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Marcel Fashions Group, Inc. v. Lucky Brand Dungarees, Inc.

United States Court of Appeals for the Second Circuit

February 5, 2014, Argued; February 25, 2015, Decided

Docket No. 12-4341-cv

Opinion

 [*104]  [***1958]    LEVAL, Circuit Judge:

Plaintiff Marcel Fashions Group, Inc. ("Marcel" or "Plaintiff") appeals from the judgment of the United States District Court [**2]  for the Southern District of New York (Swain, J.) in favor of Defendants Lucky Brand Dungarees, Inc., Liz Claiborne, Inc., and Lucky Brand Dungarees Stores, Inc. (collectively, "Lucky Brand" or "Defendants"). Marcel's suit sought damages and injunctive relief based on claims of trademark infringement, false designation of origin, and unfair competition under 15 U.S.C. §§ 1114, 1116, and 1125, as well as common law trademark infringement and unfair competition under Fla. Stat. § 495.151. The court granted Lucky Brand's motion for summary judgment and denied leave to replead on the ground that the action was barred by res judicata.

 [*105]  We conclude that a prior judgment in Plaintiff's favor awarding damages and an injunction did not bar Plaintiff from instituting a second suit seeking relief for alleged further infringements that occurred subsequent to the earlier judgment. We therefore vacate the grant of summary judgment and the denial of leave to amend the complaint. The district court also denied Marcel's motion to hold Defendants in contempt for violation of an injunction in the prior litigation. We affirm this ruling as Marcel did not show that Defendants' conduct violated the terms of the injunction.

BACKGROUND

I. Parties

Marcel, [**3]  a Florida corporation, received a federal trademark registration in 1986 for "Get Lucky."2 Marcel has since sold jeans under that mark. In 1990, Defendant Lucky Brand Dungarees, Inc., a Delaware corporation, began selling jeans and other casual apparel under the mark "Lucky Brand" and other marks that include the word "Lucky." It has sold this merchandise in major department stores and, as of January 2012, had more than 180 retail stores in the United States, with sales of nearly $400 million in 2011. It owns registered trademarks, including "Lucky Brand" and "Lucky Brand Dungarees." Defendant Liz Claiborne, also a Delaware corporation, is the parent corporation of Lucky Brand Dungarees, Inc.

II. Prior Litigation

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779 F.3d 102 *; 2015 U.S. App. LEXIS 2794 **; 113 U.S.P.Q.2D (BNA) 1957 ***

MARCEL FASHIONS GROUP, INC., Plaintiff-Appellant, v. LUCKY BRAND DUNGAREES, INC., LIZ CLAIBORNE, INC., LUCKY BRAND DUNGAREES STORES, INC., Defendant-Appellees.1

Subsequent History: Motion granted by, Dismissed by Marcel Fashions Group, Inc. v. Lucky Brand Dungarees, Inc., 2016 U.S. Dist. LEXIS 177483 (S.D.N.Y., Dec. 22, 2016)

Prior History:  [**1] Plaintiff appeals from a grant of summary judgment by the United States District Court for the Southern District of New York (Swain, J.), dismissing claims of trademark infringement, false designation of origin and unfair competition under the doctrine of res judicata. Plaintiff appeals also from the district court's denial of Plaintiff's motions for leave to file an amended complaint and to hold the Defendants in contempt. The Court of Appeals (Leval, J.) concludes that the district court erred in granting summary judgment, as well as in denying Plaintiff's motion for leave to file an amended complaint, as res judicata does not bar these claims. The denial of contempt sanctions is affirmed.

Marcel Fashions Group, Inc. v. Lucky Brand Dungarees, Inc., 2012 U.S. Dist. LEXIS 138608 (S.D.N.Y., Sept. 25, 2012)

Disposition: Accordingly, the judgment is AFFIRMED IN PART and VACATED IN PART.

CORE TERMS

infringement, marks, injunction, district court, trademark, damages, parties, contempt, summary judgment, preclusion, settlement, res judicata, enjoined, trademark infringement, injunctive relief, prior litigation, award damages, violating, unfair, amend

Civil Procedure, Appeals, Standards of Review, De Novo Review, Summary Judgment Review, Standards of Review, Summary Judgment, Entitlement as Matter of Law, Appropriateness, Judgments, Preclusion of Judgments, Res Judicata, Estoppel, Collateral Estoppel, Trademark Law, Causes of Action Involving Trademarks, Infringement Actions, General Overview, Patent Law, Remedies, Equitable Relief, Injunctions, Preclusion, Injunctions, Preliminary & Temporary Injunctions, Preliminary Injunctions, Pleadings, Amendment of Pleadings, Leave of Court, Abuse of Discretion, Sanctions, Contempt, Civil Contempt