Louis Vuitton Malletier S.A. v. LY USA, Inc.
676 F.3d 83
2d Cir.2012Background
- Louis Vuitton filed a civil action in SDNY alleging counterfeit and infringing goods bearing LV marks by Lam, Chan, LY USA, Marco Ltd., and CoCo Inc., with cross-claims for indemnification and contribution.
- Lam and Chan were later indicted in the Eastern District of Virginia for importation and trafficking of counterfeit goods, prompting questions about staying the civil case pending criminal proceedings.
- The district court granted summary judgment for Vuitton on counterfeiting and infringement, and awarded statutory damages ($3 million) plus attorney's fees and costs, after adverse inferences from defendants' discovery conduct and Fifth Amendment assertions by Lam and Chan.
- Defendants challenged the stay denial and the award of attorney's fees, arguing Fifth Amendment burdens and lack of statutory basis for fees when statutory damages were elected, among other points.
- The Second Circuit affirmed the district court’s denial of the stay and held that attorney's fees could be awarded under §1117(a) in exceptional cases even where statutory damages were elected under §1117(c).
- Criminal convictions of Lam and Chan followed the civil proceedings; appeals in the criminal case were pending while the civil stay and fees issues were reviewed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the district court abused its discretion by denying a stay. | Lam/Chan argued stay favored by interests of justice to protect Fifth Amendment rights. | Vuitton argued stay unnecessary; civil proceedings should proceed to resolution. | No abuse; stay denial was reasonable. |
| Whether Vuitton may recover attorney's fees when choosing statutory damages under §1117(c). | Vuitton contends fees should be allowed under §1117(a) in exceptional cases. | Defendants argued election under §1117(c) forecloses fees under §1117(a). | Attorney's fees may be awarded under §1117(a) in exceptional cases even with §1117(c) statutory damages. |
| Whether the amount of attorney's fees awarded was proper. | Vuitton maintained fees were reasonable and well-documented. | Fees were excessive or inadequately documented; some expenses contested. | Fees were properly awarded; records supported reasonableness and necessity. |
Key Cases Cited
- Landis v. N. Am. Co., 299 U.S. 248 (1936) (stay decisions hinge on balancing interests and economy)
- Clinton v. Jones, 520 U.S. 681 (1997) (stays and docket management; interests of justice)
- Kashi v. Gratsos, 790 F.2d 1050 (2d Cir. 1986) (multi-factor stay analysis; interests of justice)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.1961) (Polaroid factors for likelihood of confusion)
- Patsy's Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209 (2d Cir.2003) (exceptional-case standard for attorney's fees)