United States Court of Appeals for the Second Circuit · 2019-08-08
15usc1125: author: Flash3 · QA: FIX (Fable, neov2/cases/TRIAGE-Flash.md)
Case and law context
Role: applied; posture: civil trademark infringement action under the Lanham Act (registered mark); jury verdict of infringement not challenged on appeal; district judge's willfulness finding and award of defendants' stipulated gross profits affirmed (actual confusion not required for profits); removal of trebling affirmed on cross-appeal; attorney's fees and prejudgment interest vacated and remanded for the Octane Fitness standard; result: mixed; claim: (a)
Uncertainty
role: the opinion never cites § 1125(a); it speaks of a "trademark infringement case brought under the Lanham Act" on a registered mark and decides only remedies under § 1117(a) (its one § 1125 cite is to subsection (c), in a footnote). Recorded as applied on the assumption that the unspecified Lanham Act counts included § 43(a); a curator may prefer to move this file to the § 1114 / § 1117 side
Element likely-confusion: guard: G2-history-held the block records the jury's finding (decider jury, review none); the sentence reporting the verdict is the correct held for a finding below
Misfit
None recorded
B · Case × element grid
Top-level elements follow claim order in panels of up to six elements. Case rows repeat across panels. Every recorded block retains its holding and basis; multiple blocks are not merged into a case-level verdict. ✓ satisfied · ✗ not satisfied · ○ not reached · · not addressed. Muted blocks are not counted. Sub-element evidence remains on case and element pages.
Elements 1–6 of 17
| Case | Statutory person including state entities and officials | Judicial domestic infringing-use limit | Use in commerce connected with goods or services | Enforceable source-identifying mark or trade dress | Likely consumer confusion about source or sponsorship | Entitlement to sue and protected commercial interest |
|---|---|---|---|---|---|---|
| 4 Pillar Dynasty LLC v. N.Y. & Co. — 933 F.3d 202 (2019) · United States Court of Appeals for the Second Circuit · 2019 (15usc1125: author: Flash3 · QA: FIX (Fable, neov2/cases/TRIAGE-Flash.md)) | · not addressed | · not addressed | · not addressed | · not addressed | ✓ satisfied · provedNot counted: applied/lower-court | · not addressed |
Elements 7–12 of 17
| Case | Good-faith descriptive use other than as a mark | State sovereign immunity unless a valid route permits suit | Misleading affiliation approval or sponsorship | Claimant proves nonfunctionality | Commercial advertising or promotion | False or misleading factual representation |
|---|---|---|---|---|---|---|
| 4 Pillar Dynasty LLC v. N.Y. & Co. — 933 F.3d 202 (2019) · United States Court of Appeals for the Second Circuit · 2019 (15usc1125: author: Flash3 · QA: FIX (Fable, neov2/cases/TRIAGE-Flash.md)) | · not addressed | · not addressed | · not addressed | · not addressed | · not addressed | · not addressed |
Elements 13–17 of 17
| Case | Judicial actual-deception or tendency-to-deceive requirement | Judicial materiality requirement for purchasing decisions | Judicial zone-of-interests limit to commercial injury | Judicial proximate-causation requirement | Remedy-specific proof |
|---|---|---|---|---|---|
| 4 Pillar Dynasty LLC v. N.Y. & Co. — 933 F.3d 202 (2019) · United States Court of Appeals for the Second Circuit · 2019 (15usc1125: author: Flash3 · QA: FIX (Fable, neov2/cases/TRIAGE-Flash.md)) | · not addressed | · not addressed | · not addressed | · not addressed |
Instances and excluded annotation blocks
| Case | Element | Holding and scope | Pattern | Exact source quotations |
|---|---|---|---|---|
| 4 Pillar Dynasty LLC v. N.Y. & Co. — 933 F.3d 202 (2019) · United States Court of Appeals for the Second Circuit · 2019 — satisfied · proved (15usc1125: author: Flash3 · QA: FIX (Fable, neov2/cases/TRIAGE-Flash.md)) | Likely consumer confusion about source or sponsorship | satisfied Excluded from merits counts applied / lower-court basis: proved; claim: (a); party: New York & Company, Inc. and New York & Company Stores, Inc.; count: Velocity trademark infringement; subject: party=New York & Company, Inc. and New York & Company Stores, Inc.; count=Velocity trademark infringement Infringement was found by the jury and was not challenged in the post-trial motions or on appeal; the Second Circuit does not review likelihood of confusion. Recorded as a finding below, not as this court's ruling. | retailer's house-brand activewear line using the plaintiff's registered one-word mark for the same kind of goods | He testified that, at some point in 2015, a potential customer came to his office and asked him if he had licensed the "Velocity" mark to NY & C.Source: docroot/ir/caselaw/f3d_933.jsonl#/f3d/933/0202-01; Unicode character offsets [4672:4817] (end exclusive); SHA-256 808184e7a4f08f78dc6a871a04a50ff72f289fe9abf7a166064db0543d9edc8e.In his view, Defendants were selling the "exact" same type of products as his company; marketing them to the same demographic groups at a similar price; and unlawfully using the Velocity trademark to do so.Source: docroot/ir/caselaw/f3d_933.jsonl#/f3d/933/0202-01; Unicode character offsets [5122:5328] (end exclusive); SHA-256 808184e7a4f08f78dc6a871a04a50ff72f289fe9abf7a166064db0543d9edc8e.Here, in contrast, the District Court reasonably found the similarities between Defendants' products and the "Velocity" trademark to be "blatant."Source: docroot/ir/caselaw/f3d_933.jsonl#/f3d/933/0202-01; Unicode character offsets [14076:14222] (end exclusive); SHA-256 808184e7a4f08f78dc6a871a04a50ff72f289fe9abf7a166064db0543d9edc8e.The jury found that NY & C had infringed Reflex's trademark.Source: docroot/ir/caselaw/f3d_933.jsonl#/f3d/933/0202-01; Unicode character offsets [7377:7437] (end exclusive); SHA-256 808184e7a4f08f78dc6a871a04a50ff72f289fe9abf7a166064db0543d9edc8e. |
| 4 Pillar Dynasty LLC v. N.Y. & Co. — 933 F.3d 202 (2019) · United States Court of Appeals for the Second Circuit · 2019 — satisfied · proved (15usc1125: author: Flash3 · QA: FIX (Fable, neov2/cases/TRIAGE-Flash.md)) | Remedy-specific proof | satisfied Counted merits instance applied / merits basis: proved; claim: (a); party: New York & Company, Inc. and New York & Company Stores, Inc.; count: Velocity trademark infringement; subject: party=New York & Company, Inc. and New York & Company Stores, Inc.; count=Velocity trademark infringement Profits award under § 1117(a) affirmed: willfulness (then a Second Circuit prerequisite under George Basch) found by the district judge with an advisory jury and upheld for clear error; actual confusion is not a prerequisite on the deterrence rationale; full gross profits within discretion. Enhanced (treble) profits denied and affirmed; fees and prejudgment interest vacated and remanded. The willfulness prerequisite was later rejected in Romag Fasteners v. Fossil (2020), which is not part of this opinion. | disgorgement of a willful infringer's stipulated gross profits on a deterrence rationale, no proof of actual confusion, trebling withdrawn | It is uncontested, however, that NY & C continued to sell the allegedly infringing products after the lawsuit was filed and they had been duly served.Source: docroot/ir/caselaw/f3d_933.jsonl#/f3d/933/0202-01; Unicode character offsets [35697:35847] (end exclusive); SHA-256 808184e7a4f08f78dc6a871a04a50ff72f289fe9abf7a166064db0543d9edc8e.Defendants provided no evidence to explain or justify their failure to cease selling the infringing sportswear once they received actual notice of Plaintiffs' allegations.Source: docroot/ir/caselaw/f3d_933.jsonl#/f3d/933/0202-01; Unicode character offsets [14223:14394] (end exclusive); SHA-256 808184e7a4f08f78dc6a871a04a50ff72f289fe9abf7a166064db0543d9edc8e.After Hedvat concluded his testimony, the parties stipulated on the record that Defendants' gross profits from the sale of products bearing the NY & C Velocity trademark were $1,864,337.29.Source: docroot/ir/caselaw/f3d_933.jsonl#/f3d/933/0202-01; Unicode character offsets [5955:6144] (end exclusive); SHA-256 808184e7a4f08f78dc6a871a04a50ff72f289fe9abf7a166064db0543d9edc8e.At trial, Plaintiffs presented no direct evidence of Defendants' state of mind in using the "NY & C Velocity" brand.Source: docroot/ir/caselaw/f3d_933.jsonl#/f3d/933/0202-01; Unicode character offsets [11750:11866] (end exclusive); SHA-256 808184e7a4f08f78dc6a871a04a50ff72f289fe9abf7a166064db0543d9edc8e.Hedvat conceded that Reflex's sales of Velocity products actually increased between 2014 and 2016, including during the period after which he discovered NY & C's allegedly infringing use.Source: docroot/ir/caselaw/f3d_933.jsonl#/f3d/933/0202-01; Unicode character offsets [5515:5702] (end exclusive); SHA-256 808184e7a4f08f78dc6a871a04a50ff72f289fe9abf7a166064db0543d9edc8e.To dispel any doubts as to this question, we write to clarify that, in our Circuit, a plaintiff need not establish actual consumer confusion to recover lost profits under the Lanham Act.Source: docroot/ir/caselaw/f3d_933.jsonl#/f3d/933/0202-01; Unicode character offsets [17367:17553] (end exclusive); SHA-256 808184e7a4f08f78dc6a871a04a50ff72f289fe9abf7a166064db0543d9edc8e.Considering the totality of the factors identified by the District Court as the basis for its decision, we will not disturb its determination that Defendants willfully infringed Plaintiffs' trademark.Source: docroot/ir/caselaw/f3d_933.jsonl#/f3d/933/0202-01; Unicode character offsets [16590:16790] (end exclusive); SHA-256 808184e7a4f08f78dc6a871a04a50ff72f289fe9abf7a166064db0543d9edc8e.Nevertheless, applying the deferential abuse-of-discretion standard of review that governs such rulings, we conclude that the District Court acted within the permissible bounds of its discretion by not doing so here.Source: docroot/ir/caselaw/f3d_933.jsonl#/f3d/933/0202-01; Unicode character offsets [26866:27082] (end exclusive); SHA-256 808184e7a4f08f78dc6a871a04a50ff72f289fe9abf7a166064db0543d9edc8e. |