vance to this lawsuit is the companies’ involvement in the manufacture and sale of “diamond-cut” gold charms.
MAJ commenced this action on April 13, 1990, initially alleging claims of trademark infringement and unfair competition against Peacock. On Peacock’s consent, a preliminary injunction was entered restraining Peacock from imitating, copying, counterfeiting, manufacturing or otherwise making unauthorized use of MAJ’s trademark. MAJ thereafter applied for leave to amend its complaint to add claims under the Copyright and Gold Stamping Acts, which was granted without opposition. See Memorandum Endorsement dated November 19, 1990.
In June 1991, shortly before discovery was scheduled to close. Peacock moved for leave to amend its answer by adding counterclaims. After briefing and oral argument, this Court granted Peacock’s motion. See Memorandum Endorsement dated July 2, 1992.
By Notice of Motion filed August 26, 1991, MAJ moved pursuant to Fed.R.Civ.P. 12(b)(6) and 9(b) to dismiss three of the four counterclaims asserted by Peacock. Specifically, MAJ sought dismissal of those counterclaims alleging violations of the Sherman Act, 15 U.S.C. § 2 (Supp.1992), the Racketeer Influenced and Corrupt Organizations (“RICO”) Act, 18 U.S.C. §§ 1961 et seq. (1984) and New York’s law of unfair competition. Oral argument was held on the motion on September 30, 1991. During that hearing, and after MAJ had argued that Peacock’s pleading suffered from numerous substantive and procedural deficiencies, this Court offered Peacock the opportunity to file an amended countercomplaint before we ruled on MAJ’s motion. Peacock agreed to file such an amended countercomplaint by October 15, 1991, and MAJ was given until October 29, 1991 to file a supplemental motion addressing it. See Transcript dated September 30, 1991 at 12 (hereinafter “September Transcript”).
Although we had originally told the parties that we would decide MAJ’s motion on submission, Peacock’s amended countercomplaint contained several variations on the original counterclaims as well as a completely new claim under the Lanham Act, 15 U.S.C. § 1125 (1982 & Supp.1992).[1] In addition, Peacock filed a motion to join Michael and Anthony Paolercio as counter-defendants. In light of those developments, MAJ requested further oral argument, which was held on November 21, 1991.
Currently before us are Peacock’s motion to join and MAJ’s motion for partial dismissal of the amended countercomplaint.[2] For the reasons that follow, the motion to join is granted and the motion to dismiss is granted in part and denied in part.
I. BACKGROUND
Peacock’s amended countercomplaint asserts claims of copyright invalidity, monopolization and attempted monopolization, civil RICO, false advertising under the Lanham Act, and unfair competition under New York law. Because an understanding of the nature of the parties’ business is helpful in assessing the validity of the claims, some background is provided herein.
As mentioned previously, MAJ and Peacock are companies involved in the manufacture and marketing of gold jewelry, including the manufacture of diamond-cut gold charms. The term “diamond-cutting” describes one of apparently two processes by which the imperfections left by the casting of the charms are rendered less visible.
- ↑ Following Peacock’s submission of the amended countercomplaint, MAJ objected strenuously to Peacock’s addition of the Lanham Act claim and to the variation of other claims asserted in the original countercomplaint. MAJ’s objection was apparently founded on Peacock’s failure to seek leave to add these claims pursuant to Fed.R.Civ.P. 15(a). During oral argument on November 21, 1992, however, we made clear that we would permit Peacock to assert the new claims in light of the stated preference for liberal amendment under rule 15(a). See Transcript Proceedings dated November 21, 1991 at 3 (hereinafter “November Transcript”).
- ↑ MAJ has not moved to dismiss Peacock’s first counterclaim, which seeks a declaration of the copyrights’ invalidity. See November Transcript at 23.
