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Breaking Up Infringing Band “For Now” Does Not Excuse Laches

Posted by James Juo | Jun 21, 2022 | 0 Comments

Laches is an equitable defense against a non-vigilant plaintiff who waits too long to file their lawsuit—an inexcusable delay that prejudices the defendant.

In Satan Wears Suspenders, Inc. v. Jaar, No. 1:21-cv-00812, 2022 WL 2181449 (S.D.N.Y Jun. 16, 2022), Satan Wears Suspenders, Inc. (“Plaintiff”) is a New York City-based hardcore punk-rock band and independent record label that has operated under the name “Darkside” or “Darkside NYC” since August 1992. Defendants, on the other hand, formed a band called “Darkside” in 2011 and featured an electronic, psychedelic musical style. Both bands are based in New York City, and performed at some of the same venues.

Plaintiff objected to Defendants' use of “Darkside” through email exchanges and letters in 2013 and 2014. The Defendants asserted that the bands occupy “different enough space[s]” to “avoid confusion” based on the bands' different musical styles, target audiences, and ticket prices. Their overlapping geographies, however, apparently caused actual confusion among fans over the respective bands.

On August 17, 2014, Defendants posted on Twitter that “darkside is coming to an end, for now” and that the band “[will] be playing [its] last show in [B]rooklyn on sept 12.” But Defendants continued to list their “Darkside” music on Spotify, among other actitivies.

There were no further negotiations between the parties since 2014.

Years later, Defendants announced a new “Darkside” album, and released a new song in December 2020.

Plaintiff filed suit in February 2021, and Defendants asserted a laches defense in a motion to dismiss based on Plaintiff's delay in filing suit.

To prevail on a laches defense, a defendant must show:

(1) plaintiff had knowledge of defendant's use of its marks;

(2) plaintiff inexcusably delayed in taking action with respect thereto; and

(3) defendant will be prejudiced.

See, e.g., Ivani Contracting Corp. v. City of New York, 103 F.3d 257, 259 (2d Cir. 1997) (the defense of laches “bars a plaintiff's equitable claim where he is guilty of unreasonable and inexcusable delay that has resulted in prejudice to the defendant.” (internal quotation marks and citation omitted)).

“[W]hen the defense of laches is clear on the face of the complaint, and where it is clear that the plaintiff can prove no set of facts to avoid the insuperable bar, a court may consider the defense on a motion to dismiss.” Fitzpatrick v. SonyBMG Music Entertainment, Inc., 2007 WL 2398801, at *3 (S.D.N.Y Aug. 15, 2007) (quoting Lennon v. Seaman, 63 F. Supp. 2d 428, 439 (S.D.N.Y. 1999), aff'd mem., 48 F. App'x 15 (2d Cir. 2002)).

Here, there was no dispute that Plaintiff was aware of Defendants' band in 2013, and that the bands targeted the same geographic area. “None of these facts are new, such that they would excuse delay in bringing suit.”

To avoid laches, Plaintiff argued its delay was reasonable because Defendants had tweeted out to the world that they had dissolved their band (“darkside is coming to an end, for now. we'll be playing our last show in [B]rooklyn on sept 12”), and there were various “reply tweets,” reflecting fans' belief that Defendants' band had dissolved. “Plaintiff contends that because everyone thought Defendants were breaking up, its delay was reasonable, at least until Defendants announced their new album in 2020.”

The court, however, noted that the August 17 Twitter post does not announce Defendants' band's dissolution; rather, it simply states that it was coming to an end, “for now.”

Although Defendants' band “did take a temporary break from live performances,” the court noted the dispositive question was whether Plaintiff knew that Defendants were continuing to sell music as “Darkside”—and Plaintiff conceded as much in its complaint.

Moreover, Defendants' music remained on Spotify between 2014 and 2020—presenting the same potential to confuse Plaintiff's fans as it does now. . . .  Whether or not Defendants took a hiatus from performing does not change these facts.

Thus, even in the six years after Defendants purportedly dissolved, Plaintiff knew that Defendants were using its Trademark but took no legal action against them. Plaintiff's delay is therefore unreasonable.

The court also noted that “the bar for Defendants to show prejudice is low”; and the fact that the Defendants were on the cusp of a new album release more than met that bar.

Accordingly, Defendants' motion to dismiss was granted.

The attorneys at Thomas P. Howard, LLC litigate cases nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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