790 F. Supp. 2d 136
S.D.N.Y.2011Background
- Gucci America, Inc. sues Guess?, Inc. and several licensees for trademark infringement related to five Gucci marks.
- Fact discovery closed March 15, 2011 after extensions; Gucci sought discovery of foreign sales and cost information.
- Gucci argued foreign sales information falls within Lanham Act scope due to substantial effect on U.S. commerce.
- Defendants argued untimeliness and undue burden; argued Lanham Act extraterritoriality requires substantial effect on U.S. commerce.
- Gucci submitted additional evidentiary materials in April 2011; court considered but denied relief as untimely and unpersuasive.
- Court denied Gucci’s motion to compel production of foreign sales information and held Lanham Act extraterritoriality not established.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Was Gucci's motion timely after discovery closed? | Gucci had ongoing need; information essential for scope of discovery. | Motion filed after discovery deadline; would impose burden; untimely under good cause standard. | Untimely; denied. |
| Does Lanham Act apply extraterritorially to Defendants' foreign activities? | Foreign sales can substantially affect U.S. commerce; supports extraterritorial reach. | No substantial effect shown; extraterritorial application not warranted. | Lanham Act does not apply extraterritorially. |
| Would reopening discovery likely yield admissible evidence of a substantial effect on U.S. commerce? | Domestic activity related to foreign operations could demonstrate substantial effect. | Evidence does not show mislead/confusion or substantial effect; burdens outweigh benefits. | Not reasonably calculated to lead to admissible evidence. |
| Is Gucci entitled to discovery based on domestic activity that allegedly supports foreign infringement? | Domestic licenses and showrooms could support foreign use of marks. | Domestic activity alone is insufficient for extraterritorial Lanham Act reach. | Insufficient to establish substantial effect. |
Key Cases Cited
- Steele v. Bulova Watch Co., 344 U.S. 280 (Supreme Court 1952) (extraterritorial Lanham Act allowed where effects extend beyond borders)
- Vanity Fair Mills, Inc. v. T. Eaton Co., 234 F.2d 633 (2d Cir. 1956) (three-factor test for substantial effect on U.S. commerce)
- Atlantic Richfield Co. v. Arco Globus Int'l Co., 150 F.3d 189 (2d Cir. 1998) (substantial effect requires more than mere domestic activity; key test)
- Totalplan Corp. of Am. v. Colborne, 14 F.3d 824 (2d Cir. 1994) (diversion and re-entry considerations for extraterritorial reach)