UNITED STATES DISTRICT COURT SOUTHERN ... - Nymag

Case 1:09-cv-21893-WMH Document 16 Entered on FLSD Docket 07/31/2009 Page 5 of 24
prejudice to the party against whom the claim is asserted.” Kason Indus. v. Component
Hardware Group, Inc., 120 F.3d 1199, 1203 (11th Cir. 1997) (citing AmBrit, Inc. v. Kraft, Inc.,
812 F.2d 1531, 1545 (11th Cir. 1986)). Where laches is apparent on the face of the complaint, it
is a proper subject for a motion to dismiss. Szymanski v. Glen of South Barrington Prop.
Owners Assoc., 689 N.E.2d 272, 274 (Ill. App. Ct. 1997) (citing Summers v. Village of Durand,
643 N.E.2d 272 (Ill. App. Ct. 1994)). Here, Counts I through IX for Federal Trademark
Infringement, Federal Trademark Infringement Based on Reverse Confusion, False
Association/False Designation of Origin and Federal Unfair Competition, False Advertising,
Common Law Trademark Infringement, Common Law Unfair Competition, Misappropriation of
Trade Secrets, Violation of Florida Deceptive and Unfair Trade Practices Act, and Conversion,
respectively, are all barred by laches.
A. Plaintiffs Excessively Delayed in Asserting their Claims
“Equity aids the vigilant and not those who slumber on their rights.”
6 McCarthy on Trademarks and Unfair Competition § 31:1 (2009).
Courts have not hesitated to dismiss Lanham Act claims on laches grounds when the
plaintiff inexplicably delayed bringing suit for even a few years. GTE Corp. v. Williams, 649 F.
Supp. 164 (C.D. Utah 1986) (2 year delay); Golden West Brewing Co. v Milonas & Sons, Inc.,
104 F.2d 880 (9th Cir. 1939) (3 year delay); Columbia Univ. v. Columbia/HCA Healthcare
Corp., 964 F. Supp. 733 (S.D.N.Y. 1997) (3½ year delay).
Here, Plaintiffs allege that they were aware of Philippe from the moment the restaurant
opened its doors on 60th Street “just a few blocks away from the MR CHOW restaurant on 57th
Street” in December 2005. (Compl. 52.) However, Plaintiffs chose not to assert their claims
until over three and a half years later through the commencement of this action on July 8,
2009. Having remained silent for the three and a half years, it is inequitable and unreasonable
for Plaintiffs to now ask this Court to enjoin Philippe from operating its highly successful
restaurants or to otherwise seek relief from Philippe while Plaintiffs spent the last three and a
half years silent. See Lake Caryonah Imp. Ass'n v. Pulte Home Corp., 903 F.2d 505, 510 (7th
Cir. 1990) (“Having behaved more like Rip Van Winkle than the ‘early bird,’ [plaintiffs] now
must live with the consequences.”)
B. Plaintiffs’ Delay was Inexcusable
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RICHMAN GREER, P.A.
Miami • West Palm Beach