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

• Decision Date: 14 May 2020
• Docket Number: No. 18-1086,18-1086
• Citation: 140 S.Ct. 1589,206 L.Ed.2d 893
• Parties: LUCKY BRAND DUNGAREES, INC., et al., Petitioners v. MARCEL FASHIONS GROUP, INC.
• Court: U.S. Supreme Court

140 S.Ct. 1589

206 L.Ed.2d 893

LUCKY BRAND DUNGAREES, INC., et al., Petitioners

v.MARCEL FASHIONS GROUP, INC.

No. 18-1086

Supreme Court of the United States.

Argued January 13, 2020

Decided May 14, 2020

Dale M. Cendali, Claudia Ray, Mary C. Mazzello, Kirkland & Ellis LLP, New York, NY, John C. O'Quinn, Matthew D. Rowen, Kirkland & Ellis LLP, Washington, DC, for Petitioners.

Eugene R. Fidell, Yale Law School, Supreme Court Clinic, New Haven, CT, Louis R. Gigliotti, Louis R. Gigliotti, PA, Hollywood, FL, Robert L. Greener, Law Office of, Robert L. Greener P.C., New York, NY, Michael B. Kimberly, Paul W. Hughes, Andrew A. Lyons-Berg, McDermott Will & Emery LLP, Washington, DC, for Respondent.

Justice SOTOMAYOR delivered the opinion of the Court.

This case arises from protracted litigation between petitioners Lucky Brand Dungarees, Inc., and others (collectively Lucky Brand) and respondent Marcel Fashions Group, Inc. (Marcel). In the latest lawsuit between the two, Lucky Brand asserted a defense against Marcel that it had not pressed fully in a preceding suit between the parties. This Court is asked to determine whether Lucky Brand's failure to litigate the defense in the earlier suit barred Lucky Brand from invoking it in the later suit. Because the parties agree that, at a minimum, the preclusion of such a defense in this context requires that the two suits share the same claim to relief—and because we find that the two suits here did not—Lucky Brand was not barred from raising its defense in the later action.

I

Marcel and Lucky Brand both sell jeans and other apparel. Both entities also use the word "Lucky" as part of their marks on clothing. In 1986, Marcel received a federal trademark registration for "Get Lucky"; a few years later, in 1990, Lucky Brand began selling apparel using the registered trademark "Lucky Brand" and other marks that include the word "Lucky." 779 F.3d 102, 105 (CA2 2015).

Three categories of marks are at issue in this case: Marcel's "Get Lucky" mark; Lucky Brand's "Lucky Brand" mark; and various other marks owned by Lucky Brand that contain the word "Lucky." These trademarks have led to nearly 20 years of litigation between the two companies, proceeding in three rounds.

A

In 2001—the first round—Marcel sued Lucky Brand, alleging that Lucky Brand's use of the phrase "Get Lucky" in advertisements infringed Marcel's trademark. In 2003, the parties signed a settlement agreement. As part of the deal, Lucky Brand agreed to stop using the phrase "Get Lucky." App. 191. In exchange, Marcel agreed to release any claims regarding Lucky Brand's use of its own trademarks. Id. , at 191–192.

B

The ink was barely dry on the settlement agreement when, in 2005, the parties began a second round of litigation (2005 Action). Lucky Brand filed suit, alleging that Marcel and its licensee violated its trademarks by copying its designs and logos in a new clothing line. As relevant here, Marcel filed several counterclaims that all turned, in large part, on Lucky Brand's alleged continued use of "Get Lucky": One batch of allegations asserted that Lucky Brand had continued to use Marcel's "Get Lucky" mark in violation of the settlement agreement, while others alleged that Lucky Brand's use of the phrase "Get Lucky" and "Lucky Brand" together was "confusingly similar to"—and thus infringed––Marcel's "Get Lucky" mark. Defendants' Answer, Affirmative Defenses, and Counterclaims to Plaintiffs' Complaint in No. 1:05–cv–06757 (SDNY), Doc. 40–2, p. 39; see id. , at 34–41. None of Marcel's counterclaims alleged that Lucky Brand's use of its own marks alone—i.e. , independent of any alleged use of "Get Lucky"—infringed Marcel's "Get Lucky" mark.

Lucky Brand moved to dismiss the counterclaims, alleging that they were barred by the release provision of the settlement agreement. After the District Court denied the motion without prejudice, Lucky Brand noted the release defense once more in its answer to Marcel's counterclaims. But as the 2005 Action proceeded, Lucky Brand never again invoked the release defense.

The 2005 Action concluded in two phases. First, as a sanction for misconduct during discovery, the District Court concluded that Lucky Brand violated the settlement agreement by continuing to use "Get Lucky" and permanently enjoined Lucky Brand from copying or imitating Marcel's "Get Lucky" mark. Order Granting Partial Summary Judgment and Injunction in No. 1:05–cv–06757, Doc. 183; see also App. 203–204. The injunction did not enjoin, or even mention, Lucky Brand's use of any other marks or phrases containing the word "Lucky." Order Granting Partial Summary Judgment and Injunction, Doc. 183. The case then proceeded to trial. The jury found against Lucky Brand on Marcel's remaining counterclaims—those that alleged infringement from Lucky Brand's continued use of the "Get Lucky" catchphrase alongside its own marks. See Brief for Respondent 52.

C

In April 2011, the third round of litigation began: Marcel filed an action against Lucky Brand (2011 Action), maintaining that Lucky Brand continued to infringe Marcel's "Get Lucky" mark and, in so doing, contravened the judgment issued in the 2005 Action.

This complaint did not reprise Marcel's earlier allegation (in the 2005 Action) that Lucky Brand continued to use the "Get Lucky" phrase. Marcel argued only that Lucky Brand's continued, post-2010 use of Lucky Brand's own marks—some of which used the word "Lucky"—infringed Marcel's "Get Lucky" mark in a manner that (according to Marcel) was previously found infringing.¹ Marcel requested that the District Court enjoin Lucky Brand from using any of Lucky Brand's marks containing the word "Lucky."

The District Court granted Lucky Brand summary judgment, concluding that Marcel's claims in the 2011 Action were essentially the same as its counterclaims in the 2005 Action.

But the Court of Appeals for the Second Circuit disagreed. 779 F.3d 102. The court concluded that Marcel's claims in the 2011 Action were distinct from those it had asserted in the 2005 Action, because the claims at issue in the 2005 Action were "for earlier infringements." Id. , at 110. As the court noted, "[w]inning a judgment ... does not deprive the plaintiff of the right to sue" for the defendant's "subsequent similar violations." Id. , at 107.

The Second Circuit further rejected Marcel's request to hold Lucky Brand in contempt for violating the injunction issued in the 2005 Action. The court noted that the conduct at issue in the 2011 Action was Lucky Brand's use of its own marks—not the use of the phrase "Get Lucky." By contrast, the 2005 injunction prohibited Lucky Brand from using the "Get Lucky" mark—not Lucky Brand's own marks that happened to contain the word "Lucky."

Id. , at 111. Moreover, the court reasoned that the jury in the 2005 Action had been "free to find infringement of Marcel's ‘Get Lucky’ mark based solely on Lucky Brand's use of [the phrase] ‘Get Lucky.’ " Id. , at 112. The court vacated and remanded for further proceedings.

On remand to the District Court, Lucky Brand moved to dismiss, arguing—for the first time since its motion to dismiss and answer in the 2005 Action—that Marcel had released its claims by entering the settlement agreement. Marcel countered that Lucky Brand was precluded from invoking the release defense, because it could have pursued the defense fully in the 2005 Action but had neglected to do so. The District Court granted Lucky Brand's motion to dismiss, holding that it could assert its release defense and that the settlement agreement indeed barred Marcel's claims.

The Second Circuit vacated and remanded, concluding that a doctrine it termed "defense preclusion" prohibited Lucky Brand from raising the release defense in the 2011 Action. 898 F.3d 232 (2018). Noting that a different category of preclusion—issue preclusion—may be wielded against a defendant, see Parklane Hosiery Co. v. Shore , 439 U.S. 322, 99 S.Ct. 645, 58 L.Ed.2d 552 (1979), the court reasoned that the same should be true of claim preclusion: A defendant should be precluded from raising an unlitigated defense that it should have raised earlier. The panel then held that "defense preclusion" bars a party from raising a defense where: "(i) a previous action involved an adjudication on the merits"; "(ii) the previous action involved the same parties"; "(iii) the defense was either asserted or could have been asserted, in the prior action"; and "(iv) the district court, in its discretion, concludes that preclusion of the defense is appropriate." 898 F.3d at 241. Finding each factor satisfied in this case, the panel vacated the District Court's judgment. We granted certiorari, 588 U.S. ––––, 139 S.Ct. 2777, 204 L.Ed.2d 1156 (2019), to resolve differences among the Circuits regarding when, if ever, claim preclusion applies to defenses raised in a later suit. Compare 898 F.3d at 241, with Hallco Mfg. Co. v. Foster , 256 F.3d 1290, 1297–1298 (CA Fed. 2001) ; McKinnon v. Blue Cross and Blue Shield of Alabama , 935 F.2d 1187, 1192 (CA11 1991).

II

A

This case asks whether so-called "defense preclusion" is a valid application of res judicata: a term that now comprises two distinct doctrines regarding the preclusive effect of prior litigation. 18 C. Wright, A. Miller, & E. Cooper, Federal Practice and Procedure § 4402 (3d ed. 2016) (Wright & Miller). The first is issue preclusion (sometimes called collateral estoppel), which precludes a party from relitigating an issue actually decided in a prior case and necessary to the judgment. Allen v. McCurry , 449 U.S. 90, 94, 101 S.Ct. 411, 66 L.Ed.2d 308 (1980) ; see Parklane Hosiery , 439 U.S. at 326, n. 5, 99 S.Ct. 645.

The second doctrine is claim preclusion (sometimes itself called res judicata). Unlike issue preclusion, claim preclusion prevents parties from raising issues that could have been raised and decided in a prior action—even if they were not actually litigated. If a later suit advances the same claim as an earlier suit between...