Helios International SARL et al v. Cantamessa U.S.A., Inc. et al
OPINION re: 9 MOTION to Dismiss Notice of Partial Motion to Dismiss Plaintiffs' Complaint filed by Cantamessa U.S.A., Inc., Robert Kheit, Fabrizio Cantamessa. Upon the conclusions set forth above, the Defendants' partial motion to dismiss is granted in part and denied in part, and leave is given to replead within 20 days. (Signed by Judge Robert W. Sweet on 7/27/2013) (cd)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
HELlOS INTERNATIONAL S.A.R.L. and
IDEA ITALIANA s.r.l.,
CANTAMESSA USA, INC., FABRIZIO
CANTAMESSA, and ROBERT KHEIT,
A P PEA RAN C E S:
OBERDIER RESSMEYER LLP
655 Third Avenue, 28th Floor
New York, NY 10017
Carl W. Oberdier, Esq.
Kellen G. Ressmeyer, Esq.
12 Civ. 8205
COWAN, LIEBOWITZ & LATMAN, P.C.
1133 Avenue of the Americas
New York, NY 10036
J. Christopher Jensen, Esq.
Scott P. Ceresia, Esq.
Defendants Cantamessa USA,
Cantamessa and Robert Kheit
moved under Fed. R. C
(collectively, "Defendants") have
P. 12 (b) (6)
partial dismissal of the complaint
("Rule 12 (b) (6)")
plaintiffs Helios International S.A. R. L.
("Helios") and Idea
("Idea" and collectively, "Plaintiffs").
In the Complaint, which was filed on November 9, 2012,
Plaintiffs have asserted the following causes of action:
violations of the Racketeer Influenced and Corrupt Organizations
Act ("RICO"), 18 U.S.C. § 1962 (Counts 1-4); copyright
infringement under the U.S. Copyright Act, 17 U.S.C. §§ 106(1)
(Count 5) i trademark in
U.S.C. § 1125 (Count 6)
(Count 7) i
ingement under the Lanham Act, 15
trademark dilution under the Lanham Act
signation under the Lanham Act
cancellation of federal registration under the Lanham Act (Count
9); state statutory and common law trademark infringement under
the Trademark Act of New York, Gen. Bus. L. 360-1 and the common
law of each of the fi
y states (Count 10); conversion (Count
11); common law fraud (Count 12); trespass to chattels
13); breach of fiduciary duty (Count 14); misappropriation of
(Count 15); un
ir competition (Count 16); and
breach of the New York Consumer Protection Act
("NYCPA") § 349
On January 18, 2013, Defendants submitted the instant
r partial dismissal of
Complaint, which moved for
dismissal of the following c
(i) RICO (Counts 1-4);
trademark dilution (Count 7);
(iii) common law fraud (Count 12);
(i v) breach of fiduciary duty (Count 14);
misappropriation (Count 15); and (
The motion was
(v) trade secret
breach of the NYCPA § 349
rd and marked fully submitted on
March 13, 2013.
Based upon the conclusions set
rth below, the
Defendants' motion to dismiss is granted with respect to Counts
1-4, Count 7, Count 12, and Count 17, and denied with respect to
As required on a motion to dismiss pursuant to Rule
12(b) (6), the
s alleged in the Complaint, which are set
forth in pertinent part below, are presumed to be true, and all
factual inferences are drawn in t
plaintiffs' favor. See Mills
12 F.3dl170, 1174 (2dCir. 1993).
Plaintiffs are owners and distributors of the
Cantamessa brand of jewelry.
was founded in
business began to
Id. 1 3.
lenza, Italy in 1939 by
Cantamessa family, and flourished for six
cades under t
early 2000s the
line, and in 2004 the company ("Cantamessa
In 2007, Cantamessa s.r.l.'s assets, incl
tangible assets, i.e.,
jewelry, and intangible assets, i.e.,
jewelry designs, the Cantamessa name and
Cantamessa "Crown Logo" trademark (collectively, t
"Intellectual Property"), were acquired by pla
1 4. In 2009, plaintiff Helios pu
sed Idea's entire
inventory of Cantamessa brand jewelry and entered into an
stributorship agreement with Idea.
In December 2009, Hel
into an agreement
defendant Fabrizio Cantamessa ("Cantamessa"), a grandson of
the founder of Cantamessa s.r.l., in which Cantamessa agreed to
act as Helios' global sales agent in connection with the
marketing and sale of Cantamessa brand jewelry, and was
authorized to use the Intellectual Property in that capacity.
Id. 'l1'l1 39-41.
Cantamessa was granted "unrestricted,
unsupervised access" to a warehouse in Geneva,
containing Cantamessa jewelry (the "Warehouse") and permission
to remove jewelry from the Warehouse, and also was given
"general authority to execute sales" of any Cantamessa jewelry
that he took from the Warehouse.
granted the same rights to Cantamessa's wife, non-party Paola
In 2010, defendant Robert Kheit
("Kheit"), a business
associate of Cantamessa, entered into an agreement with Helios
similar to the agreement between Helios and Cantamessa.
As with Cantamessa, Kheit was bestowed with
authorization to use the Intellectual Property in connection
with the marketing and sale of Cantamessa brand jewelry.
At some point in 2010, Cantamessa, who was "infuriated
and embittered by the loss of his family's jewelry business,"
secretly devised a plan with Kheit "to steal back from Helios
It is unclear from the Complaint whether Kheit's agreement was
made directly with Helios, or with Cantamessa acting as an agent
Regardless, the Complaint has alleged that Kheit
possessed the same authority and agency powers as Cantamessa,
see Compl. ~~ 47-48, so for the purposes of the instant motion,
it will be assumed that the nature of the relationship between
Helios and Kheit is functionally identical to that between
Helios and Cantamessa.
and Idea the entire
dollars of inventory,
including millions of
the Crown Logo and the
In September 2010, t
defendant Cantamessa USA in New York and thereafter opened a
boutique located in New York
red Cantamessa brand jewelry
"New York Boutique") that
Defendants used the Intellectual
rty to market Cantamessa
jewelry in the United States, and Pia
this included both authorized and unauthori
From March 2010 through December 2010, Cantamessa and
sold approximately 125 pieces of Cantamessa jewelry having
te aggregate value of $1,757,484.00.
Pursuant to their respective agreements with
Cantamessa and Kheit were entitled to retain a total of
$236,380.95 as commission, and were required to
$1,138,787.26, and remitted only $618,696.81 to Helios.
185 pieces of Cantamessa jewel
beginning of 2011 through November 2011,
Defendants subsequently sold many of
all of the sales proceeds for themselves.
course of 2011,
efforts to publicize
Cantamessa brand by sending pieces of
United States and the world for
Cantamessa jewelry around t
use in high-profile and high
use in a charity event he
fashion designer Valentino.
photo shoot of actress
In September 2011,
ir of Cantamessa earrings for
France hosted by the
In July 2011,
several pieces of Cantamessa jewel
Defendants engaged in
to California for use in a
r Vanity Fair magazine.
s sent several pieces of
Cantamessa jewelry to Flori
supermodel Adriana Lima for Elle Magaz
a photo shoot of
2011, Defendants sent several pieces of Cantamessa jewelry to
Philadelphia for use in a photo shoot of Melania Trump, wife of
for Philadelphia Style Magazine.
Also in 2011, Cantamessa and Kheit asked Helios
Idea to send approximately $5 million of jewelry to New York on
jewelry was to be used in a temporary
the premise that
exhibition (the "New York
ion") meant to publicize t
Cantamessa jewelry line
shipping the jewel
subject to the usual taxes t
imported for commerc
During the exhibition,
including the Cantamessa name
the signage used to di
and therefore were not
t would be due on items being
Cantamessa and Kheit utiliz
Cantamessa Crown Logo, on
Defendants began sell
York Boutique and via the internet.
produce proof of the jewelry's return to Italy
trademark registration applications to the Un
11 result in a
ed States Patent
and the Trademark and Desi
Office of the European Union ("ETO")
In June 2011 and November 2011,
notified by the Italian Chamber of Commerce t
items were being imported
temporarily and would later be returned,
& Trademark Office
, Relios and Idea filed certain forms with
for the Crown Logo
The application to the USPTO
CUSA was the owner of the Crown Logo and
Cantamessa name, and the ETO application asserted ownership by
ssa himself, whereas in actuality the Crown Logo and the
Cantamessa name belong to I
ication claimed that t
amessa name were
15, 2011, whereas in actuality
been used by De
In addition, the USPTO
Crown Logo and
first used in commerce on Ma
s prior to that date in their
efforts on behalf of Helios.
Helios first became aware of Defendants' all
scheme in October 2011, when it
rformed an invento
the contents of the Warehouse
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