Juicy Couture, Inc. v. Bella International Ltd.
930 F. Supp. 2d 489
| S.D.N.Y. | 2013Background
- Juicy Couture, Inc. sues Defendants for trademark infringement, counterfeiting, cybersquatting and related claims, seeking a preliminary injunction.
- Defendants operate Hong Kong-based brands, including Juicy Girl, and have used JUICY GIRL, JUICYLICIOUS, and JG marks in promotion and sale of apparel.
- Plaintiff’s marks include JUICY, JUICY COUTURE, JUICY GIRL and various design marks; Defendants’ use dilutes/similar to Juicy Marks.
- HK Website www.juicygirhcom.hk facilitates some US-facing sales and orders, though most Defendants’ sales occur abroad.
- Court grants injunctive relief in part but declines extraterritorial application of the Lanham Act to foreign websites; ruling is limited to U.S. activities.
- Proceedings include Hong Kong action pending, with discovery completed and trial anticipated in 2013.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Juicy is likely to succeed on the merits of infringement | Juicy Marks are valid and distinctive; Defendants’ JUICY GIRL, JUICYLICIOUS, and JG create confusion | Defendants’ marks and use do not infringe Juicy Marks in the true market | Juicy likely to succeed on infringement |
| Whether Irreparable harm supports a preliminary injunction | Continued risk to Juicy’s goodwill and reputation if uninjured | Harm not irreparable given limited US sales | Irreparable harm shown; injunction warranted |
| Whether the balance of hardships favors entry of an injunction | Defendants’ US activities threaten Juicy’s brand; hardship to Juicy outweighs Defendants’ | Inflicted hardship on Defendants but their US sales are minimal | Balance favors Plaintiff with a narrowly tailored injunction |
| Whether the public interest supports an injunction | Prevention of consumer confusion protects public | Not addressed; potential international consequences | Public interest supports injunction against US-era use |
| Whether the Lanham Act applies extraterritorially to Defendants’ foreign conduct | Extrinsic conduct affecting US commerce can be enjoined | Lanham Act should not apply extraterritorially to foreign website | Extraterritorial application inappropriate at this stage; restricts to US activities |
Key Cases Cited
- Gruner & Jahr USA Publ’g v. Meredith Corp., 991 F.2d 1072 (2d Cir. 1993) (Polaroid-like confusion factors applied to likelihood of confusion)
- Cadbury Beverages v. Cott Corp., 73 F.3d 474 (2d Cir. 1996) (considerations on the strength and proximity in confusion analysis)
- Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867 (2d Cir. 1986) (strength of marks; protected status of registered marks)
- Brennan’s Inc. v. Brennan’s Rest., LLC, 360 F.3d 125 (2d Cir. 2004) (strength and validity of marks; overlap with Polaroid factors)
- Time, Inc. v. Petersen Publ’g Co. LLC, 173 F.3d 113 (2d Cir. 1999) (standard for likelihood of confusion and infringement)