Stay You, LLC v. H&M Hennes & Mauritz LP

Background

H&M moved for reconsideration of part of the court’s prior ruling denying H&M’s motion for summary judgment. The earlier ruling concerned H&M’s fair-use defense and held that H&M had not established that its use of the phrase “Stay True Stay You” was descriptive.

Parties’ Arguments

H&M argued that “Stay True Stay You” was descriptive because it conveyed social messages associated with the Pride movement, including individuality, diversity, self-affirmation, self-acceptance, self-confidence, equality, and dignity. H&M asked the court to follow an earlier district court decision involving the phrase “Own Your Power,” which treated that phrase as descriptive of an overall message of self-empowerment.

Court’s Analysis

The court explained that reconsideration is available only when a party identifies a change in controlling law, new evidence, or a clear error or manifest injustice. The court declined to follow the earlier district court decision and instead relied on the Second Circuit’s decision in Tiffany & Co. v. Costco Wholesale Corp.

Under that decision, a phrase is descriptive when it identifies information about the goods at issue or describes those goods. The court concluded that “Stay True Stay You” identified information about the social message associated with the Pride movement, but did not identify information about the clothing on which the phrase appeared. The court therefore declined to change its original ruling.

Disposition

The court denied H&M’s motion for reconsideration. The Clerk of Court was directed to terminate all open motions, and the parties were ordered to submit a joint pretrial order by September 16, 2022.