Articles Posted in US Court of Appeals for the Second Circuit

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Marcel filed suit against Lucky Brand under the Lanham Act for infringing on Marcel's "Get Lucky" trademark through its use of "Lucky" on its merchandise. Marcel also alleged that Lucky Brand did so in violation of an injunction entered in an earlier action between the parties. The district court dismissed the complaint, concluding that Marcel released its claims through a 2003 settlement agreement that resolved an earlier substantially similar litigation between the parties.  The Second Circuit vacated the judgment, holding that res judicata precluded Lucky Brand from raising its release defense in this case. The court held 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 here warranted application of that defense preclusion principle. Accordingly, the court remanded for further proceedings. View "Marcel Fashions Group, Inc. v. Lucky Brand Dungarees, Inc." on Justia Law

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OBC appealed the district court's grant of summary judgment for Excelled in a trademark dispute over use of the brand-name ROGUE on t-shirts. The Second Circuit held that Excelled failed to show entitlement to summary judgment dismissing OBC's trademark infringement counterclaims. In this case, Excelled failed to meet its burden of proving that OBC's delay in bringing suit was unreasonable and caused prejudice to Excelled. Therefore, the court vacated the district court's grant of summary judgment to Excelled, dismissing OBC's counterclaims, alleging trademark infringement, false designation, and unfair competition. The court reversed the district court's grant of summary judgment to Excelled on its infringement claims and the district court's denial of OBC's motion for summary judgment dismissing these claims. The court also reversed the award of injunctive relief and damages and fees against OBC. Finally, the court vacated the district court's grant of summary judgment to Excelled on OBC's trademark cancellation counterclaim because the district court erroneously relied on determinations of disputed facts about the continuity of Excelled's sales that usurped the province of the jury. View "Excelled Sheepskin & Leather Coat Corp. v. Oregon Brewing" on Justia Law

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This case stemmed from the parties' dispute over adjudicating rights associated with The Sloppy Tuna, a restaurant in Montauk, NY. On appeal, Montauk challenged the district court's dismissal of its Lanham Act claims and motion for preliminary injunction under the first-filed rule. Montauk also challenged the district court's order to pay costs, including attorneys' fees, that Associates incurred in responding to a previous action Montauk brought against Associates in Georgia state court that Montauk voluntarily dismissed. The Second Circuit held that, because New York law allowed for derivative representation on the facts presented, the district court correctly rejected Montauk's request to hold Associates in default. Nonetheless, the court vacated the district court's dismissal of the complaint and preliminary injunction motion in favor of a first-filed federal Georgia action because the Georgia suit was transferred to the Eastern District of New York, so the reasoning behind the first-filed ruling no longer applied. Finally, the court affirmed the district court's award of costs under Federal Rule of Civil Procedure 41(d), including attorneys' fees, incurred by Associates in the Georgia state action. View "Montauk U.S.A., LLC v. 148 South Emerson Associates LLC" on Justia Law

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Plaintiff filed suit under the Racketeer Influenced and Corrupt Organizations Act (RICO), 18 U.S.C. 1961, et seq., challenging the district court's judgment in favor of defendants. In this case, plaintiff alleged that defendants were members of two enterprises that conspired to sue plaintiff for, inter alia, trademark infringement. The Second Circuit held that the alleged litigation activities did not constitute RICO predicate acts. The court also held that the district court did not abuse its discretion in denying plaintiff leave to amend, plaintiff's motion to disqualify, and defendants' motions for sanctions. Accordingly, the court affirmed the judgment. View "Kim v. Kimm" on Justia Law