Sunday, December 07 2008
Los Angeles – When it comes to the wrestling match between the Cuban government's
Cubatabaco and General Cigar over the ownership and use of the Cohiba trademark, it's never, ever over.
The issue had apparently been decided when the U.S. Supreme Court decided not to take up the Cohiba trademark registration case in 2006 after the Second Circuit Court of Appeals held that Cubatabaco could not register the Cohiba name and General Cigar could under the terms of the U.S. trade embargo against Cuba. But there was another cause of action in the original 1997 case filing, in which the Cubans asked for relief under New York state law, claiming misappropriation of the Cohiba name.
That case was dismissed in 2005, but the Cubans asked for relief from that dismissal in an appeal, citing a New York Court of Appeals decision in a 2007 case called ITC Limited vs. Punchgini, which, they argued, loosened the burden of proof in a New York state misappropriation case.
In a 33-page opinion in Empresa Cubana del Tabaco vs. Culbro Corporation (97 Civ. 8399) filed on November 19, United States District Court Judge Robert Sweet ruled that the looser standard of proof required in the ITC Limited opinion allowed to him grant Cubatabaco's request not just for a reversal of the dismissal of the state misappropriation case, but to grant Cubatabaco relief in the case!
According to a note on Law.com, "Michael Krinsky, the lead lawyer for Cubatabaco, said he will ask Judge Sweet to enjoin the U.S. company, General Cigar Co., from continuing to use the name 'Cohiba' for cigars it sells in this country." Krinsky also said that he will ask the Court for a "disgorgement of profits" by General of its sales of Cohiba-branded cigars.
That is not likely to happen quickly, however. Andrew Deutsch, the lead lawyer for General Cigar, noted his disagreement with the ruling and General Cigar will appeal the judgment. At issue is a technical point of New York State law: whether the ruling in the ITC Limited case eliminated the requirement of "bad faith" in a misappropriation case. Sweet ruled in 2005 that while General Cigar believed it legitimately owned the Cohiba name and did not display bad faith, since the bad faith requirement was – in Sweet's view – eliminated in the ITC Limited case, "The evidence in the record . . . is more than sufficient to demonstrate that General Cigar deliberately copied the COHIBA mark."
That and Sweet's holding that cigar smokers "primarily associate" the Cohiba name with the Cuban-made cigar of that name are enough to establish "the second and final prong of an unfair competition by misappropriation claim under New York law and is entitled to relief."
Deutsch maintains that Sweet was in error in seeing a change in New York law in the ITC Limited case and that the "bad faith" element still stands. That will now be up to the U.S. Second Circuit Court of Appeals to decide, with a further appeal to the U.S. Supreme Court once again a possibility.
>> In the words of Dallas Morning News reporter Dave Levinthal, "What's certain is that Dallas' proposed smoking ordinance expansion is hardly as sweeping as initially considered."
Yet another meeting on an expansion of the anti-smoking ordinance was held for more than three hours on Wednesday, December 3, with more than three dozen proponents and opponents on hand, in T-shirts and wearing stickers.
The outcome of the hearing? The City Council, which is hardly united on this issue, may vote during the week of December 8 on an ordinance which would ban smoking in bars and billiard halls and within 15 feet of entrances to most workplaces (but not to bars, restaurants or billiard halls). The ordinance to be voted on will apparently leave tobacco shops and cigar bars (whose definition is not settled) alone.
However, even the anti-smoking faction at the meeting did not push for further restrictions, such as banning smoking in automobiles with minors present, in city parks or in public plazas. Moreover, it is not clear when an ordinance – if passed – would go into effect.
>> The tug-of-war in the Michigan Legislature over a statewide smoking ban was not resolved by December 5, but the two competing proposals from the House and Senate are going to be talked out rather than fought on the floor.
Neither body has budged from their positions, with the Democrat-controlled House passing a bill that contained a few exemptions, notably for tobacco shops and casinos. The Republican-led Senate passed a bill with no exemptions for any workplaces.
So the House used a procedural vote to move the issue to a conference committee, where a select panel from both houses will try to work out a compromise bill that both can agree to.
Senate Majority Leader Mike Bishop (R-Rochester) said through a spokesman that the view of his caucus has not changed. If no agreement is reached in the short end-of-the-year session, the issue would have to be introduced as new bills in the new legislative session starting in January.
Short fillers: The 2009 edition – the 15th annual – of the Perelman's Pocket Cyclopedia of Cigars is now available, at many better smokeshops nationwide!
- Rich Perelman in Los Angeles
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Reprinted by permission. "Heard in the Humidor" is a publication of Perelman, Pioneer & Company. Copyright 2008; All rights reserved.
