Trademark Law

Bob Marley's Wailers, who eventually became known simply as the "Wailers" after Bob Marley's death, successfully argued for dismissal of this cybersquatting and trademark infringement lawsuit brought by band members of another Wailers musical group who started using the band name 10 years before Bob Marley named his group in 1969.  The only evidence which could potentially have saved Plaintiff's claims against Bob's protégées would have been that the band used the mark the "Wailers" and registered wailers.com in bad faith.  No evidence of bad faith was introduced by plaintiffs.

Ormsby v. Barrett, 2008 U.S. Dist. LEXIS 20 (UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF WASHINGTON) teaches that a failure to assert trademark infringement claims in the face of know trademark infringement can result in a loss of trademark rights under the doctrine of laches.

Plaintiffs are a musical group known as the "Wailers" who have been performing as such since 1959. They sought to register the name "Wailers" with the United States Patent and Trademark Office ("USPTO") in 1999. Defendants are also a musical group known as the "Wailers" (Yes, Bob Marley's Wailers).  The Defendant Wailers initially opposed that registration, but that opposition was dismissed by the USPTO. The Plaintiffs obtained registration of the Wailers mark in 2003.

Defendants began as a Jamaican reggae group formed by Bob Marley, Peter Tosh, and others in 1964. In 1974, the group became "Bob Marley and the Wailers" and, after Mr. Marley died in 1981, the band performed as "the Bob Marley Wailers," and subsequently the "Wailers."  Defendants moved for summary dismissal of each claim, arguing that Plaintiffs' claims were barred by laches, given the length of time they waited to bring this suit, after knowing of the Defendant Wailers use of that name.  Defendants point to Defendant Barrett's Registration of the domain name "wailers.com" in 1998, as evidence the Plaintiffs knew of, and did not act upon, the alleged infringement for many years prior to their suit.

Plaintiffs disagree, and argued that Defendants cannot successfully assert a laches defense where there is evidence their infringement was wilful; that laches should not be applied where the encroachment was progressive over time.  While bad faith and willfulness can defeat laches, the Plaintiffs produced no evidence of such wilfulness in the district court.

Plaintiffs also argued that their delay in bringing the suit was not unreasonable because the Defendants "progressively encroached" on their mark, and that this to is a basis for avoiding the presumption that laches applies. This argument was based on the Plaintiffs' "information and belief" that the Defendants use of the mark was "de minimus" until the late 1990s. There is no evidence supporting this belief, and Plaintiffs naked claim that the Defendants' use of the mark increased progressively after the Plaintiffs' registration is insufficient.

Defendants also sought summary judgment on Plaintiffs Cybersquatting claim. This claim is based on Defendant Barrett's registration of the domain name "wailers.com" in 1998 (prior to Plaintiffs' application for trademark registration). Plaintiffs again claimed that the registration was in bad faith and that it deprived them of the opportunity to conduct business on the internet.

The court concluded that existence of bad faith is unique to the facts of each case.  Defendants successfully argued the "safe harbor" provision under the ACPA for domain registrants: Bad faith shall not be found in any case in which the court determines that the person is believe and had reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful. Interestingly, Defendants argued, and the court agreed, that the longstanding use of the name Wailers established "abundant good faith" in registering the domain name wailers.com.

The court concluded that no amount of discovery was going to change the fact that Defendants have been calling themselves the Wailers for decades, the Plaintiffs knew it, and the domain name registration predated the Plaintiffs' application for trademark registration.