Boneta v. Rolex Watch U.S.A. Inc.

Boneta v. Rolex Watch U.S.A. Inc.

Opinion

OPINION AND ORDER

LORNA G. SCHOFIELD, District Judge:

Plaintiff Erik Boneta brings this action against Defendant Rolex Watch U.S.A., Inc. ("Rolex USA"), alleging that Rolex USA violated the Racketeer Influenced and Corrupt Organizations Act ("RICO"), the Sherman Antitrust Act and the Clayton Antitrust Act by deliberately and unlawfully permitting United States Custom and Border Protection ("CBP") officials to detain genuine Rolex watches imported into the United States from overseas. Plaintiffs First Amended Complaint was dismissed in its entirety for failure to state a claim. See Boneta v. Rolex Watch USA, Inc., 232 F. Supp. 3d 354, No. 16 Civ. 2369, 2017 U.S. Dist. LEXIS 16431, 2017 WL 481450, at *1 (S.D.N.Y. Feb. 3, 2017). Plaintiff moves for leave to file a Second Amended Complaint (the "SAC") pursuant to Federal Rule of Civil Procedure 15(a)(2). For the following reasons, Plaintiffs motion is denied.

I. BACKGROUND

Familiarity [*2]  with the procedural history and the allegations contained in the First Amended Complaint is assumed. See Boneta, 2017 U.S. Dist. LEXIS 16431, 2017 WL 481450, at *1-2. The following is based on the SAC, and all factual allegations are assumed to be true for purposes of this motion. See Trs. of Upstate N.Y. Eng'rs Pension Fund v. Ivy Asset Mgmt., 843 F.3d 561, 566 (2d Cir. 2016).

Pursuant to the Tariff Act of 1930 and accompanying regulations, CBP offers gray market protection to certain American-owned trademarks and trade names. When a trademark is entitled to gray market protection, CBP will prohibit the importation of a foreign-made item bearing a genuine trademark that is identical to or substantially indistinguishable from the American-owned trademark. An American-owned trademark is entitled to gray market protection where (1) the American and foreign trademarks are not owned by the same person, (2) the trademarks are not subject to common ownership or control and (3) the owner of the American trademark records it with the federal government. See 19 U.S.C. § 1526(a); 19 C.F.R. § 133.23.

By letter dated February 8, 2005, Defendant Rolex USA renewed the recordation of its trademark with CBP, indicating that it was entitled to gray market protection. A CBP official confirmed renewal of Rolex USA's trademark in a letter dated June 30, 2005. The letter noted that "it is the [*3]  recordant's responsibility to promptly advise [CBP] of any material changes made to recordations, including . . . changes in ownership or control." The same CBP official sent a letter dated January 11, 2006, confirming that the contact information for Rolex USA had been changed to John Flaherty and Angelo Mazza of Gibney, Anthony & Flaherty, LLP ("Gibney"), who were legal counsel for Rolex USA with regard to any CBP matters from 2004 through at least 2015.

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