Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc. ( 2020 )

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(Slip Opinion) OCTOBER TERM, 2019 1
Syllabus
NOTE: Where it is feasible, a syllabus (headnote) will be released, as is
being done in connection with this case, at the time the opinion is issued.
The syllabus constitutes no part of the opinion of the Court but has been
prepared by the Reporter of Decisions for the convenience of the reader.
See United States v. Detroit Timber & Lumber Co., 200 U. S. 321, 337.
SUPREME COURT OF THE UNITED STATES
Syllabus
LUCKY BRAND DUNGAREES, INC., ET AL. v. MARCEL
FASHIONS GROUP, INC.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
THE SECOND CIRCUIT
No. 18–1086. Argued January 13, 2020—Decided May 14, 2020
Petitioners (collectively Lucky Brand) and respondent (Marcel) both use
the word “Lucky” as part of their marks on jeans and other apparel.
Marcel received a trademark registration for the phrase “Get Lucky,”
and Lucky Brand uses the registered trademark “Lucky Brand” and
other marks with the word “Lucky.” This has led to nearly 20 years of
litigation, proceeding in three rounds. The first round resulted in a
2003 settlement agreement in which Lucky Brand agreed to stop using
the phrase “Get Lucky” and Marcel agreed to release any claims re-
garding Lucky Brand’s use of its own trademarks. In the second round
(2005 Action), Lucky Brand sued Marcel and its licensee for violating
its trademarks. Marcel filed several counterclaims turning, as rele-
vant here, on Lucky Brand’s alleged continued use of “Get Lucky,” but
it did not claim that Lucky Brand’s use of its own marks alone in-
fringed the “Get Lucky” mark. In both a motion to dismiss the coun-
terclaims and an answer to them, Lucky Brand argued that the coun-
terclaims were barred by the settlement agreement, but it did not
invoke that defense later in the proceedings. The court in the 2005
Action permanently enjoined Lucky Brand from copying or imitating
Marcel’s “Get Lucky” mark, and a jury found against Lucky Brand on
Marcel’s remaining counterclaims. In the third round (2011 Action),
Marcel sued Lucky Brand for continuing to infringe the “Get Lucky”
mark, but it did not reprise its 2005 allegation about Lucky Brand’s
use of the “Get Lucky” phrase. After protracted litigation, Lucky
Brand moved to dismiss, arguing—for the first time since early in the
2005 Action—that Marcel had released its claims in the settlement
agreement. Marcel countered that Lucky Brand could not invoke the
release defense because it could have pursued that defense in the 2005
2 LUCKY BRAND DUNGAREES, INC. v.
MARCEL FASHIONS GROUP, INC.
Syllabus
Action but did not. The District Court granted Lucky Brand’s motion
to dismiss. The Second Circuit vacated and remanded, concluding that
“defense preclusion” prohibited Lucky Brand from raising an unliti-
gated defense that it should have raised earlier.
Held: Because Marcel’s 2011 Action challenged different conduct—and
raised different claims—from the 2005 Action, Marcel cannot preclude
Lucky Brand from raising new defenses. Pp. 6–12.
(a) This case asks whether so-called “defense preclusion” is a valid
application of res judicata: a term comprising the doctrine of issue pre-
clusion, which precludes a party from relitigating an issue actually de-
cided in a prior action and necessary to the judgment, and the doctrine
of claim preclusion, which prevents parties from raising issues that
could have been raised and decided in a prior action. Any preclusion
of defenses must, at a minimum, satisfy the strictures of issue preclu-
sion or claim preclusion. See, e.g., Davis v. Brown, 94 U. S. 423, 428.
Here, issue preclusion does not apply, so the causes of action must
share a “common nucleus of operative fact[s]” for claim preclusion to
apply, Restatement (Second) of Judgments §24, Comment b, p. 199.
Pp. 6–8.
(b) Because the two suits here involved different marks and differ-
ent conduct occurring at different times, they did not share a “common
nucleus of operative facts.” The 2005 claims depended on Lucky
Brand’s alleged use of “Get Lucky.” But in the 2011 Action, Marcel
alleged that the infringement was Lucky Brand’s use of its other marks
containing the word “Lucky,” not any use of “Get Lucky” itself. The
conduct in the 2011 Action also occurred after the conclusion of the
2005 Action. But claim preclusion generally “ ‘does not bar claims that
are predicated on events that postdate the filing of the initial com-
plaint,’ ” Whole Woman’s Health v. Hellerstedt, 579 U. S. ___, ___, be-
cause events occurring after a plaintiff files suit often give rise to new
“operative facts” creating a new claim to relief. Pp. 8–10.
(c) Marcel claims that treatises and this Court’s cases support a ver-
sion of “defense preclusion” that extends to the facts of this case. But
none of those authorities describe scenarios applicable here, and they
are unlikely to stand for anything more than that traditional claim or
issue preclusion principles may bar defenses raised in a subsequent
suit—principles that do not bar Lucky Brand’s release defense here.
Pp. 10–12.
898 F. 3d 232, reversed and remanded.
SOTOMAYOR, J., delivered the opinion for a unanimous Court.
Cite as: 590 U. S. ____ (2020) 1
Opinion of the Court
NOTICE: This opinion is subject to formal revision before publication in the
preliminary print of the United States Reports. Readers are requested to
notify the Reporter of Decisions, Supreme Court of the United States, Wash-
ington, D. C. 20543, of any typographical or other formal errors, in order that
corrections may be made before the preliminary print goes to press.
SUPREME COURT OF THE UNITED STATES
_________________
No. 18–1086
_________________
LUCKY BRAND DUNGAREES, INC., ET AL.,
PETITIONERS v. MARCEL FASHIONS GROUP, INC.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE SECOND CIRCUIT
[May 14, 2020]
JUSTICE SOTOMAYOR delivered the opinion of the Court.
This case arises from protracted litigation between peti-
tioners Lucky Brand Dungarees, Inc., and others (collec-
tively 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 ap-
parel. 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,
2 LUCKY BRAND DUNGAREES, INC. v.
MARCEL FASHIONS GROUP, INC.
Opinion of the Court
in 1990, Lucky Brand began selling apparel using the reg-
istered trademark “Lucky Brand” and other marks that in-
clude the word “Lucky.” 779 F. 3d 102, 105 (CA2 2015).
Three categories of marks are at issue in this case: Mar-
cel’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, al-
leging 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 litiga-
tion (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 viola-
tion 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 in-
fringed––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;
Cite as: 590 U. S. ____ (2020) 3
Opinion of the Court
see id., at 34–41. None of Marcel’s counterclaims alleged
that Lucky Brand’s use of its own marks alone—i.e., inde-
pendent of any alleged use of “Get Lucky”—infringed Mar-
cel’s “Get Lucky” mark.
Lucky Brand moved to dismiss the counterclaims, alleg-
ing 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 perma-
nently enjoined Lucky Brand from copying or imitating
Marcel’s “Get Lucky” mark. Order Granting Partial Sum-
mary 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 Par-
tial 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 al-
leged 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), main-
taining that Lucky Brand continued to infringe Marcel’s
“Get Lucky” mark and, in so doing, contravened the judg-
ment 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
4 LUCKY BRAND DUNGAREES, INC. v.
MARCEL FASHIONS GROUP, INC.
Opinion of the Court
“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 judg-
ment, 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 disa-
greed. 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 hap-
pened to contain the word “Lucky.” Id., at 111. Moreover,
the court reasoned that the jury in the 2005 Action had been
——————
1 See Complaint for Injunctive Relief and Trademark Infringement in
No. 1:11–cv–05523 (SDNY), Doc. 1, ¶15 (“Despite the entry of the [2005
Action judgment], [Lucky Brand] ha[s] continued to willfully . . . infringe
[Marcel’s] GET LUCKY mark by using the Lucky Brand marks in the
identical manner and form and on the same goods for which [it] w[as]
found liable for infringement”); id., ¶20 (“Despite the entry of the” 2005
Action judgment, Lucky Brand has “continued its uninterrupted and
willful use of the Lucky Brand marks and any other trademarks includ-
ing the word ‘Lucky’ ”).
Cite as: 590 U. S. ____ (2020) 5
Opinion of the Court
“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 dis-
miss and answer in the 2005 Action—that Marcel had re-
leased its claims by entering the settlement agreement.
Marcel countered that Lucky Brand was precluded from in-
voking 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 dis-
miss, 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 cate-
gory of preclusion—issue preclusion—may be wielded
against a defendant, see Parklane Hosiery Co. v. Shore, 439
U. S. 322 (1979), the court reasoned that the same should
be true of claim preclusion: A defendant should be pre-
cluded from raising an unlitigated defense that it should
have raised earlier. The panel then held that “defense pre-
clusion” 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 de-
fense was either asserted or could have been asserted, in
the prior action”; and “(iv) the district court, in its discre-
tion, concludes that preclusion of the defense is appropri-
ate.” 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. ___ (2019), to resolve differ-
ences among the Circuits regarding when, if ever, claim
6 LUCKY BRAND DUNGAREES, INC. v.
MARCEL FASHIONS GROUP, INC.
Opinion of the Court
preclusion applies to defenses raised in a later suit. Com-
pare 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, Fed-
eral Practice and Procedure §4402 (3d ed. 2016) (Wright &
Miller). The first is issue preclusion (sometimes called col-
lateral 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 (1980);
see Parklane Hosiery, 439 U. S., at 326, n. 5.
The second doctrine is claim preclusion (sometimes itself
called res judicata). Unlike issue preclusion, claim preclu-
sion 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 the same parties, the ear-
lier suit’s judgment “prevents litigation of all grounds for,
or defenses to, recovery that were previously available to
the parties, regardless of whether they were asserted or de-
termined in the prior proceeding.” Brown v. Felsen, 442
U. S. 127, 131 (1979); see also Wright & Miller §4407. Suits
involve the same claim (or “cause of action”) when they
“ ‘aris[e] from the same transaction,’ ” United States v.
Tohono O’odham Nation, 563 U. S. 307, 316 (2011) (quoting
Kremer v. Chemical Constr. Corp., 456 U. S. 461, 482, n. 22
(1982)), or involve a “common nucleus of operative facts,”
Restatement (Second) of Judgments §24, Comment b, p. 199
(1982) (Restatement (Second)).
Cite as: 590 U. S. ____ (2020) 7
Opinion of the Court
Put another way, claim preclusion “describes the rules
formerly known as ‘merger’ and ‘bar.’ ” Taylor v. Sturgell,
553 U. S. 880, 892, n. 5 (2008). “If the plaintiff wins, the
entire claim is merged in the judgment; the plaintiff cannot
bring a second independent action for additional relief, and
the defendant cannot avoid the judgment by offering new
defenses.” Wright & Miller §4406. But “[i]f the second law-
suit involves a new claim or cause of action, the parties may
raise assertions or defenses that were omitted from the first
lawsuit even though they were equally relevant to the first
cause of action.” Ibid.
As the Second Circuit itself seemed to recognize, see 898
F. 3d, at 236–237, this Court has never explicitly recognized
“defense preclusion” as a standalone category of res judi-
cata, unmoored from the two guideposts of issue preclusion
and claim preclusion. Instead, our case law indicates that
any such preclusion of defenses must, at a minimum, sat-
isfy the strictures of issue preclusion or claim preclusion.
See, e.g., Davis v. Brown, 94 U. S. 423, 428 (1877) (holding
that where two lawsuits involved different claims, preclu-
sion operates “only upon the matter actually at issue and
determined in the original action”).2 The parties thus agree
that where, as here, issue preclusion does not apply, a de-
fense can be barred only if the “causes of action are the
——————
2 There may be good reasons to question any application of claim pre-
clusion to defenses. It has been noted that in suits involving successive
claims against the same defendant, courts often “assum[e] that the de-
fendant may raise defenses in the second action that were not raised in
the first, even though they were equally available and relevant in both
actions.” Wright & Miller §4414. This is because “[v]arious considera-
tions, other than actual merits, may govern” whether to bring a defense,
“such as the smallness of the amount or the value of the property in con-
troversy, the difficulty of obtaining the necessary evidence, the expense
of the litigation, and [a party’s] own situation.” Cromwell v. County of
Sac, 94 U. S. 351, 356 (1877). Here, however, this Court need not deter-
mine when (if ever) applying claim preclusion to defenses may be appro-
priate, because a necessary predicate—identity of claims—is lacking.
8 LUCKY BRAND DUNGAREES, INC. v.
MARCEL FASHIONS GROUP, INC.
Opinion of the Court
same” in the two suits—that is, where they share a “ ‘com-
mon nucleus of operative fact[s].’ ” Brief for Respondent 2,
27, 31, 50; accord, Reply Brief 3.
B
Put simply, the two suits here were grounded on different
conduct, involving different marks, occurring at different
times. They thus did not share a “common nucleus of oper-
ative facts.” Restatement (Second) §24, Comment b, at 199.
To start, claims to relief may be the same for the purposes
of claim preclusion if, among other things, “ ‘a different
judgment in the second action would impair or destroy
rights or interests established by the judgment entered in
the first action.’ ” Wright & Miller §4407. Here, however,
the 2011 Action did not imperil the judgment of the 2005
Action because the lawsuits involved both different conduct
and different trademarks.
In the 2005 Action, Marcel alleged that Lucky Brand in-
fringed Marcel’s “Get Lucky” mark both by directly imitat-
ing its “Get Lucky” mark and by using the “Get Lucky” slo-
gan alongside Lucky Brand’s other marks in a way that
created consumer confusion. Brief for Respondent 52. Mar-
cel appears to admit, thus, that its claims in the 2005 Action
depended on Lucky Brand’s alleged use of “Get Lucky.” Id.,
at 9–10 (“Marcel’s reverse-confusion theory [in the 2005 Ac-
tion] depended, in part, on Lucky’s continued imitation of
the GET LUCKY mark”).
By contrast, the 2011 Action did not involve any alleged
use of the “Get Lucky” phrase. Indeed, Lucky Brand had
been enjoined in the 2005 Action from using “Get Lucky,”
and in the 2011 Action, Lucky Brand was found not to have
violated that injunction. 779 F. 3d, at 111–112. The parties
thus do not argue that Lucky Brand continued to use “Get
Lucky” after the 2005 Action concluded, and at oral argu-
ment, counsel for Marcel appeared to confirm that Marcel’s
claims in the 2011 Action did not allege that Lucky Brand
Cite as: 590 U. S. ____ (2020) 9
Opinion of the Court
continued to use “Get Lucky.” Tr. of Oral Arg. 46. Instead,
Marcel alleged in the 2011 Action that Lucky Brand com-
mitted infringement by using Lucky Brand’s own marks
containing the word “Lucky”—not the “Get Lucky” mark it-
self. Plainly, then, the 2011 Action challenged different
conduct, involving different marks.
Not only that, but the complained-of conduct in the 2011
Action occurred after the conclusion of the 2005 Action.
Claim preclusion generally “does not bar claims that are
predicated on events that postdate the filing of the initial
complaint.” Whole Woman’s Health v. Hellerstedt, 579 U. S.
___, ___ (2016) (slip op., at 12) (internal quotation marks
omitted); Lawlor v. National Screen Service Corp., 349 U. S.
322, 327–328 (1955) (holding that two suits were not “based
on the same cause of action,” because “[t]he conduct pres-
ently complained of was all subsequent to” the prior judg-
ment and it “cannot be given the effect of extinguishing
claims which did not even then exist and which could not
possibly have been sued upon in the previous case”). This
is for good reason: Events that occur after the plaintiff files
suit often give rise to new “[m]aterial operative facts” that
“in themselves, or taken in conjunction with the antecedent
facts,” create a new claim to relief. Restatement (Second)
§24, Comment f, at 203; 18 J. Moore, D. Coquillette, G. Jo-
seph, G. Vairo, & C. Varner, Federal Practice §131.22[1], p.
131–55, n. 1 (3d ed. 2019) (citing cases where “[n]ew facts
create[d a] new claim”).
This principle takes on particular force in the trademark
context, where the enforceability of a mark and likelihood
of confusion between marks often turns on extrinsic facts
that change over time. As Lucky Brand points out, liability
for trademark infringement turns on marketplace realities
that can change dramatically from year to year. Brief for
Petitioners 42–45. It is no surprise, then, that the Second
Circuit held that Marcel’s 2011 Action claims were not
barred by the 2005 Action. By the same token, the 2005
10 LUCKY BRAND DUNGAREES, INC. v.
MARCEL FASHIONS GROUP, INC.
Opinion of the Court
Action could not bar Lucky Brand’s 2011 defenses.
At bottom, the 2011 Action involved different marks, dif-
ferent legal theories, and different conduct—occurring at
different times. Because the two suits thus lacked a “com-
mon nucleus of operative facts,” claim preclusion did not
and could not bar Lucky Brand from asserting its settle-
ment agreement defense in the 2011 Action.
III
Resisting this conclusion, Marcel points to treatises and
this Court’s cases, arguing that they support a version of
“defense preclusion” doctrine that extends to the facts of
this case. Brief for Respondent 24–26. But these authori-
ties do no such thing. As an initial matter, regardless of
what those authorities might imply about “defense preclu-
sion,” none of them describe scenarios applicable here.
Moreover, we doubt that these authorities stand for any-
thing more than that traditional claim- or issue-preclusion
principles may bar defenses raised in a subsequent suit—
principles that, as explained above, do not bar Lucky
Brand’s release defense here.
Take, for example, cases that involve either judgment en-
forcement or a collateral attack on a prior judgment. Id., at
26–35. In the former scenario, a party takes action to en-
force a prior judgment already issued against another; in
the latter, a party seeks to avoid the effect of a prior judg-
ment by bringing a suit to undo it. If, in either situation, a
different outcome in the second action “would nullify the in-
itial judgment or would impair rights established in the in-
itial action,” preclusion principles would be at play. Re-
statement (Second) §22(b), at 185; Wright & Miller §4414.
In both scenarios, courts simply apply claim preclusion or
issue preclusion to prohibit a claim or defense that would
Cite as: 590 U. S. ____ (2020) 11
Opinion of the Court
attack a previously decided claim.3 But these principles do
not preclude defendants from asserting defenses to new
claims, which is precisely what Marcel would have us do
here.
In any event, judgment-enforcement and collateral-at-
tack scenarios are far afield from the circumstances of this
case. Lucky Brand’s defense in the 2011 Action did not
threaten the judgment issued in the 2005 Action or, as Mar-
cel argues, “achieve the same practical result” that the
above-mentioned principles seek to avoid. Brief for Re-
spondent 31–32. Indeed, while the judgment in the 2005
Action plainly prohibited Lucky Brand from using “Get
Lucky,” it did not do the same with respect to Lucky Brand’s
continued, standalone use of its own marks containing the
word “Lucky”—the only conduct at issue in the 2011 Action.
Put simply, Lucky Brand’s defense to new claims in the
2011 Action did not risk impairing the 2005 judgment.
Nor do cases like Beloit v. Morgan, 7 Wall. 619 (1869), aid
Marcel. See Brief for Respondent 32–33. To be sure, Beloit
held that a defendant in a second suit over bonds “of the
same issue” was precluded from raising a defense it had not
raised in the first suit. 7 Wall., at 620. But the Court there
——————
3 One might ask: If any preclusion of defenses (under the claim-preclu-
sion rubric) requires identity of claims in two suits, how could the second
similar suit have avoided standard claim preclusion in the first place?
Different contexts may yield different answers. In a judgment-enforce-
ment context, the answer may be that claim preclusion applies only “to
a final judgment rendered in an action separate from that in which the
doctrine is asserted.” 18 J. Moore, D. Coquillette, G. Joseph, G. Vairo, &
C. Varner, Federal Practice §131.31[1], p. 131–116 (3d ed. 2019) (empha-
sis added). Thus—although claim preclusion does apply to a later,
standalone suit seeking relief that could have been obtained in the first—
it “is not applicable to . . . efforts to obtain supplemental relief in the
original action, or direct attacks on the judgment.” Ibid (footnote de-
leted). The upshot is that—even if a court deems the underlying core of
operative facts to be the same—a plaintiff in that circumstance is not
precluded from enforcing its rights with respect to continuing wrongful
conduct.
12 LUCKY BRAND DUNGAREES, INC. v.
MARCEL FASHIONS GROUP, INC.
Opinion of the Court
explained that the judgment in the first suit “established
conclusively the original validity of the securities described
in the bill, and the liability of the town to pay them.” Id.,
at 623. In other words, by challenging the validity of all
bonds of the same issue, the defense in the second suit
would have threatened the validity of the judgment in the
first suit. The same cannot be said of the defense raised in
the 2011 Action vis-à-vis the judgment in the 2005 Action.
* * *
At bottom, Marcel’s 2011 Action challenged different con-
duct—and raised different claims—from the 2005 Action.
Under those circumstances, Marcel cannot preclude Lucky
Brand from raising new defenses. The judgment of the Sec-
ond Circuit is therefore reversed, and the case is remanded
for proceedings consistent with this opinion.
It is so ordered.