If you own a copyright, patent, or trademark, you have a calculation to make when you discover someone you believe is infringing your rights—how aggressive to be in protecting them. On the one hand, it can be expensive to assert a right, mark, or patent; and if the infringer is a minor player, the result may be a legal bill that might seem disproportionate to the result. On the other hand, you need to be vigilant to protect valuable intellectual property, or you may find yourself barred from bringing your claim later if a court finds that you delayed an unreasonably long time. In legal lingo, that’s laches, which is the doctrine the courts use to decide how long is too long. In applying the doctrine, the court presumes that a lawsuit filed past the expiration date of the most closely analogous state law claim is too late, and puts the burden on the trademark–holder to justify its delay.
A recent ruling from a federal court in northern California in a trademark case (Hat Tip: Seattle Trademark Lawyer) shows laches in action. The plaintiff claimed to own a trademark for “Haiku Houses Country Houses of 16th Century Japan” related to its Japanese pole–style house business. In June 2000, the plaintiff became aware that a competitor was using a similar mark. In early 2001, the plaintiff sent a cease–and–desist letter, but otherwise let the matter sit. Seven years later, in 2008, the plaintiff finally sued. The defendant invoked the doctrine of laches, saying seven years was too long to wait before bringing a claim, given that the relevant statute of limitations was four years. The plaintiff rejoined that only recently had the defendant become enough of a competitive threat to make the suit worthwhile. The court sided with the defendant: “A trademark holder is not entitled to wait until an infringer grows large enough to ‘constitute a real threat’ before suing for trademark infringement” (citation omitted). The court applied the presumption of laches, and entered summary judgment for the defendant on the plaintiff’s trademark claims.
Once you suspect someone of infringing your intellectual property, you don’t necessarily have the luxury of time to wait and see what develops. If the mark (or patent or copyright) matters to you, you should look to take some form of sustained protective action, or risk your claim falling into the laches sink–hole.
from eyes on IP Thursday, April 22, 2010
