The opinion of the court was delivered by: Laura Taylor Swain, Usdj
Plaintiffs Lucky Brand Dungarees, Inc. and Liz Claiborne, Inc.*fn1 (collectively referred to as "Lucky Brand" or "Plaintiffs") bring this action against Defendants Ally Apparel Resources LLC d/b/a Get Lucky, Key Apparel Resources, Ltd., Marcel Fashion Group, Inc. and Ezra Mizrachi (collectively referred to as "Defendants"), alleging, inter alia, that the manner in which Defendants have used and continue to use the "Get Lucky" brand infringes several of Plaintiffs' trademarks.*fn2 Lucky Brand's complaint asserts the following claims: (1) trademark infringement in violation of 15 U.S.C. § 1114; (2) unfair competition in violation of 15 U.S.C. § 1125(a); (3) trademark dilution in violation of 15 U.S.C. § 1125(c); (4) injury to business reputation/dilution in violation of N.Y. Gen. Bus. Law § 360-l; (5) deceptive acts in violation of N.Y. Gen. Bus. Law § 349; (6) common law trademark infringement; and (7) common law unfair competition. Defendants move the Court for summary judgment in their favor on Plaintiffs' trademark infringement and unfair competition claims pursuant to Rule 56 of the Federal Rules of Civil Procedure. (Docket Entry No. 92.) This Court has jurisdiction of the parties' Lanham Act claims pursuant to 28 U.S.C. § 1338 and supplemental jurisdiction of the parties' state law claims pursuant to 28 U.S.C. § 1367.
The Court has considered carefully the parties' submissions and arguments. For the following reasons, the Court denies Defendants' motion for summary judgment.
The following material facts are not disputed unless otherwise indicated. In 1985, Ezra Mizrachi ("Mizrachi") founded a clothing company called Marcel Fashion Group, Inc. ("Marcel"). (Pls.' Opp'n to Defs.' Rule 56.1 Statement ("Pls.' 56.1 Stmt.") ¶ 1.)*fn3 On January 7, 1986, Marcel registered the mark "Get Lucky," which covered, inter alia, men's, women's, and children's clothing and sportswear, including jeans, on the principal register (Reg. No. 1,377,345). (Pls.' 56.1 Stmt. ¶¶ 13-14; Marcel Certificate of Registration,*fn4 annexed to July 30, 2007, Decl. of Ezra Mizrachi ("Mizrachi Decl. I") as Ex. N.) In January 1992, Marcel's registration for the "Get Lucky" mark was cancelled.*fn5 (Pls.' 56.1 Stmt. ¶ 15.) On September 23, 2003, Marcel registered a new "Get Lucky" mark on the principal register (Reg. No. 2,765,974). (Defs.' Answer and Countercl. ¶ 34; Pls.' Answer ¶ 34; Mizrachi Decl. I Ex. M.)
Lucky Brand, also a clothing company, was founded in 1991. (Joint Pre-Trial Stmt. ("JPTS") at 6.)*fn6 Between mid-1991 and early 2005, Lucky Brand obtained several registrations for the "Lucky Brand" mark and derivations thereof (hereinafter "Lucky-formative marks") for various articles of clothing, with a substantial majority of the registrations obtained after 2000. (See Ex. 1, annexed to Aug. 17, 2007, Decl. of Barry Perlman.)*fn7 All of the marks were registered on the principal register. (Id.)
In the spring of 2004, Marcel licensed Ally Apparel Resources LLC ("Ally") to use the "Get Lucky" mark.*fn8 (JPTS at 7.) Lucky Brand thereafter brought this action, alleging that, after obtaining a license from Marcel, Ally used and continues to use "Get Lucky" in a manner that infringes the trademarks owned and registered by Lucky Brand. (See Compl. ¶¶ 47-59.)
The extent to which and the geographic areas in which Marcel and/or its licensees have used the "Get Lucky" mark from 1985 until the present time are disputed.
Defendants move for summary judgment on Plaintiffs' trademark and unfair competition claims. Summary judgment is appropriate where "the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). To defeat a motion for summary judgment, the non-movant must identify specific facts showing a genuine issue for trial, or demonstrate that the moving party is not entitled to judgment as a matter of law. Fed. R. Civ. P. 56(e)(2); see Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
Defendants invoke the prior use defense codified in 15 U.S.C. § 1115(b)(6) in aid of their argument that they are entitled to summary judgment dismissing all of Plaintiffs' trademark infringement and unfair competition claims because Marcel had registered, and used, "Get Lucky" throughout the United States before Plaintiffs even registered their marks. (See Oral Argument Tr. at 3.)
Prior use defense under 15 U.S.C. § 1115(b)(6)*fn9
The prior use defense provision under subsection (b)(6) permits an alleged infringer to assert as a defense:
That the mark whose use is charged as an infringement was registered and used prior to the registration under this chapter . . . , and not abandoned: Provided, however, That this defense or defect shall apply only for the area in ...