United States District Court, D. New Jersey
MCNULTY UNITED STATES DISTRICT JUDGE.
Industria de Alimentos Zenu, S.A.S ("Industrial brought
a sixteen-count action against the defendants, Latinfood U.S.
Corp doing business as Zenu Products Co.
("Latinfood"), and Wilson Zuluaga. Latinfood has
asserted a counterclaim for tortious interference with
prospective economic advantage against Industria and
Cordialsa, Inc. ("Cordialsa").
and Cordialsa now move under Federal Rule of Civil Procedure
12(b)(6) to dismiss the most recent amended version of
Latinfood's Counterclaim for failure to state a claim.
For the reasons set forth below, that motion is denied.
previously considered this case in the context of Latinfood
and Mr. Zuluaga's motion to dismiss Counts 1-4 and 11-16
of the Amended Complaint under Federal Rule of Civil
Procedure 12(b)(6) for failure to state a claim upon which
relief can be granted. See Industria de Alimentos Zenu
S.A.S. v. Latinfood U.S. Corp., No. CV 16-6576
(KM)(MAH), 2017 WL 6940696 (D.N.J. Dec. 29, 2017).
Familiarity with that opinion, which relates the background
of the litigation and the allegations of the complaint, is
Filed an answer generally denying those allegations and
asserting a counterclaim for tortious interference with
prospective economic advantage against Industria and
Cordialsa. (Answer, Counterclaims UK 24-27). The current
amended version of the counterclaim (cited as
"Counterclaim", ECF no. 89 at 19-25) alleges as
is a corporation organized under the laws of Colombia and is
a wholly-owned subsidiary of Grupo Nutresa S.A. (Counterclaim HU
3, 12). Cordialsa is a corporation organized under the laws
of Texas, and is also a wholly-owned subsidiary of Grupo
Nutresa S.A. (Id. UK 4, 12). Cordialsa, which began
its operations in 2004, is the "marketing arm and
distribution company for Grupo Nutresa S.A."
(Id. t 12)
to Latinfood, Cordialsa "uses different channels of
distribution ... to commercialize its products in the U.S.,
" including "supermarkets, convenience stores, club
stores, mass merchandisers and dollar stores."
(Id. K 13). Cordialsa has warehouses in Houston,
Texas; Laredo, Texas; and Los Angeles, California.
(Id.) Latinfood alleges upon information and belief
that Cordialsa sells its products in California, Nevada,
Arizona, Texas, Florida, New York, New Jersey, Illinois, and
Georgia. (Id. at ¶ 14).
around July 15, 2015, Mr. Zuluaga, on behalf of Latinfood,
paid a regular visit to its customer Food Fair Supermarket in
Paterson, New Jersey. [Id. 118). During that visit
the store manager requested that Mr. Zuluaga remove all of
Latinfood's Zenu-branded products from the store.
(Id.) The manager informed Mr. Zuluaga that the area
manager of Cordialsa, Alejandro Yepes, had told him that
Latinfood's Zenu-branded products were "Take."
(Id.) The manager also stated that Yepes
"intimidated" him "into removing the products
from the store entirely." (Id.)
same date, Mr. Zuluaga allegedly spoke to Mr. Yepes in the
parking lot of the supermarket. (Id. at ¶ 19).
Yepes acknowledged that he had told the Food Fair Supermarket
manager the Latinfood products were "'fake, ™
and also "that he had requested [the products] be
removed from the store shelves." (Id.) Yepes
also stated that "he had been given direct orders from
his manager, Luis Arango" not only to "identify
points of sale of any Zenu-branded products, " but also
to tell those points of sale "that the products were
'fake." (Id.) Yepes stated that Arango had
told him that the products "had to be removed
immediately from the sales floor." (Id.)
that day, Latinfood sent a cease-and-desist letter to Arango
and Cordialsa. The letter described the incident at Food Fair
Supermarket, and demanded that "such malicious
actions" stop and such "willfully false
statements" cease. (Id. 1 20; a copy of the
letter is at ECF no. 69-2.) Latinfood asserts that despite
the letter, it "continued to receive several comments
from various Latinfood customers that Industria and/or
Cordialsa" had contacted them and informed them that
Latinfood's Zenu-branded products were
"'fake' and that the customers should
immediately stop carrying the products." (Id. H
21). Latinfood alleges that "Industrial and/or
Cordialsa's false and malicious comments" caused
Latinfood's sales and volumes to decrease or even cease
completely. (Id. U 22). The counterclaim alleges
that Industria and Cordialsa "seek to interfere with
Latinfood's current and prospective customer
relationships, and thereby deprive Latinfood of its economic
advantage to which it is entitled." (Id. If
October 5, 2016, Industria filed its initial Complaint
against Latinfood, doing business as "Zenu Products
Co.", and Mr. Zuluaga. (Cplt.) It asserted eight claims
against Latinfood and Mr. Zuluaga for infringmenet of
trademarks and unfair competition.
April 21, 2017, Industria filed an Amended Complaint
asserting sixteen causes of action against Latinfood and Mr.
Zuluaga. (AC) Although the initial Complaint
centered on the Zenu mark, the Amended Complaint added claims
with respect to the Ranchera mark. Counts 1-4 and 11 arise
under the Lanham Act. Counts 5-10 allege copyright
infringement of specific copyrights owned by Industria.
(Id. Iffl 126-67). Counts 12-14 allege violations of
the IAC. (Id. U 176-98) Counts 15 and 16 allege
unfair competition in violation of the New Jersey Fair Trade
Act, N.J. Stat. Ann. 56:4-1 et seq. (Id. H 199-216).
19, 2017, Latinfood and Mr. Zuluaga filed a Partial Answer to
Industrial Amended Complaint (ECF no. 36), as well as a
motion to dismiss Counts 1-4 and 11-16. (ECF no. 37) I denied
that motion to dismiss by Order and Opinion filed December
29, 2017. (ECF nos. 81, 82)
30, 2017, pursuant to stipulation, Latinfood and Zuluaga
filed their Amended Partial Answer, with a Counterclaim
asserted by Latinfood against Industria and Cordialsa.
((ECF no. 44 at 22-25)
September 8, 2017, Latinfood and Mr. Zuluaga filed their
Second Amended Partial Answer with Counterclaim. (ECF nos.
60, 62). The counterclaim of tortious interference with
prospective economic advantage was asserteds by Latinfood
against Industria and Cordialsa. (Id.)
September 29, 2017, Industria and Cordialsa filed a renewed
motion to dismiss the version of Latinfood's counterclaim
contained in the Second Amended Partial Answer. (ECF no. 69).
As Exhibit A to the motion, they attached a copy of the
cease-and-desist letter sent from Mr. Zuluaga, on behalf of
Latinfood, to Luis Arango. (ECF no. 69-2, Exh. A). Exhibit ...