39, 82 (S.D.N.Y. 2009) (citing Universal City Studios, Inc. v. Nintendo
Co., Ltd., 746 F.2d 112, 116 (2d Cir. 1984)).
In the Second Circuit, the likelihood of confusion between a trademark and an alleged
infringer is determined by weighing the eight so-called Polaroid factors, famously enumerated
by Judge Friendly in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495-96 (2d Cir.).
The factors are:
(1) strength of the plaintiff’s mark; (2) the degree of similarity
between the two marks; (3) the proximity of the products; (4) the
likelihood that the prior owner will “bridge the gap” . . .; (5) actual
confusion; (6) the defendant’s good faith in adopting its mark; (7)
the quality of the defendant’s product; and (8) the sophistication of
the buyers.
Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 478 (2d Cir. 1996).
The Second Circuit has explained that, “[i]f a factual inference must be drawn to arrive at
a particular finding on a Polaroid factor, and if a reasonable trier of fact could reach a different
conclusion, the district court may not properly resolve that issue on summary judgment.” Id. 7
Here, Plaintiff has raised genuine issues of material fact as to several of the Polaroid factors,
7

Defendant cites Playtex Products, Inc. v. Georgia-Pacific Corp., 390 F.3d 158, 162 (2d Cir.
2004), for the proposition that the balancing of the Polaroid factors is a question of law. This is
true, but only to the extent “the predicate facts are beyond dispute.” Id.
19

most importantly, the degree of actual confusion. Plaintiffs’ expert, Hal Poret, conducted a
survey demonstrating that HSN infomercials created a fifteen-percent level of net confusion with
the Borghese brand. (Pls.’ Ex. 133 (“Poret Report”) at 11). The Second Circuit has indicated
that this level of net confusion is probative of consumer confusion. See RJR Foods, Inc. v. White
Rock Corp., 603 F.2d 1058, 1061 (2d Cir. 1979). Plaintiffs also point to anecdotal evidence of
confusion, such as, inter alia, an HSN caller’s comment to Scipione and Amanda Borghese
clearly indicating her belief that they were selling Borghese brand products. (Pls.’ Ex. 218-R at
D459693 at 20051205_103612.) Plaintiffs also note an MME business partner’s confusion about
the source of Borghese products sold on ShopNBC. (Pls.’ Ex. 50 at D435769.) These anecdotal
instances of confusion, when paired with survey evidence of confusion, provide a jury with
enough evidence to reasonably conclude that actual confusion existed. See Empresa Cubana Del
Tabaco v. Culbro Corp., No. 97 Civ. 8399 (RWS), 2004 WL 602295, at *44 (S.D.N.Y. Mar. 26,
2004), reversed on other grounds, 399 F.3d 462 (2d Cir. 2005) (holding that there is a
“likelihood of confusion” where “survey evidence as well as anecdotal evidence of actual
confusion” exists).
2.

Bad Faith

In seeking summary judgment on Plaintiffs’ claim for unjust enrichment, Defendants
focus primarily on the issue of bad faith. According to Defendants, Plaintiffs have proffered
insufficient evidence of bad faith for their unjust enrichment claim to survive the summary
judgment stage of the litigation.
In order to demonstrate bad faith, a plaintiff must show that the “defendant adopted [the
plaintiff’s] mark with the intention of capitalizing on [the] plaintiff’s reputation and good will
and any confusion between his and the senior user’s product.” Cadbury Beverages, 73 F.3d at

20

482-83 (quoting Lang v. Retirement Living Publ’g. Co., 949 F.2d 576, 583 (2d Cir. 1991).
“Subjective issues such as good faith are singularly inappropriate for determination on summary
judgment,” especially when plaintiffs “adequately placed defendants’ bona fides in question.”
American Int’l. Group, 664 F.2d at 353.
Defendants contend that Plaintiffs have put forth no evidence of bad faith or willful
misconduct on the part of Defendants. Defendants also point to several parts of the record that
demonstrate Plaintiffs’ willingness to cooperate with Plaintiffs when possible infringements
arose (see, e.g., Scipione Dep. at 82:12-23 (testifying that Scipione removed references to the
Princess in Perlier marketing materials to placate Defendants)), as well as to Scipione Borghese’s
averment that that he never intended “to connect [himself] to the Borghese brand” when
appearing on television, (Id. at 77:3-4.)
Plaintiffs have put forth sufficient evidence of possible bad faith to survive summary
judgment. For example, Plaintiffs point to a statement by Scipione to Mindy Grossman at HSN,
concerning the development of a Villa Borghese handbag, that he hopes they can “take
advantage” of the “value in the name Borghese.” (Pls.’ Ex. 42 at D402846.) The record also
contains evidence of various HSN appearances from 2005 to 2009, in which Defendants—
particularly Scipione—traded on Plaintiffs’ goodwill in connection with the sale, advertising,
and promotion of Perlier and Elariia bath and body products. For instance, during one HSN
appearance, Scipione asserted that his and Amanda’s products were “part of the beauty legacy,”
which “my grandmother started . . . . My grandmother was Princess Marcella Borghese . . . .”
(Pls.’ Ex. 111 (D3655900 at 20090122_080160).)
Additionally, given the fact that the “allegedly infringing mark is identical to [the]
registered mark and its use began subsequent to plaintiff’s registration,” Defendant has not

21

sufficiently explained its behavior to rebut the appearance of bad faith beyond genuine dispute.
Cadbury Beverages, 73 F.3d at 483 (citing Kiki Undies Corp. v. Promenade Hosiery Mills, Inc.,
411 F.2d 1097, 1101 (2d Cir. 1969)). 8
Because issues of material fact exist as to confusion and bad faith, Defendants’ motion
for summary judgment as to Plaintiffs’ unjust enrichment claim must be denied.
C.

Defendant’s Right to Use Borghese History Under the 1993 Agreement

Defendants next argue that, by signing the 1993 Agreement, Plaintiffs waived the right—
made explicit in earlier agreements—to use the Borghese family history. By extension,
Defendants contend, Plaintiffs’ trademark infringement claims regarding Defendants’ use of the
Borghese family history are barred by waiver.
Under New York law, “a waiver is the voluntary and intentional relinquishment of a
known right, which is not created by negligence, oversight, or silence.” Amerex Group, Inc. v.
Lexington Ins. Co., 678 F.3d 193, 201 (2d Cir. 2012) (citation omitted). In New York, courts do
not lightly presume waiver; instead, waiver “must be unmistakably manifested, and is not to be
inferred from a doubtful or equivocal act.” Echostar Satellite L.L.C. v. ESPN, Inc., 914
N.Y.S.2d 35, 39 (App. Div. 2010); see also Gilbert Frank Corp. v. Fed. Ins. Co., 520 N.E.2d
512, 514 (N.Y. 1988) (“Waiver is an intentional relinquishment of a known right and should not
be lightly presumed.” (citations omitted)).

8

Defendants contend that Cadbury Beverages is inapposite, because there the Second Circuit
found the two marks “identical—in style as well as in name.” Id. at 483. However, the Kiki
Undies Corp. Court found that burden shifting should occur when the defendant “adopted
exactly the same word as plaintiff’s mark.” 411 F.2d at 1101 (emphasis added); see also
Surgicenters of Am., Inc. v. Med. Dental Surgeries Co., 601 F.2d 1011, 1021 (9th Cir. 1979)
(citing Kiki Undies Corp. for the proposition that “where . . . the allegedly infringing name is
identical to the registered mark,” the burden shifts). In any event, even if the burden is on
Plaintiffs’ shoulders here, there is sufficient evidence to place Defendants’ good faith in dispute.
22

Contrary to Defendants’ assertion that “the 1993 Settlement Agreement makes
[Plaintiffs’] forfeiture explicit” (Defs.’ Mem. at 13), this Court cannot conclude that, by signing
the 1993 Agreement, Plaintiffs conclusively relinquished their rights to the Borghese family
history. 9
While Defendants correctly note that the 1993 Agreement is silent as to the Borghese
family history per se, the Agreement provides that Borghese assume ownership over, inter alia,
“subsidiary rights relating to the identity of the Princess.” (1993 Agreement at § 1.H.) Genuine
issues of material fact exist as to whether these “subsidiary rights” include the Borghese family
history. Moreover, through the 1993 Agreement, Defendants “expressly approve[d] the transfer
of intellectual property” from Revlon, the owner of the Borghese brand under the prior
agreements, to Borghese. (Id. at § II.A.) This express approval seems to indicate that Borghese
assumed all of the intellectual property rights owned by its predecessor-in-interest, Revlon.
D.

Breach of Contract Claims against MME

Defendants contend that Plaintiffs cannot make out a prima facie case of breach of
contract against MME because MME is not a signatory or party to the 1993 Agreement. The
1993 Agreement binds “the Princess,” but the Agreement makes clear that its definition of
“Princess” includes both her eligible descendants (Livio and Francesco) and “any corporate or
other legal entities under their respective control.” (1993 Agreement at § I.K.) Thus, MME is

9

Nor does Local 65-B, Graphic Commc’ns Conference of the Int’l Bd. of Teamsters v. Nat’l
Labor Relations Bd., 572 F.3d 342 (7th Cir. 2009), bolster Defendants’ argument. In Local 65B, the Seventh Circuit simply makes the observation that a party’s waiver of rights from a prior
contract can be read to extend to a new contract, as courts can fairly assume that contracting
parties understand the “consequences of extending” past agreements. Id. at 351. This Court is
inclined to agree with Plaintiffs that, if anything, the reasoning in Local 65-B favors Plaintiffs
here.
23

bound by the 1993 Agreement only if the company is “control[ed]” by the individuals bound by
the 1993 Agreement.
Plaintiffs allege that Francesco Borghese, who is undisputedly bound by the 1993
Agreement, “exercises control, and at all relevant times has exercised control, over [MME] . . . .”
(Compl. at ¶ 48.) Defendants deny that Francesco is, or ever has been, in control of MME.
(Defs.’ Mem. at 19.) Under New York law, “‘[c]ontrol’, including the terms ‘controlling’,
‘controlled by’ and ‘under common control with’, means the possession, directly or indirectly, of
the power to direct or cause the direction of the management and policies of a person, whether
through the ownership of voting stock, by contract, or otherwise.” N.Y. Bus. Corp. Law §
912(a)(8).
Plaintiffs put forth some evidence that, in the timeframe at issue in this litigation,
Francesco has been an influential part of MME. For instance, Francesco, along with his wife
Amanda and son Scipione, founded MME in 1996 (see Scipione Dep. at 44:4-9), and it appears
that he was and continues to be a member of MME’s board and on MME’s payroll. (Pls.’ Ex.
17.) Plaintiffs have also proffered evidence that, despite his claim to the contrary, Francesco
remains an officer of MME. (See, e.g., Pls.’ Ex. 23.) However, there is no evidence in the
record that Francesco has, or ever has had, “control” over MME. Indeed, Plaintiffs offer no
evidence to contradict Scipione’s testimony that he “was always the majority shareholder and the
president.” (Scipione Dep. at 32:17-18.) Evidence presented by Plaintiffs of Francesco’s
advisory relationship to his son is not enough to create a genuine issue of material fact as to
whether Francesco has “the power to direct or cause the direction of the management and
policies.” Therefore, Plaintiffs’ breach of contract claims against MME are dismissed.

24

E.

Breach of Contract Claims against Francesco

Defendants move for summary judgment on Plaintiffs’ breach of contract claims against
Francesco Borghese. To prevail on a claim for breach of contract a party must prove: “(1) the
existence of a contract; (2) performance by the party seeking recovery; (3) nonperformance by
the other party; and (4) damages attributable to the breach.” Diesel Props S.r.l. v. Greystone
Bus. Credit II LLC, 631 F.3d 42, 52-53 (2d Cir. 2011); see also Eternity Global Master Fund
Ltd. v. Morgan Guaranty Trust Co. of New York, 375 F.3d 168, 177 (2d Cir.2004) (“To make out
a viable claim for breach of contract a ‘complaint need only allege (1) the existence of an
agreement, (2) adequate performance of the contract by the plaintiff, (3) breach of contract by
the defendant, and (4) damages.’” (quoting Harsco Corp. v. Segui, 91 F.3d 337, 348 (2d
Cir.1996)).
Defendants do not dispute that, as a signatory to the 1993 Agreement, Francesco had a
duty to “promptly inform [Borghese] of any suspected infringements of which [Francesco] had
actual knowledge.” (1993 Agreement at § IV.A.) Pursuant to the Agreement, Francesco also
promised to “refrain from using, licensing and/or authorizing another person or entity to use all
or any of the Intellectual Property in the sale, offer for sale, advertising or promotion of any
consumer products or services related thereto.” (Id. at § IV.K(1).)
Defendants argue that Francesco never suspected any infringements of Plaintiffs’ mark,
and they point to his testimony to that effect. (See, e.g., Defs.’ Ex. 2 (“Francesco Dep. II”) at
156:12-22). However, Plaintiffs have put forth evidence that calls this assertion into question.
For instance, Plaintiffs have shown that, at least as of December 4, 2007, Francesco knew that
Scipione made reference to the Princess and the Princess Marcella Borghese Cosmetic Line on
the MME website. (Pls.’ Ex. 49.)

25

Plaintiffs have introduced evidence indicating not only that Francesco may have violated
his duty to inform under section IV.A, but also that he may have more directly breached the 1993
Agreement. For example, Plaintiffs note that Francesco authorized MME to portray him on the
MME website as “the son of Princess Marcella Borghese – creator of the Princess Marcella
Borghese Cosmetics Line.” (Pls.’ SUF ¶ 112.) There are genuine issues of material fact as to
whether this constituted an infringement. Accordingly, Defendants’ motion for summary
judgment is denied as to Plaintiffs’ breach of contract claims against Francesco Borghese.
IV.

Plaintiffs’ Motion for Summary Judgment
In their motion for summary judgment, Plaintiffs argue (1) that Francesco Borghese is

liable for breach of contract as a matter of law, and (2) that Defendants’ counterclaims for false
advertising, breach of contract of the Quality Provision, and unjust enrichment all fail as a matter
of law.
A.

Breach of Contract Against Francesco Borghese

Plaintiffs first argue that it is beyond genuine dispute that Francesco Borghese breached
the 1993 Agreement.
To reiterate, in order to prevail on a claim for breach of contract, Plaintiffs must prove:
“(1) the existence of a contract; (2) performance by the party seeking recovery; (3)
nonperformance by the other party; and (4) damages attributable to the breach.” Diesel Props
S.r.l., 631 F.3d at 52-53.
Plaintiffs contend that Francesco Borghese breached the 1993 Agreement as a matter of
law by impermissibly using the Borghese trademark as well as by authorizing—and failing to
prevent—the impermissible use of others.

26

1.

Francesco’s Use of the Borghese Trademark

Regarding Francesco’s own use, Plaintiffs point to the fact that Francesco’s biography on
the MME website states that he “is the son of Princess Marcella Borghese―creator of the
Princess Marcella Borghese Cosmetics Line.” (Pls.’ Ex. 18 at D00417.) Defendants
acknowledge this use, but contend that this “use of Borghese and Princess Marcella Borghese is
merely in the context of using their names or their ancestry. . . . Nothing in the 1993 Agreement
precludes Francesco or his family from using their names in the course of business.” (Defs.’
Opp’n. at 6-7).
At issue here is whether Defendants were using the Borghese name descriptively or
whether Defendants’ use went “outside of the realm of descriptive, non-trademark use.” JA
Apparel v. Abboud Corp., 682 F. Supp. 2d 294, 314 (S.D.N.Y. 2010). The question whether the
use of a surname constitutes infringement or description is a particularly vexing one. The
general rule is that when, as in the present case, an individual sells only the right to use his name
as a trademark and not the exclusive right to use his name commercially, then “the seller may
advertise his affiliation with a new company, but must do so ‘in a not overly intrusive manner.’”
Id. at 312 (quoting Madrigal Audio Labs., Inc. v. Cello, Ltd., 799 F.2d 814, 823 (2d Cir. 1986)).
Courts tend to allow persons to use, at least in a limited sense, their own surnames in conjunction
with business. See, e.g., Taylor Wine Co. v. Bully Hill Vineyards, Inc., 596 F.2d 731, 736 (2d
Cir. 1978) (wherein a member of a famous wine family was prohibited from using his surname
as a trademark, but was permitted to place his signature on his wine bottle with a disclaimer
explaining that he was not associated with the Taylor Wine Company). However, this is by no
means a bright line rule. See, e.g., A.V. by Versace, Inc. v. Gianni Versace, S.p.A., No. 98 Civ.
9721 (PKL) (THK), No. 98 Civ. 0123 (PLK) (THK), 2002 WL 2012618, at *12-*13 (S.D.N.Y.

27

Sept. 3, 2002) (barring Alfredo Versace from using the name “Versace” in connection with the
sale of goods and services). Indeed, “[i]f an individual has previously sold ‘use of his name and
its goodwill, to the plaintiff, . . . courts will be especially alert to foreclose attempts by the seller
to keep for himself the essential thing he sold, and also keep the price he got for it.’” JA Apparel
Corp., 682 F. Supp. 2d at 312 (quoting Levitt Corp. v. Levitt, 593 F.2d 463, 468 (2d Cir. 1979)).
In this case, it is clear that Francesco’s and MME’s invocation of the Princess and her
cosmetics line approached the edge of the descriptive/infringement line, but the Court cannot
say, as a matter of law, whether that line was crossed. In instances such as this, the
determination of whether Francesco’s biography was “outside the realm of descriptive, nontrademark use” is properly left to the finder of fact.
2.

Francesco’s Failure to Protect Plaintiffs’ Trademark

Plaintiff next argues that Francesco authorized his son, Scipione, to use the Borghese
trademark in the following October 9, 2006 email Scipione concerning a potential handbag
product:
You have to explain that the Borghese name has been sold by
mother long time agao [sic]. Not so for Villa Borghese, therefore
that should be available. There is no guarantee that the Borghese
company would not try to stop it. But I think tjht [sic] rthey [sic]
probably would not be successful, as the merchandise is also sold
in different channels. Why don’t [sic] you make a deal and have
mom [defendant Amanda Borghese] represent it and if it works
you could put the jewelry too.
(Pls.’ Ex. 22 at D434883.) According to Plaintiffs, this was an “explicit[] authoriz[ation]” by
Francesco to use the Borghese mark.
Irrespective of whether or not the use of “Villa Borghese” was infringement, Francesco
has breached the 1993 Agreement only if he failed to “promptly inform” Plaintiff of “suspected
infringements” or failed to cooperate with Plaintiffs’ “reasonabl[e] requests to . . . protect”
28

Plaintiffs’ mark. The above-quoted email, however, does not necessarily demonstrate that
Francesco “suspected” the use of Villa Borghese was an infringement on Plaintiffs’ trademark.
Therefore, the Court cannot determine, as a matter of law, that Francesco breached the
agreement by authorizing the use of Plaintiffs’ trademark.
Plaintiffs also claim that Francesco has breached the 1993 Agreement as a matter of law
because, “[w]ith Francesco’s knowledge, his family and [MME] have repeatedly used plaintiffs’
registered trademarks.” (Pls.’ Mem. at 7). While Plaintiffs have not pointed to evidence proving
that Francesco knew of the eleven alleged infringements enumerated in Plaintiffs’ brief,
Plaintiffs argue that, given the ubiquity of the infringements, this Court should presume his
knowledge as a matter of law, as to do otherwise would be to permit Francesco to avoid his
duties under the contract by remaining willfully blind. (Id. at 8.)
However, the examples of alleged infringement put forth by Plaintiffs do not, in
themselves and as a matter of law, illustrate Francesco’s knowledge of infringement or his
willful blindness. While some of the eleven instances noted by Plaintiffs may well constitute
infringement, Plaintiffs have not definitively shown a pattern of infringement so flagrant that
Francesco’s claim not to have known about the conduct constitutes a breach of the duty of good
faith. The jury will have to determine whether Francesco knew or should have known about the
infringements against Plaintiffs.
Accordingly, genuine issues of material fact preclude summary judgment on Plaintiffs’
breach of contract claim against Francesco Borghese.

29

B.

Defendants’ Counterclaims for False Advertising

Defendants’ Counterclaims I, III, and IV (“Defendants’ False Advertising Claims”) 10
assert that Borghese has falsely advertised by averring to the public: (1) that its products are
“[b]uilt on a heritage that dates back to the 14th century,” (Countercls. at ¶ 47), (2) that its
products are “made in Italy or are largely comprised [sic] of ingredients from Italy” (Id. at ¶ 49),
(3) that KS by Borghese products are “Borghese through and through” (Id. at ¶ 55), and (4) that
certain KS by Borghese products are “made from a primary ingredient other than water.” (Id at ¶
54.)
Plaintiffs have moved for summary judgment as to Defendants’ False Advertising
Claims. In order to prevail on a claim under the Lanham Act, 11 a party must demonstrate both
that it has standing to sue and that the opposing party has engaged in false advertising. Plaintiffs
claim that Defendants’ False Advertising Claims fail on both fronts. (Pls.’ Mem. at 17-30.)

10

Counterclaim I is a federal false advertising claim under 15 U.S.C. § 1125(A), while Claims
III and IV are false advertising claims under the New York General Business Law §349-50 and
New York common law, respectively. Given that the state and federal law claims are analyzed
under the same standard as the Lanham Act claim, this Court will analyze only Claim I in detail.
Ascentive, LLC v. Opinion Corp., 842 F.Supp.2d 450, 471 (E.D.N.Y. 2011); U.S. Polo Ass'n, Inc.
v. PRL USA Holdings, Inc., 800 F.Supp.2d 515, 538 (S.D.N.Y. 2011).
11

Section 43(a) of the Lanham Act, as amended, states in relevant part:
(1) Any person who, on or in connection with any goods or services . . .
uses in commerce any word, term, name, symbol, or device, or any
combination thereof, or any false designation of origin, false or
misleading description of fact, or false or misleading representation of
fact, which – . . .
(B) in commercial advertising or promotion, misrepresents the
nature, characteristics, qualities, or geographic origin of his or
her or another person’s goods, services, or commercial
activities,
shall be liable in a civil action by any person who believes that he or she is
or is likely to be damaged by such act.
15 U.S.C. § 1125(a).
30

To establish standing, the complainant must have (1) a reasonable interest to be protected
against the advertiser’s false or misleading claims; and (2) a reasonable basis for believing that
this interest is likely to be damaged by the false or misleading advertising. 15 U.S.C. §
1125(a)(1)(B). “The ‘reasonable basis’ prong embodies a requirement that the plaintiff show
both likely injury and a causal nexus to the false advertising.” Ortho Pharm. Corp. v.
Cosprophar, Inc., 32 F.3d 690, 694 (2d Cir. 1994). Nor can a complainant ask the Court to
“presume[] . . . [t]he likelihood of injury”; rather, injury “must be demonstrated in some
manner.” Ortho Pharm. Corp., 32 F.3d at 694 (citation omitted). Indeed, in cases “where the
plaintiff’s products are not obviously in competition with defendant’s products, or the
defendant’s advertisements do not draw direct comparisons between the two,” the Second Circuit
has “tended to require a more substantial showing” of injury and causation. Id.
Defendants have proffered no evidence that they have lost sales or suffered some other
concrete harm as a result of Plaintiffs’ advertising. Instead, Defendants premise their standing to
assert these False Advertising Claims on a “potential for reputational harm as a result of
Plaintiffs’ willful false advertising . . . .” (Defs.’ Opp’n. at 17.) Defendants believe that
Borghese’s claim that its products are, for example, “[b]uilt on a heritage that dates back to the
14th century” has the potential to damage Defendants’ reputation. However, the Second Circuit
has made clear that, in order to meet the standing requirement to bring Lanham Act claims,
“plaintiff must show more than a ‘subjective belief’ that it will be damaged.” Ortho Pharm.
Corp., 32 F.3d at 694. Moreover, as Plaintiffs correctly note, Defendants have provided this
Court with “no authority for the proposition that a speculative potential for reputational harm
satisfies the ‘likely injury’ requirement for a false advertising claim.” (Pls.’ Reply at 10.) And
indeed, the Second Circuit has explicitly stated that “speculative” injuries do not satisfy the

31

standing requirement. McNeilab, Inc. v. Am. Home Prods. Corp., 848 F.2d 34, 38 (2d Cir.
1988).
Therefore, this Court grants summary judgment as to Counterclaims I, III, and IV without
reaching the substance of the False Advertisement Claims made by Defendants.
C.

Defendants’ Counterclaim for Breach of Contract of the Quality Provision

Defendants’ Counterclaim II concerns the Quality Provision in the 1993 Settlement
Agreement. (See 1993 Agreement at § III.G.) According to Defendants, Borghese breached the
Quality Provision by lowering “substantially, if not ceas[ing]” the sale of Borghese products in
“stores of high reputation and prestige,” while “increas[ing] [Borghese products’] presence in
warehouse and drugstore chains, including Costco Wholesale and CVS.” Defendants allege
further that “certain products sold through such sales channels are not of a quality customarily
sold or provided through stores of high reputation and prestige, as required by the Settlement
Agreement.” (Countercls. at ¶ 70). Plaintiffs have moved for summary judgment on this claim.
To prevail on a claim for breach of contract a party must prove: “(1) the existence of a
contract; (2) performance by the party seeking recovery; (3) nonperformance by the other party;
and (4) damages attributable to the breach.” Diesel Props S.r.l., 631 F.3d at 52-53. A movant’s
inability to prove any one element, either because of an absence of a “genuine issue of material
fact” or because of a lack of support, will “require an award of summary judgment.” Marks v.
N.Y. Univ., 61 F. Supp. 2d 81, 88-89 (S.D.N.Y. 1999). Plaintiffs argue that Defendants’ Second
Counterclaim fails as a matter of law, because the damages claimed are not attributable to the
alleged breach.
A party cannot seek damages for a breach of contract unless the damages sought were
“within the contemplation of the parties at the time of contracting.” Westerbeke Corp. v.

32

Daihatsu Motor Co., 304 F.3d 200, 209-10 (2d Cir. 2002) (Sotomayor, J.) (citing Kenford Co. v.
Erie, 493 N.E.2d 234 (1986) (“Kenford I”). “[C]ourts should take a ‘common sense’ approach to
determining whether damages were within the reasonable contemplation of the parties, by
considering the nature, purpose and particular circumstances of the contract known by the
parties, as well as the risks that defendant foresaw or should have foreseen at the time of
contract.” Shred-It USA, Inc. v. Bartscher, No. 02 Civ. 4082 (JO), 2005 WL 2367613, at *11
(E.D.N.Y. Sept. 27, 2005) (citing Kenford Co. v. Erie, 537 N.E.2d 176, 179 (1989) (“Kenford
II”)).
Here, the plain language of the contract indicates that the purpose of the Quality
Provision was “to ensure that the Princess [defined to include Francesco and Livio] is not
subjected to public ridicule or contempt,” suggesting that the parties contemplated any damages
from a beach to stem therefrom. To conclude, as Defendants urge this Court to do, that the
opening clause in the Quality Provision is trivial would be to “constru[e] a contractual provision
in a manner that renders contractual language meaningless or superfluous,” something which
courts must strive to avoid doing. Eastman Kodak Co. v. STWB Inc., 232 F. Supp. 2d 74, 91
(S.D.N.Y. 2000); see also Shaw Grp. Inc. v. Triplefine Intern. Corp., 322 F.3d 115, 121 (2d Cir.
2003) (noting that, under New York law, “words and phrases in a contract should be given their
plain meaning,” and that a contract “should be construed so as to give full meaning and effect to
all of its provisions” (citation and internal quotation marks omitted)). Nothing in the record
indicates that Francesco or Livio suffered any such “public ridicule or contempt” from
Borghese’s behavior. 12

12

See, e.g., Pls.’ Ex. 69 at Interrogatory No. 9 (wherein Defendants fail to set forth any
allegations that they have been subject to public ridicule or contempt); Pls.’ Ex 128 (“Livio
33

Moreover, even if Defendants could show a genuine dispute of material fact as to
damages, their theory of breach relies on a reading of the Quality Provision that is not supported
by its plain language. Defendants contend that Plaintiffs have “cheapened their brand” by selling
it in certain stores as opposed to others. (Defs.’ Opp’n. at 9.) However, the Quality Provision
concerns not the “cheapening” of the brand by placing it next to products of a lower quality, but
rather the “quality” of Plaintiffs’ products themselves. While it is true that the Quality Provision
makes reference to “stores of high reputation and prestige,” it does so not as part of a
requirement for where products are sold, but rather as a reference point for “quality”: Plaintiffs’
products must be “of a quality customarily sold or provided through stores of high reputation
and prestige.” 13 Defendants’ contention that the Quality Provision mandates that the goods be
sold by particular stores is simply incorrect. (See Defs.’ SUF at ¶ 14.) Nor is the nature of the
packaging used by Plaintiffs (see id. at ¶ 9) sufficient to create a genuine issue of material fact as
to whether the Plaintiffs’ products themselves were of a certain quality. Defendants’ evidence,
including the expert report of Dr. Robert A. Grayson, is insufficient to create a genuine dispute
of fact on that issue. (See Pls.’ Ex. 71 (“Grayson Report”) at 7 (explaining that his opinion about
the quality of the KS by Borghese products is “based on [their] packaging”).)
Accordingly, Plaintiff’s motion for summary judgment on Defendants’ Second
Counterclaim must be granted.

Dep.”) at 21:22 -22:23 (Livio’s testimony that, to his knowledge, neither he nor his mother has
been subjected to any public ridicule or contempt as a result of the quality of Borghese products).
13

In the context of the contractual provision, it is clear that the intended meaning of the word
“quality” is that of “degree of excellence,” and not the alternative meaning of “nature” or
“character.” That is confirmed by both the purpose clause of the provision (“to ensure that the
Princess is not subjected to public ridicule or contempt”) and the reference to “stores of high
reputation and prestige.”
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D.

Defendants’ Counterclaim for Unjust Enrichment

Plaintiffs next move for summary judgment on Defendants’ Counterclaim V for unjust
enrichment. Counterclaim V stems from the national exposure received by Plaintiffs as a result
of Lorenzo’s filming of a promotional segment for The Bachelor: Rome in Plaintiffs’ New York
offices. As explained supra, a brief clip of Lorenzo at Plaintiffs’ offices aired on Extra! on
October 2, 2006. Defendants’ expert quantifies the value of the free air time received by
Borghese as between $43,000 and $61,000. (Defs.’ Ex. 21 (“Susmann Report”) at ¶¶ 27-29).
Defendants have presented some, albeit anecdotal, evidence that the air time might have
increased Borghese’s sales. (Defs.’ Ex. 20 at BORGHESE0012190.)
To prevail on a claim for unjust enrichment under New York law, a plaintiff must
demonstrate: “(1) the performance of the services in good faith, (2) the acceptance of the services
by the person to whom they are rendered, (3) an expectation of compensation therefor, and (4)
the reasonable value of the services.” Joan Hansen & Co. v. Everlast World’s Boxing
Headquarters Corp., 744 N.Y.S.2d 384, 389 (App. Div. 2002). A claimant must demonstrate
that a genuine issue of material fact exists as to each element of this claim in order to survive a
motion for summary judgment.
Plaintiffs contend that Defendants’ unjust enrichment claim must fail because, inter alia,
any benefit received by Plaintiffs was not at Defendants’ expense. As this Court has explained
elsewhere, “under New York law, a plaintiff must plead some expectation of compensation that
was denied in order to recover under a theory of unjust enrichment.” Tasini v. AOL, Inc., 851 F.
Supp. 2d 734, 741 (S.D.N.Y. 2012); Estate of Goth v. Tremble, 873 N.Y.S.2d 364, 367–68 (App.
Div. 2009) (concluding that defendant's unjust enrichment counterclaim was defeated by the

35

“defendant’s candid admissions that he voluntarily provided services . . . without expectation of
any compensation”).
In this case, Lorenzo could not have had a reasonable expectation of compensation from
Borghese. While the record reflects that Lorenzo and Borghese were in negotiations for Lorenzo
to serve as a short-term “consultant” for Borghese “[i]n exchange for the use of the [Borghese]
offices,” (Pls.’ Ex. 101 at D001476), no agreement was ever reached. (Defs.’ Countercls. at ¶
36.) 14 Indeed, on July 19, 2006, Borghese CEO Georgette Mosbacher wrote Lorenzo an email
confirming that the parties “have not reached a binding agreement regarding a future business
relationship between them or the use of any footage shot in Borghese’s offices for ABC’s ‘The
Bachelor.’ Accordingly . . . neither party will have any liability or future responsibility to the
other with respect to these matters.” (Pls.’ Ex. 101 at D001477.)
Moreover, the record reflects that Lorenzo had no desire or expectation that any clips
from the Borghese offices would air. Quite the contrary, Lorenzo “was promised by numerous
people numerous times that no footage shot at the Borghese offices would appear on TV” and
that Lorenzo was “very concerned” about the fact that, “[f]or some reason, the clips of me in
Borghese’s offices did air.” (Pls.’ Ex. 102; see also Pls.’ Ex. 118 at 258: 8-20 (wherein Lorenzo
recalls a telephone conversation in which he requested the shots in the Borghese offices not be
aired).) Given both parties’ hopes that no footage from the Borghese offices would air, it is clear
that Lorenzo had no expectation of compensation, nor did Borghese accept the services rendered.

14

Of course, had there been a contract between the parties, Defendants could not bring this claim
for unjust enrichment. See Beth Israel Med. Ctr. v. Horizon Blue Cross & Blue Shield of N.J.,
Inc., 448 F.3d 573, 587 (2d Cir. 2006) (“The existence of a valid and enforceable written
contract governing a particular subject matter ordinarily precludes recovery in quasi contract for
events arising out of the same subject matter.”).
36

Thus, Defendants’ unjust enrichment claim is without merit, and cannot survive summary
judgment.
V.

The Parties’ Motions to Strike
In connection with the cross-motions for summary judgment, Defendants have moved to

strike portions of the declaration of Neil Petrocelli as well as Plaintiffs’ Compilation of
Borghese’s Local Civil Rule 56.1 and Defendant’s Responses, Color-Coded to Show
Defendant’s Admissions (“Color-Coded Compilation”), while Plaintiffs have moved to strike
portions of the declaration of Scipione Borghese. (Dkt. No. 105; Dkt. No. 115; Dkt. No. 109.)
Reading these motions, this Court cannot help but recall Charles Dickens’ rumination that a
“great principle of the . . . law is, to make business for itself.” Charles Dickens, BLEAK HOUSE
621 (Nichola Bradbury ed., Penguin Classics 1997). The numerous briefs submitted in
connection with these motions must have required hours upon hours of attorney work time, but
did little, if anything, to advance the cause of either party. Nonetheless, the motions will briefly
be considered in turn.
A.

Color-Coded Compilation

Defendants have moved to strike Plaintiff’s Color-Coded Compilation as improper.
However, the merits of Defendant’s motion to strike need not be addressed, as the Court did not
rely on Plaintiff’s Color-Coded Compilation in deciding the motions to dismiss discussed in this
opinion. Thus, Defendant’s motion to strike is denied as moot.
B.

Scipione Declaration

Plaintiffs have moved to strike various sections of Scipione Borghese’s declaration. In
assessing the validity of the Defendants’ laches defense, this Court considered paragraphs 14 and
15 of Scipione’s declaration. However, summary judgment based was not granted based on

37

laches, the evidentiary value of the statements in paragraphs 14 and 15 is moot. In any event,
this Court rejects Defendant’s characterization of these statements as vague, conclusory, and
containing inadmissible hearsay.
The remaining objections lodged by Plaintiffs are also moot. They are additionally
largely unfounded. For instance, Plaintiffs argue that paragraphs 23-28, which provide
descriptions of video exhibits submitted to this Court, violate Federal Rule of Evidence 1006,
often referred to as the “best evidence rule.” This Court disagrees. Paragraphs 23-28 contain
permissible summaries of the videos, and thus are admissible. The Plaintiffs’ objections to the
remaining paragraphs (11-16, 19-21, and 32) are primarily that the paragraphs are conclusory,
self serving, made without personal knowledge, unsubstantiated, and contradicted by the record.
However, Scipione has sufficient personal knowledge to make all of the statements in his
declaration. To the extent that some of the statements are contradicted by other parts of the
record, that fact goes to the weight to be given to the particular piece of evidence.
C.

Petrocelli Declaration

Defendants’ motion to strike paragraphs 5-13 of Neil Petrocelli’s declaration is denied as
moot. The purpose of Petrocelli’s statements in this section of his Declaration was apparently to
bolster Plaintiffs’ defenses against defendants’ False Advertising Claims. However, because this
Court has dismissed those claims on standing grounds, Petrocelli’s statements are no longer
relevant. In any event, this Court did not rely on any of the statements made by Petrocelli in
paragraphs 5-13 of his Declaration in resolving the motions for summary judgment.
Accordingly, Plaintiffs and Defendants’ motions to strike are denied as moot. To the
extent they are not moot, they are denied on the merits.

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VI.

Conclusion
For the foregoing reasons, Plaintiffs’ motion for partial summary judgment is GRANTED

in part and DENIED in part, as follows: All of Defendants’ Counterclaims are dismissed.
Summary judgment is denied as to the rest of Plaintiff’s motion.
Defendants’ motion for partial summary judgment is also GRANTED in part and DENIED
in part, as follows: Plaintiff’s breach of contract claims against MME are dismissed. Summary
judgment is denied as to the rest of Defendant’s motion.
The Clerk of the Court is directed to close the motions at Docket Nos. 73, 81 105, 109, and
115.

SO ORDERED.
Dated: New York, New York
January 14, 2012

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