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Laches Bars Infringement Suit by Wailers (Tacoma) Against Wailers (Jamaica)

STL readers will recall that the Wailers rock and roll band from Tacoma brought suit in June against the Wailers reggae band from Jamaica for trademark infringement, dilution, unfair competition, and cybersquatting, based on plaintiffs’ WAILERS registered trademark. Yesterday, Western District Judge Ronald Leighton found that plaintiffs filed their suit after the analogous statute of limitations had expired and, therefore, granted summary judgment in favor of defendants based on laches.


The court found: “Defendants stress that Plaintiffs were aware Defendants were calling themselves the ‘Wailers’ since the mid to late 1970s, when they were asked about their relationship to Bob Marley. Plaintiffs argue, without legal or logical support, that there is some meaningful difference between the names ‘Wailers’ (standing alone) and ‘Wailers’ in the context of ‘Bob Marley and the Wailers.’ They claim their 1970s-vintage knowledge of Defendants’ use of the term was only in conjunction with Mr. Marley, and that that use was not offending.

“In making this argument, however, Plaintiffs also concede that they ‘first encountered the Defendants’ band name as simply the ‘Wailers’ at some point in the late 1990s,’ and that they were unaware the Defendants were calling their group the ‘Wailers’ until the late 1990s.

“As the Defendants point out, however, the Plaintiffs’ registration efforts do not eliminate the rights of the Defendants: Neither application for nor registration of a mark at the federal level wipes out the prior, non-registered, common law rights of others. Accordingly, the act of registration does not toll the limitations period, and the Plaintiffs’ 2007 lawsuit to enforce the rights they claim to have obtained by registration is outside the three year limitations period. The presumption of laches applies.”

The court found the defendants could not overcome that presumption.

The court also found that defendant band leader Aston Barrett’s registration of wailers.com was protected by the Anticybersquatting Consumer Protection Act’s “safe harbor” provision for persons who believe and had reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful:

“Defendants argue that Barrett’s longstanding use of the name Wailers establishes his ‘abundant good faith’ in registering the domain name. Plaintiffs argue that the issue is one of fact, and that they have not conducted discovery into the matter.

“No amount of discovery is going to change the fact that Defendants have been calling themselves the Wailers for decades, the Plaintiffs knew it, and the domain name registration predated the Plaintiffs’ application for trademark registration. There is no evidence of bad faith on the Defendant’s part, and the Plaintiffs’ Cybersquatting claim must fail as a matter of law.”

The case cite is Ormsby v. Barrett, No. 07-5305 (W.D. Wash. Jan. 2, 2008).

Note: my partner, Kathleen Petrich, and I represented the defendants. As a rule, I do not comment about cases in which I am involved until a judgment is rendered. My previous posts about this case pre-dated my involvement in the matter.

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Reader Comments (3)

Michael: Congrats on the victory. Well done. It is always a bonus to win one for a feel good client. Somehow, it just does not seem like justice could ever require the Wailers to stop using the name. Keep up the great blogging.
January 6, 2008 | Unregistered CommenterEnrico Schaefer
Thanks, Enrico! I appreciate the encouragement.
January 11, 2008 | Registered CommenterMichael Atkins
Any layman should know... "if you sit on your rights, you will lose them"
July 28, 2008 | Unregistered CommenterMark Stevens

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