Solid 21, Inc. v. Richemont North America, Inc.

Background

On September 7, 2022, the court granted the defendants’ motion for summary judgment as to the defendants’ intracompany sales and otherwise denied that motion. The court also denied Solid 21’s motion for summary judgment. Solid 21 then moved for reconsideration of only the portion of the summary-judgment ruling concerning intracompany sales.

Arguments and Analysis

The court stated that reconsideration is available only when the moving party identifies an intervening change in controlling law, new evidence, or a need to correct clear error or prevent manifest injustice. Solid 21 did not identify any overlooked matter or authority showing that the court had erred.

Solid 21 argued that trademark-infringement liability could arise from an infringing mark’s use in advertising before an infringing sale was completed and even when the mark was not affixed to the products sold. The court responded that the European defendants’ intracompany sales to Richemont North America, Inc. were a “use in commerce” of the mark, but that Solid 21’s claim based on those sales failed because there was no likelihood of confusion. The court said the likelihood of confusion in Richemont North America’s later consumer sales was immaterial because Solid 21 had given up those claims.

The court understood Solid 21’s argument to be that the European affiliates were secondarily liable for Richemont North America’s advertising and consumer sales because the affiliates provided creative direction. The court held that Solid 21 had never alleged contributory or vicarious liability for those sales and had not made that argument while opposing summary judgment. Therefore, the argument could not be raised for the first time on reconsideration. The court also noted that an upstream producer or distributor may, in certain circumstances, be responsible for another entity’s infringing activities, but Solid 21 had neither alleged nor argued that those circumstances existed here.

Finally, the court rejected Solid 21’s argument that the partial summary-judgment ruling conflicted with the earlier order denying the defendants’ motion to dismiss. The court stated that defendants other than Richemont North America were not shielded from liability for their own uses of infringing marks. Because Solid 21 had not previously asserted the secondary-liability claims it sought to pursue, the court found it unnecessary to decide whether Solid 21’s agreement with Richemont North America affected those claims.

Disposition

Judge Lorna G. Schofield ordered that Solid 21’s motion for reconsideration was denied.