08-4483-cv
Louis Vuitton Malletier, S.A. v. LY USA Inc.
1 UNITED STATES COURT OF APPEALS
2 FOR THE SECOND CIRCUIT
3 SUMMARY ORDER
4 RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A SUMMARY ORDER
5 FILED ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS GOVERNED BY FEDERAL RULE OF
6 APPELLATE PROCEDURE 32.1 AND THIS COURT'S LOCAL RULE 32.1.1. WHEN CITING A SUMMARY ORDER
7 IN A DOCUMENT FILED WITH THIS COURT, A PARTY MUST CITE EITHER THE FEDERAL APPENDIX OR AN
8 ELECTRONIC DATABASE (WITH THE NOTATION "SUMMARY ORDER"). A PARTY CITING A SUMMARY ORDER
9 MUST SERVE A COPY OF IT ON ANY PARTY NOT REPRESENTED BY COUNSEL.
10 At a stated term of the United States Court of Appeals for the
11 Second Circuit, held at the Daniel Patrick Moynihan United States
12 Courthouse, 500 Pearl Street, in the City of New York, on the 29th
13 day of March, two thousand twelve.
14 PRESENT:
15 ROBERT D. SACK,
16 DEBRA ANN LIVINGSTON,
17 GERARD E. LYNCH,
18 Circuit Judges.
19 - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
20 LOUIS VUITTON MALLETIER S.A,
21 Plaintiff-Appellee,
22 - v - Nos. 08-4483-cv, 08-4525-cv,
08-4528-cv, 08-5108-cv,
23 LY USA, INC.; COCO USA INC.; CHONG 08-5273-cv, 08-5290-cv
24 LAM; MARCO LEATHER GOODS, LTD.; and
25 JOYCE CHAN,
26 Defendants-Cross-Claimants-Cross
27 Defendants-Appellants.
28 --------------------------------------
29 Appearing for Appellant: ANGELO RIOS (Mark N. Antar, on the
30 brief), Cheven, Keely & Hatzis, New
31 York, NY, for Defendants-Cross
32 Claimants-Cross Defendants-
33 Appellants CoCo USA Inc. and Joyce
34 Chan.
1 JOHN K. ZWERLING (Michael G. Dowd,
2 Law Offices of Michael G. Dowd, New
3 York, NY; Kathleen C. Waterman,
4 Thomas Torto, Law Offices of
5 Kathleen C. Waterman, New York, NY,
6 on the brief) Zwerling, Leibig &
7 Moseley, P.C., Alexandria, VA, for
8 Defendants-Cross Claimants-Cross
9 Appellants Chong Lam, LY USA Inc.,
10 and Marco Leather Goods, Ltd.
11
12 Appearing for Appellee: MICHAEL J. ALLAN (William G. Pecau,
13 on the brief), Steptoe & Johnson
14 LLP, Washington, DC.
15 Appeal from the United States District Court for the
16 Southern District of New York (Alvin K. Hellerstein, J.).
17 UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED AND
18 DECREED that the judgment of district court be, and it hereby is,
19 AFFIRMED.
20 Defendants-Appellants appeal from judgments of the United
21 States District Court for the Southern District of New York
22 entered September 2, 2008 and October 15, 2008 granting summary
23 judgment to Plaintiff-Appellee on its claims for trademark
24 infringement and trademark counterfeiting, and awarding $3.5
25 million in statutory damages, attorney's fees, and costs. We
26 assume the parties' familiarity with the facts and procedural
27 history of this case.
28 Defendants appeal five separate decisions of the district
29 court: (1) the grant of summary judgment on plaintiff's claims of
30 trademark infringement and counterfeiting; (2) the award of
31 statutory damages; (3) the denial of the defendants' motion to
32 adjourn oral argument to permit the defendants to examine
2
1 purportedly new evidence; (4) the denial of the defendants'
2 motion to stay the proceeding pending the outcome of a related
3 criminal proceeding; and (5) the award of attorney's fees in
4 addition to statutory damages. This summary order addresses only
5 the first three issues. The district court's decision on the
6 latter two are disposed of by a separate opinion issued today.
7 I. Trademark Infringement and Counterfeiting
8 We review the district court's grant of summary judgment
9 on the trademark infringement and counterfeiting claims de novo,
10 construing the facts in the light most favorable to the
11 defendants. Am. Express Co. v. Goetz, 515 F.3d 156, 159 (2d Cir.
12 2008).
13 Under Section 32 of the Lanham Act, the owner of a mark
14 registered with the Patent and Trademark Office can seek civil
15 damages against a party who uses the mark without the owner's
16 consent in a manner "likely to cause confusion, or to cause
17 mistake, or to deceive." 15 U.S.C. § 1114(1)(a)(2011). "We
18 analyze such a claim under a familiar two-prong test. The test
19 looks first to whether the plaintiff's mark is entitled to
20 protection, and second to whether the defendant's use of the mark
21 is likely to cause consumers confusion as to the origin or
22 sponsorship of the defendant's goods." Tiffany (NJ) Inc. v. eBay
23 Inc., 600 F.3d 93, 102 (2d Cir. 2010) (internal quotation marks
24 omitted). Louis Vuitton's ownership of protected marks is
3
1 undisputed. To evaluate the likelihood of consumer confusion,
2 this court applies the eight-factor balancing test set forth in
3 Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d
4 Cir. 1961). The ultimate purpose of this test is to determine
5 whether, "looking at the products in their totality, consumers
6 are likely to be confused." Starbucks Corp. v. Wolfe's Borough
7 Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009) (citation and
8 internal quotation marks omitted).
9 The defendants challenge the district court's finding of
10 infringement primarily on the basis of the similarity-of-the-
11 marks analysis under Polaroid. The defendants argue that the
12 district court's observation that differences exist between the
13 accused merchandise and the Louis Vuitton merchandise "cannot be
14 reconciled" with a finding of infringement. This argument
15 misapprehends the law.
16 The threshold for infringement liability is not exact
17 copying, but rather confusing similarity. Such similarity is to
18 be determined by considering how a consumer would perceive the
19 products viewing them serially, as would be typical in a
20 purchasing context. See Louis Vuitton Malletier v. Burlington
21 Coat Factory Warehouse Corp., 426 F.3d 532, 538 (2d Cir. 2005)
22 ("The test [for likelihood of confusion] is not whether the
23 consumer will know the difference if he sees the competing
4
1 products on the same shelf." (alteration in original; internal
2 quotation marks omitted)).
3 The district court properly applied the similarity-of-the-
4 marks and other Polaroid factors in determining that consumer
5 confusion was sufficiently likely to support a claim for
6 infringement. The likelihood that the use of plaintiff's marks
7 would lead individuals other than purchasers of the knockoff
8 products to believe that they were manufactured by the trademark-
9 holder (so-called "post-sale confusion") provides further support
10 for the judgment of the district court. See Hermès Int'l v.
11 Lederer de Paris Fifth Ave., Inc., 219 F.3d 104, 109 (2d Cir.
12 2000) ("[A] loss occurs when a sophisticated buyer purchases a
13 knockoff and passes it off to the public as the genuine article,
14 thereby confusing the viewing public and achieving the status of
15 owning the genuine article at a knockoff price."); Lois
16 Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 872
17 (2d Cir. 1986) ("[P]ost-sale confusion as to source is actionable
18 under the Lanham Act.").
19 The Lanham Act defines as counterfeit "a spurious mark which
20 is identical with, or substantially indistinguishable from, a
21 registered mark." 15 U.S.C. § 1127. The defendants challenge
22 the district court's ruling on summary judgment that they engaged
23 in counterfeiting primarily based on the alleged bias of a
24 cooperating witness. However, "[b]road, conclusory attacks on
5
1 the credibility of a witness" alone are insufficient to defeat
2 summary judgment. Island Software & Comp. Serv., Inc. v.
3 Microsoft Corp., 413 F.3d 257, 261 (2d Cir. 2005). The district
4 court based its ruling on the absence of any testimony
5 contradicting the cooperating witness, as well as on its own
6 examination of catalog photographs of the counterfeit goods,
7 records of Customs seizures, and additional evidence. The
8 district court properly concluded that the defendants engaged in
9 counterfeiting.
10 II. Statutory Damages
11 This court reviews a district court's factual findings in
12 support of its determination of the amount of statutory damages
13 for clear error, and its award of such damages for an abuse of
14 discretion. Bryant v. Media Rights Prods., Inc., 603 F.3d 135,
15 143 (2d Cir. 2010) (reviewing an award of statutory damages under
16 the Copyright Act).
17 Section 35(c) of the Lanham Act sets minimum and maximum
18 statutory damages "per counterfeit mark per type of goods or
19 services sold" that vary based on whether the use of the
20 counterfeit mark was willful.* 15 U.S.C. § 1117(c). Within
*
At the time this suit was initiated, the amounts ranged
from not less than $500 to not more than $100,000 per counterfeit
mark per type of goods sold if use of the mark was not willful,
or up to $1 million per mark if the use was willful. 15 U.S.C.
§ 1117(c)(2004). These amounts were doubled effective October
13, 2008. See Prioritizing Resources and Organization for
6
1 these statutory limits courts have "considerably broad
2 discretion" to balance the "punitive, deterrent function" of an
3 award against the direction that it "not constitute a windfall
4 for prevailing plaintiffs." Rolls-Royce PLC v. Rolls-Royce USA,
5 Inc., 688 F. Supp. 2d 150, 157 (E.D.N.Y. 2010).
6 The district court found eight distinct and willful uses of
7 counterfeit marks that entitled the plaintiff to the maximum
8 statutory damages of $8 million, considerably more than the $3
9 million awarded. The district court noted that U.S. Customs had
10 seized some 100,000 counterfeit items from just one of the
11 defendants in a single year and that the incomplete sales records
12 produced by the defendants invited an inference of a "massive
13 counterfeiting enterprise." Based on the record before the
14 district court, its conclusion as to the possible extent of the
15 counterfeiting does not constitute clear error, and we cannot say
16 that the district court abused its discretion in setting the
17 amount of the award.
18 III. Motion to Adjourn Oral Argumemt
19 The defendants argue that the district court abused its
20 discretion in denying their motion to stay oral argument to allow
21 them to examine "new evidence" of counterfeiting that Louis
22 Vuitton proffered in its summary judgment briefing. "The
Intellectual Property Act of 2008, 110 Pub. L. No. 110-403,
§ 104, 122 Stat. 4256.
7
1 decision to deny a continuance rests within the sound discretion
2 of the trial court and will be overturned only for an abuse of
3 discretion." Farias v. Instructional Sys., Inc., 259 F.3d 91,
4 99-100 (2d Cir. 2001).
5 On appeal, the defendants cite no authority in support of
6 their conclusory assertions that the district court abused its
7 discretion in denying a continuance. The "new evidence"
8 plaintiff submitted was cumulative of other counterfeiting
9 evidence previously submitted, to which the defendants had ample
10 opportunity to respond. We therefore conclude that the district
11 court's denial of the motion was not arbitrary and did not
12 prejudice the defendants.
13 For the foregoing reasons, the judgment of the district
14 court is hereby AFFIRMED.
15 FOR THE COURT:
16 CATHERINE O'HAGAN WOLFE, CLERK
17
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