Justia U.S. 2nd Circuit Court of Appeals Opinion Summaries

Marcel filed suit against Lucky Brand, seeking 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. On appeal, Marcel challenged the district court's judgment in favor of Lucky Brand. The court concluded that a prior judgment in Marcel's favor awarding damages and an injunction did not bar Marcel from instituting a second suit seeking relief for alleged further infringements that occurred subsequent to the earlier judgment. Accordingly, the court vacated the grant of summary judgment and the denial of leave to amend the complaint. The court affirmed the district court's denial of Marcel's motion to hold Lucky Brand in contempt for violation of an injunction in the prior litigation because Marcel did not show that Lucky Brand's conduct violated the terms of the injunction. View "Marcel Fashions v. Lucky Brand Dungarees" on Justia Law

Starbucks filed suit against Black Bear claiming, among other things, trademark dilution in violation of the Federal Trademark Dilution Act (FTDA), 15 U.S.C. 1125(c), 1127. The district court denied Starbucks request for an injunction, concluding that Starbucks failed to prove that Black Bear's "Charbucks" marks at issue were likely to dilute Starbucks' famous "Starbucks" marks. The court concluded that the district court did not err in its factual findings that there was only a minimal degree of similarity between the Starbucks marks and the Charbucks marks and that Starbucks demonstrated only a weak association between the marks. Balancing the section 1125(c)(2)(B) factors and other facts that bear on a likelihood of dilution, the court agreed with the district court that Starbucks failed to show that Black Bear's use of its marks in commerce was likely to dilute the Starbucks marks. Accordingly, the court affirmed the judgment of the district court. View "Starbucks Corp. v. Wolfe's Borough Coffee, Inc." on Justia Law

Plaintiffs filed suit under the Lanham Act, 15 U.S.C. 1051 et seq., against defendants, alleging trademark infringement based on a theory that defendants misappropriated and have unauthorized commercial use in the United States of certain United States-registered trademarks related to "Stolichnaya" - brand vodka (the "Marks"). At issue on appeal was whether plaintiffs have sufficient claim to the Marks to sue for infringement under the Act. The court concluded that FTE was neither (1) the Russian Federation's "assign" of the marks nor (2) its "legal representative." The court also concluded that Cristall could not sue, since its rights as a plaintiff were purely derivative of those held by FTE, and FTE could not grant rights greater than its own; the court rejected plaintiffs' joint argument that they were entitled to proceed because the Russian Federation had "ratified" their suit; and, therefore, neither plaintiff was entitled to sue for infringement under section 1114(1). Accordingly, the court affirmed the district court's dismissal of the Third Amended Complaint with prejudice. View "Fed. Treasury Enter. v. SPI Spirits Ltd." on Justia Law

Plaintiffs, entities with rights or licenses to registered trademarks bearing the "Guggenheim" name, filed suit alleging trademark infringement and other federal and state law claims after defendant solicited investors to buy various financial products while presenting himself as "David B. Guggenheim." On appeal, defendant challenged the district court's entry of default judgment against him. The court concluded that the district court did not abuse its discretion by entering a default judgment against defendant where the district court was presented with a plethora of evidence to support its finding that he willfully defaulted. Moreover, defendant's asserted defense failed on the merits because his conduct plainly failed to satisfy the elements of a legitimate fair use defense, even if the district court erred by not specifically addressing this defense. View "Guggenheim Capital, LLC v. Birnbaum" on Justia Law

Plaintiff sued Marvel, contending that he conceived the comic book character "Ghost Rider," the related characters, and the origin story. Plaintiff also claimed that he owned the renewal term copyrights in those works. On appeal, plaintiff challenged the district court's grant of summary judgment in favor of Marvel, holding that plaintiff had assigned any rights he had in the renewal term copyrights to Marvel when he executed a form work-for-hire agreement (the Agreement), six years after the initial publication of the issue in question. The court, by applying the "strong presumption against the conveyance of renewal rights," concluded that the district court erred in holding as a matter of law that plaintiff had assigned his renewal rights to Marvel by signing the Agreement; plaintiff's claim was not untimely as a matter of law because there were genuine disputes regarding whether plaintiff should have known about Marvel's repudiation of his claim of ownership; and there were genuine disputes of material fact that precluded granting summary judgment on the issue of authorship. Accordingly, the court vacated and remanded for trial. View "Gary Friedrich Enters., LLC v. Marvel Characters, Inc." on Justia Law

Charter appealed the district court's holding that it was liable to CGS for its expenses in defending and settling a trademark infringement suit. The court concluded that the relevant insurance policy did not cover the liability alleged in the trademark action and Charter was not liable for the settlement amount; however, there was sufficient legal uncertainty about the coverage issue to oblige Charter to defend the action; and, therefore, the district court's ruling was affirmed insofar as it held that Charter was liable for defense costs, but reversed insofar as it held that Charter was liable for the settlement. Accordingly, the court vacated and remanded for further proceedings. View "CGS Indus., Inc. v. Charter Oak Fire Ins. Co." on Justia Law

Plaintiff, owner of a motivational services business organized around the concept of "Own Your Power," appealed from the district court's grant of a motion to dismiss finding that defendants' use of the phrase "Own Your Power" was fair use. The district court dismissed plaintiff's counterfeiting, vicarious infringement, and contributory infringement claims on additional grounds. Defendants published a magazine cover, hosted an event, and built a section of a website all utilizing the phrase. Because the court found that defendants have not adequately established a fair use defense, the court vacated the judgment of the district court with respect to the trademark infringement, false designation of origin, and reverse confusion claims and remanded for further proceedings. The court agreed with the district court's holdings with respect to plaintiff's vicarious infringement, contributory infringement, and counterfeiting claims and affirmed with respect to these claims. View "Kelly-Brown, et al. v. Winfrey, et al." on Justia Law

Christian Louboutin, a fashion designer best known for his use of red lacquer on the outsole of the shoes he designs, appealed the district court's order denying a motion for preliminary injunction against alleged trademark infringement by Yves Saint Laurent (YSL). The court concluded that the district court's conclusion that a single color could never serve as a trademark in the fashion industry was inconsistent with the Supreme Court's decision in Qualitex Co. v. Jacobson Products Co., and that the district court therefore erred by resting its denial of Louboutin's preliminary injunction motion on that ground. The court further concluded that Louboutin's trademark, consisting of a red, lacquered outsole on a high fashion woman's shoe, has acquired limited "secondary meaning" as a distinctive symbol that identified the Louboutin brand. Pursuant to Section 37 of the Lanham Act, 15 U.S.C. 1119, the court limited the trademark to uses in which the red outsole contrasted with the color of the remainder of the shoe. Because Louboutin sought to enjoin YSL from using a red sole as part of a monochrome red shoe, the court affirmed in part the order of the district court insofar as it declined to enjoin the use of the red lacquered outsoles in all situations. However, the court reversed in part the order of the district court insofar as it purported to deny trademark protection to Louboutin's use of contrasting red lacquered outsoles. View "Christian Louboutin S.A. v. Yves Saint Laurent America Inc." on Justia Law

This case arose from a trademark infringement suit involving the sale of counterfeit versions of defendant's hoisin sauce. The district court subsequently imposed sanctions in fees and costs pursuant to FRCP 11 against plaintiffs and their attorneys in favor of defendant. The attorneys appealed, contending that the district court erred in its application of Rule 11. Defendant cross-appealed, contending that the district should have awarded substantially more in fees and costs and moved to sanction the attorneys for filing a purportedly frivolous appeal. The court held that the safe harbor requirement under Rule 11 was satisfied in these circumstances; the attorneys have failed to show that the district court abused its discretion in concluding that the action was frivolous; nor have the attorneys shown that the district court abused its discretion in deciding to impose monetary sanctions. The court rejected defendant's arguments on cross appeal and affirmed the judgment of the district court. View "Star Mark Mgmt., Inc. v. Koon Chun Hing Kee Soy & Sauce Factory, Ltd." on Justia Law

This case involved the importation and sale of counterfeit luxury goods bearing trademarks owned by Louis Vuitton (plaintiff) and others. Defendants appealed from the district court's judgment granting summary judgment to plaintiff on its claims of trademark counterfeiting and infringement, and awarding plaintiff statutory damages in the amount of $3 million, and more than $500,000 in attorney's fees and costs. The court concluded that the district court did not abuse its discretion in declining to stay the proceedings; that, as the district court concluded, an award of attorney's fees under 15 U.S.C. 1117(a) could accompany an award of statutory damages pursuant to 15 U.S.C. 1117(c); and that the district court did not abuse its discretion in awarding such fees or in setting their amount. Accordingly, the judgment was affirmed. View "Louis Vuitton Malletier S.A. v. LY USA, Inc., et al." on Justia Law