Supremes Wade Into Long-Running ‘Get Lucky’ Trademark Fight

WASHINGTON (CN) — Denim giant Lucky Brand Dungarees struck a chord with a powerful figure Monday as it waged the latest battle of a nearly two-decade-long trademark dispute at the Supreme Court.

Questioning a lawyer for Lucky’s opponent Marcel Fashions Group during arguments this morning, Chief Justice John Roberts called it counterintuitive to the res judicata legal doctrine that a party would have to present all of its positions before a court.

“In other words, if you’ve got five defenses and you think three are really good, two who know, you still have to put in those other two if you want to ever be able to raise that defense again,” Roberts said. “And it’s a particular problem in this area of the law because you’re often dealing with ongoing disputes between two parties.”

Litigation between the two brands over the slogan “Get Lucky” dates back to 2001. In the current dispute, Lucky challenges a lower court’s refusal to let it raise new defense to Marcel’s latest infringement suit.

Representing Marcel, attorney Michael Kimberly said Roberts’ hypothetical would be true only in respect to subsequent suits involving “the same nucleus of operative fact, the same claims.” He said actions before the court today are distinct and involved different claims for relief.

“It would not be true with respect to subsequent litigation between the parties on different causes of action,” said Kimberly, with the firm McDermott Will & Emery.

Justice Ruth Bader Ginsburg — her first appearance on the bench since announcing she is cancer-free last Wednesday — said the claims Marcel raised in earlier iterations of the case were not the same as the claim before the court today.

She said there was no preclusion of claims under the res judicata umbrella because this case involves claims for relief that occurred after judgment.

Kimberly agreed that there was no claim preclusion issue before the court, but denied that this was because the claims for action were different.

“Call it a claim, call it a cause of action, call it a common nucleus of operative facts — that is, I think, the unit that matters for res judicata purposes,” Kimberly said. “The reason that claim preclusion does not apply in this case and that Marcel may prosecute its post-judgment claims is not because they arise from a different nucleus of operative facts.”

Arguing for Lucky, Dale Cendali with the firm Kirkland & Ellis said the amount of damages were why they hadn’t raised the pre-judicata issue that Marcel’s claims had already been litigated by a previous claim. Additionally, she said, those claims would have not applied to the use of “Get Lucky,” which was the primary cause of action between the two parties.

Ginsburg dug at the Sisyphean elephant in the room.

“It seems strange when that release said, Lucky, you can’t use ‘Get Lucky,’ but you’re continuing to use it,” Ginsburg said. “The release said you can’t use ‘Get Lucky.’ On the other hand, we won’t go after you for Lucky Brand.”

“That’s exactly our point, your honor,” replied Cendali. “Because the release would not have been helpful with regard to Get Lucky, it wasn’t going to be dispositive of the case. And therefore, it may have not been worth the cost of briefing it again.”

Lucky paid Marcel $650,000 as part of their first settlement in 2003 and promisedto no longer advertise the line “Get Lucky” for its products.

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