Judge Paul Crotty
After trial in Burberry Ltd. v. Designers Imports Inc.brought in 2007the court awarded Burberry more than $2.5 million in damages, interest and attorney’s fees for Designers Imports’ trademark counterfeiting, infringement and dilution, false designation, contract breach and unfair competition. The court also enjoined Designers and its officers, agents and employees from infringing any Burberry trademark. Burberry’s current lawsuit involved the same allegations, products and conduct but instead of Designers, named Horowitz defendant. Burberry knew Horowitz operatesand is Designers Imports’ sole shareholder and officerno later than 2005. The court granted Horowitz dismissal, finding Burberry’s claims barred by res judicata and thus rendering Horowitz’s claim of laches moot. Discussing the three factors identified in Tourangeau v. Uniroyal, Chase Manhattan N.A. v. Celotex Corp., and Alperfs Newspaper Delivery v. New York Timesand distinguishing Central Hudson Gas & Elec. Corp. v. Empressa Naviera Santa S.A.the court found Burberry’s 2007 and instant 2012 action involved two parties in privity with each other. Further Burberry’s 2012 lawsuit was “indisputably based on the same nucleus of operative facts as the 2007 Action.”
