Cesari S.R.L. v. Peju Province Winery L.P. et al

Filing 137

MEMORANDUM AND ORDER: terminating 85 Motion for Reconsideration; terminating 110 Letter Motion for Conference. For the reasons discussed, Cesari's renewed motion for partial summary judgment is denied with prejudice. Counsel are directed t o confer in person within two weeks of the date of this Order and make a good faith effort to resolve the discovery disputes raised in the letters listed at docket entries 85, 105, 109, 110, and 122. Within ten days of the in-person meeting, counsel shall update the Court by joint letter on the meeting's outcome and propose a revised discovery schedule for the Court's consideration. This memorandum and order resolves the motions listed at docket entries 60, 85, and 110. SO ORDERED. (Signed by Judge Naomi Reice Buchwald on 11/07/2018) (ama)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
----------------------------------X
CESARI S.R.L.,
Plaintiff,
MEMORANDUM AND ORDER

- against PEJU PROVINCE WINERY L.P., PEJU
PROVINCE CORPORATION, and PEJU
FAMILY OPERATING PARTNERSHIP, L.P.,

17 Civ. 873 (NRB)

Defendants.
----------------------------------X
NAOMI REICE BUCHWALD
UNITED STATES DISTRICT JUDGE
Introduction
In 2017, plaintiff Cesari S.r.L. (“Cesari”) moved for partial
summary judgment to preclude Peju Province Winery L.P. (“Peju
Province”)

and

its

co-defendants,

Peju

Family

Operating

Partnership (“Peju Partnership”) and Peju Province Corporation
(“Peju Corporation”), from re-litigating an issue that had already
been adjudicated by the Trademark Trial and Appeal Board (“TTAB”)
in 2004.

This Court held that the issue — whether Peju Province’s

mark, LIANA, was likely to cause confusion with Cesari’s registered
mark, LIANO — could not be re-litigated by Peju Province, which
has been a party to the TTAB proceeding.

See Cesari S.R.L. v.

Peju Province Winery L.P., No. 17 Civ. 873 (NRB), 2017 U.S. Dist.
LEXIS 210542, at *15 (S.D.N.Y. Dec. 11, 2017).

However, we denied

without prejudice plaintiff’s motion to extend the preclusive

1

effect to Peju Partnership and Peju Corporation who were not
parties to the TTAB proceeding.

Id.

Cesari now renews its motion for partial summary judgment
against Peju Partnership and Peju Corporation.

In support of its

motion, Cesari essentially makes two arguments.
Corporation

controls

both

Peju

Province

and

First, Peju

Peju

Partnership

because Peju Corporation serves as a general partner of both
entities.

See Pl.’s Mem. Supp. Renewed Mot. Partial Summ. J. 3,

ECF No. 61.

Second, preclusion is appropriate because Anthony

Peju “owns and controls all three entities.”

Id.

For the reasons

discussed below, Cesari’s renewed motion is denied.
Discussion
“Summary judgment must be granted where the pleadings, the
discovery and disclosure materials on file, and any affidavits
show ‘that there is no genuine dispute as to any material fact and
the movant is entitled to judgment as a matter of law.’” Brown v.
Eli Lilly & Co., 654 F.3d 347, 358 (2d Cir. 2011) (quoting Fed. R.
Civ. P. 56(a)).

In determining whether the preclusive effect can

be extended to Peju Province’s co-defendants, we resolve all
ambiguities and draw all permissible factual inferences in favor
of the defendants opposing the summary judgment.

See McCarthy v.

Dun & Bradstreet Corp., 482 F.3d 184, 202 (2d Cir. 2007) (internal
quotation marks omitted).

2

In our 2017 Memorandum and Order (“2017 M&O”), we provided a
clear direction on what Cesari must show to extend the preclusive
effect

of

the

TTAB’s

ruling

to

the

two

co-defendants.

Specifically, we wrote that plaintiff “must show either that (a)
Peju Corporation and/or Peju Partnership controlled Peju Province
in the TTAB litigation, or (b) Peju Province is controlling Peju
Corporation and/or Peju Partnership in the instant litigation.”
Cesari, 2017 U.S. Dist. LEXIS 210542, at *14 (emphasis added).
In its renewed motion, Cesari does not point to any evidence
that Peju Corporation or Peju Partnership assumed control over the
TTAB litigation or that Peju Province has assumed control over the
instant litigation.
(2008)

(quoting

(1979)).

See Taylor v. Sturgell, 553 U.S. 880, 895

Montana

v.

United

States,

440

U.S.

147,

154

We consider Cesari’s arguments against Peju Corporation

and Peju Partnership in turn.
I.

Peju Corporation 1

Cesari argues that Peju Corporation should be barred from relitigating the likelihood of confusion because Peju Corporation
“controlled and controls” Peju Province as the entity’s general

1 In their opposition brief, defendants did not discuss whether the
preclusive effect should be extended to Peju Corporation. See Defs.’ Opp’n
Pl. Renewed Mot., ECF No. 57. In light of this, plaintiff argues that the
Court “extend its December 2017 Decision as to preclusion to” Peju
Corporation. Pl.’s Reply Mem. 3, ECF No. 67. Consequently, the Court asked
defendants to clarify whether the absence of discussion was intended as a
concession. See ECF No. 130. In response, defendants recited a portion of
their opposition brief and argued that plaintiff “failed to satisfy its
burden in making its motion.” See ECF No. 136.

3

partner.

Pl.’s Mem. Supp. Renewed Mot. 3.

Plaintiff relies on

the defendants’ statement that the sole general partner of Peju
Province “is and has always been” Peju Corporation, SJX-179, and
Peju Province’s certificate of limited partnership that lists Peju
Corporation as the entity’s general partner, SJX-174. 2
The fact that Peju Corporation is the sole general partner is
insufficient as a matter of law or fact to demonstrate that Peju
Corporation assumed control of the 2004 TTAB litigation.

As we

stated in the 2017 M&O, Cesari needs to show that Peju Corporation
actively

participated

litigation.

in

and

assumed

control

of

the

2004

See Cesari, 2017 U.S. Dist. LEXIS 210542, at *13; see

also Restatement (Second) of Judgments §§ 39, 59(3)(a).

Simply

holding the position of a general partner does not support Peju
Corporation’s assumption of control over – let alone participation
in – the TTAB litigation.
Neither of the cases cited by Cesari support its position.
Cesari cites Vets N., Inc. v. Libutti, No. CV 01-7773 (DRH) (ETB),
2003 U.S. Dist. LEXIS 27675 (E.D.N.Y. Jan. 24, 2003), to argue
that “a general partner is bound by a judgment issued against the
partnership.”

Pl. Mem. Supp. Renewed Mot. 3.

However, this case

is inapposite because it involves a New York corporation and a New
York partnership that are subject to New York state law.

2

Citations to “SJX” refer to the Summary Judgment Appendix.

4

Peju

Corporation is a California corporation with its principal office
in Napa County, California.
Partnership

are

limited

California.

See SJX-170.

partnerships

Peju Province and Peju

that

are

registered

in

See SJX-174-75.

Cesari cites a California case, Wyler v. Feuer, 149 Cal. Rptr.
626 (Ct. App. 1978), to argue that Peju Corporation “controls and
manages [Peju Province and Peju Partnership] as a matter of law.”
See Pl.’s Reply Mem. 3.

This citation fares no better.

First,

the case does not hold, as a matter of law, that an entity or an
individual can be deemed to have control over a legal proceeding
to which a limited partnership is a party simply because the entity
or the individual is a general partner of the partnership.

Second,

the Wyler court relies on state statutes that were repealed in
2010.

See, e.g., CAL. CORP. CODE § 15509 (Dearing 2018) (repealed

2010).

Without delving into the complexities of corporate law in

California, the Court takes judicial notice of § 15904.05(b) of
the California Corporations Code, which states that a judgment
against a limited partnership “is not by itself a judgment against
a general partner.”
II.

Peju Partnership

Cesari also argues that the preclusive effect of the 2004
TTAB litigation should be extended to Peju Partnership because its
sole

general

partner

is

Peju

Corporation,

5

which

is

owned

by

“Anthony (Tony) Peju, who essentially owns and controls all three
entities.”

Pl.’s Mem. Supp. Renewed Mot. 3.

Cesari’s argument fails for two reasons. First, Cesari does
not even attempt to show that Peju Partnership controlled Peju
Province

in

the

TTAB

litigation

or

that

Peju

Province

controlling Peju Partnership in the instant litigation.
it

would

have

been

impossible

for

Peju

Partnership

is

Indeed,
to

have

controlled Peju Province in the TTAB litigation because Peju
Partnership did not exist during the proceeding.
Opp’n. 1.

See Defs.’

Second, insofar as Cesari is basing its argument on

Anthony Peju’s role in the three entities, it is an argument that
Cesari made in its original motion for partial summary judgment
which we rejected.

As we noted then, simply holding management

positions in a corporate entity “is not enough to extend preclusive
effect” to Mr. Peju.
*13.

Cesari, 2017 U.S. Dist. LEXIS 210542, at

While a corporate officer may be held personally liable for

trademark infringement and unfair competition if the officer is a
“moving, active, conscious force” behind the corporate entity’s
infringement, KatiRoll Co. v. Kati Junction, Inc., 33 F. Supp. 3d
359, 367 (S.D.N.Y. 2014), personal liability is different from the
extension of preclusive effect to other corporate entities that
Mr. Peju purportedly owns or controls.
Subsequent to the briefing of the renewed motion, Anthony
Peju signed the notice of substitution of attorney for all three

6

defendants,
litigation.

and

he

called

plaintiff

See ECF. No. 75.

directly

to

discuss

the

Cesari argues that these acts

demonstrate that Mr. Peju is controlling this litigation for all
three defendants.

Plaintiff seems to forget that “it is not the

Pejus as individuals, but the other entities, whom Cesari seeks to
bind.”

Cesari, 2017 U.S. Dist. LEXIS 210542, at *14.

In the

absence of a basis to pierce corporate form, we are required to
respect the legal status of entities.
Therefore, we deny plaintiff’s motion with prejudice because
the factual record still continues to be insufficiently developed.
Discovery Disputes
The sense of impatience exhibited in plaintiff’s renewed
motion also permeates the discovery dispute letters that the
parties have filed in the past four months.

Without making any

good faith effort to resolve the disputes between themselves, the
parties resorted to filing documents with errors that, quite
frankly, should not be made.

See, e.g., ECF No. 115 (plaintiff’s

counsel filing an updated version of the letter in ECF No. 114 to
fix grammar and typing errors); ECF No. 123 (defendants’ counsel
filing a supplemental letter to correct and supplement erroneously
filed documents in ECF No. 122).

The Court understands counsel’s

natural desire to advocate zealously on behalf of their clients,
but such a desire does not justify the haste in filing unfinished
work products that impose on the Court’s limited resources.

7

Specifically, the letters, see ECF Nos. 85, 105, 109, 110,
122, do not evidence that the parties made any good faith effort
to comply with the Federal Rules of Civil Procedure and the Local
Civil Rules on discovery.

See, e.g., Fed. R. Civ. P. 37(a)(1);

S.D.N.Y. Local Civ. R. 26.4(a).

Therefore, the Court directs

counsel to confer in person and to make a good faith effort towards
resolving the discovery disputes raised in the letter motions.
There would appear to be two appropriate areas for discovery.
The

first

is

judgment.
which

to

the

subject

of

the

renewed

motion

for

summary

Our opinions have delineated the legal framework in
determine

proceeding.

the

Discovery

preclusive
related

to

effect
that

of

the

framework

2004
is

TTAB

clearly

appropriate.
The second appropriate subject of discovery relates to the
remedies available to plaintiff.

If plaintiff cannot extend the

TTAB determination to Peju Corporation and Peju Partnership, the
Court will need to determine the likelihood of confusion between
the LIANO and LIANA marks by analyzing Peju Corporation and Peju
Partnership’s “use in commerce” of the LIANA mark and comparing
that use to that of Cesari and its LIANO mark.

See 3 Anne Gilson

LaLonde, Gilson on Trademarks § 11.08[4][i][iv][C][I] (Matthew
Bender ed.); see also id. (“Federal courts are focused on what is
happening in the marketplace rather than in an application or
registration.”).

In addition, to recover profits, as plaintiff

8

seeks,

from any defendant, Cesari must prove only the defendants'

sales, and defendants must prove any costs or deductions from its
gross revenues.

See 15 U.S.C. § 1117(b)
Conclusion

For

the

reasons

discussed,

Cesari's

renewed

partial summary judgment is denied with prejudice.

motion

for

Counsel are

directed to confer in person within two weeks of the date of this
Order

and

make

a

good

faith

effort

to

resolve

the

discovery

disputes raised in the letters listed at docket entries 85,
109,

110,

and 122.

Within ten days

of

the

105,

in-person meeting,

counsel shall update the Court by joint letter on the meeting's
outcome and propose a revised discovery schedule for the Court's
consideration.
This

memorandum and

order

resolves

the

motions

1 isted

docket entries 60, 85, and 110.
SO ORDERED.

Dated:

New York, New York
November '"f, 2018

NAOMI REICE BUCHWALD
UNITED STATES DISTRICT JUDGE

9

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