Tuesday, August 01, 2006

More on Laches

Last week I did a posting on laches. The comments were very thoughtful. I thought I would do some more research and do a follow-up posting to show my appreciation. The topic is still too big for a blog, but here are some additional thoughts

Professor Dobbs has written that laches may have originated in equity where no statute of limitations applied, and clearly enough laches functioned in part as a kind of "flexible" statute of limitations, barring long-delayed claims where no statute of limitations was available for that purpose. 1 Dan Dobbs, Law of Remedies 104 (1993). This traditional function suggests that laches should be limited to cases in which no statute of limitations applies.

The Ninth Circuit appears to be particularly willing to utilize laches to bar claims brought within the limitations period, while paradoxically acknowledging such application as "unusual." The problem, at least in intellectual property cases, may in part be traced to that circuit’s approach to statute of limitations issues under the Lanham Act, which does not contain a limitations period. Most courts, including the Ninth Circuit, have borrowed state law limitations periods for Lanham Act claims. Unfortunately, in Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829 (2002), the panel engaged in a series of serious errors, the effects of which are still being felt as subsequent courts quote snippets from that opinion and apply the snippets to the very different field of copyright.

Jarrow’s opening error was its strikingly wrong assertion that prior panel decisions in the Ninth Circuit had "curiously" failed to consider "whether Congress intended that laches, as opposed to the statute of limitations, be the sole timeliness defense available to §43(a) claims." But prior panels had held, in keeping with well-established Supreme Court precedent, that Congress intends state statutes to apply where Congress fails to specify a limitations period in a federal statute, That was the case for copyright infringement actions, by the way, before amendments made in 1957. In Lanham Act cases, prior Ninth Circuit cases had held there was a statute of limitations that applied, the limitations period being fixed by state law. Jarrow question's was phrased was backwards and nonsensical.

The Jarrow court’s next error was in characterizing actions for infringement under Section 43(a) seeking monetary damages as being equitable. The applicability of equitable remedies does not make a cause of action legal; an action for trademark infringement is legal no matter the remedies sought and certainly remains so when plaintiff seeks money damages.

Building on its first two errors, the Jarrow panel then constructed a set of presumptions which are not only inherently contradictory, but which manifest a profound misunderstanding of the continuing violation theory:

"We hold that the presumption of laches is triggered if any part of the claimed wrongful conduct occurred beyond the limitations period. To hold otherwise would 'effectively swallow the rule of laches, and render it a spineless defense.' Danjaq, 263 F.3d at 953. The plaintiff should not be entitled to the strong presumption against laches simply because some of the defendant's wrongful conduct occurred within the limitations period. Laches penalizes dilatory conduct; as such, the presumptions that a § 43(a) plaintiff is barred if he fails to file suit promptly when the defendant commences the wrongful conduct.

"We further hold, consistent with our precedent, that in determining the presumption for laches, the limitations period runs from the time the plaintiff knew or should have known about his § 43(a) cause of action. This principle is grounded in the fact that laches penalizes inexcusable dilatory behavior; if the plaintiff legitimately was unaware of the defendant's conduct, laches is no bar to suit. … In sum, we presume that laches is not a bar to suit if the plaintiff files within the limitations period for the analogous state action; the presumption is reversed if the plaintiff files suit after the analogous limitations period has expired. For purposes of laches, the limitations period may expire even though part of the defendant's conduct occurred within the limitations period. Further, the state limitations period runs from the time the plaintiff knew or should have known about his § 43(a) cause of action."

It would be bad enough if the court’s approach was confined to trademark actions, but it has subsequently been applied to copyright infringement actions. The Copyright Act without doubt has an express limitations period. Where there is an express limitations period there is no historical role for applying laches and as the Lyons court hels spearation of powers reasons for not doing so too.


Anonymous said...

Amen, again.

And for those of you still arguing that laches must somehow apply even when a federal s/l exists and has been complied with, please consider the following from the Supreme Court:

"If Congress explicitly puts a limit upon the time for enforcing a right which it created, there is an end of the matter. The Congressional statute of limitation is definitive."

Hulmberg v. Armbrecht, 66 S.Ct. 582, 584 (1946); see also Oneida County, N.Y. v. Oneida Indian Nation of New York State, 105 S.Ct. 1245, 1266 n.12 (1985) (Stevens, J., concurring and dissenting; noting that because there was no Congressionally-created statute of limitations applicable to the claims at issue, application of laches “would not risk frustrating the will of the Legislature”).

How CTA9 can ignore this line of authority (as well as its own consistent precedent) and find laches applicable in copyright cases is beyond me.

LKB in Houston

Atomic40 said...

Unfortunately, I am writing an appellate brief for law school this weekend arguing that laches can apply to copyright infringement claims brought within the S/L period (2 days before expiration). Going up against the Supreme Court precedent is going to be difficult.