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

Background

The court ruled on the parties’ motions in limine, which are requests to exclude or limit evidence before trial. Stay You moved to preclude, or keep out, testimony from H&M’s former Vice President of Marketing, Mario Moreno; exhibits showing third-party use of “Stay You” and “Stay True, Stay You”; exhibits concerning a third-party trademark application for “Stay True Stay You”; and all references to Urban Dictionary. H&M moved to preclude the May 12, 2021 Urban Dictionary definition of “Stay You.”

Moreno’s Testimony

H&M planned to call Moreno to testify about its 2019 Pride Campaign because its Marketing Concept Manager, Joshua Kalipeni, was no longer employed by H&M. Stay You argued that Moreno should not testify because Stay You had not deposed him and had already deposed Kalipeni. The court denied Stay You’s request to preclude Moreno’s testimony. The court allowed Stay You to depose Moreno on any business day in June or July that was convenient for the parties.

Third-Party Use of the Phrases

The court found that evidence of third-party use was relevant to the strength of Stay You’s mark. Evidence involving clothing could show extensive third-party use of “Stay You” in the casual clothing market, so the court admitted the clothing exhibits. Textual and artistic works were also marginally relevant because they could show that “Stay You” was commonly used. But the court excluded those works under Rule 403 because their limited value was outweighed by the risks of confusing the issues, misleading the jury about the strength of Stay You’s mark or H&M’s fair-use defense, and wasting time through cumulative evidence.

Third-Party Trademark Application

The court found relevant the publication notice and Trademark Official Gazette entry concerning a third party’s “Stay True Stay You” clothing trademark application. The court reasoned that the Patent and Trademark Office’s approval of the mark for publication supported H&M’s argument that the two marks were not sufficiently similar to cause consumer confusion. Although the documents were hearsay, the court held that the publication notice and Gazette entry were admissible under the business-records exception. The court excluded the application form because the third-party applicant’s statements did not fall within a hearsay exception. Accordingly, the court denied Stay You’s motion as to the publication notice and Gazette entry and granted it as to the application form.

Urban Dictionary Definitions

The court excluded the Urban Dictionary definitions under Rule 403 because they had little probative value. The court described Urban Dictionary as a crowdsourced website where users anonymously submit definitions, with few content guidelines and only a limited review process. The court concluded that the definitions were unreliable and could confuse or mislead the jury about whether the meanings of “Stay You” or “Stay True” were at issue, the strength of Stay You’s mark, or H&M’s fair-use defense. The court excluded the specified definitions and barred both parties from referring to Urban Dictionary at trial.

Disposition

Judge Wood concluded that Stay You’s motion was GRANTED IN PART and DENIED IN PART, and that H&M’s motion was GRANTED. The Clerk was directed to close the two motions.