2nd Cir: Marcel v Lucky Brand Dungarees re GET LUCKY – Plaintiff Asserts Defense Preclusion

Marcel and Lucky litigated use of the GET LUCKY and LUCKY marks three times.  The first lawsuit, in 2001, resulted in a release.  The second lawsuit, in 2005, revealed in early motion practice that the parties disagreed as to the scope of the release.  However, Lucky did not assert its interpretation of the release as a defense at trial. Now, in the third lawsuit, Lucky asserts its interpretation of the release.

The issue for the Second Circuit is whether claim preclusion encompasses defense preclusion, and if so, is Lucky precluded here from asserting a defense relating to the release, which defense it could have asserted in the 2005 lawsuit, but did not.

As to whether claim preclusion can prohibit defenses:

We are aware of no authority unequivocally 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.  Id.  Moreover, Wright
& Miller acknowledges that, in certain circumstances, “[d]efendant preclusion
should be seriously considered,” and that perhaps the “best rule” would at times
allow for the preclusion of defenses that could have been previously asserted.  Id

Noting that issue preclusion can be deployed both offensively and defensively, the Court observed that the same arguments in favor of offensive and defensive use of issue preclusion (namely, judicial economy arguments), apply to claim preclusion as well.  Thus, claim preclusion will act to bar asserting defenses that could have been asserted by a defendant against this plaintiff, previously.


Routt v Amazon: Review of 9th Circuit (c) vicarious liaiblity cases


Sixth Circuit: Right of Publicity / Attorneys Fees Decision

Sixth Circuit discussion of, inter alia, award of attorneys fees under the Lanham Act. Discussion of case by Silicon Valley Media Law Blog here.
Andretti v. Borla Performance Industries, civ 04-1835 (6th Circuit, October 21, 2005).


2d Circuit Case On Side-by-Side vs. Serial Viewing

Louis Vuitton brought a trademark, trade dress and related torts action against Burlington Coat Factory, for selling a handbag that, Burlington conceded, ‘brought to mind’ LV’s Murakami Multicolore handbag.  The District Court judge denied LV’s motion for preliminary relief, relying in part on the observation that consumers would not be confused in side-by-side comparisons of the bags.  The Second Circuit overturned.  If the products are not sold side-by-side (as the parties here agreed they were not), then it is legally erroneous to rely on side-by-side impressions.  The proper analysis is whether the overall impressions of the products leads to confusion upon serial viewing.

Tidbit:  LV has sold 47,000 Multicolore bags in the U.S. to date, totaling $25 million in sales.

Louis Vuitton Malletier v. Burlington Coat Factory, 04-2907 (2d Cir, Oct 12 2005).


Third Circuit Articulates Nominative Fair Use Test

“In this Circuit, we have today adopted a test for nominative fair use in which a court will pose three questions: (1) Is the use of the plaintiff’s mark necessary to describe both plaintiff’s product or service and defendaant’s product or service? (2) Is only so much of the plaintiff’s mark used as is necessary to describe plaintiff’s products or services? (3) Does the defendant’s conduct or language reflect the true and accurate relationship between plaitniff’s and defendant’s products or services?  If each of these questions can be answered in the affirmative, the use will be considered a fair one, regardless of whether likelihood of confusion exists.”

From Century 21 Real Estate v. Lendingtee, Inc., No. 03-4700 (3d Circuit Oct. 11, 2005).