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Gucci America, Inc. v. Guess"

March 13, 2012

GUCCI AMERICA, INC., PLAINTIFF,
v.
GUESS?, INC., MARC FISHER FOOTWEAR LLC, THE MAX LEATHER GROUP/CIPRIANI ACCESSORIES, INC., SEQUEL AG, J&M ASSOCIATES L.P., VIVA OPTIQUE, INC., SIGNAL PRODUCTS, INC., AND SWANK, INC., DEFENDANTS.



The opinion of the court was delivered by: Shira A. Scheindlin, U.S.D.J.

OPINION AND ORDER

I. INTRODUCTION

Gucci America, Inc. ("Gucci") brings this action against Guess?, Inc., Marc Fisher Footwear LLC ("MFF"), the Max Leather Group/Cipriani Accessories, Inc., Sequel AG, K&M Associates L.P., Viva Optique, Inc., Signal Products, Inc, and Swank, Inc. (collectively, "Guess"), alleging various violations of the Lanham Act and New York state law.*fn1 There are currently two motions before the Court. First, MFF seeks to preclude Gucci from introducing third-party cease-and-desist letters related to various American and European trademark disputes.*fn2 Second, Guess seeks to exclude evidence concerning Gucci's claim for "reasonable royalty" damages.*fn3 For the reasons given below, MFF's motion is denied in part and granted in part, while Guess's motion is denied in its entirety.

II. BACKGROUND

The factual background to these motions is more fully set forth in this Court's recent Summary Judgment Opinion and Order.*fn4 Briefly, Gucci claims that Guess and its licensees use certain designs that infringe and dilute several famous Gucci marks, and that such use constitutes "a sophisticated and elaborate scheme . . . to target Gucci, to create products that are similar in appearance to the most popular and best-known Gucci products, and trade upon the goodwill and reputation associated with Gucci and its high-quality, distinctive product lines."*fn5

A. MFF's Motion

MFF seeks to preclude Gucci from offering evidence related to cease-and-desist letters sent to Guess by other fashion companies -- Jimmy Choo, Adidas, Yves Saint Laurent, Christian Dior, Celine, and Dolce & Gabbana -- regarding footwear designed by MFF. According to MFF, such evidence is irrelevant for either of two reasons: (1) the disputes did not result in a judicial determination of infringement, or (2) they covered allegedly infringing activity that took place outside of the United States.*fn6 MFF also argues that this evidence should be precluded under Federal Rule of Evidence 403 as a waste of time.*fn7

B. Guess's Motion

Gucci seeks "reasonable royalty" damages as part of its remedy in this case. Guess argues that "[a]s a matter of law, lost royalty damages are only recoverable where the parties have previously negotiated or entered into a license agreement involving the trademark(s) at issue."*fn8

III. APPLICABLE LAW

A. Motions in Limine Generally

The purpose of a motion in limine is to allow a court to rule on the admissibility of potential evidence in advance of trial.*fn9 A court will exclude evidence on a motion in limine only if the evidence is "clearly inadmissible on all potential grounds."*fn10

B. Evidence of Third-Party Trademark Disputes

Under Federal Rule of Evidence 404(b)(2), evidence of prior bad acts may be admissible to show "motive, opportunity, intent, preparation, plan, knowledge, identity, absence of mistake, or lack of accident." On this basis, courts frequently consider prior judicial resolutions of trademark disputes when discussing the alleged infringer's intent or bad faith.*fn11 Courts also consider the ...


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