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Media Alerts - Marcel Fashions Group, Inc. v. Lucky Brand Dungarees, Inc., et. al.--Second Circuit
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February 27, 2015
  Marcel Fashions Group, Inc. v. Lucky Brand Dungarees, Inc., et. al.--Second Circuit
Headline: Second Circuit Lets Trademark Claim Against Lucky Brands Go Forward

Area of Law:
Trademark Infringement

Issue Presented: Whether the plaintiff's trademark infringement claim was barred by the doctrine of res judicata.

Brief Summary: Plaintiff-Appellant Marcel Fashions, owner of the trademark "Get Lucky," has been selling jeans under that mark since 1986. In 1990, defendant-appellee Lucky Brand Dungarees began selling jeans under the mark "Lucky Brand" as well as other marks with the word "Lucky." Marcel Fashions has brought two previous actions against Defendants, each time asserting trademark infringement. In the first action, a settlement was reached where Lucky Brand would stop using "Get Lucky." In the second action, the Final Order and Judgment stated that Lucky Brand and affiliated parties (the "Defendants") had committed trademark infringement by using the "Get Lucky" and "Lucky Brand" trademarks; it further enjoined Lucky from using the "Get Lucky" mark. In the instant action, Marcel asserts that Defendants infringed on Marcel's "Get Lucky" trademark by using the mark in an identical manner for which the Defendants were found liable in a previous action. The District Court granted summary judgment for Defendants, holding that Marcel's claims were precluded by res judicata because the claims were similar to a previous action. The Second Circuit reversed, stating that "winning a judgment based on the defendant's violation of the plaintiff's rights does not deprive the plaintiff of the right to sue the same defendant against for the defendant's further subsequent similar violations." The court added, however, that the injunction from the earlier lawsuit had not clearly prohibited Lucky from using the "Lucky Brand" mark - it had only explicitly forbade use of the "Get Lucky" mark. It therefore affirmed the district court's refusal to hold Defendants in contempt, and remanded the case to go forward. The full text of the opinion may be found at: http://www.ca2.uscourts.gov/de...12c33/2/hilite/


Extended Summary: Plaintiff-Appellant Marcel Fashions holds a federal trademark for "Get Lucky" and has sold jeans under that mark. Defendants-Appellees own its own trademarks including "Lucky Brand" and "Lucky Brand Dungarees." Plaintiff has previously brought suit against Defendants alleging unfair competition and trademark infringement. The parties settled in the first action. The settlement provided that Lucky Brand "shall desist henceforth from use of 'Get Lucky' as a trademark," while acknowledging the Defendant's right "to use, license and/or register the trademark LUCKY BRAND and/or any other trademarks...." In the second action, Plaintiff alleged inter alia, that Defendants breached their previous settlement agreement. At the conclusion of the second action, the jury found that Defendants did indeed infringe upon Plaintiff's "Get Lucky" mark after the date of their first settlement and thus awarded Plaintiff compensatory and punitive damages. The lower court's Final Order and Judgment in the second action enjoined Defendants from using the "Get Lucky" mark and also found that Defendant had infringed Marcel Fashion's "Get Lucky" trademark by using "Get Lucky, "Lucky Brand" and other marks with the word "Lucky."

In the instant action, Plaintiff asserts that that Defendants infringed Plaintiff's "Get Lucky" trademarks in the "identical manner and form and on the same goods for which they were found liable for infringement" in the second action. The lower court granted Defendant's motion for summary judgment under the doctrine of res judicata and further denied Plaintiff's motion for leave to file an amended complaint based on claim preclusion. Lastly, the district court also denied plaintiff's motion to hold Defendants in contempt for violating the terms of the second action.
The Second Circuit determined that Plaintiff's complaint and leave to file an amended complaint was not barred by the doctrine of res judicata and therefore vacated the lower court's ruling. The court explained that "[w]inning a judgment based on the defendant's violation of the plaintiff's rights does not deprive the plaintiff the right to sue the same defendant again for the defendant's further subsequent similar violations." The Second Circuit further noted that claim preclusion does not bar a claim arising out a "continuance of the same course of conduct." If this were the case, the court reasoned, Lucky Brand would be free to infringe on Marcel's trademark in perpetuity.

The Second Circuit did, however, affirm the lower court's denial of Marcel's motion to hold Lucky Brand in contempt for violating the injunction issued in the second action by its subsequent use of the "Lucky Brand" marks. The Court found that the order in question was unclear, as it did not clearly forbid Lucky Brand from using the "Lucky Brand" marks. Therefore, the Second Circuit found no error in the lower court's denial of the contempt motion.

The full text of the opinion may be found at: http://www.ca2.uscourts.gov/de...12c33/2/hilite/


Panel: Circuit Judges Leval, Calabresi, and Lynch

Argument Date:
February 5, 2014

Date of Issued Opinion: February 25, 2015

Docket Number: 12-4341-cv

Decided: Affirmed in Part and Vacated in Part

Case Alert Author: Eddie Chang

Counsel: Matthew A. Pek, Law Offices of Matthew A. Pek, Esq., for Plaintiff-Appellant; Leslie Gordon Fagen, Paul, Weiss, Rifkind, Wharton & Garrison LLP (Darren W. Johnson, on the brief), for Defendant-Appellees

Author of Opinion:
Judge Leval

Circuit: 2nd Circuit

Case Alert Supervisor: Emily Gold Waldman

    Posted By: Emily Waldman @ 02/27/2015 12:52 PM     2nd Circuit  

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