Plaintiff-Appellant Marcel Fashions Group, Inc. ("Marcel") and Defendants-Appellees Lucky Brand Dungarees, Inc. and affiliates ("Lucky Brand"), competitors in the apparel industry, have been hotly contesting their respective rights as to certain trademarks for nearly two decades. In this latest round, Marcel sues under the Lanham Act, alleging that Lucky Brand is infringing on Marcel's "Get Lucky" trademark through its use of "Lucky" on its merchandise, and that Lucky Brand does so in violation of an injunction entered in an earlier action between the parties. The district court dismissed the action, concluding that Marcel released its claims through a 2003 settlemеnt agreement that resolved an earlier substantially similar litigation between the parties. We conclude that the district court did so in error because res judicata precludes Lucky Brand from raising its release defense in this action. To arrive at that result, we determine that under certain conditions parties may be barred by claim preclusion from litigating defenses that they could have asserted in an earlier action, and that the conditions in this case warrant application of that defense preclusion
I.
In a рrevious opinion vacating the entry of summary judgment dismissing the claims in Marcel's initial complaint, we discussed in detail the claims at issue in this case, as well as the parties' relevant history
The 2001 Action . The settlement agreement through which Lucky Brand in this action asserts Marcel released its claims resolved a 2001 suit in which Marcel sued Lucky Brand for its alleged infringement of Marcel's "Get Lucky" mark (the "2001 Action"). See Marcel I ,
Marcel hereby forever and fully remises, releases, acquits, and discharges Defendants [Lucky Brand] ... from any and all actions, causes of action, suits ... or relief of any nature whatsoever, whether known or unknown, foreseen or unforeseen ... that Marcel ever had, now has or hereafter can, shall or may have, by reason of or arising out of any matter, cause or event occurring on or prior to the date hereof, including, but not limited to ... any and all claims arising out of or in any way relating to Lucky Brand's rights tо use, license and/or register the trademark LUCKY BRAND and/or any other trademarks, trade names, brands, advertising slogans or tag lines owned, registered and/or used by Lucky Brand ... as of the date of this Agreement. No claims of any kind are reserved.
App'x 85-86 (the "Release"). Marcel and Lucky Brand's views have been consistently at odds on the scope of the Release. Marcel contends that it only released claims as to infringement that occurred prior to the 2003 execution of the agreement. Lucky Brand, for its part, contends that the Release is far broader, releasing any claim Marcel may have in the future in relation to any trademark registered priоr to the execution of the agreement. The distinction is vital. Because each of Marcel's claims in this action ultimately allege a misappropriation of a mark registered before 2003, the latter interpretation would bar Marcel's claims, but the former would not.
The 2005 Action. Due at least in part to the parties' conflicting views on the breadth of the Release, further litigation followed the parties' settlement of the 2001 Action. Specifically, in 2005, Lucky Brand sued Marcel over Marcel's issuance of a license for use of the "Get Lucky" mark and Marcel counterclaimed with infringement claims of its own while also contending that Lucky Brand's use of "Get Lucky" violated the 2003 settlement agreement (the "2005 Action"). See Marcel I ,
Early in the 2005 Action, Lucky Brand tested its theory that the Release broadly barred Marcel's infringement claims. Specifically, Lucky Brand argued that, because the marks at issue were registered prior to the settlement agreement, Marcel released any claim alleging infringement of those marks. Lucky Brand moved to dismiss on this theory, arguing that Marcel's infringement counterclaims were barred
Despite relying on the release argument as part of its motion to dismiss and in its answer, however, Lucky Brand never again asserted a release defense in the 2005 Action. It was not for want of opportunity. The parties engaged in extensive summary judgment proceedings, substantial pre-trial motion practice, and a lengthy jury trial during which the release defense could have been asserted, but was not. And, without any argument to the jury by Lucky Brand that the Release barred Marcel's counterclaims as to infringement of its "Get Lucky" mark, the jury found in favor of Marcel on its counterclaim that Lucky Brand infringed that mark. See Marcel I ,
The Instant Action. Lucky Brand did not appeal the judgment in the 2005 Action, but the parties' dispute over use of the relevant marks continued. In 2011, relying on the broad language of the court's injunction in the 2005 Action, Marcel filed the instant suit, seeking relief for Lucky Brand's alleged continued use of the "Lucky Brand" mark following that injunction. See
Rather, Lucky Brand moved for summary judgment on the basis that Marcel's claims were precluded by res judicata (specifically, claim preclusion) in light of the final disposition in the 2005 Action. The district court agreed, but, in Marcel I , we reversed. Relying on TechnoMarine SA v. Giftports, Inc. ,
On remаnd, Marcel filed a second amended complaint. Armed with new counsel, Lucky Brand moved to dismiss, this time raising as its only argument that the
In arriving at its conclusion, the district court rejected Marcel's argument that Lucky Brand was precluded by res judicata from invoking the Release as a defense. Acknowledging that res judicata encompasses both issue and claim preclusion, the district court concluded that "[i]ssue preclusion does not apply, because the applicability of the Settlement Agreement's release provision was not actually litigated and resolved in the 2005 Action," and "[c]laim preclusion does not apply because Lucky Brand is not asserting a claim against Marcel." App'x 249. Marcel appealed.
II.
"We review de novo a grant of a motion to dismiss pursuant to Rule 12(b)(6), accepting the complaint's factual allegations as true and drawing all reasonable inferences in the plaintiff's favor." Brown Media Corp. v. K&L Gates, LLP ,
Marcel argues that the district court erred in concluding that the Release bars its claims, raising three principal contentions: (i) Lucky Brand is precluded by res judicata from asserting its release defense; (ii) Lucky Brand waived its release defense; and (iii) Marcel's clаims are not barred by the terms of the Release. We agree with Marcel that, on this record, res judicata bars Lucky Brand's release defense, and we need not and do not address Marcel's other contentions. Specifically, we conclude that the doctrine of claim preclusion (or, more precisely, defense preclusion) may be applied in contexts such as this to bar the litigation of a party's defense and that the district court erred in holding to the contrary. We then conclude that this defense preclusion doctrine bars Lucky Brand from invoking its release defense in this action and thus vacate the dismissal of Marcel's claims and remand for further proceedings.
A.
In Marcel I , we identified the contours of res judicata (albeit in the context of the assertion of claims and not defenses), and discussed in detail the two doctrines that it encompasses: claim preclusion and issue preclusion.
A party seeking to invoke claim preclusion must generally make three showings: (i) an earlier action resulted in an adjudication on the merits; (ii) that earlier action involved the same counterparty or those in privity with them; and (iii) the claim sought to be precluded was raised, or could have been raised, in that earlier action. See Monahan v. N.Y.C. Dep't of Corr. ,
Relying on these elements and the policies supporting claim preclusion, Marcel argued to the district court that the principle of claim preclusion bars Lucky Brand from asserting its release defense in the instant action. The district court gave the argument short shrift. Rather than addressing the elements of claim preclusion, the district court dismissed Marcel's argument for a threshold reason: the doctrine is simply not available here where Marcel seeks to preclude a defense, and not a "claim." App'x 249. Although an understandable conclusion, given the predominant use of res judicata to preclude claims, we disagree with it, and conсlude that the district court overlooked the principle that defenses are also subject to preclusion under res judicata .
B.
For the past quarter of a century, we have assumed that claim preclusion may bar a litigation defense but we have not had a case in which we have found a defense to be so precluded. Our most expansive decision on the issue is Clarke v. Frank ,
Other courts in our circuit have relied on Clarke to subject litigation defenses to claim preclusion, see, e.g. , Beckford v. Citibank, N.A. ,
We are therefore called on for the first time to address whether a party can be barred by claim preclusion doctrine from prosecuting a litigation defense in a situation in which it is outcome-determinative. Although we are largely unbound by precedential authority, we are not without assistance. Specifically, we have guidance on this question from claim preclusion's sister res judicata component, issue preclusion.
Issue preclusion was historically an exceedingly narrow doctrine, with two major limits to its reach: (i) it could only be applied by a defendant against a plaintiff to bar relitigation of an issue that had been actually litigated and lost by the plaintiff; and (ii) it could only be applied where the parties in the two actions were the same. See Triplett v. Lowell ,
In Parklane Hosiery Co. v. Shore ,
The Court noted at the outset that there generally "is no intrinsic difference between 'offensive' as distinct from 'defensive' issue preclusion" that would allow for preclusion in the latter but entirely forbid it in the former. Parklane ,
Although issue preclusion is different from claim preclusion in several important respects, we believe that an analysis similar to that of the Supreme Court's in Parklane informs the assessment of defense preclusion. We do not think the principles animating the claim preclusion doctrine disappear when that which is sought to be precluded is a defense. Rather, we view the efficiency concerns as equally pressing when the matter subject to preclusion is a defеnse rather than a claim. The following efficiencies are readily apparent. First , defense preclusion incentivizes defendants to litigate all their relevant defenses in an initial action, thereby promoting judicial efficiency at least to the same extent as does precluding claims. Second , absent defense preclusion, plaintiffs might be hesitant to rely on judicial victories for fear that a hidden defense will later emerge to alter their judicially established rights. Third , and relatedly, defense preclusion prevents wasteful follow-on actions that would not have been filed had the defense been asserted (and maintainеd) at the first opportunity. As with the preclusion of claims, therefore, defense preclusion ensures that "[w]hen a party is victorious, it [does] not have to defend that victory again." N. Assurance ,
The instant case is an apt example of the inefficiencies in prohibiting defense preclusion. It is Lucky Brand's contention that the Release bars any claim that Lucky Brand infringed on Marcel's "Get Lucky" mark, including those infringements that occurred after the parties executed their settlement agreement. Consequently, under Lucky Brand's theory, the Release bars all of Marcel's claims in the instant action. It follows, then, that had Lucky Brand litigated and prevаiled on its release defense in the 2005 Action, in which Marcel sought relief for Lucky Brand's post-settlement agreement infringement of the "Get Lucky" mark, the instant action would have been avoided. This case therefore plainly demonstrates the inefficiencies that would have to be tolerated were we to prohibit defense preclusion. Assuming arguendo that Lucky Brand is correct in its interpretation of the Release (a question we do not reach), the court system will have been unnecessarily burdened with seven-plus years of litigation, involving 179 district court docket entries and two appeals to this Court. The entire endeavor would have been avoided, however, had Lucky Brand successfully litigated and not cast aside its release defense in the 2005 Action.
We acknowledge, however, that there exist distinctions between preclusion as a shield by defendants and as a sword against defendants. Referencing issue preclusion, the Supreme Court acknowledged as much in Parklane , leading it to conclude that "the[se] two situations should be treated differently."
We have concluded that the preferable approach for dealing with these problems in the federal courts is not to preclude the use of offensive collateral estoppel, but to grant trial courts broad discretion to determine when it should be applied. The general rule should be that in cases where a plaintiff could easily have joined in the earlier action or where, either for the reasons discussed above or for other reasons, the application of offensive estoрpel would be unfair to a defendant, a trial judge should not allow the use of offensive collateral estoppel.
Parklane 's assessment of offensive issue preclusion provides a helpful framework for resolving whether, and how, we should permit the use of claim preclusion principles to bar the litigation of defenses. We acknowledge that, as with offensive issue preclusion, certain applications of defense preclusion could be unfair to defendants. The Court's observations on this point in Parklane are enlightening:
If, for example, the defendant in the first action was forced to defend in an inconvenient forum and therefore was unаble to engage in full scale discovery or call witnesses, application of offensive collateral estoppel may be unwarranted. Indeed, differences in available procedures may sometimes justify not allowing a prior judgment to have estoppel effect in a subsequent action even between the same parties, or where defensive estoppel is asserted against a plaintiff who has litigated and lost. The problem of unfairness is particularly acute in cases of offensive estoppel, however, because the defendant against whom estoppel is asserted typically will not have chosen the forum in the first action.
Defense preclusion raises a number of similar concerns. It might be unfair to bar a defendant from raising a defense that it elected not to bring in an earlier action because that action was of a significantly smaller scope, or the defense was somehow tangential to the matter. Put differently, it would be unfair to preclude a defense that the defendant had little to no incentive to raise in the earlier action. Relatedly, because it is generally not a defendant's prerogative to be hauled into court, they should be given some room to make tactical choices to attempt to end the suit against them with as little cost as possible without facing the unforeseen consequences of forever abandoning a defense. We also acknowledge that what constitutes a "defense" may not always be as clear as what constitutes a "claim," and that a broad understanding of "defense" in this context risks eliding the distinction between claim and issue preclusion. Finally, the fairness of defense preclusion may depend on the nature of the action. For example, there will hardly ever be unfairness in applying defense preclusion to bar a defendant from invoking defenses that could have been asserted in a previous
The above examples, which are illustrative, and not exhaustive, demonstrate the wide array of fairness consideratiоns potentially implicated by defense preclusion. Consistent with Parklane , however, we "conclud[e] that the preferable approach for dealing with these problems in the federal courts is not to preclude the use of [defense preclusion], but to grant trial courts broad discretion to determine when it should be applied."
In sum, we conclude that defense preclusion bars a party from raising a defense where: (i) a previous action involved an adjudication on the merits; (ii) the previous action involved the sаme parties or those in privity with them; (iii) the defense was either asserted or could have been asserted, in the prior action; and (iv) the district court, in its discretion, concludes that preclusion of the defense is appropriate because efficiency concerns outweigh any unfairness to the party whose defense would be precluded.
C.
The above stated factors are easily met here. Lucky Brand does not (and cannot) dispute the first three, and it would have been an abuse of discretion for the district to have concluded anything other than that any unfairness to Lucky Brand is substantially outweighed by the efficiency concerns identified above. Our review of the record evinces no conceivable justification for Lucky Brand, a sophisticated
Though it will be the infrequent case that a defense will be precluded by the rule we describe, it is the proper resolution of the case before us. On remand, Lucky Brand is barred from asserting the Release as a defense to Marcel's infringement claims as set forth in the operative complaint.
III.
For the reasons stated above, we VACATE the judgment of the district court and REMAND for proceedings consistent with this opinion.
Notes
Throughout this opinion we use the term "defense preclusion" to refer to the preclusion of litigation defenses (such as those enumerated in Fed. R. Civ. P. 8(c) ), a principle we view as consistent with claim preclusion. We do not use the term to refer to the use of preclusion of or by a party defendant, although a counterclaiming defendant may assert dеfense preclusion (as we use the term here) to preclude a plaintiff's defense to the counterclaim.
These facts derive principally from the second amended complaint and we accept them as true. See Bell Atl. Corp. v. Twombly ,
Lucky Brand can make no credible issue preclusion argument. Whether the Release bars Marcel's claims as to post-settlement agreement infringement was in no way "actually litigated and determined," B & B Hardware, Inc. v. Hargis Indus., Inc. , --- U.S. ----,
We are aware of no authority unеquivocally prohibiting defenses from being subject to the principle of claim preclusion. Lucky Brand, in essence acknowledging this dearth of authority, depends almost entirely on language from a leading treatise, Br. of Appellees at 38, which indicates that "[i]t is generally assumed that the defendant may raise defenses in the second action that were not raised in the first, even though they were equally available and relevant in both actions." Wright & Miller, 18 Fed. Prac. & Proc. Juris. § 4414 (3d ed. 2018) [hereinafter, "Wright & Miller"]. But, Wright & Miller speaks only of a "general rule" that departs from the standard we identified in Clarke .
See Currier v. Virginia , --- U.S. ----,
The Court opined, for example, that offensive issue preclusion might cause more litigation because potential plaintiffs will have every incentive to "wait and see" how other plaintiffs fare against a defendant that that potential plaintiff wants to sue. Parklane ,
Although these concerns are significant, as in Parklane , they are insufficient to prohibit defense preclusion. For one, wе already have rules, such as our compulsory counterclaim rules, that require defendants no matter how sophisticated to bring (or lose) certain affirmative claims irrespective of their strategic inclinations. See Fed. R. Civ. P. 13(a) ; Critical-Vac Filtration Corp. v. Minuteman Int'l., Inc. ,
Although we generally consider an application of claim preclusion to be a legal question that we review de novo , see Technomarine ,
Rather, it seems to us that the only explanation is Lucky Brand's retention of new counsel.
Lucky Brand contends it would be "grossly unfair" to bar its release defense pursuant to res judicata in light of our conclusion in Marcel I that Marcel's claims are not barred by res judicata . Br. of Appellees 39-40. We disagree. Precluding Lucky Brand's release defense leads to no disparity of treatment that is not accountable to application of the traditional elements of the preclusion doctrine. Marcel's claims were not precluded in light of our conclusion that those claims "could not possibly have been sued upon in the previous case." Marcel I ,