Roberto Coin, Inc. v. Goldstein

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NEW YORK

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ROBERTO COIN, INC.,

Plaintiff, MEMORANDUM & ORDER

18-CV-4045(EK)(ST)

-against-

JOSEPH GOLDSTEIN and KINGS STONE US,

LTD.

Defendants.

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ERIC KOMITEE, United States District Judge:

This case arises out of the relationship between

plaintiff Roberto Coin, Inc. (“RCI”), a jewelry designer, and

defendants Joseph Goldstein and his company, Kings Stone US,

Ltd. Goldstein and Kings Stone supplied RCI with a gemstone

they called “black jade” for a time. After RCI stopped sourcing

black jade from Kings Stone and found a new supplier, Goldstein

contacted a number of stores selling RCI jewelry and disparaged

RCI’s stones. Both sides now claim the other is liable for

false advertising, among other claims.

RCI sued first, asserting that the Defendants made

“flatly false” statements to induce RCI’s customers to drop

RCI’s new products in favor of Goldstein’s, in violation of the

Lanham Act. (For example, RCI alleges that Goldstein told one

of RCI’s customers that RCI’s stones were to real black jade as

cubic zirconia is to diamond.) RCI claimed, in addition, that

Goldstein and Kings Stone infringed RCI’s trademarks by using

photographs of Roberto Coin jewelry and RCI’s logo in Kings

Stone’s advertising after RCI terminated the relationship. RCI

also brought certain state-law claims.

Kings Stone countersued RCI (also under the Lanham

Act), alleging that after dropping Kings Stone, RCI made false

claims about (a) the gemological content of the stones from its

new supplier and (b) whether those stones had been “certified”

by a laboratory. Kings Stone also brought third-party claims

against Roberto Coin (the founder of RCI himself, after whom RCI

is named), alleging Lanham Act and related state-law claims.

Several motions are pending. RCI moves for summary

judgment against Goldstein on each of RCI’s affirmative claims.

RCI and Roberto Coin also move to dismiss Kings Stone’s

counterclaims and third-party claims, respectively, on the basis

that Kings Stone has been unrepresented for an extended period

and cannot proceed without counsel. Goldstein is now proceeding

pro se and has not submitted a formal motion for summary

judgment. Nevertheless, I construe his letter of April 13, 2020

(ECF No. 137) as a motion for summary judgment on RCI’s claims,

as discussed below.

For the reasons that follow, I grant RCI’s and Roberto

Coin’s motion to dismiss Kings Stone’s counterclaims and third-

party claims for failure to prosecute; I deny without prejudice

RCI’s motion for default judgment on its claims against Kings

Stone; I grant RCI’s motion for summary judgment in part and

deny it in part; and I grant Goldstein’s motion for summary

judgment in part and deny it in part.

I. Background

RCI filed a Statement of Material Facts under Local

Rule 56.1 in support of summary judgment; neither defendant,

however, filed the required counterstatement. The following

factual recitation is drawn from the uncontested evidence

identified in RCI’s Rule 56.1 Statement and also, given

Goldstein’s pro se status, the Court’s review of the evidentiary

record, including Goldstein’s deposition testimony.1 Given the

cross-motions, I consider each motion independently and view all

facts in the light most favorable to the non-moving party.

Morales v. Quintel Ent., Inc., 249 F.3d 115, 121 (2d Cir. 2001).

1 Because Goldstein is proceeding pro se, the Court has undertaken a

searching review of the underlying record evidence submitted by the parties.

See Holtz v. Rockefeller & Co., Inc., 258 F.3d 62, 73 (2d Cir. 2001)

(district court has discretion not to apply Local Rule 56.1 to a pro se

party’s failure to file a counter-statement, and review the record de novo);

Monahan v. New York City Dep’t of Corr., 214 F.3d 275, 292 (2d Cir. 2000)

(district court may, in its discretion, opt to “conduct an assiduous review

of the record” where one of the parties has failed to file the 56.1

statement).

A. Factual Background

1. Kings Stone Supplies Stones to RCI

The relationship between RCI and Kings Stone began in

2012. See Declaration of CKC Jewelry Company Managing Director

Philip Grima (“Grima Decl.”) ¶ 3, ECF No. 138-13. Goldstein met

with Roberto Coin to say that he had obtained access to a form

of black amphibole jade that (according to Goldstein) was

previously unknown. See Excerpts from Goldstein Deposition

(“Goldstein Dep.”) 39:19, 135:12, ECF No. 138-29.2 Mr. Coin

expressed interest.

Beginning “in or around May 2013,” CKC Jewelry

Company, the RCI affiliate that manufactures Roberto Coin

jewelry (“CKC”), placed “significant orders” for Kings Stone’s

gemstones. Grima Decl. ¶ 3. The stones were to be used in

RCI’s new “Black Jade” collection. Id. The parties did not

enter into a written contract in connection with the purchase

and sale of these stones, apart from the exchange of purchase

orders or invoices.

“Several months” after it began supplying stones to

CKC, Kings Stone provided RCI with an analysis prepared by the

National Gem Testing Center (“NGTC”) — a gemstone testing

2 In the pleadings, Kings Stone asserts that its access to this strain

of black jade was “exclusive.” See Answer with Counterclaims and Third-Party

Complaint (“Defendants’ Answer”) ¶ 11, ECF No. 15. This claim is

unsupported, however, in the evidentiary record.

laboratory based in China — stating that the mineral content of

its stones was “black amphibole jade.” Id. ¶ 4; see also ECF

No. 138-14 (certifications provided by Kings Stone).

Soon thereafter, RCI communicated its dissatisfaction

with multiple aspects of Kings Stone’s performance. See ECF No.

138-15 (emails dated August 27, 2013 to October 25, 2013 between

Goldstein and CKC). CKC complained about the pace of deliveries

and the quality and condition of Kings Stone’s product. Id. By

mid-2014, CKC and RCI decided to end the relationship with Kings

Stone. Grima Decl. ¶ 6. Thereafter, RCI obtained a new

supplier and continued to market the “Black Jade” collection.

See id.; see also Declaration of RCI President Peter Webster

(“Webster Decl.”) ¶ 25, ECF No. 126-15.

2. Goldstein Uses RCI’s Trademark

About a year and a half after the split with Kings

Stone, RCI discovered that the Defendants were using photographs

of RCI jewelry alongside RCI’s trademarked logo, as well as the

name “Roberto Coin,” on Kings Stone’s Instagram feed. See

Webster Decl. ¶ 9; ECF No. 138-4 (RCI trademarks); ECF No. 138-5

(Instagram posts). Goldstein acknowledged this use, though he

claimed that the Instagram images were posted only for a short

period. See Rule 30(b)(6) Deposition of Joseph Goldstein as

representative of Kings Stone (“Kings Stone Dep.”) 221:7-17, ECF

No. 138-36.

Goldstein also acknowledges that he sent marketing

materials incorporating RCI images to various vendors, including

in a PowerPoint presentation. Goldstein Dep. 133:22-134:10,

356:14-357:15. He claims that he believed RCI “knew about” and

“was okay” with this: “I know 100 percent for sure they [RCI]

have received [the PowerPoint presentation], and they knew about

it, so it was okay when I disseminated that information.” Id.

at 356:20-22.

In January 2016, RCI’s counsel sent Goldstein a letter

demanding that he remove the images from Kings Stone’s Instagram

feed and “stop any such conduct for the future.” ECF No. 138-5

(RCI cease-and-desist letter). She wrote that Goldstein was not

lawfully authorized to use Roberto Coin’s photographs or

trademarks, and that there was “no evidence that the ROBERTO

COIN jewelry shown in your Instagram page are made with your

jade.” Id. Instagram (not Goldstein) ultimately removed the

posts at issue. Kings Stone Dep. 221:11-17.

3. Goldstein Contacts RCI Retailer Borsheims

In November 2017, Goldstein emailed Borsheims, a

jewelry retailer based in Omaha, Nebraska that sold RCI products

(including the Roberto Coin “Black Jade” collection). ECF No.

138-7 at 13.3 In his initial entreaty, Goldstein did not mention

RCI; instead, he simply requested that Borsheims sell jewelry

incorporating Kings Stone’s black jade. Id. Goldstein

described Kings Stone’s black jade as “exclusively certified by

the china NGTC and the prestigious US based AGL as Black jade.”

Id. (capitalization as in original). A Borsheims buyer wrote

back to say that Borsheims “would not be interested” in

purchasing Kings Stone’s product. Id.

Approximately five months later, Goldstein emailed

Borsheims again, this time pretending to be a customer.

Goldstein said he was looking for a “gift for a jade

connoisseur.” Id. at 9 (email dated April 8, 2018). He

expressed interest in a specific item — “the Roberto Coin 18K

Rose Gold & Diamond Black Jade 3 Shank Ring” — and asked

Borsheims to provide him with “a gem certificate that verifies

its authenticity as genuine black jade.” Id.

Borsheims’ employee wrote back to say that she had

contacted RCI, and that “while they do not have official

certificates of authenticity for their jade gemstones, they

provided me with the attached card detailing the certification

of the jade along with further details.” Id. at 8 (email dated

April 9, 2018). The “attached card” contained photographs of

3 Citations to ECF Nos. 138-7 and 138-8 refer to the pagination

generated by the Court’s ECF docketing system.

RCI jewelry and the following text: “The most fascinating black

amphibole jade, 100% natural identified and certified by China’s

National Gemstone Testing Center (NGTC) is the protagonist of

the homonymous ‘Black Jade’ collection.” Id.; see also ECF No.

15-5 (showing attached card).

One day after receiving this card, Goldstein emailed

Borsheims again. He referred to the Black Jade ring about which

he had previously inquired, writing that it:

does not come with any certification as to its

authenticity that the black jade is genuine. If there

is no certification available, then legally you cannot

claim or advertise that it is black jade, no less then

[sic] claiming a cubic zirconia being a real diamond .

. . . My black jade comes with full certification by

3 major Gemological Labs. When dealing with my

certified black jade stones you are assured of the

highest quality and no reputational risk to your

company by selling non certifiable black jade. The

real black jade jewelry companies are doing great with

our line with sales exceeding the best projections.

ECF No. 138-7 at 12. Goldstein followed up the next day with an

email to another Borsheims employee, referring to the same ring

and stating that “[w]e have asked Roberto Coin directly numerous

times for confirmation of the black jade authenticity and we

have not received any response.” Id. at 7.

Eleven minutes after this last email, Goldstein

threatened Borsheims with legal action. He stated that Kings

Stone was being “effected by the Fake black jade being

advertised by various venders.” Id. at 11 (global [sic]). He

wrote that he would be “filing for class action status on this

matter to protect [his] business and the consumers being misled

by false advertising.” Id. He concluded by saying that

Borsheims must “take remedial action otherwise we will include

your company in this [action] since we have legally notified

you. . . . And yes even borsheims has to be held accountable.”

Id.

Goldstein’s outreach apparently had its intended

effect. On April 16, 2018, Borsheims emailed Peter Webster, the

president of RCI, to say that they were “removing the black

jade” offerings from Borsheims’ website. Id. at 2.

4. Communications With Other RCI Retailers

Goldstein also contacted other retailers carrying

RCI’s Black Jade collection. He emailed Macy’s, Neiman Marcus,

and Saks Fifth Avenue in early April 2018. See ECF No. 138-8.

In each case, he sought confirmation that the RCI black jade

they carried was certified. See Goldstein Dep. 308:7-309:7.

For example, the Defendants produced an April 4, 2018

email exchange between Goldstein and a Saks Fifth Avenue

employee named Shraddha Patel. See ECF No. 15-4. Goldstein’s

initial inquiry is not included, and may have occurred by

telephone.4 Ms. Patel responded by email, however, writing “I

4 Goldstein did acknowledge that he posed as a customer in his initial

approach to Saks. Goldstein Dep. 290:15-21.

just spoke to the representative from Roberto Coin and she

advised me that the black amphibole jade they use is 100%

natural identified and certified by China’s National Gemstone

Testing Center.” ECF No. 15-4.

Goldstein wrote back, pressing for “the certificate

confirming this. I really want [to] finalize the purchase but I

need to certificate.” Id. Ms. Patel responded by attaching a

copy of the same card that RCI sent to Borsheims (which stated

that the black amphibole jade in Roberto Coin’s collection was

“100% natural identified and certified by China’s National

Gemstone Testing Center”). Id.

Goldstein also communicated during this time with

Saks’s parent corporation, Hudson’s Bay Company, telling an

employee there that RCI’s black jade was “not . . .

authenticated or certified as advertised.” ECF No. 138-8 at 11

(email dated April 17, 2018). Goldstein’s exchanges with Macy’s

and Neiman Marcus were similar.

After endeavoring to obtain a copy of RCI’s

certification from these retailers, Goldstein emailed them to

say he would be filing a lawsuit against RCI. These emails did

not refer explicitly to RCI’s black jade as “[f]ake,” as

Goldstein’s email to Borsheims had. Instead, Goldstein

primarily referred to RCI’s jewelry as “non-authenticated.”

Goldstein wrote: “I am part of a group of gemstone dealers

selling genuine and certified black jade, that are in the

process of filing a class action lawsuit against Roberto coin

for selling non authenticated black jade.” Id. at 2 (email

dated April 10, 2018 from Goldstein to Hal Lawton of Macy’s);

id. at 8 (email dated April 13, 2018 from Larry Pelzel of Neiman

Marcus to Eric Ford and Peter Webster, forwarding Goldstein’s

email).

Goldstein also referred to RCI’s black jade as a

“questionable product” in communications with Macy’s and Neiman

Marcus, in light of the authentication issue. Specifically, he

said he was letting the retailers know about his lawsuit as a

“courtesy” so that they could “take remedial action . . . and

remove any questionable product that cannot be authenticated.”

Id. at 2, 8.

At his deposition, Goldstein acknowledged approaching

“every customer that was advertising the black jade.” Goldstein

Dep. 308:11-12. He “contacted them for certification, and they

said it is certified, so we pressed on, ‘Please give us the

information, on what basis you’re saying that it’s certified.’”

Id. at 308:12-16. Goldstein enlisted help in this effort: he

hired an assistant through a platform called Fiverr to help him

identify retailers selling RCI’s black jade. Id. at 329:3-10.

Goldstein did not recall the total number of RCI retail

customers he contacted, but testified that it was a “huge amount

of communication.” Id. at 369:21-22.

Goldstein also emailed RCI directly during this

period, accusing it of relying on Kings Stone’s “black jade”

certification despite sourcing stones from a new supplier. See

ECF No. 138-8 at 6 (email dated April 4, 2018 from Goldstein to

Roberto Coin accusing RCI of “using the NGTC black jade

certificates that was [sic] made for goods purchased from Kings

Stone” in connection with the sale of later-acquired stones).

Goldstein described this conduct as “illegal” and “fraudulent.”

Id.

5. Retailers Remove Their Offerings of RCI Black Jade

As noted above, Borsheims informed RCI of its intent

to pull the Black Jade offerings from its website on April 16,

2018. In addition to Borsheims, Macy’s and Saks Fifth Avenue

also stopped selling the Black Jade collection. Webster

Decl. ¶ 18. Some of this product was returned to RCI: for

example, Saks, Borsheims and Bloomingdales alone returned

jewelry valued at more than $380,000 from the Black Jade

collection. ECF No. 126-13.

At least one jewelry retailer apparently understood

Goldstein to be challenging the authenticity of the gemstones in

RCI’s Black Jade collection, as opposed to merely questioning

whether RCI had obtained an authentication from a laboratory.

On April 13, 2018, after receiving Goldstein’s emails, Larry

Pelzel of Neiman Marcus wrote to RCI President Peter Webster,

saying: “This gentleman is inquiring [as] to the Authenticity of

the black jade used in Coin’s jewelry. . . . Let’s discuss.”

ECF No. 138-8 at 8 (email dated April 13, 2018 from Pelzel to

Webster, forwarding an email from Goldstein).

6. RCI Obtains Various Gemological Analyses

RCI contends that there is no industry-wide

“certification” for the “authenticity” of black jade, Memorandum

of Law (“Pl. Br.”) at 16, ECF No. 126-19, because “black jade”

is not a scientific category. See id. at 5 (citing Report of

Donald A. Palmieri (“Palmieri Rep.”) at 7-9, ECF No. 138-18).

Instead, the term “jade” is generally used in the industry to

describe two different but related minerals, nephrite and

jadeite. Palmieri Rep. at 7-9. Thus, RCI claims, its use of

the term “black jade” cannot constitute false advertising. Pl.

Br. at 16.

Despite this view, RCI did work to obtain

certifications from various gemological labs between 2014 and

2018. These certifications include one from the Hong Kong Gems

Laboratory (dated August 15, 2014) certifying that RCI’s

gemstones were comprised of “Natural Amphibole Material”;

Gübelin Gemlab’s certification (dated October 17, 2014) that

RCI’s gemstones contained “amphibole and other minerals”; an

NGTC certification (dated April 24, 2018) that the tested stones

were “Black Amphibole Jade”; and a certification from the

Gemological Testing Laboratory (dated May 3, 2018) attesting

that RCI’s stones were “Black Nephrite Jade.” See ECF No 138-16

(lab analyses).

As the litany above indicates, however, RCI obtained

the latter two certifications — including the one from NGTC —

after RCI apparently emailed the card promoting its stones as

“[t]he most fascinating black amphibole jade . . . . 100%

natural identified and certified by China’s National Gemstone

Testing Center (NGTC)” — to Saks on April 4, 2018, ECF No. 15-4,

and Borsheims on April 9, 2018. ECF No. 138-7 at 8. Defendants

alleged that RCI obtained the NGTC certification by submitting a

stone obtained from Kings Stone, rather than one obtained from

its new supplier. Answer and Counterclaim ¶¶ 54-55. Neither

defendant, however, has adduced evidence in support of this

allegation.

7. Goldstein’s Lawsuit and Additional Communications

Goldstein did ultimately file a lawsuit against RCI in

New York State Supreme Court in November 2019, though he

voluntarily dismissed it in December 2019. ECF No. 138-31

(demand for complaint in New York Superior Court action); ECF

No. 138-32 (Notice of Discontinuance).

In addition, after Kings Stone filed its counterclaims

in this case, Goldstein sent an email touting those allegations

to the “base” of people in his email address book — “basically

industry wide.” Kings Stone Dep. 61:3-8. The recipients — over

a hundred in total — included various jewelry-industry players:

newsletters and magazines, trade associations, and additional

retailers. See ECF No. 138-10 (emails dated December 20-27,

2018). In the email, Goldstein characterized his allegations

against RCI as “eerily similar to the GIA scandal.” Id.

The parties dispute what to make of this simile. RCI

says that Goldstein’s reference was to a “situation . . . in

which the Gemological Institute of America, a preeminent

gemological testing laboratory, was investigated by federal

authorities for criminal activities and sued by a jewelry

purchaser for allegedly taking bribes in exchange for upgrading

reports on diamonds.” Pl. Br. at 12; see also Webster Decl.

¶ 19. Goldstein testified at deposition, however, that he was

referring only to the misclassification of gemstones. In his

recollection, the GIA scandal was about “fraudulent

certification[s] classifying gemstones [as] what they were not.”

Kings Stone Dep. 50:11-15. He testified that he was not aware of

the bribery aspect of the GIA scandal. Id. at 52:6-18.

B. Procedural History

RCI commenced this action in July 2018. It alleges

violations of the Lanham Act, 15 U.S.C §§ 1125 and 1114, for

deceptive advertising, unfair competition, and trademark

infringement. See Complaint (“Compl.”), ECF No. 1. RCI also

brings pendent state-law claims for defamation, trade

disparagement, tortious interference with business

relationships, deceptive acts and practices under New York

General Business Law Section 349, and trademark infringement.

Id. Defendant Kings Stone (but not Goldstein himself) filed

counterclaims against RCI for deceptive advertising under the

Lanham Act, tortious interference with business relationships,

unfair competition, and deceptive acts and practices under New

York General Business Law Sections 349 and 350. See Defendants’

Answer ¶¶ 62-90. Kings Stone also named Roberto Coin (the

individual) as a third-party defendant, alleging the same claims

against him personally. Id. ¶ 7.

RCI now moves for summary judgment on all its

affirmative claims. RCI and Roberto Coin move for dismissal of

Kings Stone’s counterclaims and third-party claims for failure

to prosecute under Rule 41 of the Federal Rules of Civil

Procedure on the ground that Kings Stone (as a corporate entity)

may not proceed pro se. See Pl. Br. at 38. They also seek a

default judgment under Rule 55 on RCI’s claims against Kings

Stone on the same basis. See id. at 36.

Furthermore, as I noted above, I construe one of

Goldstein’s submissions as a motion for summary judgment on

RCI’s complaint in its entirety. Goldstein filed a letter-

response in opposition to RCI’s motion for summary judgment.

ECF No. 137 (letter dated April 13, 2020, in Response to RCI’s

Motion for Summary Judgment, Default, and Dismissal). There,

Goldstein asked the Court to “grant [him] an additional request

for summary judgment.” Id. He also referred the Court to an

earlier letter in which he had raised certain defenses — most

prominently, that the statements about which RCI complains were

true. See ECF No. 121 (letter dated February 14, 2020 from

Joseph Goldstein requesting Rule 11 sanctions).5 I construe

Goldstein’s letter of April 13, 2020 as a motion for summary

judgment on Plaintiff’s claims. Kings Stone did not submit a

motion for summary judgment, either affirmatively or

defensively.

5 It is not clear that the letter Goldstein styled as a “Rule 11 Motion”

is actually that. The letter states that if the Court were to determine that

Plaintiff committed a fraud, Goldstein would then ask the Court to sanction

Plaintiff. Therefore, I do not consider it at this point. See Bryant v. Am.

Embassy, No. 88-CV-0294, 1988 WL 68740, at *1 (S.D.N.Y. June 16, 1988) (Rule

11 motion has to state a current basis on which to impose sanctions). In any

event, Rule 11(c) permits a court to award “reasonable expenses, including

attorney’s fees” only to a “prevailing party” and only if such an award is

“warranted.” Fed. R. Civ. P. 11(c)(2). Therefore, I decline to review the

motion until the completion of the case. See Kleiman v. Chertoff, No. 3-CV-

3829, 2007 WL 9706519, at *9 (E.D.N.Y. July 10, 2007).

II. Legal Standard

Summary judgment is appropriate if the record

demonstrates that “there is no genuine issue as to any material

fact and the movant is entitled to a judgment as a matter of

law.” Fed R. Civ. P. 56. “A fact is material for these

purposes if it might affect the outcome of the suit under the

governing law. An issue of fact is genuine if the evidence is

such that a reasonable jury could return a verdict for the

nonmoving party.” Lovejoy–Wilson v. NOCO Motor Fuel, Inc., 263

F.3d 208, 212 (2d Cir. 2001).6 The moving party bears the burden

of showing that it is entitled to summary judgment. Huminski v.

Corsones, 396 F.3d 53, 69 (2d Cir. 2005). When the moving party

has carried its burden, its opponent must produce “sufficient

evidence favoring the nonmoving party for a jury to return a

verdict for that party.” Anderson v. Liberty Lobby, Inc., 477

U.S. 242, 249 (1986). The non-moving party must, however, “do

more than simply show that there is some metaphysical doubt as

to the material facts, and may not rely on conclusory

allegations or unsubstantiated speculation.” Brown v. Eli Lilly

& Co., 654 F.3d 347, 358 (2d Cir. 2011).

Though he was represented by counsel at the time the

Complaint and his answer were filed, Goldstein is now proceeding

6 Unless otherwise noted, when quoting judicial decisions this order

omits all alterations, citations, footnotes, and internal quotation marks.

pro se. When considering a dispositive motion made by or

against a pro se litigant, courts generally afford the litigant

“special solicitude,” Graham v. Lewinski, 848 F.2d 342, 344 (2d

Cir. 1988), and construe all submissions by the pro se defendant

“to raise the strongest arguments that they suggest.” Triestman

v. Fed. Bureau of Prisons, 470 F.3d 471, 474 (2d Cir. 2006).

Nevertheless, “[p]roceeding pro se does not otherwise relieve a

litigant of the usual requirements of summary judgment.”

Rodriguez v. Hahn, 209 F. Supp. 2d 344, 348 (S.D.N.Y. 2002).

III. Discussion

A. Kings Stone’s Failure to Prosecute

Kings Stone asserted counterclaims against RCI for

false advertising under the Lanham Act and related state-law

claims, as noted above. See Defendants’ Answer. Goldstein did

not bring any affirmative claims himself. Id. Kings Stone also

brought third-party claims against Roberto Coin personally. Id.

¶ 7.

Kings Stone’s counsel withdrew after the filing of its

answer, and a corporation cannot represent itself. Rowland v.

California Men’s Colony, Unit II Men’s Advisory Council, 506

U.S. 194, 202 (1993) (“A corporation may appear in the federal

courts only through licensed counsel.”); see also Mendelka v.

Penson Fin. Servs., Inc., No. 16-CV-7393, 2017 WL 1208665, at *5

(S.D.N.Y. Mar. 31, 2017) (dismissing unrepresented corporation’s

claims for failure to prosecute). Goldstein, who is not a

licensed attorney, cannot represent his codefendant.

In evaluating whether and when to dismiss a corporate

party’s claims for failure to secure representation, courts

consider: (1) the duration of the plaintiff’s failures,

(2) whether the plaintiff had received notice that further

delays would result in dismissal, (3) whether the defendant is

likely to be prejudiced by further delay, (4) whether the need

to alleviate court calendar congestion outweighs the need to

protect a party’s right to due process and a fair chance to be

heard, and (5) the efficacy of lesser sanctions. Shannon v.

Gen. Elec. Co., 186 F.3d 186, 193-94 (2d Cir. 1999).

Kings Stone’s first attorney, Solomon Klein, moved to

withdraw in December 2018. In January 2018, Magistrate Judge

Tiscione granted Klein’s motion and warned Goldstein (who is

Kings Stone’s sole employee and CEO) both in person and in

writing that if the entity did not secure new representation, a

default judgment could issue. See ECF Nos. 41, 42. Judge

Tiscione reiterated that warning when Kings Stone had not

engaged new counsel by March 2019. See ECF No. 65.

Kings Stone’s second attorney, Boris Kogan, appeared

in April 2019, ECF No. 70, and a third attorney, Thomas Hamilton

Burt, joined him in November 2019. ECF No. 96. Both of these

attorneys withdrew in December 2019. ECF Nos. 98, 99. Judge

Tiscione warned Goldstein that he was not willing to further

delay the case if Goldstein did not retain another attorney.

See ECF No. 101. No attorney appeared on Kings Stone’s behalf

thereafter. Kings Stone has now had more than nineteen months

to find new counsel following the withdrawal of its second and

third attorneys. In the meantime, Kings Stone failed to produce

its expert witness for a scheduled deposition on January 16,

2020, see ECF Nos. 138-53, 138-54, and both defendants were

absent at a scheduled conference before Judge Tiscione shortly

thereafter. See ECF No. 113.

The protracted delay in this case is more than

sufficient to warrant dismissal. See, e.g., Mendelka, 2017 WL

1208665, at *5 (dismissing for failure to prosecute after six-

month delay in retaining counsel). Given the passage of time,

RCI would clearly be prejudiced by further delay. Prejudice to

a defendant may be presumed where a delay in prosecution is

neither moderate nor excusable. See Dodson v. Runyon, 957 F.

Supp. 465, 470 (S.D.N.Y. 1997), aff’d, 152 F.3d 917 (2d Cir.

1998). The presumption arises “because delay by one party

increases the likelihood that evidence in support of the other

party’s position will be lost and that discovery and trial will

be made more difficult.” Shannon, 186 F.3d at 195.

Here, Kings Stone’s neglect was not “moderate.” See

Maersk Line v. Phoenix Agro-Indus. Corp., No. CV-07-3169, 2009

WL 1505281, at *5 (E.D.N.Y. May 27, 2009) (dismissing

defendant’s counterclaim for failure to prosecute where it

failed to obtain counsel for “several months”). Nor was it

excusable, as Kings Stone has offered no persuasive explanation

for its failure to obtain counsel.

Therefore, the motion is granted and Kings Stone’s

claims — both its counterclaims against RCI and its third-party

claims against Roberto Coin — are dismissed.

B. RCI’s Motion for Default Judgment Against King’s Stone

RCI is seeking the entry of a default judgment on its

claims against Kings Stone on the same basis — Kings Stone’s

failure to engage representation.

When a plaintiff seeks judgment against a defaulting

defendant on the same claims it is litigating (in the same

action) against an appearing defendant, the proper course is to

postpone decision on the default motion until the case against

the litigating party concludes. See, e.g., RSM Prod. Corp. v.

Fridman, 643 F. Supp. 2d 382, 414 (S.D.N.Y. 2009), aff’d, 387 F.

App’x 72 (2d Cir. 2010) (“More than 125 years ago, the Supreme

Court held that when a defendant defaults in an action asserting

joint liability, judgment should not be entered against the

defaulting defendant until the matter has been resolved against

the other defendants.”); Peralta v. Roros 940, Inc., No. 11-CV-

6242, 2016 WL 1389597, at *1 (E.D.N.Y. Apr. 6, 2016) (“When one

defendant defaults in a multi-defendant case, the district court

should not enter a final decree on the merits against the

defaulting defendant alone.”). This practice is intended to

avoid inconsistent results. See Sec. & Exch. Comm’n v.

Williams, 2013 WL 12290897, at *1 (D. Conn. Sept. 27, 2013)

(Martinez, M.J.) (“[F]ederal courts, recognizing the potential

for inconsistent judgments, have declined to grant a default

judgment against one defendant until the matter has been

adjudicated against them all.”). RCI’s motion for default

judgment against Kings Stone is therefore denied without

prejudice to its renewal upon resolution of RCI’s case against

Goldstein.

C. RCI’s Affirmative Claims

Plaintiff moves for summary judgment on its

affirmative claims against Defendants for false advertising and

trademark infringement under the Lanham Act, as well as state-

law defamation and related tort claims. As noted above, I

construe certain of Goldstein’s letters as a cross-motion for

summary judgment on the same claims. I grant RCI’s motion in

part and grant Goldstein’s motion in part.

1. False Advertising under the Lanham Act

The gravamen of RCI’s false-advertising claim is that

Goldstein made a series of false statements, broadly

disseminated to RCI’s customers, to the effect that RCI was

“incorporating false or counterfeit gemstones into its jewelry.”

Compl. ¶ 50. RCI says this was “a devastatingly damaging

allegation against a jeweler known for the high quality of its

materials.” Id. RCI seeks relief under the Lanham Act,

including monetary damages, attorneys’ fees, and a “permanent

injunction preventing Defendants from attacking the

‘authenticity’ of the jade in Roberto Coin’s black jade

jewelry.” Id. ¶ 55.

The Lanham Act establishes a claim against any person

who:

in connection with any goods or services . . . uses in

commerce any . . . false or misleading description of

fact, or false or misleading representation of fact,

which —

(B) in commercial advertising or promotion,

misrepresents the nature, characteristics, [or]

qualities . . . of . . . another person’s goods,

services, or commercial activities.

15 U.S.C. § 1125(a)(1)(B). “To invoke the Lanham Act’s cause of

action for false advertising, a plaintiff must plead (and

ultimately prove) an injury to a commercial interest in sales or

business reputation proximately caused by the defendant’s

misrepresentations.” Lexmark Intern., Inc. v. Static Control

Components, Inc., 572 U.S. 118, 140 (2014). The statute reaches

two types of misrepresentations: statements that are literally

false and those that are “impliedly” false. Time Warner Cable,

Inc. v. DIRECTV, Inc., 497 F.3d 144, 153 (2d Cir. 2007). In the

latter category are advertisements that, though they are

“literally true,” are nevertheless “likely to deceive or confuse

customers.” S.C. Johnson & Son, Inc. v. Clorox Co., 241 F.3d

232, 238 (2d Cir. 2001).

Additionally, to satisfy Section 1125’s requirement

that the false statements appear “in commercial advertising or

promotion,” RCI must show that the statements were disseminated

broadly. The “touchstone of whether a defendant’s actions may

be considered commercial advertising or promotion under the

Lanham Act is that the contested representations are part of an

organized campaign to penetrate the relevant market.” Fashion

Boutique of Short Hills, Inc. v. Fendi USA, Inc., 314 F.3d 48,

57 (2d Cir. 2002). The plaintiff must therefore produce “proof

of widespread dissemination within the relevant industry” to

prevail. Id. “Although representations less formal than those

made as part of a classic advertising campaign may suffice, they

must be disseminated sufficiently to the relevant purchasing

public.” Gmurzynska v. Hutton, 355 F.3d 206, 210 (2d Cir. 2004)

(collecting cases).

The communications that RCI invokes in support of its

Lanham Act false-advertising claim fall into two broad (and

perhaps overlapping) subcategories. First, RCI flags

communications in which Goldstein said (or implied) to retailers

that RCI’s black jade was fake or inauthentic. See, e.g., ECF

No. 138-7 at 11 (email dated April 11, 2018 from Goldstein to

Borsheims discussing the impact that the sale of “Fake black

jade” has on Goldstein’s business); id. at 12 (email dated April

10, 2018 from Goldstein to Borsheims comparing the claim that

RCI’s stones contain black jade to a claim of “cubic zirconia

being a real diamond,” and referring to Kings Stone as one of

“the real black jade jewelry companies” — a category that

presumably excluded RCI).

Second, RCI seeks relief for Goldstein’s various

statements that RCI’s stones lacked some form of certification

or authentication. See, e.g., id. at 12 (email dated April 10,

2018 from Goldstein to Borsheims stating that RCI black jade

“does not come with any certification as to its authenticity

that the black jade is genuine”).

I consider below whether RCI has adduced sufficient

evidence that these statements were (a) false (literally or

impliedly) and (b) made in commercial advertising or promotion.

a. Were Goldstein’s Statements False?

As noted above, Goldstein stated — at various times

and to various retailers — that RCI’s stones were “Fake”; that

they constituted a “questionable product”; and that calling them

black jade was like calling “cubic zirconia . . . a real

diamond.” He stated further that retailers of Roberto Coin’s

jewelry “legally . . . cannot claim or advertise that it is

black jade.”

RCI has adduced sufficient evidence of these

statements’ falsity to survive summary judgment on this element

of the Lanham Act. As to the accusation that Roberto Coin’s

gemstones constituted “Fake black jade,” RCI’s expert Palmieri

attested that there is no scientifically established category of

mineral called “black jade.” Palmieri Rep. at 3. The most

closely applicable mineral groups are nephrite and jadeite, see

id.; and Nephrite belongs to the “amphibole” group of minerals.

Id. RCI has produced certifications that its gemstones had,

indeed, been authenticated as “amphibole” in August and October

of 2014. See ECF No. 138-16 (Hong Kong Gems Laboratory

certification and Gübelin Gemlab certification). Based on this

certification, a reasonable jury could conclude that Goldstein’s

accusation was literally false.7

The alleged falsity of Goldstein’s statements about

authentication and certification is a murkier question at this

point. Goldstein asserted that RCI’s jewelry “does not come

with any certification as to its authenticity that the black

jade is genuine” (to Borsheims); that RCI’s stones were “not . .

7 RCI later produced certifications authenticating its stones as “Black

Amphibole Jade” on April 24, 2018, id. (NGTC certification), and “Black

Nephrite Jade” on May 3, 2018. Id. (The Gemological Testing Laboratory

certification).

. authenticated or certified as advertised” (to Saks); and that

RCI was “selling non authenticated black jade” (to Macy’s and

Neiman Marcus). These statements were not literally false, as

RCI did not (at the time) possess a certification expressly

confirming that its stones were “black jade.” Given RCI’s

evidence that there is no established mineralogical category for

“black jade,” however, they could be found to be impliedly

false. That is, a jury might reasonably conclude that Goldstein

was falsely implying the existence of such a category, and

suggesting that RCI was “incorporating false or counterfeit

gemstones into its jewelry,” as RCI alleges. Compl. ¶ 50.

Indeed, at least one retailer seemed to understand the statement

this way: Larry Pelzel of Neiman Marcus contacted RCI to say

that Goldstein was questioning “the Authenticity of the black

jade used in Coin’s jewelry.” ECF No. 138-8 at 8. This

communication supports RCI’s contention that Goldstein’s

statements could have caused a reasonable customer to believe

that its black jade was somehow counterfeit. See Johnson &

Johnson v. Smithkline Beecham Corp., 960 F.2d 294, 297 (2d Cir.

1992) (“Where, as here, a plaintiff’s theory of recovery is

premised upon a claim of implied falsehood, a plaintiff must

demonstrate, by extrinsic evidence, that the challenged

commercials tend to mislead or confuse consumers.”).

Goldstein has suggested some rejoinders to this claim

about authentication — that he asked RCI for evidence of a

certification and did not receive a response; that he indicated

as much to RCI’s suppliers, thus disclosing the basis for his

claims; and other responses. But this question — namely,

whether Goldstein’s statements about authentication and

certification were impliedly false — is, at this point, a

question for a jury.8

RCI has also asked for summary judgment on its

affirmative claims — that is, a judgment holding Goldstein

liable for false advertising now, without a trial. That

judgment would be premature at this point because of (at least)

the following two factors: (a) the implied-falsity issue is

properly reserved for a determination by the finder of fact, and

(b) the parties continue to dispute (at least implicitly) which

8 Goldstein also made certain legal claims in his emails. He told

Borsheims, for example, that “[i]f there is no certification available, then

legally you cannot claim or advertise that it is black jade.” ECF No. 138-7

at 12. Goldstein’s pronouncement on the legality of RCI’s conduct is not, in

itself, actionable; a layman’s statements about the illegality of another

party’s conduct do not violate the Lanham Act absent a “clear and unambiguous

ruling from a court or agency of competent jurisdiction” that the conduct is

lawful. Coastal Abstract Serv., Inc. v. First Am. Title Ins. Co., 173 F.3d

725, 731–732 (9th Cir. 1999); see also Anthem Sports, LLC v. Under the

Weather, LLC, 320 F. Supp. 3d 399, 414-15 (D. Conn. 2018). Nor are these

statements “commercial,” as that term is used in the Lanham Act. See, e.g.,

Cartier Intern. AG v. Motion in Time, Inc, No. 12-CV-8216, 2013 WL 1386975 at

*2 (S.D.N.Y. 2013); GeigTech East Bay LLC v. Lutron Elecs. Co., No. 18-CV-

5290, 2019 WL 1768965, at *10-12 (S.D.N.Y. 2019). The statements may be

considered by a jury, however, to the extent they imply (as a factual matter)

that RCI was misleading its retailers or other customers about the content of

its stones.

stones RCI submitted to the various gemological labs to obtain

its certifications. The existing record does not definitively

rule out the possibility that RCI commingled stones from

Goldstein and its subsequent supplier, or definitively establish

the provenance of the stones RCI submitted for evaluation.9 This

will be an issue for the jury.

b. Were Goldstein’s Statements Broadly Disseminated?

To constitute “commercial advertising,” the statements

must be “part of an organized campaign to penetrate the relevant

market.” Fashion Boutique, 314 F.3d at 57. Widespread

dissemination of the alleged misstatements is an essential

element, as “businesses harmed by isolated disparaging

statements do not have redress under the Lanham Act; they must

seek redress under state-law causes of action.” Id.

In evaluating the breadth of dissemination, courts in

the Second Circuit consider the following factors: (1) the

number of alleged statements; (2) to whom the statements were

made; (3) where the statements were made; and (4) the size of

the relevant market. Sussman-Automatic Corp. v. Spa World

Corp., 15 F. Supp. 3d 258, 271 (E.D.N.Y. 2014) (citing Fashion

9 For example, RCI’s expert Palmieri reported that in 2018 he tested

jewelry containing RCI black jade he purchased from Saks and Mason-Kay, Inc.,

as well as black jade that CKC directly provided to him. See Palmieri Rep.

at 15-16. The record reveals nothing, however, about the prior provenance of

the stones.

Boutique, 314 F.3d at 58); Conte v. Newsday, Inc., No. 06-CV-

4859, 2013 WL 978711, at *14 (E.D.N.Y. Mar. 13, 2013) (same).

Goldstein’s statements to the various retailers were

not identical. Thus, a threshold question is whether to

consider those statements individually or in the aggregate when

assessing the breadth of dissemination. See Reed Const. Data

Inc. v. McGraw-Hill Cos., 49 F. Supp. 3d 385, 410 (S.D.N.Y.

2014), aff’d, 638 F. App’x 43 (2d Cir. 2016) (“Before the Court

can consider whether the statements were sufficiently

distributed, it must answer a preliminary question: are the

statements to be considered together or in isolation?”). I

conclude that Goldstein’s statements should be aggregated when

assessing the breadth of dissemination, because they were made

during a compressed time period (approximately three weeks in

April 2018) and concerned similar subject matter (the

authenticity and authentication of RCI’s black jade). See id.

at 409-11 (aggregating ad hoc statements by individual

salespeople to individual customers because they were part of a

coordinated campaign, “directed” by the defendant’s management);

see also 2 CALLMANN ON UNFAIR COMPETITION, TRADEMARKS & MONOPOLIES § 5:16

(4th Ed. 2021) (“Where a number of separate, unique

communications are made to individual customers, but these

communications share the same competitive approach, a court may

view the communications in the aggregate as a single advertising

campaign within the reach of the Lanham Act’s ban on false

advertising.”).

Indeed, Fashion Boutique — a leading Second Circuit

case on Lanham Act false advertising — displayed a willingness

to aggregate fairly disparate statements, though it ultimately

found that those statements were insufficiently disseminated

(even after aggregation). See Fashion Boutique, 314 F.3d at 58

(“Even including the ‘different line’ statements, post-closing

statements, and comments made to undercover investigators,

Fashion Boutique has presented a total of twenty-seven oral

statements regarding plaintiff’s products in a marketplace of

thousands of customers.”); see also LidoChem, Inc. v. Stoller

Enters., Inc., 500 F. App’x 373, 374-82 (6th Cir. 2012)

(aggregating various statements about the toxicity of

plaintiff’s product); Apotex Inc. v. Acorda Therapeutics, Inc.,

No. 11-CV-8803, 2014 WL 5462547, at *4-5 (S.D.N.Y. Oct. 23,

2014), aff’d, 823 F.3d 51 (2d Cir. 2016) (aggregating statements

by defendant’s sales representatives to different doctors).

Because the statements at issue here were made within

a discrete time frame, and were consistent in substance and

purpose, a jury could reasonably conclude that they constituted

a single “campaign.” They are therefore properly aggregated for

purposes of assessing the breadth of dissemination at this

stage.

Once aggregated, Goldstein’s statements demonstrate

sufficiently broad dissemination for a jury to find in RCI’s

favor on the Lanham Act claim. Breadth of dissemination is

typically measured as a fraction of the overall market. See,

e.g., Pro. Sound Servs., Inc. v. Guzzi, 349 F. Supp. 2d 722, 729

(S.D.N.Y. 2004), aff’d, 159 F. App’x 270 (2d Cir. 2005)

(defining market as thirty-six customers and concluding

dissemination to one customer out of thirty-six insufficient

fraction to show an “organized campaign to penetrate the

relevant market”). Focusing on the denominator of that

fraction, it becomes important to define the relevant market.

On the one hand, the global market for fine jewelry is

perhaps enormous. Chamilia, LLC v. Pandora Jewelry, LLC, No.

04-CV-6017, 2007 WL 2781246, at *9 (S.D.N.Y. Sept. 24, 2007)

(“While neither party has produced evidence of the precise size

of the jewelry market or the number of potential jewelry

retailers, it is clear that the market involves hundreds, if not

thousands, of customers.”). And RCI itself notes that its

“distribution network includes customer agreements with

“boutique jewelers nationwide,” in addition to the department

stores referenced above. Webster Decl. ¶ 6; see also id. ¶ 3

(“RCI sells its jewelry across forty-nine states, and Canada,

the Caribbean, Mexico, and Central America.”).

On the other hand, the market for name-brand,

artistically produced luxury jewels is surely a discrete subset

of that industry.10 RCI produced evidence, for example, that the

five prominent department stores that Goldstein emailed

accounted for “over 23% of RCI’s gross profits on sales from the

black jade collection” in themselves. Pl. Br. at 21 (citing

Webster Decl. ¶ 16). Here, the size of the relevant market

remains to be determined with precision at trial. But on this

record, a reasonable jury could conclude that the relevant

market is confined to higher-end jewelers like Neiman Marcus,

rather than every seller of precious stones in the world. See

Coastal Abstract, 173 F.3d at 735 (noting that jury’s finding

about the contours of the “relevant purchasing public” was

supported by substantial evidence).

At this stage, the record supports a potential finding

that Goldstein communicated with a sufficiently large proportion

of that market. In addition to the flurry of communications

with the department stores referenced above, RCI also points to

Goldstein’s acknowledgment that he reached out to “every

customer that was advertising the black jade.” Goldstein Dep.

308:11-12. Goldstein did not recall the total number of RCI

10 RCI alleges, for example, that various movie stars, including Leslie

Mann, Halle Berry, and Taraji P. Henson wore RCI jewelry at the 2018 Academy

Awards. See Compl. ¶ 11; see also ECF No. 138-2 (images depicting

celebrities wearing RCI jewelry).

retail customers he contacted, but said it was a “huge amount of

communication.” Id. at 369:21-22; see Nat’l Artists Mgmt. Co.

v. Weaving, 769 F. Supp. 1224, 1231 (S.D.N.Y. 1991) (invoking

defendant’s admission that he “talked to hundreds of people. I

talk to a lot of people.”). This “huge amount” of communication

was large enough, indeed, that Goldstein needed help identifying

the universe of retailers he proceeded to communicate with. See

Goldstein Dep. 328:20-329:17.

A reasonable jury could find that this campaign

reached enough of the relevant market to constitute “commercial

advertising or promotion” under the Lanham Act (especially

“promotion” — see Fashion Boutique, 314 F.3d at 57). See also

Seven–Up Co. v. Coca–Cola Co., 86 F.3d 1379, 1384 (5th Cir.

1996) (evidence of dissemination sufficient where statements

were made to eleven out of seventy-four potential customers);

Nat’l Artists, 769 F. Supp. at 1230 (holding that communications

to ten current — and a number of former — clients out of “30,

maybe 30-plus” clients total constituted commercial promotion).

For the reasons set forth above, both parties’ motions

for summary judgment on the Lanham Act false-advertising claim

are denied in their entirety.

2. Trademark Infringement under the Lanham Act

Goldstein acknowledges that he posted photographs of

RCI’s jewelry on Kings Stone’s Instagram feed. See Goldstein

Dep. 132:25-133:4 (“I put [the Roberto Coin images] on my

Instagram page . . . .”); id. at 133:18-134:4 (confirming the

Instagram use); Kings Stone Dep. 221:3-6 (same); id. at 222:11-

18 (Goldstein posted the Instagram images at the “suggestion” of

his friend). Superimposed on these photos was RCI’s trademarked

logo — the letters “RC” with a diamond shape beside them. See

ECF No. 138-4 (trademarks); ECF No. 138-5 (Instagram posts).

Goldstein used these materials to promote Kings Stone’s black-

jade business. See, e.g., Goldstein Dep. 132:25-133:3; cf.

Kings Stone Dep. 221:18-25 (claiming that the RCI images were up

on Kings Stone’s Instagram feed only for a “week, a few more

days than that, but not much more, as I recall”). Goldstein

also acknowledges that he reproduced images of RCI jewelry in a

PowerPoint presentation he sent to various vendors in an effort

to drum up business. See Goldstein Dep. 133:22-134:10

(admitting that Kings Stone sent RCI materials via email to

“various vendors” in an effort “to promote for business”); see

also id. at 356:14-357:15; Kings Stone Dep. 222:22-223:13.

RCI claims that these uses constitute trademark

infringement. Goldstein argues that he had authorization to use

RCI’s marks based on an oral agreement he reached with Roberto

Coin (personally) as part of the deal to supply black jade to

RCI. See Goldstein Dep. 133:3-17; 355:23-359:14.

To prevail on a claim of trademark infringement under

the Lanham Act, a plaintiff must establish that “(1) it has a

valid mark that is entitled to protection under the Lanham Act;

and that (2) the defendant used the mark, (3) in commerce,

(4) in connection with the sale or advertising of goods or

services, (5) without the plaintiff’s consent.” 1–800 Contacts,

Inc. v. WhenU.Com, Inc., 414 F.3d 400, 406-07 (2d Cir. 2005).

The parties do not dispute the first four factors; the sole

issue is whether Goldstein had RCI’s consent to use its marks as

he did.

Goldstein testified that Roberto Coin authorized him

personally to use RCI’s “name as a reference, my product as a

reference for the black jade,” Goldstein Dep. 357:16-358:15, in

exchange for Goldstein providing a “severe discount” on stones.

Id. at 132:11-23, 357:16-21 (Q. “Just so that I am

understanding, is it your claim that you had a perpetual license

to use Roberto Coin, Inc. jewelry and trademarks to market Kings

Stone black jade?” A. “For the black jade that I had supplied

him, absolutely.”). Goldstein further testified that the

exchange of a discount for such a license is a “common industry

practice.” Id. 132:2-16.

Goldstein’s assertion of consent is skeletal, at best.

He does not offer any specific evidence, for example, of what

Roberto Coin said or did to manifest his agreement to this

perpetual license — a sizeable concession on behalf of a

business whose value resides largely in its intellectual

property. Goldstein does not indicate the territorial scope of

the license. And it strains credulity to think that the parties

agreed on the duration of the trademark license — specifically,

that it would exist in perpetuity — without any corresponding

agreement on the period of time for which RCI and its affiliates

would purchase stones from Goldstein (a period that, in the end,

lasted only about a year).

In any event, however, Goldstein’s assertion that he

had Roberto Coin’s permission to use RCI trademarks in

perpetuity founders on the shoals of the Statute of Frauds —

irrespective of any credulity issues. “Because there are no

distinctive federal rules for how parties reach contracts

concerning copyrights, see T.B. Harms Co. v. Eliscu, 339 F.2d

823 (2d Cir. 1964) (Friendly, J.), oral licenses and oral

terminations are valid to the extent allowed by state statutes

of frauds.” Vincent v. City Colleges of Chicago, 485 F.3d 919,

922 (7th Cir. 2007); see also Full Circle United, LLC v. Skee-

Ball, Inc., No. 11-CV-5476, 2014 WL 12829195, at *6 (E.D.N.Y.

May 13, 2014) (Bloom, M.J.) (applying New York Statute of Frauds

to alleged agreement to grant plaintiff a license to use

defendant’s trademark); Patsy’s Italian Restaurant, Inc. v.

Banas, 508 F. Supp. 2d 194, 220 (E.D.N.Y. 2007) (oral agreement

to share trademark rights would be “unenforceable because it

violates the Statute of Frauds,” “even assuming” the existence

of such an agreement).

Because the alleged perpetual license agreement could

not “be performed within one year from the making thereof,” see

New York General Obligations Law § 5-701, it is subject to the

Statute of Frauds’ requirement that it be reduced to (or

evidenced by) a signed writing. See id.; Full Circle, 2014 WL

12829195, at *7 (perpetual trademark license must be reduced to

writing under New York statute of frauds). The only way this

agreement could be fully performed within a year would be for

Goldstein to breach the agreement or agree to terminate it.

Neither of those possibilities preclude the Statute’s

application. See S. Cherry St., LLC v. Hennessee Grp. LLC, 573

F.3d 98, 105 (2d Cir. 2009) (oral agreement that “called for

performance of an indefinite duration and could only be

terminated within one year by its breach during that period”

still “fell within the Statute of Frauds and was void”) (cleaned

up); Zaitsev v. Salomon Bros., 60 F.3d 1001, 1003 (2d Cir. 1995)

(where an oral agreement’s “performance within one year depends

upon an act solely within the control of the party seeking to

enforce the oral agreement [such as voluntary termination], the

Statute of Frauds remains applicable”).

Nor can the oral agreement be revived by the doctrine

of partial performance. The New York state courts have

generally declined to apply that exception outside the context

of real estate contracts, for reasons Judge Roman explained

earlier this year in Feng Xue v. Koenig, No. 19-CV-7630, 2021 WL

1092503, at *8 (S.D.N.Y. Mar. 22, 2021). See also Mtivity, Inc.

v. Off. Depot, Inc., No. 19-CV-5094, 2021 WL 969124, at *6

(E.D.N.Y. Mar. 16, 2021) (surveying New York state cases and

concluding that the partial-performance exception should not be

applied to Section 5-701).11

Following oral argument, Goldstein submitted a letter

(at the Court’s request) on the Statute of Frauds issue, ECF No.

150 (Letter dated September 27, 2021), in which he suggests that

the perpetual license agreement actually was reflected in a

11 Even if CKC’s agreement to purchase gems from Kings Stone is subject

to the New York Uniform Commercial Code as a contract for the sale of goods,

the partial-performance exception of N.Y. UCC § 2-201(3)(c) would not revive

the alleged trademark license. The UCC’s statute of frauds (in N.Y. UCC § 2-

201) applies to contracts that involve the sale of goods in excess of $500.

Under Section 2-201(3)(c), the doctrine of partial performance can render

oral contracts in that category “enforceable . . . with respect to goods for

which payment has been made and accepted.” By its terms, therefore, the UCC

exception can render the oral agreement enforceable only “with respect to

goods [i.e., gems] for which payment ha[d] been made and accepted” – not with

respect to trademark use that occurred long after the final delivery of Kings

Stone’s gems to CKC. See Dallas Aerospace, Inc. v. CIS Air Corp., 352 F.3d

775, 782 (2d Cir. 2003) (partial performance exception in 2-201(3)(c) applies

only “where the parties” — plural — “have already performed their obligations

under the alleged contract,” and “only to the extent of such partial

performance”). The rationale of Section 2-201(3)(c) is that the receipt and

payment for goods constitutes “unambiguous overt admission by both parties”

that the contract in question exists. Id. (emphasis added). That is clearly

not the case here – there is nothing about CKC’s payment for Kings Stones’

gems that could even conceivably serve as an unambiguous, overt admission

that RCI granted the perpetual license at issue.

written writing. Goldstein’s letter references two CKC Purchase

Orders memorializing a “discount price” from Kings Stone (of $8

per carat (instead of $24). Id. (citing ECF No. 135). His

letter also attaches an email from Roberto Coin to Goldstein, in

which Coin states that the “RC brand will bring you lots of

credibility in the market.” Id.

These materials are insufficient to satisfy Section 5-

701’s requirement of a written “note or memorandum” evidencing

the oral agreement. In New York, “the well-established rule” is

that a “memorandum sufficient to meet the requirements of the

Statute of Frauds must contain expressly or by reasonable

implication all the material terms of the agreement.” Morris

Cohon & Co. v. Russell, 23 N.Y.2d 569, 575 (1969). The note or

memorandum must set forth these essential terms “with the

requisite definiteness.” 28 Glen Banks, New York Contract Law

§ 3:17, at 170 (2d ed. 2017); see also Alkholi v. Macklowe, ---

F. App’x ----, 2021 WL 1731814, at *2 (2d Cir. May 3, 2021)

(citing Morris, 23 N.Y.2d at 575); Nora Beverages, Inc. v.

Perrier Grp. of Am., Inc., 164 F.3d 736, 748 (2d Cir. 1998)

(note or memorandum that “omits or incorrectly states” certain

terms of alleged oral agreement may still be invoked, but only

to enforce the terms “shown in such writing”). Here, the

writings to which Goldstein refers contain no express reference

to the perpetual trademark license he alleges, and nothing to

“reasonably imply” an agreement to confer such a license.12

Because Goldstein has admitted his use of RCI’s

trademark, and his claim to authorization for such use is barred

by the Statute of Frauds, there is no remaining dispute of

material fact on RCI’s federal trademark infringement claim.

Summary judgment on liability is therefore granted to RCI on

Counts Six and Seven of its complaint.13

Plaintiff seeks damages including “enhanced” statutory

damages, on the ground that Defendants’ infringement was

12 It is not clear from Goldstein’s submission that the email and

purchase orders he invokes were made part of the record in discovery which

closed on January 20, 2020. See Minute Entry dated July 31, 2019; see e.g.,

Bedasie v. Mr. Z Towing, Inc., No. 13-CV-5453, 2016 WL 7839436, at *3

(E.D.N.Y. Apr. 29, 2016) (Pollak, M.J.) (declining to consider evidence

produced after the close of discovery where defendants “offered no

explanation for their failure to produce these documents at any earlier point

in the litigation”); Robinson v. Zurich N. Am. Ins. Co., 892 F. Supp. 2d 409,

435 n.25 (E.D.N.Y. 2012) (suggesting that letter ”not contained in the

record” should not be considered as substantive evidence). In any event,

they are insufficient because they do not refer to any trademark license, let

alone a perpetual one. See Banks, supra, at 172 (“Emails may not satisfy the

Statute if the writings expressly, or by implication, do not contain the

material terms of the alleged oral agreement.”).

13 RCI also brings a Lanham Act claim for unfair competition (also known

as “false designation of origin”). “[I]t is well settled that the standards

for false designation of origin claims under Section 43(a) of the Lanham Act

(15 U.S.C. § 1125) are the same as for trademark infringement claims under

Section 32 (15 U.S.C. § 1114).” Twentieth Century Fox Film Corp. v. Marvel

Enters., Inc., 220 F. Supp. 2d 289, 297 (S.D.N.Y. 2002). Because the Court

has granted summary judgment in favor of RCI for trademark infringement under

the Lanham Act, it also grants summary judgment in RCI’s favor on its unfair

competition claim under the Lanham Act. Flat Rate Movers, Ltd. v. FlatRate

Moving & Storage, Inc., 104 F. Supp. 3d 371, 382, 384 (S.D.N.Y. 2015)

(granting summary judgment on both Lanham Act unfair competition claim and

Lanham Act trademark-infringement claim under the same analysis).

willful. Enhanced statutory damages — of “not more than

$2,000,000” per mark per type of good — are available in cases

of willful infringement. Here, the question of damages

(including willfulness) is properly reserved for a jury rather

than resolved on summary judgment. See Yurman Studio, Inc. v.

Castaneda, 591 F. Supp. 2d 471, 504 (S.D.N.Y. 2008) (“Because

these assertions raise a genuine dispute as to defendants’

willfulness, neither an enhanced damages award nor an award of

costs and attorneys’ fees are appropriate at this time, nor can

summary judgment be granted to defendants on the issue of

willfulness.”). “Courts are generally reluctant to dispose of a

claim on summary judgment when mental state is at issue,” though

it is permissible to do so in certain circumstances. Church &

Dwight Co. v. Kaloti Enters. of Michigan, L.L.C., 697 F. Supp.

2d 287, 291–92 (E.D.N.Y. 2009), vacated on other grounds, No. 7-

CV-0612, 2011 WL 4529605 (E.D.N.Y. Sept. 28, 2011); see also

U.S. Media Corp. v. Edde Ent., Inc., No. 94-CV-4849, 1996 WL

520901, at *1 (S.D.N.Y. Sept. 12, 1996) (Dolinger, M.J.)

(granting summary judgment to plaintiff as to liability on

copyright infringement and unfair competition claims, but

denying summary judgment on willfulness issue). RCI also seeks

injunctive relief, in addition to money damages.

RCI also brought a state trademark infringement claim

under New York General Business Law § 360-k. “State law claims

for trademark infringement are analyzed concurrently with the

federal trademark infringement claims as the standards are

substantially similar.” City of New York v. Blue Rage, Inc.,

435 F. Supp. 3d 472, 486 n.8 (E.D.N.Y. 2020); see also Smith v.

Mikki More, LLC, 59 F. Supp. 3d 595, 616 (S.D.N.Y. 2014) (“A

claim of trademark infringement under New York law requires

proof of the same elements and can be analyzed together with a

Lanham Act claim.” (citing N.Y. Gen. Bus. Law § 360–k)).

Therefore, summary judgment is granted to Plaintiff on this

ground as well. See OptionsXpress, Inc. v. OptionsXpress Inc.,

No. 14-CV-956, 2014 WL 3728637, at *2 (S.D.N.Y. July 28, 2014)

(“Because the analysis for trademark infringement under New York

common law is the same as federal trademark analysis, the

foregoing establishes liability under GBL § 360–k.”). No

damages will be awarded on the state claim, however, to the

extent duplicative of any award under the federal claim.

Johnson & Johnson v. Azam Int’l Trading, No. 07-CV-4302, 2013 WL

4048295, at *15 (E.D.N.Y. Aug. 9, 2013).

RCI is directed to submit a letter setting out its

proposed next steps on the trademark infringement and unfair

competition claims, including with respect to any entry of

judgment and to RCI’s request for injunctive relief. This

letter shall be submitted or before October 20, 2021. Goldstein

is directed to respond to this letter by November 14, 2021.

3. Defamation and Trade Disparagement

RCI also brings various state-law claims including

defamation and trade disparagement. These two claims are

predicated on the same allegedly false statements that underly

RCI’s Lanham Act false-advertising claim.

To prove defamation under New York law, a plaintiff

must show that the defendant made a statement that was:

(1) false, defamatory, and of and concerning the plaintiff;

(2) published to a third party; (3) made with the applicable

level of fault; and (4) defamatory per se or that caused the

plaintiff “special” harm. See Chandok v. Klessig, 632 F.3d 803,

814 (2d Cir. 2011). In the commercial context, “false

statements attacking the integrity or credit of a business”

amount to defamation per se. Fashion Boutique, 314 F.3d at 59.

Of course, “truth is an absolute defense to a defamation claim.”

Martin v. Hearst Corp., 777 F.3d 546, 552 (2d Cir. 2015).

To recover for trade disparagement, a plaintiff “must

show that the defendant published an oral, defamatory statement

directed at the quality of a business’s goods and must prove

that the statements caused special damages.” Fashion Boutique,

314 F.3d at 59. “Where loss of customers constitutes the

alleged special damages, the individuals who ceased to be

customers, or who refused to purchase, must be named and the

exact damages itemized.” Id. Here, as set forth above, RCI has

adduced evidence sufficient for a jury to find special damages

proved, based on lost customers and revenue.

As in the Lanham Act context, a defendant may be held

liable for defamation and trade disparagement under New York law

even if his statements are merely impliedly false. See, e.g.,

Martin, 777 F.3d at 552 (“[I]n certain circumstances even a

technically true statement can be so constructed as to carry a

false and defamatory meaning by implication or innuendo.”).

Nevertheless, “a plaintiff alleging defamation by implication

must show that Defendants affirmatively intended such

implication.” Biro v. Conde Nast, 883 F. Supp. 2d 441, 465–66

(S.D.N.Y. 2012).

As explained in the false-advertising discussion

above, questions of fact remain as to the falsity of Goldstein’s

statements concerning the authenticity and prior authentication

of RCI’s black jade. Therefore, both Plaintiff’s and

Defendant’s motions for summary judgment are denied.

4. Tortious Interference with Business Relations

To prove its claim for tortious interference with

business relations under New York law, RCI must demonstrate:

“(1) it had a business relationship with a third party; (2) the

defendant knew of that relationship and intentionally interfered

with it; (3) the defendant . . . used dishonest, unfair, or

improper means; and (4) the defendant’s interference caused

injury to the relationship.” Carvel Corp. v. Noonan, 350 F.3d

6, 17 (2d Cir. 2003).

The parties generally dispute the third element –

namely, whether Defendants employed improper means in their

dealings with RCI’s customers. See Scutti Enters. v. Park Place

Ent. Corp., 322 F.3d 211, 216 (2d Cir. 2003) (under New York

law, improper means include fraud or misrepresentation, among

other things). RCI argues that the wrongful means were the

“misrepresentations [directed] both broadly and toward RCI’s

largest customers to maximize the economic impact of their

interference with RCI’s business relationships,” as well as the

improper threats of litigation. Pl. Br. at 31. As described

above, issues of fact remain as to Goldstein’s alleged

misrepresentations.

Issues of fact also remain as to whether Goldstein

improperly threatened customers with litigation. “[A] lawsuit

or the threat of a lawsuit is wrongful [for purposes of a

tortious interference claim] if the actor has no belief in the

merit of the litigation.” Universal City Studios, Inc. v.

Nintendo Co., Ltd. 797 F.2d 70, 75 (2d Cir. 1986). “It is also

wrongful if the actor, having some belief in the merit of the

suit, nevertheless institutes or threatens to institute the

litigation in bad faith, intending only to harass the third

parties and not to bring his claim to definitive adjudication.”

Id. The record contains emails showing Goldstein expressing

disdain for RCI, see ECF No. 138-8 at 2, as well as Goldstein’s

allegedly long history of threatening legal action. See

Declaration of Gayle Pollack (Counsel to RCI) dated Feb. 7, 2020

¶¶ 13-19, ECF No. 138-21, and attached Exhibits, ECF Nos. 138-

33, 34, 35, 36, and 37 (relating alleged threats of legal

consequences — both civil and criminal — that Goldstein made to

various counterparties in the past). Based on this, Goldstein’s

motion for summary judgment on this claim is denied.

Plaintiff’s motion on this claim is also denied.

5. New York General Business Law Section 349

RCI also brings a claim under GBL Section 349 for

deceptive acts and practices. A successful GBL Section 349

claim requires that a plaintiff prove that (1) “the defendant

has engaged in an act or practice that is deceptive or

misleading in a material way”; (2) the “plaintiff has been

injured by reason thereof”; and (3) the deceptive act or

practice is “consumer oriented.” Gaidon v. Guardian Life Ins.

Co. of Am., 94 N.Y.2d 330, 343–44 (1999). In contrast to

“[p]rivate contract disputes, unique to the parties,” consumer-

oriented conduct within the meaning of the statute requires acts

or practices that “have a broader impact on consumers at large.”

Oswego Laborers’ Local 214 Pension Fund v. Marine Midland Bank,

85 N.Y.2d 20, 25 (1995). Therefore, regardless of the deceptive

act, “the gravamen of the complaint must be consumer injury or

harm to the public interest.” Mayes v. Summit Ent. Corp., 287

F. Supp. 3d 200, 208 (E.D.N.Y. 2018); Securitron Magnalock Corp.

v. Schnabolk, 65 F.3d 256, 264 (2d Cir. 1995) (“The critical

question, then, is whether the matter affects the public

interest in New York, not whether the suit is brought by a

consumer or competitor.”). Accordingly, “courts routinely

reject such attempts to fashion Section 349 and 350 claims from

garden variety disputes between competitors.” Edward B. Beharry

& Co. v. Bedessee Imps., Inc., No. 09–CV–077, 2010 WL 1223590,

at *9 (E.D.N.Y. Mar. 23, 2010).

Here, RCI’s complaint reveals a dispute between it and

a competitor, even if it is not properly labeled garden-variety.

See Something Old, Something New, Inc. v. QVC, Inc., No. 98-CV-

7450, 1999 WL 1125063, at *12 (S.D.N.Y. Dec. 8, 1999) (“A

deliberate effort by one competitor to destroy the other’s

business is not considered a harm to the public interest.”).

RCI’s complaint focuses almost entirely on the damage to RCI’s

business, and not to the “consuming public at large”; it has

adduced no specific evidence that the “public interest [wa]s

harmed” by Defendants’ actions. Halo Optical Prod., Inc. v.

Liberty Sport, Inc., No. 14-CV-0282, 2017 WL 1082443, at *17

(N.D.N.Y. Mar. 22, 2017); cf. Securitron, 65 F.3d at 264–65 (GBL

Section 349 claim established where the defendant intentionally

made false statements regarding a competitor’s product to a

regulatory agency, with potential consequences for public

safety). Plaintiff’s GBL Section 349 claim is therefore

dismissed.14

IV. Conclusion

For the foregoing reasons, the motion to dismiss Kings

Stone’s counterclaims for failure to prosecute is granted and

the motion for default judgment is denied without prejudice.

Plaintiff’s motion for summary judgment on its claims for

trademark infringement and unfair competition are granted as to

liability. The parties are directed to submit the letters

discussed above concerning next steps on the trademark

infringement and unfair competition claims. Plaintiff’s motion

for summary judgment is otherwise denied. Defendant’s motion

for summary judgment on Plaintiff’s GBL Section 349 claim is

14 Plaintiff contends that “[t]he analysis of a claim under GBL § 349

tracks the Lanham Act,” Pl. Br. at 27, but as set forth above, there are

important differences. See Chanel, Inc. v. RealReal, Inc., 449 F. Supp. 3d

422, 446 (S.D.N.Y. 2020) (“While the elements for alleging false advertising

and infringement under the General Business Law are otherwise similar to

Lanham Act claims, a non-consumer plaintiff must allege conduct that has

significant ramifications for the public at large.”); Feel Better Kids, Inc.

v. Kids in Need, Inc., No. CV-06-0023, 2012 WL 4483000, at *9 n. 12 (E.D.N.Y.

Aug. 28, 2012), report and recommendation adopted, No. 6-CV-23, 2012 WL

4483874 (E.D.N.Y. Sept. 27, 2012) (“Unlike the New York General Business Law

false advertising statutes which are consumer protection statutes,

the Lanham Act is meant to prevent competitive harm; thus, there is no

requirement that the Plaintiffs allege public harm in order to have standing

to bring a Lanham Act false advertising claim.”).

granted; Defendant’s motion for summary judgment is otherwise

denied.

SO ORDERED.

/s/ Eric Komitee_________________

ERIC KOMITEE

United States District Judge

Dated: September 30, 2021

Brooklyn, New York