C=Holdings B.V. v. Asiarim Corp.
992 F. Supp. 2d 223
S.D.N.Y.2013Background
- C=Holdings (formerly Commodore International B.V.) is the registered U.S. holder of the Commodore trademarks; it was a subsidiary of Asiarim until a Dutch-notarized share transfer on November 7, 2011 transferred C=Holdings to Ebben and Hoogstrate.
- Asiarim continued to advertise Commodore‑branded computers on its website and attempted/entered licensing deals (e.g., Manomio) after the November 7 transfer; Asiarim also filed SEC 8‑K statements asserting ownership of the marks.
- Asiarim claimed (1) the November 7 share transfer was invalid and (2) it had previously transferred the trademarks on November 2, 2011 to a subsidiary; the court found documentary gaps and implausible witness testimony undermining those defenses.
- A Dutch bankruptcy trustee confirmed the validity of the C=Holdings transfer and terminated prior sublicenses through Commodore Licensing B.V.
- C=Holdings sued under the Lanham Act (§ 32 and § 43(a)), New York law (common‑law trademark/unfair competition, § 349, unjust enrichment), and tortious interference; bench trial followed and the court issued FOF/COL.
- Court found Asiarim liable for trademark infringement (federal and common law), Lanham Act false advertising (website ads), unfair competition, tortious interference with prospective business advantage (as to Manomio); granted declaratory and injunctive relief and awarded $1,000,000 statutory damages plus attorneys’ fees.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Ownership of Commodore marks | C=Holdings: November 7, 2011 notarized share transfer made C=Holdings independent owner of the marks | Asiarim: November 7 transfer invalid; alternatively, marks transferred Nov 2, 2011 to Asiarim subsidiary | C=Holdings owns the marks after Nov 7; court rejects Nov 2 transfer as fabricated and finds no valid challenge to Nov 7 transfer |
| Lanham Act § 32 trademark infringement | Asiarim used the registered marks in commerce without consent (website ads, licensing) causing likely confusion | Asiarim disputed ownership and claimed prior transfer/continuing rights | Infringement proven: C=Holdings owns marks; Asiarim used them in commerce without consent; consumer confusion presumed (counterfeit/ex‑licensee) |
| Lanham Act § 43(a) false advertising/unfair competition | Website ads and public statements falsely represented authenticity/ownership; material misrepresentations in commerce | Asiarim argued some statements were private or not in promotion; SEC filings not in connection with sales | Website promotion was literally false and material — § 43(a) liability; licensing communications and SEC filings largely not actionable as false advertising (not commercial promotion of goods) |
| Libel (NY) | Asiarim’s SEC filings and emails falsely accused C=Holdings and harmed reputation | Asiarim: statements reflected its legal position/dispute | Court: statements did not meet New York defamation standard; libel claim fails |
| Tortious interference (contract / prospective relations) | Asiarim interfered with C=Holdings’ licensing relations (e.g., Manomio) by asserting ownership | Asiarim denied inducing any breach of an existing C=Holdings contract | Interference with contract: fails (no proof of existing C=Holdings contract breached). Interference with prospective business (Manomio): succeeds because Asiarim’s acts were independently tortious and caused loss of royalties |
| NY GBL § 349 and unjust enrichment | § 349: Asiarim’s public misstatements deceived consumers; unjust enrichment from sales/licensing proceeds | Asiarim: statements part of dispute; no consumer harm; no monies received | § 349: fails (no consumer‑oriented injury shown). Unjust enrichment: fails (no evidence Asiarim received proceeds or royalties) |
Key Cases Cited
- McNeil‑P.C.C., Inc. v. Bristol‑Myers Squibb Co., 938 F.2d 1544 (2d Cir.) (plaintiff’s preponderance burden in bench trial)
- Metro. Stevedore Co. v. Rambo, 521 U.S. 121 (U.S.) (definition of preponderance standard cited)
- Paper‑Cutter, Inc. v. Fay’s Drug Co., 900 F.2d 558 (2d Cir.) (burden to rebut presumption of PTO registration ownership)
- Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir.) (trademark ownership presumptions and defenses)
- 1‑800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir.) (elements of Lanham Act infringement)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.) (likelihood‑of‑confusion factors)
- Time Warner Cable, Inc. v. DIRECTV, Inc., 497 F.3d 144 (2d Cir.) (literal falsity and requiring unambiguous message for presumed deception)
- Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2d Cir.) (false advertising standards; literal falsity or misleadingness)
- L & L Wings, Inc. v. Marco‑Destin, Inc., 676 F.Supp.2d 179 (S.D.N.Y.) (counterfeit marks and presumption of confusion)