Monthly Archives: May 2020

Are You Feeling Lucky, Brand?

“Whatever you do don’t be discouraged. Hear the words that I say. Something’s comin’ around the corner. This could be your lucky day.” Lucky Day by The Stone Coyotes


The copyright guru Arthur Levine is famous for his arsenal of jokes. Most earn solid laughs. Some reach higher heights, rising to iconic status. So it is with Art’s tale about one Morris “Lucky” Goldberg.

Here’s the Cliff’s Notes version: Walking down Main Street a man spots his old friend Morris Goldberg on the opposite sidewalk, who he hasn’t seen in a year. The man cries out. “Hey Morris Goldberg.” Goldberg waives him off, “there is no more Morris Goldberg. From now on I am Lucky Goldberg!” His friend asks, “so tell me, why are you now Lucky Goldberg?” “Lucky” then weaves an elaborate story about how he narrowly escaped death from a falling piano. “So I am now “Lucky” Goldberg!” he declares.'”

A year goes by. The man again spots his old friend across the street and greets him as “Lucky” Goldberg, only to hear the former Morris correct him, add a second “Lucky” to his name, and then recount another convoluted hair-raising brush with death. And each subsequent year, the same scene plays out, with Goldberg tacking another “Lucky” to his moniker.

As you may have guessed, it’s a Yiddish shaggy dog story of epic proportions and boundless possibilities. It’s a story that Art Levine, a master of timing, inflection, and accents, can drag out so long you’d think you were the hapless friend encountering “Lucky, Lucky, Lucky, Lucky Goldberg” year after year.

So you may ask yourelf, what does the saga of “Lucky” Goldberg have to do with trademarks? Plenty. Not only does the joke’s seemingly endless repetition seem to mirror our pandemic days, it also is a fitting metaphor for a trademark case decided last week by the U.S. Supreme Court involving, you guessed it, the brand “Lucky.” For over 20 years, Lucky Brand Dungarees (“Lucky”), with stores throughout the U.S. selling jeans and apparel, has been involved in its own shaggy dog of a litigation with Marcel Fashions, the owner of the trademark GET LUCKY.

The first case involved Marcel’s GET LUCK mark and ended in a 2003 settlement, with Lucky agreeing to stop using “Get Lucky,” and Marcel granting Lucky a release–i.e., a free pass, so to speak, regarding the use of LUCKY BRAND itself.

In the second round, in 2005, Lucky sued Marcel and its licensee for infringing Lucky’s trademarks. Marcel countered with counterclaims again charging Lucky with infringing Marcel’s GET LUCKY mark. But Marcel didn’t claim that Lucky’s other marks, such as LUCKY BRAND, infringed Marcel’s GET LUCKY trademark. Early in the 2005 case, Lucky claimed that the prior settlement blocked Marcel from suing over GET LUCKY. But Lucky didn’t pursue that theory at trial. Lucky lost the 2005 case and was permanently barred from using “Get Lucky.” No, Lucky didn’t change its name to Morris Goldberg Dungarees. But it continued using its LUCKY BRAND marks

Then came round three, in 2011. Marcel again asserted GET LUCKY. But this time, its target was all of Lucky’s other marks that contained the word “Lucky” besides GET LUCKY, because Lucky had already been enjoined from using “Get Lucky” in 2005. The trial court, however, wanted no part of this endless litigation. It granted summary judgment for Lucky, ruling that Marcel’s 2011 claims were a reboot of its unsuccessful 2005 counterclaims.

But the Court of Appeals for the Second Circuit disagreed, concluding that Marcel’s 2011 claims were distinct from its claims back in 2005 because those claims were for “earlier infringements” involving “Get Lucky,” while the 2011 action involved Lucky’s other marks. The Second Circuit vacated the district court’s summary judgment ruling and remanded the case for another round of litigation.

Back at the district court, Lucky unveiled a new defense. It argued for the first time that the release Marcel had given Lucky in the 2005 settlement blocked Marcel from now suing over Lucky’s use of its LUCKY BRAND and other LUCKY marks. Marcel countered that Lucky could have raised that defense in the 2005 action, didn’t, and therefore should be blocked from raising it now, years later. The district court agreed with Lucky, holding that the 2003 settlement agreement was indeed a complete defense.

But the Second Circuit had other thoughts. Relying on a doctrine it dubbed “defense preclusion,” the Second Circuit held that Lucky should have raised its “release” defense in the 2005 case between the same parties and that it was too late to raise it for the first time in the third round of litigation.

This unusual “defense preclusion” caught the eye of the Supreme Court, which granted certiorari to tackle this rare issue. In a unanimous decision penned by Justice Sotomayor, the Court held that so-called “defense preclusion” did not block Lucky from asserting its settlement agreement defense the 2011 action. Simply put, the Supreme Court recognized that the 2005 suit–round 2–concerned Lucky’s use of the GET LUCKY mark, while Round 3, the 2011 case, did not–it involved Lucky’s other marks. “At bottom, ” Justice Sotomayor wrote, “the 2011 Action involved different marks, different legal theories, and different conduct—occurring at different times. Because the two suits thus lacked a “common nucleus of operative facts,” claim preclusion did not and could not bar Lucky Brand from asserting its settlement agreement defense in the 2011 Action.”

So apparently ends the long, tortuous saga of Marcel and Lucky. But what of Lucky, Lucky, Lucky, Lucky, etc. Goldberg? Unlike with parties to a court case, our hero’s fate cannot be gleaned from a case book, treatise, or Internet blog. One must earn the right to learn the punchline from the veritable Chief Justice of jokesters, Mr. Levine himself. Spoiler alert, its not suitable for publication in a family legal blog. That’s Arthur, brother.


Quote of the day: “I think we consider too much the luck of the early bird and not enough the bad luck of the early worm.”– Franklin D. Roosevelt

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When It Rains, It Pours

“So if you’re gonna do, then baby, just do it.” Just Do It Julia Michaels

Bill Belichick shows soft side with his dog

It’s been a good fortnight, brand-wise, for one of the world’s best-known brands. First, during the NFL’s strangely compelling virtual draft, with all the coaches and GM’s hunkered in basement bunkers, a canine cameo by Patriot’s coach Bill Belichick’s Alaskan Klee Kai became an Internet sensation. The pup’s name?


As if the sports footwear and apparel giant needed help. A brand that generates all the goodwill money can buy got a free boost from a virtual viral video “aww” moment that only happened because a virus of a real and sinister sort kept Roger Goddell and the NFL from staging its annual draft extravaganza, which this year would have been held in Vegas. The NFL’s draft party last year in Nashville was none too sedate. One can only imagine what kinds of shenanigans would have “stayed in Vegas” if the NFL Draft had not been quarantined like the rest of us.

But when a dog becomes an overnight sensation, eclipsing even the Tom Brady to Tampa Bay melodrama and adding a dollop of humanity to the crusty Patriot’s coach, and that dog’s name happens to be Nike, that’s something even a powerful brand can howl about.

You’d think that the lighting bolt of trademark luck could not strike the same brand twice.

But the following, week, things got even better brand-wise, for Nike. The Trademark Trial and Appeal Board declared Nike’s long-time slogan “Just Do It” not merely famous, but “exceedingly so” and therefore “entitled to the highest level of protection against confusion.” To get there, the Board looked at Nike’s hundreds of millions of dollars invested in advertising, massive sales over several decades, and a rich body of press reflecting the public’s perception of “Just Do It” as one of the greatest slogans in advertising history.

Why is this ruling important? It illustrates again the value of creating a famous brand. When it comes to trademarks, fame is a game changer. Famous marks are said to “cast a long shadow,” expanding their scope of protection and requiring others to stay far away.

In this case, Nike complained against an attempt to register “Just Drew It!” for athletic apparel. The “Just Drew It” folks gamely tried to elude Nike’s trademark rights by arguing that the two slogans connote different things– Nike’s “Just Do It” being a call to action, versus “Just Drew It” suggesting that something had been recently drawn, But “Drew” didn’t stand a chance in the face of “Just Do It’s” exceeding fame.

And in reality, Nike’s victory had nothing to do with luck and everything to do with selecting a powerful brand and then expertly marketing it into a permanent place in popular culture along with other enduring and indelible slogans such as Diamonds Are Forever. Come to think of it, “Just Do It” might be even more valuable than diamonds and may also last forever, or at least for more than a century, like the slogan in the title of this post, When It Rains, It Pours. Morton Salt coined that one back in 1914.

The case is Nike, Inc. v. Jamin Caldwell and Courtney Miles

Quote of the Day: “Brevity is very important. If you’re going to be longwinded, it should be for a purpose. Not just because you like your words.” Patricia Marx


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