IP at the Supreme Court Series: Lucky Brand Dungarees Inc. v. Marcel Fashion Group Inc. 

January 14, 2020

By: Eryka Jones

Image Caption
The Supreme Court of the United States

On January 13, 2020, the Program on Information Justice and Intellectual Property (PIJIP) held a panel to discuss the oral arguments presented to the U.S. Supreme Court of a long-fought trademark battle between Lucky Brand Dungarees Inc. and Marcel Fashion Group, Inc. Professor and PIJIP director, Michael Carroll, moderated the panel which included Susan Kayser, attorney at K&L Gates, and three professors from Washington College of Law: Professor Elizabeth Beske, Professor Christine Haight Farley, and Professor Julie Cromer Young. The panel discussed whether, when a plaintiff asserts new claims, federal preclusion principles can bar a defendant from raising claims that were not actually litigated and resolved in any prior case between parties.

The two fashion companies encountered initial infringement issues in 2001. Marcel, who secured the phrase, “Get Lucky,” as their trademark in the 1980s, filed suit against Lucky Brand for utilizing the phrase in their marketing and on their apparel. A settlement occurred in 2003; Lucky Brand agreed to cease their use of the trademark and, in return, Marcel released them from future trademark-related claims. Due to another infringement in 2011, Marcel requested for relief against Lucky Brand. Lucky Brand raised the defense that their release in 2003 allowed them to use similar trademark claims, this same “release defense” was used by Lucky Brand in a previous 2005 infringement case between the same two parties. After the district court sided with Lucky Brand, Marcel appealed to the Court of Appeals Second Circuit for claim preclusion over Lucky Brand’s release defense and won. Professor Beske explained that within the Doctrine of Res Judicata, “[a party is] not precluded from bringing a defense in a successive and different action.” Lucky appealed to the Supreme Court. 

Kayser claims that during the oral argument, it was clear that both parties were uncertain as to what the release from the 2003 settlement entailed. The tension between both counsel and the Justices showed the underlying issue with this case. Professor Carroll explained that although the Supreme Court decides issues of law, this case calls for the facts to be decided on first in order for the Court to decide on the law. This means the unresolved issues stemming from the 2003 settlement and the prior cases, will eventually determine whether the Court will allow a party to bring defenses previously used in a successive and different action. The panel believes even if the Court allows a party to bring these defenses, it would only apply to limited cases.