`TechnoMarine SA v. Giftports, Inc.
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`UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
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`August Term 2013
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`Argued: December 4, 2013
`Decided: July 15, 2014
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`No. 12‐4174‐cv
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`_____________________________________
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`TECHNOMARINE SA,
`Plaintiff‐Appellant,
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`‐v‐
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`GIFTPORTS, INC., a New York Corporation,
`Defendant‐Appellee,
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`DOES 1 THROUGH 10,
`Defendants.
`_____________________________________
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`Before:
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`LIVINGSTON and LOHIER, Circuit Judges, and STEIN, District Judge.*
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`Appeal from a September 10, 2012, order of the United States District Court
`for the Southern District of New York (Batts, J.), granting the Defendant‐Appellee’s
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`* The Honorable Sidney H. Stein, of the United States District Court for the Southern
`District of New York, sitting by designation.
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`motion to dismiss. We consider whether an earlier litigation between the parties
`resolving, inter alia, claims of trademark infringement, bars the present suit over
`similar conduct occurring after the date of the settlement agreement that concluded
`the first litigation. We determine that Plaintiff‐Appellant’s claims arising after the
`first litigation are not barred by res judicata. Nonetheless, we affirm the order of the
`district court on the basis of its alternate holding that Plaintiff‐Appellant failed to
`state a claim on which relief may be granted. Further, we affirm the district court’s
`denial of Plaintiff‐Appellant’s request for leave to amend its complaint a second time
`because Plaintiff‐Appellant failed to indicate how further amendment would permit
`it to cure the deficiencies in the First Amended Complaint.
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`AFFIRMED.
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`BRENT HERBERT BLAKELY, Blakely Law Group,
`Hollywood, CA, for Plaintiff‐Appellant.
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`WILLIAM THOMASHOWER (Rachel Schwartz, Carla
`Sereny, on the brief), Schwartz & Thomashower LLP,
`New York, NY, for Defendant‐Appellee.
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`DEBRA ANN LIVINGSTON, Circuit Judge:
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`We consider whether a prior litigation between the parties resolving claims
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`of trademark infringement and other unfair business practices, and stemming from
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`earlier conduct, bars the present suit of Plaintiff‐Appellant TechnoMarine SA
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`(“TechnoMarine” or “Plaintiff”) over similar conduct that occurred after the
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`settlement of the earlier suit. The district court (Batts, J.) granted a motion to dismiss
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`by Defendant‐Appellant Giftports, Inc. (“Giftports” or “Defendant”), holding that
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`TechnoMarine’s claims are barred by res judicata and, in the alternative, that
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`TechnoMarine has failed to state a claim. The district court denied Plaintiff leave to
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`amend its complaint a second time on the ground that it would be futile in light of
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`the res judicata bar. We conclude that res judicata does not bar the alleged trademark
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`and other unfair business practice claims that arose after the original settlement
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`agreement between the parties. Nonetheless, we affirm the dismissal of the
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`complaint on the basis of the district court’s alternate holding that TechnoMarine
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`has failed to state a claim upon which relief may be granted. We also affirm the
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`district court’s denial of Plaintiff’s request to amend its complaint because Plaintiff
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`has failed to indicate how further amendment would cure its pleading deficiencies.
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`BACKGROUND1
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`A. Parties
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`TechnoMarine is a Swiss designer, manufacturer, and distributor of watches,
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`and it holds various trademark and copyright registrations for its word mark, logo,
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`and watch dial. TechnoMarine has sold hundreds of millions of dollars of watches
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`1 The factual background presented here is drawn from the allegations of
`TechnoMarine’s First Amended Complaint, which we accept as true for the purposes of our
`review of a motion to dismiss, see Anschutz Corp. v. Merrill Lynch & Co., 690 F.3d 98, 107 (2d
`Cir. 2012), and from TechnoMarine’s Second Amended Complaint and settlement
`agreement in TechnoMarine SA v. Giftports Inc., et al., No. 08‐Civ‐10911 (S.D.N.Y. filed
`December 20, 2008).
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`globally. TechnoMarine closely controls distribution and sale of its watches through
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`authorized dealer agreements that expressly prohibit dealers from transshipping
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`and selling TechnoMarine watches to unauthorized third‐party retailers.
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`Giftports is a New York corporation that sells premium brand watches at
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`discounted prices on the internet. Giftports is not an authorized retailer for
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`TechnoMarine watches but, nonetheless, Giftports has “purchased, advertised,
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`offered for sale, and/or sold watches bearing the TechnoMarine marks on its
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`website.”
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`B. Prior Litigation and Settlement
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`In December 2008, TechnoMarine brought a prior suit against Giftports in the
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`District Court for the Southern District of New York (Kaplan, J.). In March 2009,
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`TechnoMarine filed a second amended complaint in that case, bringing three causes
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`of action:
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`1.
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`2.
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`Copyright infringement under 17 U.S.C. § 101 et seq., based on
`Giftports’s alleged unauthorized use of photographs of
`TechnoMarine brand watches;
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`Unfair competition under the Lanham Act, 15 U.S.C. § 1125(a),
`based on allegations that Giftports intended purchasers to
`believe it was “an authorized source for TechnoMarine watches”
`and that Giftports was selling TechnoMarine watches “without
`the benefit of the warranty and after sales service that
`TechnoMarine provide[s] for such products”; and
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`3.
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`Alleged interference with TechnoMarine’s contractual relations
`with “authorized retailers and/or distributors.”
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`The parties resolved this earlier case through a “Litigation Settlement
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`Agreement and Mutual Release” (“Settlement Agreement”) that was executed on
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`April 24, 2009. Pursuant to the Settlement Agreement, the parties submitted to the
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`district court a stipulation of dismissal with prejudice, which was entered on April
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`27, 2009.
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`In the Settlement Agreement, Giftports agreed to pay TechnoMarine $5,000
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`and TechnoMarine agreed to dismiss the action with prejudice. Giftports
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`represented in the Settlement Agreement that it had “ceased all use of any copies of
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`Plaintiff’s Copyrighted Work . . . at least as of January 16, 2009.”2 The Settlement
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`Agreement made clear that it should not be construed “as a license, implied or
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`otherwise, by and between Plaintiff and Defendant to use the Copyrighted Work.”
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`Giftports denied any intentional infringement of TechnoMarine’s rights in the
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`Settlement Agreement, and the agreement was altogether silent as to whether the
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`conduct alleged by TechnoMarine was unlawful. Neither party admitted liability
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`or wrongdoing. The agreement’s release of liability was broad and unqualified,
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`2 “Copyrighted Work” was defined in the agreement to denote “Copyright
`Registration No. TX 6‐857‐826 for the 2008 Online TechnoMarine Watch Catalog.”
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`providing that the parties agreed, in pertinent part, to:
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`release . . . one another . . . from any and all liability, . . . causes of
`action, suits or obligations of any nature, . . . whether known or
`unknown, . . . which the parties . . . now have, may have or may
`hereafter assert against one another, relating to the claims alleged in the
`Civil Action or arising from the facts alleged therein . . . .
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`J.A. 70.
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`C. Present Litigation
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`More than two and a half years after the 2009 settlement, TechnoMarine
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`brought the present action against Giftports.3 In its First Amended Complaint, filed
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`in April 2012, TechnoMarine asserted six causes of action:
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`1. Trademark infringement, pursuant to 15 U.S.C. § 1114;
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`2. False designation of origin, pursuant to 15 U.S.C. § 1125(a);
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`3. Trademark dilution, pursuant to 15 U.S.C. § 1125(c);
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`4. Tortious interference with contractual relations;
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`5. Common law unfair competition; and
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`6. Copyright infringement, pursuant to 17 U.S.C. § 501.
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`3 TechnoMarine filed its initial complaint in this second action on December 28, 2011.
`On March 28, 2012, Giftports moved to dismiss pursuant to Federal Rule of Civil Procedure
`12(b)(6). Rather than responding to this motion to dismiss, TechnoMarine filed an
`amended complaint, dated April 19, 2012.
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`The conduct alleged to be unlawful, according to TechnoMarine’s amended
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`complaint in this case, is similar to the conduct that TechnoMarine alleged to be
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`unlawful in its first, previously settled lawsuit. The gravamen of TechnoMarine’s
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`complaint in this case is that Giftports – although not an authorized retailer –
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`purchased and sold watches bearing TechnoMarine marks on its website. The
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`complaint alleges that it is “reasonable to conclude” that these watches are “either
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`counterfeit” or they were “obtained from entities who are [contractually] prohibited
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`from selling” these watches to Giftports. These allegations are, in substance,
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`additional instances of the same type of conduct alleged in the litigation settled in
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`2009. Nonetheless, the First Amended Complaint in the present case inexplicably
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`fails to mention the previous lawsuit and settlement. Further, it does not distinguish
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`between conduct that occurred prior to, as compared to following, the previous
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`litigation between the parties.
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`Giftports moved in the district court to dismiss TechnoMarine’s First
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`Amended Complaint in May 2012. TechnoMarine opposed the motion; additionally,
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`it requested leave to amend “[i]n the event [the district court found] that Plaintiff’s
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`allegations are insufficient to sustain any of its claims.” In September 2012, the
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`district court granted the motion to dismiss, holding that Plaintiff’s claims are barred
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`by res judicata due to TechnoMarine’s 2009 lawsuit and settlement. It alternatively
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`held, under Rule 12(b)(6), that TechnoMarine failed to state a valid cause of action
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`for any of its claims. The district court also denied Plaintiff’s request for leave to
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`amend its complaint a second time, ruling that any amendment would be futile in
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`light of the district court’s res judicata holding. Judgment was entered on September
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`18, 2012, and TechnoMarine filed this timely appeal.
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`DISCUSSION
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`We review de novo the dismissal of a complaint under Rule 12(b)(6), accepting
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`all allegations in the complaint as true and drawing all inferences in favor of the
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`plaintiff. Walker v. Schult, 717 F.3d 119, 124 (2d Cir. 2013). Our review of a district
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`court’s application of res judicata is also de novo. Duane Reade, Inc. v. St. Paul Fire &
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`Marine Ins. Co., 600 F.3d 190, 195 (2d Cir. 2010). A court may consider a res judicata
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`defense on a Rule 12(b)(6) motion to dismiss when the court’s inquiry is limited to
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`the plaintiff’s complaint, documents attached or incorporated therein, and materials
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`appropriate for judicial notice. See, e.g., Day v. Moscow, 955 F.2d 807, 811 (2d Cir.
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`1992) (“[W]hen all relevant facts are shown by the court’s own records, of which the
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`court takes notice, the defense [of res judicata] may be upheld on a Rule 12(b)(6)
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`motion without requiring an answer.”).
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`I.
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`“Under the doctrine of res judicata, or claim preclusion, a final judgment on
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`the merits of an action precludes the parties or their privies from relitigating issues
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`that were or could have been raised in that action.” St. Pierre v. Dyer, 208 F.3d 394,
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`399 (2d Cir. 2000) (quoting Federated Depʹt Stores, Inc. v. Moitie, 452 U.S. 394, 398
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`(1981)) (brackets and internal quotation marks omitted). “To prove the affirmative
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`defense [of res judicata] a party must show that (1) the previous action involved an
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`adjudication on the merits; (2) the previous action involved the plaintiffs or those in
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`privity with them; [and] (3) the claims asserted in the subsequent action were, or
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`could have been, raised in the prior action.” Monahan v. N.Y.C. Depʹt of Corr., 214
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`F.3d 275, 285 (2d Cir. 2000).
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`The first two elements of this test are satisfied and are not in dispute here.4
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`The only issue in this appeal is the third element – whether “the claims asserted” in
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`this action “were, or could have been, raised in the prior action.” Monahan, 214 F.3d
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`at 285. Whether a claim that was not raised in the previous action could have been
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`raised therein “depends in part on whether the same transaction or connected series
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`4 The earlier litigation was between the same two parties and was resolved in 2009
`by a settlement agreement, which is generally considered a judgment on the merits. See
`Greenberg v. Bd. of Governors of the Fed. Reserve Sys., 968 F.2d 164, 168‐70 (2d Cir. 1992).
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`of transactions is at issue, whether the same evidence is needed to support both
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`claims, and whether the facts essential to the second were present in the first.”
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`Woods v. Dunlop Tire Corp., 972 F.2d 36, 38 (2d Cir. 1992) (internal quotation marks
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`omitted). To determine whether two actions arise from the same transaction or
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`claim, we consider “whether the underlying facts are related in time, space, origin,
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`or motivation, whether they form a convenient trial unit, and whether their
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`treatment as a unit conforms to the parties’ expectations or business understanding
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`or usage.” Pike v. Freeman, 266 F.3d 78, 91 (2d Cir. 2001) (internal quotation marks
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`omitted).
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`When analyzing whether a claim is based on the same transaction or
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`occurrence, courts must be mindful that a claim “arising subsequent to a prior action
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`. . . [is] not barred by res judicata” even if the new claim is “premised on facts
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`representing a continuance of the same ‘course of conduct.’” Storey v. Cello Holdings,
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`L.L.C., 347 F.3d 370, 383 (2d Cir. 2003). This is because, as the Supreme Court has
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`directed:
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`That both suits involved ‘essentially the same course of wrongful
`conduct’ is not decisive. Such a course of conduct . . . may frequently
`give rise to more than a single cause of action. . . . While the [prior]
`judgment precludes recovery on claims arising prior to its entry, it
`cannot be given the effect of extinguishing claims which did not even
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`then exist and which could not possibly have been sued upon in the
`previous case.
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`Lawlor v. Nat’l Screen Serv. Corp., 349 U.S. 322, 327‐28 (1955).
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`We have explained that this “unremarkable principle” can be complicated by
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`the “at‐times‐difficult determination of what degree of conduct” following the first
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`judgment is necessary to give rise to a new “claim.” Storey, 347 F.3d at 383. As
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`relevant here, our precedent provides two categories of cases where post‐judgment
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`conduct constitutes a new claim falling outside the parameters of claim preclusion.
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`The first category is straightforward: when post‐judgment conduct is
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`sufficient to state a cause of action on its own – without the need to incorporate facts
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`that preceded the first suit – the later course of conduct underlying the second suit
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`gives rise to a new cause of action that is not barred by res judicata. See Storey, 347
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`F.3d at 384 (“Where the facts that have accumulated after the first action are enough
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`on their own to sustain the second action, the new facts clearly constitute a new
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`‘claim,’ and the second action is not barred by res judicata.”).
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`We have, therefore, held that a settlement for fraud in the sale of securities
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`from 1975 to 1979 “is not the same as the claim that [the defendant] defrauded
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`customers in the sale, purchase, and repurchase of other securities” in later years.
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`SEC v. First Jersey Sec., Inc., 101 F.3d 1450, 1464 (2d Cir. 1996). Similarly, we have
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`held that suits over later breaches of contract, financial transactions, and ship
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`voyages are not barred by claim preclusion, even if the plaintiffs previously brought
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`suit over earlier instances of this same conduct. See Prime Mgmt. Co. v. Steinegger,
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`904 F.2d 811, 816 (2d Cir. 1990) (prior action did not preclude later suit regarding
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`breaches of contract that occurred subsequent to the filing of a prior suit); see also
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`Greenberg, 968 F.2d at 168‐70 (prior actions regarding earlier financial transactions
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`did not preclude later suit over later financial transactions); Interoceanica Corp. v.
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`Sound Pilots, Inc., 107 F.3d 86, 90‐91 (2d Cir. 1997) (prior suit regarding pilots’ fees
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`in previous voyages did not preclude a subsequent suit regarding pilots’ rights in
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`ocean voyages occurring after those underlying the first suit).
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`“Claims arising subsequent to a prior action,” based on conduct occurring
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`after the commencement of the earlier suit, and sufficient to state a cause of action
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`without the need to incorporate facts preceding the first suit “need not, and often
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`perhaps could not, have been brought in that prior action,” and so are not barred by
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`res judicata “regardless of whether they are premised on facts representing a
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`continuance of the same ‘course of conduct.’” Storey, 347 F.3d at 383.5 To be clear,
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`when a defendant commits repeated acts, each of which can independently support
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`a cause of action, claim preclusion principles will require plaintiffs seeking relief as
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`to all of the defendant’s conduct to bring together the causes of action that have
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`already arisen when the litigation commences, provided that such acts are based on
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`the same connected series of transactions. Thus, if a party sues for a breach of
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`contract, “res judicata will preclude the party’s subsequent suit for any claim of
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`breach that had occurred prior to the first suit.” Prime Mgmt., 904 F.2d at 816
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`5 Our decision in Berlitz Schools of Languages of America, Inc. v. Everest House, 619 F.2d
`211 (2d Cir. 1980), is not to the contrary. There, in a dispute between the Berlitz Schools of
`Languages and Charles Berlitz, a grandson of the Schools’ founder, the plaintiffs obtained
`a state court judgment against Charles Berlitz and the other defendants declaring that the
`defendants could not use the name Berlitz as part of the name of a foreign language
`teaching text or as part of the name of a publishing company preparing foreign language
`materials, but that Charles Berlitz could identify himself as the editor or author of foreign
`language materials, so long as he made it clear that he was not connected with plaintiffs.
`Id. at 213. In a subsequent suit, the state court rejected the plaintiffs’ claim that Charles
`Berlitz had violated the declaratory judgment when he listed himself as an author of a
`foreign language textbook and included the disclaimer that “[s]ince 1967, Mr. Berlitz has
`not been connected with the Berlitz Schools in any way.” Id. at 214. This Court
`determined, in a subsequent litigation involving another set of instructional books with a
`substantially identical use of the Berlitz name and disclaimer, that the district court had
`properly granted summary judgment. Id. at 215. Although we cited both res judicata and
`collateral estoppel principles, our decision, properly read, rested on collateral estoppel:
`that given the “minuscule” differences between “the legend of Charles Berlitz’s name and
`the disclaimer” on the new series as opposed to the legend and disclaimer on the preceding
`one, “there [were] no issues with respect to plaintiffs’ [federal] claims which ha[d] not been
`determined” in the earlier state proceedings. Id. at 215‐16.
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`(emphasis added). Res judicata will not, however, “bar a subsequent suit for any
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`breach that had not occurred when the first suit was brought.” Id.; see also
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`Restatement (Second) of Judgments § 24 cmt. d (1982) (“When a person trespasses
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`daily upon the land of another for a week, although the owner of the land might
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`have maintained an action each day, such a series of trespasses is considered a unit
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`up to the time when action is brought. Thus if in the case stated the landowner were
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`to bring suit on January 15, including in his action only the trespass on January 10,
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`and obtain a judgment, he could not later maintain an action for the trespasses on
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`January 11 through January 15.”). “If a defendant engages in actionable conduct
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`after a lawsuit is commenced, the plaintiff may seek leave to file a supplemental
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`pleading [under Rule 15(c)] to assert a claim based on the subsequent conduct.”
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`First Jersey Sec., 101 F.3d at 1464. But the plaintiff “is not required to do so, and his
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`election not to do so is not penalized by application of res judicata to bar a later suit
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`on that subsequent conduct.” Id.
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`That brings us to the second type of case in which we have analyzed whether
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`conduct relating to but occurring after commencement of an earlier litigation gives
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`rise to a new claim so as to fall outside the parameters of res judicata. When a
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`subsequent action involves a claim over “ongoing conduct” and it relies on facts that
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`occurred both before and after the earlier action commenced, claim preclusion will
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`not bar a suit, we have said, “based upon legally significant acts occurring after the
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`filing of a prior suit that was itself based upon earlier acts.” Waldman v. Village of
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`Kiryas Joel, 207 F.3d 105, 113 (2d Cir. 2000). Our case law provides guidance as to
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`what acts are “legally significant.”
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`In Waldman, the plaintiff, in his earlier action (“Waldman I”), sued the Village
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`of Kiryas Joel, New York, for discriminatory enforcement of the zoning code and
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`constitutional violations related to the provision of public housing.6 Id. at 107. In
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`the plaintiff’s later action, in which he accused the Village of “excessive
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`entanglement with religion” and argued that “the Village government is little more
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`than an extension of the Congregation Yetev Lev . . . , the dominant religious body
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`in the Village,” Waldman sought dissolution of the Village under the Establishment
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`Clause. Id. at 107‐08. Waldman’s later suit (brought only a few months after the
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`settlement in Waldman I) relied on allegations of conduct taking place before the
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`earlier action was commenced, in addition to some new post‐settlement conduct.
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`As we have said, “claim preclusion may apply where some of the facts on
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`6 In fact, two prior related suits had been filed against the Village. Because
`Waldman was not a plaintiff in the first action, the Waldman Court referred to the second
`of these suits as “Waldman I.” The two earlier actions in Waldman were settled jointly.
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`which a subsequent action is based post‐date the first action but do not amount to
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`a new claim.” Storey, 347 F.3d at 384. In Waldman, we determined that:
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`it is simply not plausible to characterize Waldman’s claim as one based
`in any significant way upon the post‐Waldman I facts. The new
`allegations made in the present complaint do not, either by themselves
`or to any degree not already demonstrated by the overlapping facts,
`establish
`the sort of pervasive and otherwise
`irremediable
`entanglement between church and state that would justify a drastic
`remedy like the dissolution of the Village. . . . We conclude that, in
`seeking the dissolution of [the Village], Waldman has based his action
`principally upon the common nucleus of operative facts shared with
`Waldman I.
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`Waldman, 207 F.3d. at 113. Accordingly, we held that the facts post‐dating the first
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`action did “not create a ‘new’ cause of action that did not exist when the prior suits
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`were brought” and that Waldman’s Establishment Clause claim was barred by res
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`judicata. Id. at 112. We expressly noted, however, that this was not to hold “that a
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`series of future actions evincing an enduring and all‐encompassing domination of
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`the Village government by the Congregation could not at some point suffice to
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`create a new cause of action for the dissolution of the Village.” Id. at 113. “[A]t some
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`point,” as we said, “repetition of the same or similar acts” may result in a later claim,
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`“based, as it would be, primarily upon a cumulation of events occurring after the
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`first suit.” Id. at 114. But Waldman could not “use the mere inclusion of a few post‐
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`Waldman I Village acts . . . to resurrect a claim, grounded almost entirely upon . . .
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`events [preceding the prior litigation].” Id.
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`II.
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`Applying the framework that these cases establish, we conclude that the
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`district court erred in its application of claim preclusion principles. Little aided by
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`TechnoMarine’s inartful complaint (which fails to allege when particular conduct
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`occurred or to differentiate between pre‐ and post‐settlement conduct), the district
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`court failed to consider whether TechnoMarine alleges new conduct occurring after
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`the settlement that is sufficient to state one or more new causes of action.7 Because
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`we conclude that at least as to its trademark infringement claim, TechnoMarine’s
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`complaint is properly read at this stage of the litigation to assert liability based on
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`new, post‐settlement conduct, this claim, and perhaps others, are “not barred by res
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`judicata” even though “premised on facts representing a continuance of the same
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`7 As we have said, the res judicata bar is normally inoperative with regard to the
`defendant’s actionable conduct occurring after an earlier suit commences, provided that the
`plaintiff does not act to bring post‐commencement claims within the scope of his earlier
`suit. See First Jersey Sec., 101 F.3d at 1464. Here, however, the parties’ Settlement
`Agreement brings within its ambit (and thus the ambit of the first litigation) claims existing
`as of the date of settlement and arising from the facts alleged in the original complaint. See
`Greenberg, 968 F.2d at 169 (noting that a settlement agreement “can only have the preclusive
`[e]ffect that the parties to the settlement intended to give it”). Thus, the operative date for
`res judicata purposes is the date of the settlement.
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`‘course of conduct.’” Storey, 347 F.3d at 383.
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`TechnoMarine’s trademark infringement claim is not barred by claim
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`preclusion because Giftports allegedly committed new instances of trademark
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`infringement after the settlement, so that the present claim, to the extent based on
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`the new acts of infringement, was not and could not have been litigated in the earlier
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`proceeding. As noted in the district court’s opinion, TechnoMarine, in its opposition
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`to Giftports’s motion to dismiss, argued that the present action “involves
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`infringements on [its] 2010/2011 line of watches.” Although the complaint does not
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`provide dates for the allegedly infringing conduct, drawing all inferences in
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`TechnoMarine’s favor, as we must do on review of a motion to dismiss, the
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`complaint is fairly read to allege a course of conduct by Giftports that was ongoing
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`as of April 19, 2012, the date of the complaint. Because TechnoMarine’s complaint
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`alleges supposedly unlawful conduct involving the 2010/2011 line of watches, which
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`would have occurred after the 2009 settlement and judgment, TechnoMarine can
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`support a claim for trademark infringement of the 2010/2011 line of watches based
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`on the new allegedly infringing conduct. As a result, this cause of action is not
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`barred by claim preclusion.8
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`The district court’s misapplication of claim preclusion principles may have
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`resulted from a misreading of our decision in Waldman. There, we noted in passing
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`that the plaintiff in that case asserted “nothing more than additional instances of
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`what was previously asserted.” TechnoMarine S.A. v. Giftports, Inc., No. 11 Civ.
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`9643(DAB), 2012 WL 3964734, at *5 (S.D.N.Y. Sept. 10, 2012) (citing Waldman, 207
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`F.3d at 113); see also Marcel Fashions Grp. Inc. v. Lucky Brand Dungarees, Inc., No. 11
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`Civ. 5523(LTS), 2012 WL 4450992, at *4 (S.D.N.Y. Sept. 25, 2012) (citing Waldman, 207
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`F.3d at 113). But Waldman did not hold that claims that are based on conduct that
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`takes place after an earlier litigation are barred by res judicata simply because the
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`conduct is similar to prior acts that took place before the earlier litigation. Our
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`precedent makes clear that if the later conduct can support a cause of action on its
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`8 Any claim for trademark infringement occurring before the settlement of the 2009
`litigation, however, is barred by res judicata because it either was or could have been
`brought in the first litigation. But the fact that the complaint includes allegations of pre‐
`judgment conduct, which are barred, does not mean the allegations of post‐judgment
`infringing conduct are also barred. As for TechnoMarine’s causes of action for trademark
`dilution, false designation of origin, tortious interference, and unfair competition, these
`causes of action, too, are not precluded if based on either: (1) new facts sufficient to state
`a claim on their own without the need to incorporate facts that preceded the first suit; or
`(2) “legally significant acts” such that the later claim represents a new cause of action, even
`if based to some degree on earlier conduct. Given our conclusion, infra, that the complaint
`was properly dismissed on alternative grounds, we need not decide whether these claims
`are barred.
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`own, it is the basis of a new cause of action not precluded by the earlier judgment.
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`The contrary conclusion – that a plaintiff such as TechnoMarine is precluded
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`from bringing suit for alleged new trademark violations because the parties
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`previously settled a suit over earlier, similar conduct – violates basic claim
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`preclusion principles. A simple hypothetical may help explain this point. Assume
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`that a plaintiff sues a defendant for trademark infringement occurring from 2010 to
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`2012. After trial, the court grants the plaintiff judgment and money damages. Two
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`years following this judgment, in 2014, the defendant again infringes upon the same
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`trademark, and in a similar way. Under Giftports’s reasoning, claim preclusion
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`would prohibit the plaintiff from suing again. The earlier judgment against the
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`defendant – determining that it violated plaintiff’s trademark rights from 2010 to
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`2012 – would in effect immunize the defendant against all suits concerning
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`infringements of the same trademark in a similar way. This is not the law of claim
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`preclusion.
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`Giftports nonetheless asserts that TechnoMarine’s claims should be precluded
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`here for two reasons. First, Giftports argues that the Settlement Agreement between
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`the parties prohibits this suit. Second, Giftports posits that TechnoMarine’s request
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`for, and failure to obtain, an injunction has preclusive effect. Neither argument is
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`persuasive.
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`First, the prior settlement between the parties does not preclude this suit. A
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`settlement, just like a judgment, does not ordinarily bar claims that have not yet
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`accrued. The parties could agree to extinguish future claims, but TechnoMarine and
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`Giftports did no such thing here. They agreed only to release liability “relating to
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`the claims alleged in the Civil Action or arising from the facts alleged therein.” The
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`stipulation of dismissal in this case, moreover, made clear that it did not extinguish
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`claims that did not yet exist. J.A. 75, 187 (“[A]ll claims that were or could have been
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`asser