Best Western Intl v. Traditional Partners, et al

Filing 18

ORDER re: 17 Motion for Order to Show Cause filed by Best Western International Incorporated. IT IS ORDERED that Plaintiff shall file a supplement to the motion within 30 days. If Plaintiff fails to file the supplement, the motion will be denied. (See attached Order for details). Signed by Senior Judge James A Teilborg on 1/31/2014. (TLB)

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1 WO 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA 8 9 10 11 12 13 14 15 ) ) ) Plaintiff, ) ) vs. ) ) Traditional Partners of Oklahoma, Inc;) ) Prakash Mehta, ) ) Defendants. ) ) Best Western International, Inc., No. CV 04-2406-PHX-JAT ORDER 16 Pending before the Court is Plaintiff’s motion for this Court to hold a show cause 17 hearing why Defendants should not be held in contempt. This case was filed in 2004 based 18 on Defendants allegedly wrongfully using Plaintiff’s trademarks. Default was entered 19 against Defendants in 2005, which included an injunction requiring Defendants to quit using 20 Plaintiff’s marks. 21 In furtherance of the Motion, Plaintiff alleges that it registered the default judgment 22 and injunction in Oklahoma in 2008 and sent notice of that registration to Defendants. 23 Plaintiff also alleges that in September of 2013, Plaintiff sent a representative to the property 24 at issue and discovered that Plaintiff’s marks were still being used. Plaintiff now seeks 25 $1,779,123.90 (or $652.65/day) in damages for Defendants’ alleged on-going use of the 26 marks between the entry of the injunction and the filing of the currently pending motion. 27 28 Before the Court will set the requested hearing, Plaintiff shall file a supplemental brief addressing each of the following issues: 1 1) 2 Whether Plaintiff has any evidence that the marks were in use between 2005 and 2013; and 3 2) Whether laches bars recovery in this case. 4 With respect to the second issue, for on-going Lanham Act violations, laches 5 presumptively bars recovery for uses of the mark outside the statute of limitations. See 6 Jarrow Formulas, Inc., v. Nutrition Now, Inc., 304 F.3d 829, 837 (9th Cir. 2002). Here, 7 Plaintiff has offered no evidence that it attempt to enforce the injunction (other than 8 registering it almost 3 years after obtaining it) for approximately 8 years. The Court is 9 inclined to determine that enforcement of the injunction, under these facts, is barred by 10 laches. See Derek and Constance Lee Corp. v. Kim Seng Co., 467 Fed.Appx. 696, **1 (9th 11 Cir. 2012) (unpublished decision) (affirming district court’s denial of contempt sanctions for 12 defendant violating an injunction when plaintiff took no action for one year and five 13 months.). 14 Accordingly, 15 IT IS ORDERED that Plaintiff shall file a supplement to the motion within 30 days. 16 17 If Plaintiff fails to file the supplement, the motion will be denied. DATED this 31st day of January, 2014. 18 19 20 21 22 23 24 25 26 27 28 -2-

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