Marcel Fashions Group, Inc. v. Lucky Brand Dungarees, Inc.
779 F.3d 102
| 2d Cir. | 2015Background
- Marcel Fashions owns a federal registration for the trademark "Get Lucky" and licensed it to third parties; Lucky Brand sells apparel under "Lucky Brand" and related marks.
- Marcel and Lucky Brand litigated in 2001 and settled: Lucky Brand agreed to desist from using "Get Lucky" but retained rights to use "Lucky Brand."
- In 2005 Lucky Brand sued Marcel and allies; discovery misconduct led to a 2009 injunction forbidding Lucky Brand from using "Get Lucky." A jury in the 2005 action found Lucky Brand infringed "Get Lucky" (including by use of "Lucky Brand" or marks containing "Lucky") after May 2003 and awarded damages; the court entered a 2010 Final Judgment reflecting that verdict.
- Marcel filed a new action in 2011 alleging continued post-judgment infringement by Lucky Brand and sought damages and an injunction; the district court transferred the case to SDNY (where the 2005 action was heard).
- The district court granted Lucky Brand summary judgment, holding Marcel’s 2011 claims barred by res judicata and denied leave to amend; it also denied Marcel’s contempt motion for alleged violation of the 2009 injunction.
- The Second Circuit vacated the grant of summary judgment and the denial of leave to amend (res judicata did not bar suits for subsequent infringements), affirmed denial of contempt (injunction did not clearly prohibit use of "Lucky Brand" marks), and remanded for further proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Marcel's 2011 claims are barred by res judicata (claim preclusion) | Marcel: prior judgment for past infringements does not bar suit for subsequent, post-judgment infringements | Lucky Brand: prior adjudication and jury award for infringements "after May 2003" and Marcel's failure to seek an injunction against "Lucky Brand" preclude the new suit | Vacated district court: res judicata does not bar claims based on infringements occurring after the prior complaint/settlement; summary judgment reversed and remanded |
| Whether leave to amend should have been denied as futile because of res judicata | Marcel: amendment should be allowed; res judicata does not apply to post-judgment infringements | Lucky Brand: amendment would be futile because claims are precluded by prior judgment | Vacated denial: because res judicata ruling was erroneous, leave-denial on that ground must be reconsidered on remand |
| Whether Lucky Brand should be held in contempt for violating the 2009 injunction | Marcel: the injunction, read with the verdict and judgment, forbids use of "Lucky Brand" marks, so continued use is contempt | Lucky Brand: the injunction only bars reproduction/imitations of "Get Lucky," not use of its own "Lucky Brand" marks | Affirmed: injunction was not clear and unambiguous as to "Lucky Brand" marks; contempt denial affirmed |
Key Cases Cited
- TechnoMarine SA v. Giftports, 758 F.3d 493 (2d Cir.) (prior judgment does not bar suits for subsequent infringements occurring after the earlier complaint)
- Lawlor v. Nat'l Screen Serv. Corp., 349 U.S. 322 (U.S.) (a prior judgment cannot extinguish claims that did not yet exist)
- Taylor v. Sturgell, 553 U.S. 880 (U.S.) (distinguishing claim preclusion and issue preclusion)
- Jim Beam Brands Co. v. Beamish & Crawford Ltd., 937 F.2d 729 (2d Cir.) (discussed as dicta regarding preclusion and availability of injunctive relief)