51 Mot Dismiss Opinion

Case 1:08-cv-01270-GBL-TCB

IN

THE

FOR

Document 51

UNITED

THE

STATES

Filed 10/09/2009

DISTRICT

EASTERN DISTRICT

Page 1 of 20

COURT

OF VIRGINIA

ALEXANDRIA DIVISION

Richard and Catherine

Snyder,

)

) Plaintiffs,

)

) V.

)

Case No.

1:O8CV127O{GBL)

) Greenberg Traurig,

LLP,

et

al.,

Defendants.

)

) MEMORANDUM OPINION

THIS MATTER is before

Furstenberg Studio's Complaint; Pursuant

and 2)

to Rule

("DVF")

Defendant Diane Von

Motion to Dismiss Plaintiffs'

Greenberg Traurig Defendants' Motion to Dismiss 12(b)(6)

Stay of

Proceedings

41(d).

This

Snyder's

the Court on 1)

and Request

for Payment of

Costs

Pursuant to Federal Rule of Civil

case concerns

and a

Procedure

Plaintiffs Richard and Catherine

claims against Defendant DVF and its previous attorneys

for the allegedly improper execution of a court-authorized search of

Plaintiffs' home and subsequent seizure of property,

counterfeit DVF goods being

internet.

issue

There are two

(2)

sold by Mrs.

Snyder over the

issues before

the

Court.

The first

is whether Plaintiffs' claims are barred by claim

preclusion where DVF previously sued the

infringement and the was

including

part

of

that

court-authorized search of

previous

the Court should grant Plaintiffs,

Snyders

lawsuit.

The

second

for trademark

the Snyders1 home issue

is

whether

the Law Defendants' motion for costs where

who were then proceeding pro

se,

dismissed their

Case 1:08-cv-01270-GBL-TCB

original

claims

and later

Document 51

reasserted

Filed 10/09/2009

some of

the

same

Page 2 of 20

claims

through counsel.

The Court grants Defendants' Motions to Dismiss.1 holds that Plaintiffs' claims are precluded because fraudulent claims

the

trademark registration and improper search and seizure

that Plaintiffs now assert arise

transactions as

the

2006

from the

The Court denies

same

series of

litigation and because the present

parties were all parties or their privies

in the

earlier suit.

the Law Defendants' Motion for Costs because

awarding costs in this case would not

41(d).

The Court

The Court discusses each of

serve

the purposes of Rule

its holdings

in greater

detail below. I.

BACKGROUND

Plaintiffs Richard and Catherine Snyder are husband and

wife.

Defendant Diane Von Furstenberg Studio is a limited

partnership engaged in the business of manufacturing and selling

designer clothing and goods.

Defendant Greenberg Traurig,

LLP,

is the law firm that represented DVF in its 2006 action against

xThe First Amended Complaint does not clearly set forth which

claims are alleged as to which Defendants.

As such,

the Court

construes the First Amended Complaint as alleging all counts against all named Defendants and dismisses all counts as to all Defendants.

Case 1:08-cv-01270-GBL-TCB

Plaintiffs. and Mr.

Document 51

Defendants Mr.

Steve Wadyka

Law Defendants")

are

Harley Lewin,

(collectively, the

Filed 10/09/2009

Ms.

Page 3 of 20

Janet Shin Hajek,

with Greenberg Traurig,

"the

attorneys who represented DVF in the

previous action. The

facts of

the present action bear a stark resemblance

those of

the

action.

counsel,

the Law Defendants,

2006

against the Snyders

internet.2

DVF,

through

filed an action in this

its

Court

for selling counterfeit DVF products over the

On December 4, 2006, DVF filed an ex parte motion for

a seizure order. moved the Court of

In November 2006,

to

During an ex parte hearing, for a search and seizure

a temporary restraining order

order and the

issuance

("TRO") .

Following the ex parte hearing, restraining order against Mrs.

the Law Defendants

the Court

issued a temporary

Snyder and authorized a search of

the Snyders' residence and seizure the

following items:

1. Any and all unauthorized and unlicensed merchandise bearing the Von Furstenberg marks, as well as the means for making the

same;

2. The books and records relating thereto, including but not limited to records and data contained in electronic format on computers, servers, hard drives, zip drives and disks; 3. The containers or vehicles in which the same are held or transported, which Defendants sell, attempt to sell or hold for sale; 4.

and

Any counterfeit Von Furstenberg product,

2Diane von Furstenberg Studio v. Snyder, No.

Va.)

(Cacheris,

J.).

1:06-cv-1356

(E.D.

Case 1:08-cv-01270-GBL-TCB

reproduction,

Document 51

Filed 10/09/2009

copies or colorable

imitations

including dresses or other items.3

Acting upon the December 8,

2006,

Seizure Order

the

Law Defendants,

the Herndon Police Department, execute

the

Snyders,

The Snyders allege

the warrant.

the Law Defendants conducted the

Snyders at all

times,

hours,

the Herndon officers

The Law Defendants

Snyders1 home

to

that Mr.

to induce them

the

impression that

law.

Although the

for approximately three

left after approximately one hour.

The Snyders allege,

defendants also removed dozens of not covered by the warrant. challenge to the

execution of

Court during the

2006

The

however,

items Snyders

did not

raise a the

litigation.

its

In considering the motion as

Dec.

that were

the search and seizure before

moved for summary judgment on all of

infringement claim,

that the Law

from their home

Months after the search and seizure,

'Seizure Order,

the Snyders

recovered fifty-four counterfeit DVF dresses

during the search.

Snyders.

of

search and directed the

intentionally giving

in the

on

According to the

they were conducting the search under color of Law Defendants were

Court,

along with two members

the Herndon officers

in the execution of

thereof,

entered the home of

search and seizure.

Wadyka "flashed a badge" at to assist

issued by the

Page 4 of 20

on August claims

15,

2007,

against the

to the trademark

the Court found that the registration of

7,

2006,

Dkt. No.

17.

DVF

Case 1:08-cv-01270-GBL-TCB

DVF's mark with the U.S.

its validity,

unfair

competition,

and permanently enjoined Mrs. products.

Mem.

Op.,

Sept.

DVF dismissed its

On October 23,

2007,

2007,

emotional harm,

On June

trademark dilution claims

10,

2007,

at

15.

On September

Catherine

21,

Snyder with prejudice. the Court

Snyder and awarded DVF

the Snyders 42

U.S.C.

25,

1983,

2007,

intentional

Court

infliction of

the Law Defendants

the Seizure Order at the Snyders1

the day before

the Snyders

subsequently

pursuant

in this

the Law Defendants moved to dismiss

On July 24,

Defendants

filed suit

and abuse of process against

serve discovery,

2007,

failed

Snyder from selling counterfeit DVF

in relation to the execution of

25,

Snyders

following a hearing on damages,

alleging violations of

claims.

("PTO")

in statutory damages.

On May 10,

home.

and

claims against Mr.

entered judgment against $100,000

which the

Page 5 of 20

The Court granted DVF's motion as to the trademark

infringement,

2007,

Filed 10/09/2009

Patent and Trademark Office

created a presumption of

to rebut.

Document 51

to

those

the parties were

filed an Amended Complaint.

served discovery on

the Discovery Order.

the

Snyders

On July 30,

to The Law

on July,

2007,

the

Snyders dismissed their claims pursuant to Federal Rule of Civil Procedure

41.

On December 8,

2008,

the Snyders

alleging counts

arising out

at

On February 20,

their home.

of

the

filed a Complaint,

execution of

2009,

Plaintiffs

the

again

Seizure

Order

filed the First

Case 1:08-cv-01270-GBL-TCB

Amended Complaint,

Count

Document 51

alleging

the

following eight

Count

§ 1119 and damages II - Deprivation of

U.S.C.

§ 1983

Count

Bur.

to 15

for fraudulent registration; Property in violation of 42

and under Bivens v.

Agents of Fed.

Page 6 of 20

claims:

I - Cancellation of Trademark pursuant

U.S.C.

of Narcotics,

Six Unknown Named 403

U.S.

338

(1971);

III - Deprivation of privacy and sanctity of

pursuant to 42 U.S.C.

§ 1983 and under Bivens v.

Unknown Named Agents of Fed. U.S.

Filed 10/09/2009

338

Count

Bur.

of Narcotics,

home Six

4 03

(1971);

IV - Abuse

Count V - Abuse

of of

Trademark Act authority

(§

1116);

Process;

Count VI - Conversion and/or Trespass to Chattels; Count VII

-

Count VIII

DVF and

all

Trespass;

- False

payment

Imprisonment.

the Law Defendants

claims against of

costs

Federal Rule of

and

them.

now separately move

The Law Defendants

and a stay of

Civil

for dismissal of

also move

for

the proceedings pursuant

to

Procedure 41(d).

II.

A Federal Rule of

STANDARD OF

Civil

REVIEW

Procedure

12(b)(6)

motion should be

granted unless an adequately stated claim is "supported by

showing any set of complaint." (2007)

facts consistent with the allegations

Bell Atlantic Corp.

v.

(internal citations omitted);

"A pleading that offers recitation of

Twombly, see Fed.

550 U.S. R.

Civ.

in the

544, P.

561

12(b)(6).

labels and conclusions or a formulaic

the elements of a cause of action will not do." 6

Case 1:08-cv-01270-GBL-TCB

Ashcroft v. U.S.

at

Iqbal,

555.

129

Document 51

S.

Ct.

A complaint

is

"naked assertions devoid of

129 S.

Ct.

at

1949

1937, also

Filed 10/09/2009

1949

{2009);

insufficient

further

factual

Id.;

12(b)(6)

Twombly,

550 U.S.

at

plausible "when the plaintiff pleads the court liable

to draw the reasonable

555 U.S.

at

construe the complaint read the

asserted therein as

1130,

1134

(4th Cir.

in the

Tellabs,

Ct.

2509

legal effect of v.

Havel,

purpose of

43

that

A claim is

factual

content

that

Iqbal,

motion,

complaint as a whole, true.

Mylan Lab.,

1993).

Inc.

v.

(2007).

the

F.3d

upon

Iqbal,

is plausible on

129

facially that allows

the defendant S.

Ct.

at

is

1949;

the Court must

favorable and take

Inc.

v.

to

the

the

facts

Matkari,

7

the

incorporated into the complaint

Makor Issues & Rights,

judicial

Ltd.,

127 S.

"Conclusory allegations regarding the

facts alleged" need not be accepted.

918,

F.3d

In addition to the complaint,

and matters of which a court may take

notice." 24 99,

570.

light most

court may also examine "documents by reference,

relies

556.

In considering a Rule 12(b)(6)

plaintiff,

it

motion to dismiss a

inference

for the misconduct alleged."

Twombly,

if

550

enhancement."

complaint must set forth "a claim for relief face."

Twombly,

(internal citations omitted).

In order to survive a Rule

its

Page 7 of 20

921

the complaint

is

(4th Cir.

1995).

to provide

Because

the

Labram central

the defendant "fair notice

of what the plaintiff's claim is and the grounds upon which it

Case 1:08-cv-01270-GBL-TCB

rests," the plaintiff's some

factual basis

fair response.

Document 51

Filed 10/09/2009

legal allegations must be

sufficient

Conley v.

to allow the

Gibson, III.

355

U.S.

supported by

defendant 41,

Page 8 of 20

47

to prepare a

(1957).

ANALYSIS

The Court grants Defendants' Motions

to Dismiss because

Plaintiffs' claims are barred by the doctrine of claim preclusion.

The Court denies

Costs because none of

the

the Law Defendants' Motion for

stated purposes of Rule 41(d)

served by awarding costs in this holding

A^

case.

The Court addresses each

in order below.

Claim Preclusion

The Court grants Defendants' Motions

to Dismiss

claims because they are barred by claim preclusion. doctrine of of

would be

claim preclusion,

an action precludes

'[a]

final

Plaintiffs' "Under the

judgment on the merits

the parties or their privies

from

relitigating issues that were or could have been raised in that

action."1 Rivet v.

Regions Bank of La.,

(quoting Federated Dep't Stores,

398

(1981)).

Inc.

522 U.S.

v.

Moitie,

of all grounds for,

452 U.S.

claim preclusion "prevents

or defenses

available to the parties,

to,

(1998) 394,

v.

E.

litigation

recovery that were previously

regardless of whether they were

asserted or determined in the prior proceeding."

Inc.

476

In addition to barring claims that were actually

raised and fully litigated,

of Am.,

470,

Auto Distribs.,

Inc.,

892

Peugeot Motors

F.2d 355,

359

(4th

Case 1:08-cv-01270-GBL-TCB

Cir. Thus,

1989)

Document 51

(quoting Brown v.

claim preclusion bars

"arises out of

the

same

Felson,

Filed 10/09/2009

442

U.S.

a claim where

199

transaction or series of

F.3d 694,

704

131

(1979)).

the new litigation

the claim resolved by the prior judgment."

United States,

127,

Page 9 of 20

transactions as

Pittston Co.

(4th Cir.

1999)

v.

(internal

citations omitted).

Claim preclusion applies where on the merits

in a prior suit;

2)

there

is "1)

an identity of

action in both the earlier and the

later suit;

of parties or their privies

two suits."

United States, Martin v.

Am.

Cir.

2005).

this

case. 1.

369 F.3d 345,

in the

354-55

Bancorporation Ret.

a final

(4th Cir.

Plan,

4 07

judgment

the cause of

and 3)

an identity

Pueschel

2004);

F.3d 643,

v.

see also 650

(4th

Only the second and third factors are at issue in

Identity of

the cause of action

The Court finds that

there is an identity of the cause of

action in the present and 2006 suits.

An identity of the cause

of action "does not turn on whether the claims asserted are

identical," but instead "turns on whether the suits and the

claims asserted therein 'arise out of the same transaction or series of transactions or the same core of operative facts.1" Pueschel, F.3d 1310,

369 F.3d at 355 1316

(4th Cir.

(quoting In re Varat Enters.,

Inc.,

1996)).

"Transaction" in the claim preclusion context refers to "a

81

Case 1:08-cv-01270-GBL-TCB

Document 51

natural grouping or common nucleus

Pittston,

199

F.3d at

704

assessing whether there between two claims,

time,

space,

whether,

citations

Page 10 of 20

facts."

omitted).

the cause of

In action

consider the "relatedness

or motivation" of

the operative

in

facts,

they form a convenient unit

"and

for trial

Id.

Here, of

operative

is an identity of

taken together,

purposes."

(internal

courts will

origin,

of

Filed 10/09/2009

all of

the same

series

Plaintiffs' claims

Plaintiffs' presently asserted claims arise out of

transactions

fall

as DVF's

2006

lawsuit.

into two general categories:

challenging the validity of

the DVF trademark;

1)

and 2)

a claim claims

challenging the execution of the court-authorized search and seizure. As

to

the

challenge

to

the DVF trademark,

Count

I

clearly

arises from the same core nucleus of operative fact because the validity of

2006 2007,

the mark was considered and determined during the

infringement action. DVF moved

the Snyders,

validity,

litigation,

for summary judgment on all of

including its

considering the

In the 2006

on August 15,

its claims against

trademark infringement claim.

In

trademark infringement claim and the mark's

the Court stated that the first step in prevailing on a

trademark infringement claim is to show possession of a valid, protectible trademark.

Mem.

Op.,

Lone Star Steakhouse & Saloon,

Sept.

Inc.

10

v.

10,

2007,

at 5

Alpha of Va.,

(quoting

Inc.,

43

Case 1:08-cv-01270-GBL-TCB

F.3d

922,

930

(4th Cir.

registration of

Document 51

1995)).

The

the mark with the

evidence of validity,

Filed 10/09/2009

Court

Co.

v.

that at

6.

...

[exclusive]

Instead,

the

facie

Corp.,

624

F.2d 366,

Snyders

the presumption of

use."

The Court expressly noted that

the DVF marks

prima

thereby shifting the burden to the

Rovira Biscuit

1980)).

acknowledged that

PTO served as

to "introduce sufficient evidence to rebut

plaintiff's right to

Page 11 of 20

Id.

(quoting Keebler

373 n.4

{1st Cir.

the Snyders did not "deny

in this action are properly registered." Snyders

argued

that

Id.

the marks were not

"currently used in commerce and thus are not valid or protectible."

Id.

The Court held that the Snyders

failed to

rebut the presumption of validity created by the registration of DVF's mark.

Now, later,

Id.

in a separate suit brought roughly a year and a half

Plaintiffs attempt to revisit the

validity and seek its cancellation,

issue of the mark's

alleging that DVF committed

fraud in its trademark application by claiming current use of

the

mark for many types of goods not manufactured under the DVF trademark.

(Am.

Compl.

Uif 64-66,

69.)

Plaintiffs,

however,

missed their opportunity to litigate this issue when they failed to raise it during the 2006 proceedings.

As noted above,

claim

preclusion bars not only the claims and defenses actually raised and asserted,

parties,

but also those "previously available to the

regardless of whether they were asserted or determined

11

Case 1:08-cv-01270-GBL-TCB

Document 51

in the prior proceeding." fraudulent

registration

during

2006

the

claim was

litigation,

the registration of raise

Peugreot,

the

but

Filed 10/09/2009

892

F.2d at

mark at

that

time.

Court.

As

such,

Counts

Count

I

is

as

the

the execution of

2006

the

in furtherance of,

from the

the

2006

Law Defendants,

litigation.

among other things.

Thus,

the

DVF moved for a

and

seizure

Pursuant to the Court's

of

executed a

involved in the

granting,

search

counterfeit DVF

In acquiring evidence of

transactions

included the application for,

of

obtained during,

the DVF

DVF was able

for summary judgment on several of

series of

suit

the counts concern

counterfeiting operation from the Snyders' home, successfully move

did not

2006

series

with Herndon police,

the Snyders' home and seized dozens

dresses,

Snyders

in the

same

suit because all of

order which was granted by the Court. Order,

a defense

squarely before the

Seizure Order which was

the

as

barred.

II through VII arise

transactions

of

The

the DVF trademark was

Plaintiffs'

failed to challenge

their fraudulent registration argument

when the validity of

359.

clearly available

Plaintiffs

Page 12 of 20

its

2006

to

claims.

litigation

and execution of

the

Seizure Order.

It

is

evident

that

Counts

II through VII arise

from the

series of transactions.

In the First Amended Complaint,

Plaintiffs

challenge

grounds

Defendants

in obtaining the Seizure Order.

the

asserted by DVF and the

12

(Am.

Compl.

same

Law

UH

17-

Case 1:08-cv-01270-GBL-TCB

24.)

They also allege various ways

improperly executed the 47.)

of

Document 51

The

the

facts

2006

As

such,

Counts

II

(Am.

Plaintiffs' present

when "taken together

convenient unit for trial purposes." through VII

Compl.

.

Pittston,

.

199

F.3d at 704.

are barred.

case

a claim is barred only if

on the prior judgment. 522

F.3d 1320,

1324

or 2)

it amounts

1)

is properly

Cir.

2008)

Under it was a

to a collateral attack

See Nasalok Coating Corp.

(Fed.

v.

Nylok Corp.,

(applying defendant

preclusion to a trademark cancellation claimant who was defendant

27-

form a

determined using the rules of defendant preclusion.

compulsory counterclaim,

HU

claims and those

.

Plaintiffs argue that preclusion in this

defendant preclusion,

Page 13 of 20

in which the Law Defendants

search and seizure.

underlying

litigation,

Filed 10/09/2009

in a prior infringement action).

the

Plaintiffs argue that

claim preclusion does not apply here because neither of the above factors

are present.

Plaintiffs cite to no Fourth Circuit caselaw adopting this test.

As Fourth Circuit precedent makes clear,

claim preclusion

is not so strictly concerned with the party's specific role in the previous litigation,

but

instead more generally requires

participation in the prior action or privity with one of the parties.

See,

doctrine of res

e.g.,

Pueschel,

judicata,

369 F.3d at 354

or claim preclusion,

judgment on the merits of an action precludes

13

("Under the '[a]

final

the parties or

Case 1:08-cv-01270-GBL-TCB

their privies

Document 51

from relitigating

been raised in that action."') added));

Meekins

(4th Cir.

1991)

v.

issues

for,

United Transp.

("[N]ot only does

available

to

or defenses

to,

the parties,

that

were

Union, res

946

judicata bar claims

it prevents

recovery

that

Additionally,

on whether the party had a

full

her claims and defenses

the previous

drastic

40

consequence,

preclusion is

that

to advance all

proceeding.")

in

F.3d 677

1057 that

litigation of all

were previously

the greater focus

action.

(4th Cir.

the claimant

1994)

is

See Dionne

v.

("because of

[its]

for applying claim

shall have had a

transaction" claims

Plaintiffs do not argue that

denied the opportunity to raise

(citations

and fair opportunity to litigate

a critical predicate

its "same

1054,

regardless of whether they were

(emphasis added)).

City of Baltimore,

(emphasis

F.2d

asserted or determined in the prior proceeding." omitted)

Page 14 of 20

or could have

(citations omitted)

were raised and fully litigated, grounds

Filed 10/09/2009

fair opportunity

in a single unitary

they were in some way

their claims

in the previous

action.

Plaintiffs also argue the

that

same nucleus of operative

their claims do not arise

fact because

were not compulsory counterclaims

in the

their present

2006

suit.

from claims

Plaintiffs

rely on Virginia's claim preclusion law for their position, federal

law determines

judgment.

Shoup v.

the preclusive effect of

Bell

& Howard Co.,

14

872

but

a prior federal

F.2d 1178,

1179

(4th

Case 1:08-cv-01270-GBL-TCB

Cir.

1989).

The

federal

that were available, Brown,

442 U.S.

grounds

for,

at

law of

131

("Res to,

the parties,

Filed 10/09/2009

claim preclusion bars

not merely those

or defenses

available to

Document 51

946

F.2d at

all

claims

that were compulsory.

judicata prevents recovery that

litigation of

See all

were previously

regardless of whether they were

asserted or determined in the prior proceeding.");

Meekins,

Page 15 of 20

1057.

The Court

see also

therefore rejects

Plaintiffs' arguments and holds that there is an identity of the cause of action in the present and 2006 2.

lawsuits.

Identity of parties or their privies

The Court finds an identity of parties or their privies in the

two suits

as well.

former litigation,

"To be

in privity with a party to a

the non-party must be 'so identified in

interest with a party to former litigation that he represents precisely the same legal right in respect to the subject matter involved.'" Martin,

407

F.3d at 651.

"The concept of privity

requires an alignment of interests and not an exact identity of

parties."

Weinberger v.

Tucker,

510 F.3d 486,

492

(4th Cir.

2007).

As

to Plaintiffs and DVF,

In the 2006 suit,

Snyder.

there

is

an identity of parties.

DVF brought claims against Mr.

and Mrs.

DVF voluntarily dismissed its claims against Mr.

and obtained a judgment against Mrs.

Defendants,

Snyder.

there is an identity of privies.

15

As

Snyder

to the Law

The Law Defendants

Case 1:08-cv-01270-GBL-TCB

acted as

counsel

throughout

the

Document 51

Filed 10/09/2009

to DVF and represented DVF's

Page 16 of 20

interests

litigation.

Plaintiffs

argue

that,

as

identity of privies because

to the Law Defendants,

the Law Defendants were not

privity with DVF in the previous for two reasons. for purposes of

First, res

there

litigation.

a party and its

judicata when the

claims

in

This argument

attorney are

is no

fails

in privity

in the current

proceeding turn on the conduct of the attorney in the earlier suit.

See

Weinberger,

510

F.3d at

492-93.

Here,

Plaintiffs'

claims depend on the Law Defendants' conduct while representing

DVF in the prior case.

Second,

privity exists because the Law

Defendants acted as DVF's agents the execution of GMC,

476

F.

Supp.

the

in the earlier case and during

seizure order.

2d

545,

558

n.15

See Field Auto City, (E.D.

Va.

2007)

Inc.

(holding

v.

that

a party's agent is its privy under Virginia law for purposes of res judicata); l:03cvll92, 21,

2007)

Canon U.S.A.,

2007

U.S.

Dist.

Inc.

v.

LEXIS

Lease Group Res.,

37710,

at

*17

n.4

Inc.,

(E.D.

No.

Va.

May

(same).

Plaintiffs also argue that there is no identity of parties as

to Mr.

Snyder because Mr.

previous litigation.

Snyder was

However,

not

a party to the

a voluntary dismissal with

prejudice "is a valid final judgment on the merits" that has res judicata effect.

1987);

Kenny v.

see also Am.

Quigg,

Cyanamid Co.

820

v.

16

F.2d 665,

Capuano,

669

{4th Cir.

381 F.3d 6,

17

(1st

Case 1:08-cv-01270-GBL-TCB

Cir.

2004)

deemed a

{"[A]

final

criterion.")

judgment

claims

2006

action,

that

an objection to

there

Mr.

that

satisfies

against Mr.

the

510

F.3d at 492.

ordinarily

judicata

in the

litigation at

the time

been appropriate.

As

parties.

2006 action,

Mr.

Snyder and Mrs.

concept of privity requires an

Mr.

Snyder

identity of parties." is Mrs.

the searched property.

Snyder's husband

Mr.

Snyder shared

Snyder and shared bank accounts that were

to the asset

freeze agreed to by the parties and ordered

in the 2006 action.

sufficiently aligned with Mrs. such,

the

interests and not an exact

a home with Mrs.

by the Court

"The

Page 17 of 20

although DVF voluntarily

search would have

is an identity of

and the joint owner of

subject

Here,

Snyder was a party to

Snyder were in privity.

Weinberger,

the res

is

Snyder with prejudice

Even if not a party in the

alignment of

Filed 10/09/2009

voluntary dismissal with prejudice

(citations omitted).

dismissed its

such,

Document 51

because there

and an identity of

Mr.

Snyder's

interests

are

Snyder's to establish privity.

is both an identity of

As

the cause of action

the parties or their privies,

the Court grants

Defendants' separate Motions to Dismiss because Plaintiffs' claims are barred by claim preclusion.

17

Case 1:08-cv-01270-GBL-TCB

C.

Document 51

Filed 10/09/2009

Page 18 of 20

Costs

The Court denies Costs pursuant neither of costs

to Federal Rule

the purposes

in this If

the Law Defendants' Motion for Payment of

case.

Rule

a plaintiff

court

of

Rule 41(d) 41(d)

who has

commences

of Civil

Procedure

are not

same

claim against such order

once

the

for

because

served by awarding

provides dismissed an action in any

an action based upon or

make

41(d)

same

defendant,

the payment

of

including

the

the court may

costs

of

the action

previously dismissed as it may deem proper and may stay the proceedings in the action until the plaintiff has complied with the order. Fed.

R.

Civ.

P.

41{d).

intended to serve as

litigation." (8th Cir. v.

1992)

the

awarded under Rule

a deterrent

Simeone v.

Piatrowski,

Senate of

Costs

First Bank Nat'l Ass'n,

F.3d 497,

Commonwealth,

501 955

"are

to forum shopping and vexatious

(internal citations omitted); 223

41(d)

(7th Cir. F.

Supp.

971

F.2d 103,

108

see also Esposito

2000);

1549,

Larsen v.

1582

(M.D.

Pa.

1997).

Courts have broad discretion to award costs under Rule

41(d).

Fed.

Supp.

R.

2d 614,

Civ.

624

P.

41(d);

(N.D.

Ohio

Crespo v.

WFS Fin.,

Inc.,

580 F.

2008).

To determine whether costs under Rule 41(d)

are appropriate,

courts will look to whether the current action '"is based on or includ[es]' the same claim against the same party-defendant." Esposito, Corp.,

823

223

F.3d at 499

F.2d

1073,

1077

(citing Szabo Food Serv. (7th Cir.

1987).

Canteen

Although bad

is not required to award costs under Rule 41(d),

18

v.

Rogers v.

faith

Wal-

Case 1:08-cv-01270-GBL-TCB

Mart Stores,

Inc.,

faith reason for

230

Inc.,

F.3d

117

motion. F.

Awarding costs

sought

Virginia. of

874

(6th Cir.

in this

2d 515,

520

Here,

their claims

Page 19 of 20

a good

strong grounds

(E.D.

Va.

v.

for

Cox

2000).

case would deter neither

litigation.

to litigate

2000),

See Beam Laser Sys.

Supp.

shopping nor vexatious times

868,

Filed 10/09/2009

the dismissal may provide

denying a Rule 41(d) Communs.,

Document 51

forum

Plaintiffs have at all

in the Eastern District of

Plaintiffs were preceding pro se

in the complex areas

civil rights and trademark law and dismissed their claims

seek assistance of

their claims

counsel

rather than face

the potential

in a looming motion to dismiss.

to

loss of

The Court finds

that dismissal under these circumstances was reasonable and not vexatious.

As

such,

for Payment of Costs Federal Rule of

Civil

the Court denies and a Stay of Procedure

IV.

the Law Defendants' Motion

Proceedings

41(d).

CONCLUSION

The Court grants Defendants' Motions through VII of

the

Pursuant to

to Dismiss Counts

First Amended Complaint because

barred by claim preclusion.

The Court denies

I

the claims

are

the Law Defendants'

Motion for Payment of Costs and a Stay of Proceedings Pursuant Federal Rule of

Civil

Procedure 41(d)

to

because an award of costs

in this case would not serve to deter forum shopping or vexatious litigation.

Therefore,

it

is

hereby

19

Case 1:08-cv-01270-GBL-TCB

Document 51

Filed 10/09/2009

Page 20 of 20

ORDERED that Defendant Diane Von Furstenberg Studio's Motion

to Dismiss Plaintiffs' Complaint is GRANTED. VII of It

the

is

Counts

I

through

First Amended Complaint are DISMISSED WITH PREJUDICE.

further

ORDERED that Greenberg Traurig Defendants' Motion to Dismiss Pursuant Stay of

41(d)

to Rule

12(b)(6)

and Request

Proceedings Pursuant

for Payment of

to Federal Rule of

is GRANTED IN PART and DENIED IN PART.

Civil

PREJUDICE.

the

The

and a Stay of

Procedure

The Court GRANTS

the Greenberg Traurig Defendants' Motion to Dismiss. through VII of

Costs and a

Counts

I

First Amended Complaint are DISMISSED WITH

Court DENIES

Proceedings

their Motion for

Pursuant

Payment

to Federal Rule of

of

Costs

Civil

Procedure 41(d).

The Clerk is directed to

forward a copy of

this Order to

Counsel.

Entered this

Alexandria,

10/

A fi

7

day of October,

2009.

Virginia

/09

Gerald Bruce Lee

JsL

United States District Judge

20