Federal Treasury Enterprise Sojuzplodoimport v. SPI Spirits Ltd.
726 F.3d 62
| 2d Cir. | 2013Background
- FTE, a Russian state-chartered entity, and Cristall claim infringement of Stolichnaya marks under the Lanham Act.
- District Court dismissed for lack of statutory standing; court held marks incontestable and ownership issues unresolved.
- FTE alleges RF ownership, rights delegated to FTE by charter and decrees, and exclusive license to Cristall to manufacture in the US.
- The marks originated with the Soviet/Russian Federation, which allegedly retrieved rights from privatization-era entities.
- Key charters and decrees (2002 charter, 2002 decree, 2005 decree) purport to authorize FTE to manage or sue for RF rights abroad.
- Court considers whether FTE is an (a) assign, (b) legal representative, or (c) ratified by RF to sue under Section 32(1).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is FTE an assign of the Russian Federation? | FTE is entrusted and exclusive-right holder in use of the Marks. | Charter/decrees do not transfer ownership; not a true assignment. | Not an assign; insufficient writing and ownership transfer. |
| Is FTE the RF's legal representative for purposes of Section 32(1)? | FTE represents RF rights because RF cannot sue itself. | RF is not shown legally unable to represent itself; narrow reading of term applies. | Not a legal representative; RF able to appear, so FTE lacks standing. |
| Does RF ratification under Rule 17 cure standing deficiency? | RF ratified through May 2011 letter agreeing to be bound by outcome. | Rule 17 cannot expand substantive standing under Lanham Act. | No ratification to confer standing; Rule 17 cannot create new registrant status. |
| Does Cristall have standing derivatively from FTE? | Cristall has exclusive US license rights and independent standing. | Cristall's rights are purely derivative of FTE's; no independent standing. | Cristall lacks standing; derivative claims fail. |
Key Cases Cited
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. 1992) (establishes Lanham Act framework for trademarks)
- Allen v. Wright, 468 U.S. 737 (U.S. 1984) (standing requires zone of interests alignment)
- DEP Corp. v. Interstate Cigar Co., 622 F.2d 621 (2d Cir. 1980) (role of assignment in Lanham Act standing)
- Sprint Comms. Co. v. APCC Servs., Inc., 554 U.S. 269 (U.S. 2008) (injury-in-fact and standing concepts in corporate contexts)
- Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27 (2d Cir. 1982) (rule on real party in interest and standing under copyright analogue)