       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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