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Court Finds Lessened Standard No Excuse for Delaying Dilution Suit

The July 29 Hobbit Travel decision, which the Las Vegas Trademark Attorney discusses comprehensively here, is of particular interest to STL for its treatment of laches in the context of dilution. (STL digs dilution cases.)

In Saul Zaentz Co. v. Wozniak Travel, Inc., the defendant travel agency argued on the parties’ cross-motions for summary judgment that the plaintiff owner of J.R.R. Tolkien’s literary rights waited too long to sustain its trademark claims. At least 18 years too long.

With regard to dilution, the plaintiff responded that when Congress passed the Trademark Dilution Revision Act in 2006 — and lessened the standard of proof from “actual dilution” to “likelihood of dilution” — it provided plaintiff with a fresh cause of action that previously was not available.

The Northern District of California was not impressed.

“This argument is specious. First, Tolkien’s dilution claim, as pled in the complaint, is for actual, not likelihood of dilution. Second, regardless of whether the legal standard required a showing of actual or likelihood of dilution, a federal cause of action for dilution has existed since 1995 when Congress passed the Federal Trademark Dilution Act. Under California law, a state cause of action for dilution has existed since 1967. Third, before the Supreme Court’s decision in Moseley requiring a showing of actual dilution, the Ninth Circuit applied a ‘likelihood of dilution’ standard to claims brought under the FTDA.

“In sum, the court concludes that plaintiff’s delay of at least eighteen years is unreasonable. Because the length of delay far exceeds the statute of limitations period, a presumption of laches applies. This presumption is not overcome by any excuses plaintiff offers for its delay.”

The case cite is Saul Zaentz Co. v. Wozniak Travel, Inc., 2008 WL 2949423, No. 06-5421 (N.D. Calif.) (Patel, J.).

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