TechnoMarine SA v. Giftports, Inc.
758 F.3d 493
| 2d Cir. | 2014Background
- TechnoMarine, a Swiss watch designer, alleges post-settlement infringement and unfair practices by Giftports involving TechnoMarine marks on Giftports’ website.
- The 2009 Litigation Settlement Agreement released claims related to the 2008-2009 suit but did not expressly authorize future use of TechnoMarine IP or future claims arising from new conduct.
- In 2011 TechnoMarine filed the present action seeking six claims, including trademark infringement and unfair competition, based on post-settlement conduct.
- Giftports moved to dismiss on res judicata grounds and, alternatively, for failure to state a claim; TechnoMarine sought leave to amend.
- The district court granted dismissal on res judicata and, alternatively, for failure to state a claim, and denied leave to amend; on appeal, the Second Circuit held res judicata did not bar post-settlement trademark claims but affirmed on alternative failure-to-state-a-claim grounds and denied leave to amend.
- The court clarifies that post-settlement conduct can give rise to new claims not barred by res judicata, but upholds dismissal due to pleading deficiencies.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether res judicata bars post-settlement claims. | TechnoMarine argues post-settlement acts form a new claim. | Giftports contends preclusion applies to conduct within the same course of conduct. | Not barred for post-settlement trademark claim; other claims barred or not pled sufficiently. |
| Whether the trademark infringement claim is barred or can proceed on post-settlement acts. | TechnoMarine asserts new 2010/2011 infringement. | Giftports argues preclusion applies to related conduct. | Trademark claim not barred by res judicata due to post-settlement acts that could support a new claim. |
| Whether settlement precludes the present suit. | Settlement extinguishes future claims. | Settlement does not extinguish future, unasserted claims. | Settlement does not preclude future claims not within its scope. See analysis. |
| Whether the district court properly denied leave to amend. | Amendment could cure pleading deficiencies. | Amendment would be futile given res judicata and deficiencies. | Denied; amendment not shown to cure pleading flaws; decision affirmed. |
Key Cases Cited
- Storey v. Cello Holdings, L.L.C., 347 F.3d 370 (2d Cir. 2003) (post-judgment conduct may give rise to new claims not barred by res judicata)
- First Jersey Sec., Inc. v. Securities Exchange Comm., 101 F.3d 1450 (2d Cir. 1996) (post-settlement conduct may give rise to new claims; supplement Rule 15 filings)
- Lawlor v. Nat’l Screen Serv. Corp., 349 U.S. 322 (1955) (course of conduct not automatically extinguished if new claims arise)
- Waldman v. Village of Kiryas Joel, 207 F.3d 105 (2d Cir. 2000) (post-dating conduct can be non-barred if legally significant; later claims may be barred if based on overlapping facts)
- Prime Mgmt. Co. v. Steinegger, 904 F.2d 811 (2d Cir. 1990) (breaches occurring after first suit may not be barred; precludes only pre-first-suit breaches)
- Greenberg v. Bd. of Governors of the Fed. Reserve Sys., 968 F.2d 164 (2d Cir. 1992) (settlement agreements can affect preclusion consistent with intent)