Case 2:12-Cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 1 of 135

Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 1 of 135

EXHIBIT R Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 2 of 135 Vol. 80 TMR

DELAY IN FILING PRELIMINARY INJUNCTION MOTIONS: HOW LONG IS TOO LONG?

By Robert Lloyd Raskopf* and Sandra Edelman**

The preparation of a preliminary injunction motion typically requires an enormous expenditure of time and resources. Plaintiffs counsel must gather the facts relevant to the alleged infringement, obtain and assemble the necessary exhibits and interview knowledgeable witnesses in order to present the case. This effort may be wasted if the court finds that the plaintiff has waited too long before taking action. Responding to a preliminary injunction motion can be equally daunting. While plaintiffs counsel may be able to prepare and time the motion with surgical precision, the defendant is often caught off-guard, and is usually hampered by time constraints in fashioning an opposition. Given an appropriate factual context, however, a defendant can neutralize the plaintiffs momentum if plaintiff has delayed in seeking preliminary relief. Particularly where the question of infringement is debatable, inexcusable delay by the plaintiff can tip the scales from success to failure on the motion. This article will explore the subject of delay in the context of the preliminary injunction motion. Part I of the article will explain how the concept of delay fits into the analytical framework used by the federal courts in ruling on preliminary injunction motions. Part II will discuss how delay is measured and offer some general guidelines about excessive delay. Part III will examine what constitutes excusable delay, with particular emphasis on settlement negotiations and changes in the scope of the alleged infringement. In an Ap- pendix, we present a survey of cases, arranged by federal

* Partner in the firm of Townley & Updike, New York, N.Y., Associate Member of USTA; Domestic Articles Editor of The Trademark Reporter®. * * Associate at the firm of Townley & Updike, Associate Member of USTA; member of the Editorial Board of The Trademark Reporter®.

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circuit, showing the periods of time which have been held to constitute excusable and excessive delay in moving for a preliminary injunction.

I. DELAY AS A FACTOR IN DETERMINING PRELIMINARY INJUNCTION MOTIONS IN TRADEMARK AND UNFAIR COMPETITION CASES

A preliminary injunction is an extraordinary and drastic remedy,' designed to preserve the status quo pending a final determination of the claims at trial.2 While such relief may be sought in any federal action,3 it is a frequently-used weapon in trademark infringement litigation because of the unique function and fragility of a trademark in representing the intangible assets of good will and reputation.4 In order to prevent irreparable damage to this good will and reputation pending the final outcome of litigation, trademark owners often seek expedited relief in the form of a preliminary injunction. Although preliminary injunctions are temporary in nature, many trademark infringement actions are resolved by the court's decision at the preliminary injunction hearing. "As a practical matter, a defendant forced to change his newly adopted mark will rarely want to re-introduce it a year or two later if he succeeds at trial or on appeal, espe-

1. Calvin Klein Cosmetics Corp. v. Parfums de Coeur, Ltd., 824 F2d 665, 667, 3 USPQ2d 1498, 1500 (CA 8 1987); Citibank, N.A. v. Citytrust, 756 F2d 273, 275, 225 USPQ 708, 710 (CA 2 1985); GTE Corp. v. Williams, 731 F2d 676, 678, 222 USPQ 803, 804 (CA 10 1984); Dymo Industries Inc. v. Tapeprinter, Inc., 326 F2d 141, 143, 140 USPQ 154, 155 (CA 9 1964). 2. Penn v. San Juan Hospital, Inc., 528 F2d 1181, 1185 (CA 10 1975); Hamilton Watch Co. v. Benrus Watch Co., 206 F2d 738, 742 (CA 2 1953); see generally 11 C. Wright and A. Miller, Federal Practice & Procedure §2947 (1973). 3. Federal Rules of Civil Procedure (FRCP) 65. 4. Playboy Enterprises, Inc. v. Chuckleberry Publishing, Inc., 486 F Supp 414, 429, 206 USPQ 70, 83 (SDNY 1980); see also Salt Water Sportsman Inc. v. B.A.S.S. Inc., 685 F Supp 12, 4 USPQ2d 1407, 1411 (D Mass 1987), as amended 5 USPQ2d 1620 (D Mass 1987).

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cially if an alternate mark used during this period has achieved consumer recognition."' In addition to the financial expense of changing a product's name, packaging and advertising materials, a defendant's business and good will may be damaged by perceived instability in a product's trademark or trade dress.' On the other hand, a plaintiff that fails to obtain a preliminary injunction will usually reassess the strength of its case and may choose to settle for less than it originally contemplated. Because of the drastic and summary nature of the preliminary injunction remedy and its potential destructive impact on the defendant's business, the federal courts apply a stringent standard to determine whether a preliminary injunction is appropriate. In the Second Circuit, for example, the movant must demonstrate (1) irreparable harm and (2) either (a) a probability of success on the merits or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of the hardships tipping decidedly in the moving party's favor.7 Similar standards have been enunciated in other jurisdictions,8 with many of the federal circuits specifically requiring the additional showing that preliminary injunctive relief will be in the public interest.9 The movant's haste in seeking relief is one of the factors considered by the federal courts in determining whether the

5. la J. Gilson, Trademark Protection and Practice §8.0711] at 8-134 (1989). 6. Ibid. 7. Church of Scientology International v. Elmira Mission of the Church of Scientology, 794 F2d 38, 41, 230 USPQ 325, 327 (CA 2 1986); Joseph Scott Co. v. Scott Swimming Pools, Inc., 764 F2d 62, 66, 226 USPQ 496, 500 (CA 2 1985). 8. See, eg, Miss World (UK), Ltd. v. Mrs. America Pageants, Inc., 856 F2d 1445, 1448, 8 USPQ2d 1237, 1239 (CA 9 1988); Frisch's Restaurants, Inc. v. Elby's Big Boy of Steubenville Inc., 670 F2d 642, 651, 214 USPQ 15, 22 (CA 6 1982), affg in part and revg in part 514 F Supp 704, 213 USPQ 559 (SD Ohio 1981), cert denied 459 US 916 (1982). 9. See, eg, Mutual of Omaha Insurance Co. v. Novak, 775 F2d 247, 248, 227 USPQ 801, 802 (CA 8 1985); SI Handling Systems, Inc. v. Heisley, 753 F2d 1244, 1254, 225 USPQ 441, 446 (CA 3 1985); GTE Corp. v. Williams, supra note 1 at 677, 222 USPQ at 803; Wesley-Jessen Division of Schering Corp. v. Bausch & Lomb, Inc., 698 F2d 862, 864, 217 USPQ 153, 154 (CA 7 1983).

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"irreparable harm" element of the preliminary injunction standard has been satisfied. Delay "undercuts the sense of urgency that ordinarily accompanies a motion for preliminary relief and suggests that there is, in fact, no irreparable injury."' ° The movant's delay, however, is only one factor in the irreparable harm analysis. Because of the immeasurable value of trademark rights, most courts have held that a showing of a likelihood of success on the merits (usually consisting of proof of likely confusion) gives rise to a presumption of irreparable injury." A defendant can rebut this presumption by demonstrating that a plaintiff has unreasonably delayed in seeking preliminary injunctive relief.'2 In

10. Le Sportsac, Inc. v. Dockside Research, Inc., 478 F Supp 602, 609, 205 USPQ 1055, 1062 (SDNY 1979); see also GTE Corp. v. Williams, supra note 1 at 678, 222 USPQ at 804; Kusan, Inc. v. Alpha Distributors, Inc., 693 F Supp 1372, 1374, 7 USPQ2d 1211, 1213 (D Conn 1988) ("[I]f an aggrieved party rests on his rights, it is incongruous for him to ask a court to act swiftly and issue an injunction without which irreparable harm will result"); Gear, Inc. v. L.A. Gear California, Inc., 637 F Supp 1323, 1332, 229 USPQ 980, 987 (SDNY 1986) (where plaintiffs are dilatory in seeking preliminary relief, courts have "looked askance at their assertion that the claimed injury is irreparable"). 11. See General Mills, Inc. v. Kellogg Co., 824 F2d 622, 625, 3 USPQ2d 1442, 1444 (CA 8 1987); Rodeo Collection, Ltd. v. West Seventh, 812 F2d 1215, 1220, 2 USPQ2d 1204, 1208 (CA 9 1987); Camel Hair & Cashmere Institute of America, Inc. v. Associated Dry Goods Corp., 799 F2d 6, 14, 231 USPQ 39, 44 (CA 1 1986); Joseph Scott C. v. Scott Swimming Pools, Inc., supra note 7 at 66, 226 USPQ at 500; Wesley-Jessen Division of Schering Corp. v. Bausch & Lomb Inc., supra note 9 at 867, 217 USPQ at 156; Horizon Financial, F.A. v. Horizon Bancorp., 2 USPQ2d 1696, 1704 (ED Pa 1987); National Yellow Pages Service Assn. v. O'Connor Agency, Inc., 9 USPQ2d 1516, 1521 (CD Calif 1988); Tootsie Roll Industries, Inc. v. Sathers, Inc., 666 F Supp 655, 660, 2 USPQ2d 1520, 1522 (D Del 1987); Original Appalachian Artworks, Inc. v. Topps Chewing Gum, Inc., 642 F Supp 1031, 1033, 231 USPQ 850, 851 (ND Ga 1986); American Rice, Inc. v. Arkansas Rice Growers Cooperative Assn., 532 F Supp 1376, 1389, 214 USPQ 936, 945 (SD Tex 1982), affd 701 F2d 408, 218 USPQ 489 (CA 5 1983). 12. Citibank, N.A. v. Citytrust, supra note 1 at 276, 225 USPQ at 711 ("[s]ignificant delay in applying for injunctive relief in a trademark case tends to neutralize any presumption that infringement alone will cause irreparable harm pending trial"); see also Majorica, S.A. v. R.H. Macy & Co., 762 F2d 7, 8, 226 USPQ 624, 624 (CA 2 1985); GTE Corp. v. Williams, supra note 1 at 678, 222 USPQ at 804; Kusan, Inc. v. Alpha Distributors, Inc., supra note 10 at 1374, 7 USPQ2d at 1212; Great Lakes Mink Assn. v. Furrari, Inc., No. 86-6038, slip op (SDNY 12/21/87) (available on LEXIS®); cf Church of Scientology International v. Elmira Mission of the Church of Scientology, supra note 7 at 43, 230 USPQ at 328 (emphasis omitted) (in an infringement action between a trademark li-

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some cases, the court may find that the plaintiffs delay, alone, is a sufficient ground for denying a motion for a preliminary injunction. 3

A. Delay and Laches-Are They the Same?

The equitable doctrine of laches, which may be raised as an affirmative defense in trademark and unfair competition actions, is often confused with the issue of delay on preliminary injunction motions. Correctly applied, laches is a defense which bars permanent injunctive relief upon a showing of three elements: (1) plaintiffs knowledge of the defendant's use of the allegedly infringing mark; (2) inexcusable delay by the plaintiff in taking action; and (3) prejudice to the defendant if the plaintiff is permitted to assert its rights at the time. 4 Laches thus differs from delay in that it involves the added factor of prejudice to the defendant. In Majorica, S.A. v. R.H. Macy & Co.,' 5 the Second Circuit properly distinguished laches from delay and held that a plaintiffs delay in seeking a preliminary injunction may preclude a finding of irreparable injury, irrespective of whether the defendant is prejudiced by the delay: Lack of diligence, standing alone is insufficient to support a claim of laches; the party asserting the claim

censor and a former licensee, "irreparable harm always flows from unlawful use and confusion"). 13. Citibank, N.A. v. Citytrust, ibid; Kusan, Inc. v. Alpha Distributors, Inc., supra note 10 at 1374, 7 USPQ2d at 1213 ("where the delay is significant a court is justified in denying a motion for a preliminary injunction on that basis alone"); Allen Organ Co. v. CBS, Inc., 230 USPQ 479, 480 (SDNY 1986) (movant's eight month delay in seeking relief held fatal to its request for a preliminary injunction); see also Helena Rubenstein, Inc. v. Frances Denney, Inc., 286 F Supp 132, 134, 159 USPQ 346, 348 (SDNY 1968) ("Delays in seeking preliminary injunctions have, without more, been held grounds for barring that relief'). 14. Olay Co. Inc. v. Cococare Products, Inc., 218 USPQ 1028, 1043 (SDNY 1983); see also University of Pittsburgh v. Champion Products Inc., 686 F2d 1040, 1044, 215 USPQ 921, 924 (CA 3 1982), cert denied 459 US 1087 (1982); Cuban Cigar Brands, N.V. v. Upmann International, Inc., 457 F Supp 1090, 1096, 199 USPQ 193, 198 (SDNY 1978), affd mem 607 F2d 995 (CA 2 1979). 15. Supra note 12.

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must also establish that it was prejudiced by the delay. Costello v. United States, 365 US 265, 282 (1961). Lack of diligence, standing alone, may, however, preclude the granting of preliminary injunctive relief, because it goes primarily to the issue of irreparable harm rather than occasioned prejudice. 6

Quoting its earlier opinion in Citibank, N.A. v. Citytrust,"7 the Second Circuit in Majorica also emphasized that a particular period of delay may not be long enough to constitute laches but may still indicate the absence of irreparable harm required to support a preliminary injunction. 8 Although the Second Circuit has drawn a clear line between laches and delay on a preliminary injunction motion, confusion of the two concepts is evident elsewhere. The Sev- enth Circuit, for example, has characterized the issue of plaintiff's delay in moving for preliminary injunctive relief as a "laches" defense and has held that the defense may succeed only if the defendant has been "lulled into a false sense of security or .. . acted in reliance on the plaintiff's delay."' 9 Obviously, in jurisdictions requiring a showing of

16. Id at 8, 226 USPQ at 624. 17. Supra note 1. 18. Majorica S.A. v. R.H. Macy & Co., supra note 12 at 8, 226 USPQ at 624; see also Stokely-Van Camp Inc. v. Coca-Cola Co., 2 USPQ2d 1225, 1227 (ND Ill 1987) (although three months is "too short of a time for the equitable doctrine of laches to apply, the fact that Stokely waited three months indicated a lack of a need for the extraordinary remedy of a preliminary injunction"). 19. Ideal Industries, Inc. v. Gardner Bender, Inc., 612 F2d 1018, 1025, 204 USPQ 177, 184 (CA 7 1979), cert denied 447 US 924 (1980); Helene Curtis In- dustries, Inc. v. Church & Dwight Co. Inc., 560 F2d 1325, 1334, 195 USPQ 218, 224 (CA 7 1977), cert denied 434 US 1070, 197 USPQ 592 (1978); see also Earth Technology Corp. v. Environmental Research Technology, Inc., 222 USPQ 585, 587 (CD Calif 1983); Reedco, Inc. v. Hoffmann-La Roche, Inc., 667 F Supp 1072, 1082, 2 USPQ2d 1994, 2002 (D NJ 1987) (laches is a defense to a preliminary injunction motion when "it appears that a plaintiff has unreasonably delayed application for relief and prejudice to opposing parties has thereby resulted"); Jordan K. Rand, Ltd. v. Lazoff Bros., Inc., 537 F Supp 587, 594, 217 USPQ 795, 801 (D PR 1982) (the defense of laches on a preliminary injunction motion is "reserved for those rare cases where a protracted acquiescence by plaintiff in- duces a defendant to undertake substantial activities in reliance on the acquiescence"); American Rice, Inc. v. Arkansas Rice Growers Cooperative Assn., supra

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prejudice to the defendant, the issue of plaintiffs delay in seeking relief tends to be less significant in the preliminary injunction analysis. Even in jurisdictions which do not consider the prejudice to the defendant arising from plaintiffs delay as part of the irreparable harm analysis, the effect of plaintiffs delay may be factored into a court's evaluation of the balance of hardships. In Mego Corp. v. Mattel, Inc.,2 ° the court found that the plaintiff had waited until the proverbial "Eleventh Hour" to seek preliminary injunctive relief against defendant's BATTLESTAR GALACTICA line of toys, by which time defendant had committed over seven million dollars to the product introduction and was anticipating twenty million dollars in sales during the imminent pre-Christmas selling season." The court denied plaintiffs motion for a preliminary injunction, holding that the failure of the plaintiff to act in timely fashion had caused the balance of hardships to tip decidedly in defendant's favor.22 Where a plaintiffs delay has caused substantial hard- ship to the defendant, a court may also strike a compromise by granting a preliminary injunction which is limited in its

note 11 at 1390, 214 USPQ at 946; Frisch's Restaurants, Inc. v. Elby's Big Boy of Steubenville Inc., supra note 8, 514 F Supp at 711, 213 USPQ at 564. 20. 203 USPQ 377 (SDNY 1978). 21. Id at 382-83. 22. Id at 383; see also Stokely-Van Camp Inc. v. Coca-Cola Co., supra note 18 at 1227 (court denied plaintiff's motion for a preliminary injunction where the plaintiff waited three months before filing suit while the defendant was spending substantial amounts to market its product); Racemark International, Inc. v. Speciality Products, Inc., 217 USPQ 772, 781 (NDNY 1982) (during the period of the plaintiffs one year delay, the defendant spent over $500,000 on the challenged mark); Le Cordon Bleu S.a.r.l. v. BPC Publishing Ltd., 327 F Supp 267, 270-71, 170 USPQ 477, 479 (SDNY 1971) (preliminary injunction denied where plaintiff, after learning of defendant's alleged infringing cooking course periodical, took no action until almost thirteen weeks after defendant's initial announcement and eight weeks after the appearance of the first issue, during which time defendant had spent in excess of one million dollars in advertising and initial production costs); Colgate-Palmolive Co. v. North American Chemical Corp., 238 F Supp 81, 87, 144 USPQ 266, 267 (SDNY 1964) (a defendant very often has invested substantial amounts before plaintiff takes final action).

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scope or application. 2 3 For example, in Harlequin Enterprises Ltd. v. Gulf & Western Corp.,24 Harlequin's delay in seeking preliminary relief against the defendant's infringing book covers was taken into consideration by the court, which issued an injunction that did not prohibit the defendant's continued sale of books already published with the infringing 25 covers.

B. Intentional Copying May Overcome the Effect of Delay

Some courts have held that a plaintiffs delay in moving for a preliminary injunction will not bar a finding of irreparable harm where there is evidence of intentional copying by the defendant. The genesis of this principle is the opinion written over fifty years ago by Judge Learned Hand in My- T Fine Corp. v. Samuels,26 in which the defendant argued that plaintiff's two year delay warranted the denial of plaintiffs preliminary injunction motion.27 Judge Hand held that the defense of delay was not available because the defendant had deliberately copied the plaintiff's trade dress:

[A]dvantages built upon a deliberately plagiarized make- up do not seem to us to give the borrower any standing to complain that his vested interests will be disturbed. Concededly nothing short of abandonment would be a defence at final hearing. . . . No doubt less is necessary to defeat a preliminary injunction; delay alone may be enough, at least if the original use was innocent. .. But considering the origin of the wrong here, we do not think that a delay of two years is a defence.2"

23. See, eg, I. Peiser Floors, Inc. v. I.J. Peiser's Sons, Inc., No. 81-3359, slip op (SDNY 10/4/82) (available on LEXIS®) (the court held that plaintiffs delay would not preclude the grant of a preliminary injunction given the "severely limited scope and prospective nature of the relief' sought in the motion). 24. 644 F2d 946, 210 USPQ 1 (CA 2 1981). 25. Id at 950, 210 USPQ at 3. 26. 69 F2d 76, 21 USPQ 94 (CA 2 1934). 27. Id at 77, 21 USPQ 94. 28. Id at 78, 21 USPQ at 96 (citations omitted).

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Half a century later, Judge Hand's opinion in My-T Fine remains vital. Indeed, in 1986, the district court in Ventura Travelware Inc. v. A to Z Luggage Co.29 held that My-T Fine had not been superseded by the Second Circuit's 1985 decision in Citibank, N.A. v. Citytrust, holding that significant delay alone may justify the denial of a preliminary injunction." According to the Ventura court, "[a]lthough in cases of ac- cidental copying, delay in seeking a preliminary injunction may negate a finding of irreparable harm, .. . where, as here, there is sufficient evidence indicating deliberate copying a preliminary injunction may still be warranted."'"

C. Delay: How Significant a Role Does It Play in Preliminary Injunction Motions?

From the foregoing discussion, it should be apparent that the plaintiff's delay in filing for relief may play only a minor role in the court's overall preliminary injunction analysis, particularly where evidence of a likelihood of confusion is compelling and the defendant has intentionally traded on the plaintiff's good will and reputation. It is equally apparent, however, that delay can be an important and sometimes pivotal factor in a court's decision on a preliminary injunction motion. In some instances, the plaintiffs delay in a case which is weak on the merits may provide the court with a clear and convenient reason for denying the relief requested. This somewhat indefinite state of affairs is probably as it should be-a preliminary injunction is essentially an equitable device designed to preserve the court's ability to render justice after a full trial on the merits. Many factors, all of varying degrees of importance depending on the circumstances, are properly weighed in the balance.

29. 1 USPQ2d 1552 (EDNY 1986) (vacating the magistrate's decision). 30. Id at 1553. 31. Ibid; see also Harlequin Enterprises Ltd. v. Gulf & Western Corp., supra note 24 at 950, 210 USPQ at 3 (laches not a defense to a preliminary injunction motion where defendant intended the infringement); Jordan K. Rand, Ltd. v. Lazoff Bros., Inc., supra note 19 at 594, 217 USPQ at 799 (laches as a defense to a preliminary injunction motion is not available where defendant's own actions were calculated to trade upon plaintiff's reputation).

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Having generally described the role of delay in the preliminary injunction process, we will now attempt to describe how the courts have treated delay as an issue distinct from the merits of the infringement analysis.

II. DELAY AS A SEPARATE ISSUE

An Appendix to this article presents a survey of cases, organized by federal circuit, showing the lengths of time which have been held to be acceptable and unacceptable on motions for a preliminary injunction. The period of delay is measured from the date of the movant's notice of the defendant's alleged infringement to the date the motion for preliminary relief is filed. While the filing date is readily ascertainable and is never the subject of debate, the date of plaintiff's "cknowledge" can be controversial.

A. Notice of Infringement

A court may accept the plaintiffs claim of recent notice, even where the defendant has actually been using the mark at issue for a year or longer prior to the filing of the preliminary injunction motion." A plaintiff will be charged with earlier notice, however, if the court finds that the plaintiff should have known of the defendant's infringement. In one such case, Calvin Klein Co. v. Farah Mfg. Co. Inc.,33 plaintiff Calvin Klein moved in June 1985 for a preliminary injunction against Farah's use of an inverted omega loop pocket stitching design on blue jeans.34 Although Farah had sold over 1.5 million pairs of the jeans at issue beginning October

32. See Cartier, Inc. v. Three Sheaves Co. Inc., 465 F Supp 123, 129, 204 USPQ 377, 382 (SDNY 1979) ("[A] party can be accused of laches only if it fails to act after notice. Plaintiffs sought relief as soon as they became aware of defendant's existence"); Universal City Studios, Inc. v. Mueller Chemical Co., No. 81-5737, slip op (ND Ill 11/24/82) (available on LEXIS®) (preliminary injunction granted where the motion was filed two years after defendant's allegedly infringing use began but three months after notice by plaintiff). 33. 229 USPQ 795 (SDNY 1985). 34. Id at 795-96.

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1978 to a variety of major department stores, Calvin Klein claimed that it did not discover Farah's use of the inverted omega design until 1985, even though it had a security force charged with investigating infringements of the Calvin Klein trademarks. 5 The court denied preliminary injunctive relief, holding: The Court does not credit the plaintiffs evidence that Calvin Klein first became aware of Farah's use of the inverted omega stitching in 1985. Calvin Klein is chargeable with years of dilatoriness in enforcing its allegedly protectible mark. In addition, Calvin Klein continued to delay almost seven weeks after filing the complaint, to move for a preliminary injunction.3

The failure of a company with significant resources to learn of an alleged infringement also contributed to the Sec- ond Circuit's denial of a preliminary injunction in Citibank, N.A. v. Citytrust 7 As the court found, "It strains one's cre- dulity to argue that a major financial institution such as Citibank, with all its resources and information sources, could not establish before mid-September 1984 that a potential competitor had opened a branch more than ten weeks earlier near the heart of Citibank territory."3

35. Id at 797-98. Moreover, between 1979 and 1981, Farah actually man- ufactured jeans for Calvin Klein. Ibid. 36. Id at 801. 37. Supra note 1. 38. Id at 277, 225 USPQ 711; see also Warner Lambert Co. v. McCrory's Corp., 718 F Supp 389, 12 USPQ2d 1884, 1888 (D NJ 1989) (Warner-Lambert's contention that it was unaware of McCrory's private label mouthwash found to be "somewhat doubtful" in light of Warner-Lambert's practice of sending personnel to conduct field checks of retail stores and the unlikelihood that "industry leader Warner-Lambert could have no knowledge that its own customer and major retailer, McCrory, was selling a product that Warner-Lambert now con- tends poses the danger of irreparable harm"); Reedco, Inc. v. Hoffmann-La Roche, Inc., supra note 19 at 1081, 2 USPQ2d at 2002 (significant publicity regarding defendant's application for registration of the name TEGISON and the nature and side effects of the TEGISON drug "establishes the strong possibility that plaintiffs knew about TEGISON, its uses, and its dangers long before July 1985"); Mego Corp. v. Mattel, Inc., supra note 20 at 383 (even if plaintiff did not know by late spring that BATTLESTAR GALACTICA was the title of defendant's

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Another question to consider with respect to the issue of notice is whether a plaintiff can be charged with delay in taking action against infringers other than the named defendant. In one recently decided case, Warner-Lambert Co. v. McCrory's Corp.,39 the New Jersey district court denied a motion for a preliminary injunction against the sale of an alleged imitation of LISTERINE mouthwash where Warner- Lambert had not only delayed taking action against Mc- Crory's, but had also known about other private label brands in "substantially similar" trade dress for years.4" In an earlier case in the same district, however, the court rejected the argument that preliminary relief was barred by plaintiff's knowledge for a number of years of generic substitutes of its pharmaceutical products in imitative trade dress.41

B. The Length of the Delay-How Long Is Too Long?

Not surprisingly, a review of the cases involving the issue of delay in the preliminary injunction context demonstrates that the courts do not apply a uniform "cut-off" point to determine whether a plaintiff has waited too long to seek relief. A delay of thirteen weeks was held to be too long in Le Cordon Bleu S.a.r.l. v. BPC Publishing Ltd.,42 where the defendant had already published eleven issues of the weekly cooking periodical at issue and had invested over one million dollars in start-up costs.43 On the other hand, a delay of approximately two years was held to be acceptable in Earth Technology Corp. v. Environmental Research & Technology, Inc.,44 where most of the movant's delay was found to be attributable to attempts to settle the dispute and the de-

television series, "they should have known this and could have known this," especially in view of publicity in a "plethora" of trade journals). 39. Supra note 38. 40. Ibid. 41. American Home Products Corp. v. Chelsea Laboratories, Inc., 572 F Supp 278, 283, 219 USPQ 1192, 1197 (D NJ 1982), affd 722 F2d 730 (CA 3 1983). 42. Supra note 22. 43. Id at 270-71, 170 USPQ at 479. 44. Supra note 19.

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fendant could not demonstrate detrimental reliance on the delay.45 In the Second Circuit, where many of the cases involving the issue of delay originate, there are a number of decisions denying preliminary injunctive relief in which the plaintiff delayed filing its motion for periods of time ranging from three to ten months.46 Although the decision in Citibank N.A. v. Citytrust has been cited as a denial of preliminary relief based on a ten week delay by Citibank,47 the Second Circuit opinion indicates that Citibank had received notice through the press of defendant's expansion activities nine months prior to the filing of the preliminary injunction motion, after knowing of defendant's existence in other geographic areas for decades." Even properly classified as a case involving a nine-month delay, Citibank is illustrative of the tendency in the Second Circuit to excuse only short periods of delay. Nonetheless, there have been exceptions to the general rule in the Second Circuit where preliminary injunctions have issued despite delays of a year and a half or more.49

45. Id at 587. 46. See, eg, Mathematica Policy Research, Inc. v. Addison-Wesley Pub- lishing Co., Inc., 11 USPQ2d 1391 (SDNY 1989) (ten month delay); Comic Strip, Inc. v. Fox Television Stations, Inc., 710 F Supp 976,981, 10 USPQ2d 1608 (SDNY 1989) (seven month delay); Allen Organ Co. v. CBS, Inc., supra note 13 (eight months after indirect notice; seven months after direct notice); Le Sportsac, Inc. v. Dockside Research, Inc., supra note 10 (ten month delay); Mego Corp. v. Mattel, Inc., supra note 20 (seven month delay); Gianni Cereda Fabrics, Inc. v. Bazaar Fabrics, Inc., 335 F Supp 278, 173 USPQ 188 (SDNY 1971) (seven and one-half month delay). 47. Supra note 1; Country Floors, Inc. v. Gepner, 11 USPQ2d 1401, 1405 (ED Pa 1989); Mathematica Policy Research, Inc. v. Addison-Wesley Publishing Co., supra note 46; Delmatoff, Gerow, Morris, Langhans, Inc., 12 USPQ2d 1136 (DC DC 1989). 48. Citibank, id at 276, 225 USPQ at 711. 49. See, eg, Ventura Travelware Inc. v. A to Z Luggage Co., supra note 29 (eighteen month delay did not bar plaintiffs entitlement to a preliminary injunction because of defendant's intentional infringement); Colgate Palmolive Co. v. North American Chemical Corp., supra note 22 at 86 (twenty month delay excused where defendant intentionally infringed plaintiffs mark); I. Peiser Floors, Inc. v. I.J. Peiser's Sons, Inc., supra note 23 (limited relief granted on preliminary injunction motion despite two-year delay).

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Although the greatest number of cases denying a preliminary injunction with delays of ten months or less are in the Second Circuit, cases in the Third, Fourth and Seventh Circuits fit within this category as well. For example, in Stokely-Van Camp Inc. v. Coca-Cola Co.,5" the federal district court for the Northern District of Illinois declined to grant a preliminary injunction where the plaintiff had been aware of Coca-Cola's introduction of REFRESH iced tea for three months and knew that large amounts of money were being spent in connection with the product launch. 1 A seven month delay was also deemed too long by the New Jersey district court in Mars, Inc. v. H.P. Mayer Corp.,52 and an eight month delay resulted in the denial of preliminary relief by a North Carolina federal district court in John Lemmon Films, Inc. v. Atlantic Releasing Corp.53 While it is impossible to harmonize and reconcile all of the decisions involving the issue of delay on preliminary injunction motions, some general conclusions can be drawn. Three months or less is usually considered acceptable. 4 Be- tween three and six months, the cases begin to diverge.5 A plaintiff runs a significant risk that a preliminary injunction motion will be denied where the delay in seeking relief is

50. Supra note 18. 51. Id at 1226. 52. No. 88-2252 (D NJ 8/19/88) (designated not for publication) (available on LEXIS®). 53. 617 F Supp 992, 227 USPQ 386 (WD NC 1985). 54. See, eg, Universal City Studios, Inc. v. Mueller Chemical Co. Inc., supra note 32; Louis Rich, Inc. v. Horace W. Longacre, Inc., 423 F Supp 1327, 195 USPQ 308 (ED Pa 1976); but see Stokely-Van Camp Inc. v. Coca-Cola Co., supra note 18; see also Appendix at the end of this article. 55. Granting a preliminary injunction: Quaker Oats Co. v. Mel Appel Enterprises, Inc., 703 F Supp 1054, 9 USPQ2d 2057 (SDNY 1988) (six month delay); Salt Water Sportsman Inc. v. B.A.S.S. Inc., supra note 4 (approximately a six month delay); C.B. Sports Inc. v. Gaechter-Haber & Associates, Inc., 210 USPQ 597 (D Vt 1981) (six month delay); Cyclonaire Corp. v. United States Systems, Inc., 209 USPQ 310 (D Kan 1980) (six month delay). Denying a preliminary injunction: Nina Ricci S.A.R.L. v. Gemcraft Ltd., 612 F Supp 1520, 226 USPQ 575 (SDNY 1985) (five-six month delay); Programmed Tax Systems, Inc. v. Raytheon Co., 419 F Supp 1251, 193 USPQ 435 (SDNY 1976) (four-five month delay); see also Appendix.

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between six months and a year,56 and most cases involving a delay of a year or longer deny preliminary injunctive relief," except in jurisdictions which require a showing of prejudicial delay or in cases where the defendant's intentional infringement defeats the defense of delay. 8

III. EXCUSABLE DELAY

In considering the circumstances under which a plaintiffs delay will bar the issuance of a preliminary injunction, the reasons why the plaintiff waited to seek relief may be as important as how long the plaintiff waited. Put another way, a particular period of delay will not necessarily preclude a finding of irreparable injury if the court finds the delay to be excusable. The two most frequently accepted excuses are (1) ongoing settlement negotiations and (2) a material escalation in the defendant's infringing activity. To rely on these excuses, however, a plaintiff must move promptly after settlement discussions reach an impasse or after the plaintiff discovers the increase in the scope of the defendant's infringement.

A. Settlement Negotiations

Courts encourage the extra-judicial resolution of legal disputes to spare the resources of the courts and the litigants

56. Denying a preliminary injunction: Citibank, N.A. v. Citytrust, supra note 1 (nine month delay); Mathematica Policy Research, Inc. v. Addison-Wesley Publishing Co., supra note 46 (ten month delay); Mars, Inc. v. H.P. Mayer Corp., supra note 52 (seven month delay); Allen Organ Co. v. CBS, Inc., supra note 13 (seven-eight month delay); see also Appendix. 57. See, eg, GTE Corp. v. Williams, supra note 1 (three year delay); Na- tional Yellow Pages Service Assn. v. O'Connor Agency, Inc., supra note 11 (three year delay); Kusan, Inc. v. Alpha Distributors, Inc., supra note 10 (seventeen- eighteen month delay); Gear, Inc. v. L.A. Gear California, Inc., supra note 10 (fifteen-sixteen month delay); see also Appendix. 58. See supra notes 19 and 26-31.

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and to ease the burden of overcrowded dockets. 9 Consistent with this public policy, many courts have issued preliminary injunctions despite a delay occurring during the conduct of settlement negotiations, 0 even where the settlement negotiations were concededly characterized as t desultory." 61 In one recent case, the court found that the movant had not unreasonably delayed in seeking relief even though seventeen months had elapsed between the mailing of a protest letter and the filing of a preliminary injunction motion.62 In contrast, other courts, while acknowledging the need to encourage the extrajudicial resolution of trademark disputes, have nonetheless held that the delay occurring during settlement discussions indicates a lack of irreparable harm."

59. Clark, Inc. v. Resnick, 219 USPQ 619, 624-25 (D RI 1982) ("Although Plaintiff somewhat belatedly seeks a preliminary injunction, the delay is attributable to efforts to resolve this controversy, a practice which certainly should not be discouraged, much less used to defeat a meritorious claim."). 60. See, eg, Central Benefits Mutual Insurance Co. v. Blue Cross & Blue Shield Assn., 711 F Supp 1423, 11 USPQ2d 1103 (SD Ohio 1989); Earth Technology Corp. v. Environmental Research & Technology, Inc., supra note 19 at 587 ("[A] party will not be charged with delay attributable to efforts to settle the dispute"); CBS, Inc. v. Springboard International Records, 429 F Supp 563, 569 fn 1, 199 USPQ 422, 428 (SDNY 1976) ("It is clear to the Court that the delay in this case was occasioned by the settlement negotiation which was in progress and not by any unreasonable delay on the part of plaintiffs."); Jon Devlin Dancercise, Inc. v. Dancersize, Inc., 525 F Supp 973, 975, 217 USPQ 748, 749 (SDNY 1981) (the plaintiff is not equitably or legally estopped from asserting its claims against defendants where plaintiff consistently asserted its trademark rights against defendants during settlement negotiations); Cyclonaire Corp. v. United States Systems, Inc., supra note 55 at 312, 316 (delay of six months excused where plaintiff sent cease and desist letter seven weeks after discovering the infringement and negotiated with defendant for several more months). 61. Clark, Inc. v. Resnick, supra note 59 at 620. 62. Central Benefits Mutual Insurance Co. v. Blue Cross & Blue Shield Assn., supra note 60; see also Earth Technology Corp. v. Environmental Research & Technology, Inc., supra note 19 at 586 (movant for preliminary injunctive relief first contacted the defendant to express concern in February 1981, called the defendant in December 1981 to advise of its intention to oppose the defendant's application for registration and moved for a preliminary injunction in December 1982); Steinway & Sons v. Robert Demars & Friends, 210 USPQ 954, 960-61 (CD Calif 1981) (plaintiff consistently asserted its rights against defendant between late 1978, when plaintiff filed an opposition proceeding in the Patent and Trade- mark Office, and October 1980, when the civil infringement action was filed). 63. See, eg, Mars, Inc. v. H.P. Mayer Corp., supra note 52 ("While this

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A number of courts have denied preliminary injunctive relief where the plaintiff has either unreasonably delayed filing a motion after settlement negotiations have broken down or the plaintiff has simply allowed the discussions to go on too long. For example, the failure to move quickly after settlement discussions reached an impasse was largely responsible for the denial of plaintiff's preliminary injunction motion in Gear, Inc. v. L.A. Gear California, Inc.' The plaintiff, owner of the GEAR trademark for luggage, household products and children's clothing, first learned in May 1984 that defendant had licensed the L.A. GEAR mark for children's clothing and wrote a protest letter to defendant in June 1984. In an exchange of correspondence between June and September 1984, defendant disputed plaintiff's claim of infringement, refused to discontinue use of L.A. GEAR as a trademark and trade name and indicated its intention to pursue registration of the L.A. GEAR mark.65 As the court observed, "The battle lines were drawn by the summer of 1984; yet plaintiff did not even file suit until the following July, and did not seek preliminary relief until three and one- half months later."'66 Accordingly, the court concluded that "plaintiff's long period of inaction, after defendants indicated their full intention to continue using 'L.A.GEAR,' undermines its contention that the claimed injuries are irreparable."67

court views settlement negotiations with favor and does not wish to impose any prejudice upon plaintiff for attempting to amicably resolve this matter without judicial intervention, plaintiffs delay in bringing this application does somewhat undermine its argument of irreparable harm."); cf Nina Ricci S.A.R.L. v. Gem- craft Ltd., supra note 55 at 1530-31, 226 USPQ at 583 (plaintiffs' "inexplicable delay" in moving for preliminary injunctive relief until six weeks after settlement talks broke down, coupled with their lack of interest in defendant's product during the Christmas selling season "is evidence that little harm is present"). 64. Supra note 10. 65. Id at 1332, 229 USPQ at 987. 66. Ibid. 67. Id at 1333, 229 USPQ at 987; see also Delmatoff, Gerow, Morris, Lan- ghans, Inc. v. Children's Hospital National Medical Center, supra note 47 (where the parties had been discussing settlement for a year and it was clear after five months that negotiations were likely to fail, plaintiffs' delay in filing a motion for a preliminary injunction undermines the claim that irreparable harm will result if such relief is denied); Comic Strip, Inc. v. Fox Television Studios, Inc.,

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In contrast, a preliminary injunction issued in Nature's Bounty, Inc. v. SuperX Drugs Corp.6" where the plaintiff filed suit on September 14, 1979, entered into settlement negotiations with defendant after initiating the action, and then moved for a preliminary injunction in January 1980 after the negotiations resulted in only partial agreement. 9 The court concluded that the plaintiff had not inexcusably delayed in presenting its application for preliminary relief since it had moved quickly after the negotiations reached an impasse. ° Even absent a clear and irreconcilable conflict between the parties' settlement positions, it is reasonable to expect that a party allegedly suffering irreparable injury will move for expedited relief after the exploration of settlement fails to culminate in an accord after several months.7' As one district court pointed out in denying a preliminary injunction, "It is within the Plaintiffs prerogative to bring the suit negotiations could have whenever it decides and settlement 72 continued after the suit had been filed.

B. Escalation in the Scope of Infringement

A plaintiffs delay in moving for a preliminary injunction

supra note 46 at 981, 10 USPQ2d at 1614 (preliminary injunction denied where plaintiff waited seven months to seek preliminary relief, including three months after its last communications with defendant to settle the dispute); National Yellow Pages Service Assn. v. O'Connor Agency, Inc., supra note 11 at 1521 (plaintiffs three year delay in filing suit and moving for a preliminary injunction was not excused by protracted settlement negotiations); John Lemmon Films, Inc. v. Atlantic Releasing Corp., supra note 53 at 996, 227 USPQ at 389 (preliminary injunction denied where plaintiff waited seven weeks after learning of the alleged infringement to send a protest letter and then waited another seven months after receiving an unsatisfactory response to the letter before filing suit). 68. 490 F Supp 50, 207 USPQ 263 (EDNY 1980). 69. Id at 55-56, 207 USPQ at 268-69. 70. Id at 56, 207 USPQ at 269. 71. See Louis Rich, Inc. v. Horace W. Longacre, Inc., supra note 54 at 1335, 195 USPQ at 314 (plaintiff's eight week effort to amicably resolve the trademark dispute with defendant, insisting at all times that defendant cease using its mark held to be "'not an inordinate amount of time to delay taking drastic legal action under such circumstances"). 72. National Yellow Pages Service Assn. v. O'Connor Agency, Inc., supra note 11 at 1521.

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may be excused where (1) the evidence shows a history of slow or modest encroachment followed by an expansion of the defendant's activities; and (2) the plaintiff moves quickly after learning of the escalation in the level of infringement. For example, in Parrot Jungle, Inc. v. Parrot Jungle, Inc.,73 the defendant opened a PARROT JUNGLE store in Brook- lyn, New York in 1977 and three additional stores in the New York metropolitan area in 1978. The plaintiff, owner of a nationally-known tourist attraction in Florida named PARROT JUNGLE, conceded that it was aware of "perhaps three stores" by early 1979, but took no action against what it regarded as a few pet stores.74 However, after learning in late 1980 that the defendant was embarking on a national franchising program, 5 the plaintiff promptly brought suit and moved for a preliminary injunction. Rejecting the defendant's argument that plaintiff had inexcusably delayed in bringing the action, the district court granted plaintiffs motion, holding:

[T]here is a substantial difference between plaintiff's awareness of a pet store or stores in New York and its awareness of a national franchising effort. It was the latter which triggered plaintiffs prompt assertion of its rights. A modest encroachment is one thing, a sudden proposed national exploitation of plaintiff's name is quite another, and plaintiff's failure to challenge the former will not entirely disable plaintiffs from preventing the 6 latter.

The significant expansion of a defendant's business was also held to excuse the plaintiffs delay where the defendant announced a change in activities from operating as a retail florist to offering a nationwide telemarketing and credit card

73. 512 F Supp 266, 213 USPQ 49 (SDNY 1981). 74. Id at 267-68, 213 USPQ at 50. 75. Id at 268, 270, 213 USPQ at 50, 52. 76. Id at 270, 213 USPQ at 52-53 (citing Miss Universe v. Patricelli, 271 F Supp 104, 110, 154 USPQ 334, 337-38 (D Conn 1967), affd 386 F2d 997, 155 USPQ 289 (CA 2 1967)).

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program for florists.7 Likewise, where a defendant opened up a new branch of a restaurant in the same part of the city as plaintiff's restaurant, leading to a significant increase in incidents of actual confusion, plaintiff's failure to move prior to the increased level of confusion did not prevent the issuance of a preliminary injunction." In both of these cases, the court specifically found that the plaintiff had moved promptly after discovering the escalation of the alleged infringement." In contrast, preliminary injunctive relief was denied in Citibank, N.A. v. Citytrust,s ° where Citibank knew in the summer of 1983 of Citytrust's intention to expand its banking facilities outside of Connecticut into Citibank's home territory of New York, had direct knowledge of Citytrust's New York area branch in June 1984, and yet did not move for a preliminary injunction until ten weeks later.8 A modest encroachment followed by an increased level of infringing activity can occur not only where a defendant expands the scope of its business geographically, but also where it initially imitates plaintiff's trademark or trade dress to a limited degree and then increases the level of infringement by more brazen copying of the plaintiff's product. In American Rice, Inc. v. Arkansas Rice Growers Cooperative

77. Floralife, Inc. v. Floraline International, Inc., 633 F Supp 108, 112-13 (ND Ill 1985); later proceeding 807 F2d 518, 1 USPQ2d 1132 (CA 7 1986). 78. Calamari Fisheries, Inc. v. Village Catch Inc., 698 F Supp 994, 1014, 8 USPQ2d 1953, 1969 (D Mass 1988); see also Horizon Financial, F.A. v. Horizon Bancorp., supra note 11 at 1705 (the court granted preliminary injunctive relief where plaintiff, the operator of a Pennsylvania savings association named Ho- rizon Financial, filed a motion for preliminary injunction after defendant, a New Jersey financial institution, moved into Pennsylvania and began heavily promoting its name); cf University of Pittsburgh v. Champion Products, Inc., supra note 14 at 1046, 215 USPQ at 926 (in an action for permanent injunctive relief, the court excused the plaintiffs extensive delay where "the character and scope of the alleged infringement changed substantially over the years from a modest program of sales to students and local adherents of the university to a program of national sales aimed at servicing and capitalizing upon Pitt's emergence as a national college football power"). 79. Id at 1014, 8 USPQ2d at 1969; Floralife Inc. v. Floraline International, Inc., supra note 77 at 113. 80. Supra note 1. 81. Id at 276, 225 USPQ at 711.

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Assn., 2 the plaintiff ARI sold rice products to the Saudi Arabian market under the name Abu Bint (girl brand) in a yellow, red and black box bearing a design of an Oriental girl.83 The plaintiff took no action when defendant first introduced a competitive rice product under the name "Bint al-Arab" in a green and yellow color scheme." Three years later, however, the defendant modified its "Bint al-Arab" label to change the color scheme to yellow, red and black.' The court rejected the defendant's argument that plaintiff's delay barred its entitlement to a preliminary injunction, finding that ARI filed suit within three weeks of defendant's introduction of the modified trade dress.8 6 An escalation in the scope of infringement can also occur where defendant expands its product line to include goods more closely related to plaintiff's products. The court must find, however, that the defendant has in fact made a significant change in the nature of its infringment, thus excusing the movant's previous inaction. In Gear, Inc. v. L.A. Gear California, Inc.," the court held that the defendant's expansion into fabric bags and accessories could not be considered ta qualitative change" in the scope of alleged infringement where the plaintiff was previously on notice of the use of the L.A. GEAR mark on children's clothing-a product line directly competitive with plaintiff's line of children's clothing."

C. The Need to Investigate

Courts have excused periods of delay ranging from seven weeks 9 to six months9 ° where the plaintiff asserted the need

82. Supra note 11. 83. 532 F Supp at 1380-81, 214 USPQ at 938-39. 84. Id at 1382, 1390, 214 USPQ at 940, 946. 85. Id at 1382, 214 USPQ at 940. 86. Id at 1390, 214 USPQ at 946. 87. Supra note 10. 88. Id at 1332-33, 229 USPQ at 987. 89. Quaker Oats Co. v. Mel Appel Enterprises, Inc., supra note 55 at 1062, 9 USPQ2d at 2062. 90. C.B. Sports Inc. v. Gaechter-Haber & Associates, Inc., supra note 55

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to investigate the facts and legal theories underlying the claim of infringement. As one court pointed out, "[p]arties should not be encouraged to sue before a practical need to do so has clearly been demonstrated."'" In one recent case, however, the district court declined to excuse a ten month delay in moving for a preliminary injunction (including a seven month gap between sending a cease and desist letter and filing suit) where the plaintiff contended it was prudently waiting until it could establish a case of infringement.9 2 The need to fully investigate the facts has taken on added importance with the emergence of Rule 11 of the Federal Rules of Civil Procedure,9 3 and a party which runs too hastily into court based on an incomplete understanding of the defendant's activities may find itself not only the loser of the preliminary injunction motion but also the recipient of Rule 11 sanctions.94 In one case involving a novel argument under Rule 11, a defendant which successfully opposed a preliminary injunction motion asked the court to impose Rule 11

at 599. Although the court in C.B. Sports excused plaintiffs six month delay and granted plaintiff's motion for a preliminary injunction, the court observed that the delay indicated that plaintiff did not consider the ongoing harm caused by defendant's activities to be very serious. Id at 604 fn 8. 91. Quaker Oats Co. v. Mel Appel Enterprises, Inc., supra note 55 at 1062, 9 USPQ2d at 2063 (quoting Horgan v. MacMillan, Inc., 789 F2d 157, 164 (CA 2 1986)); see also Central Benefits Mutual Insurance Co. v. Blue Cross & Blue Shield Assn., supra note 60 at 1434, 11 USPQ2d at 1112 (movant's delay excused where it was conducting settlement negotiations and waiting until it had gathered sufficient evidence of actual confusion to support injunctive relief); Nintendo of America, Inc. v. Bay Coin Distributors, Inc., Copyright L Rep (CCH) 25,409 (EDNY 1982). 92. Mathematica Policy Research, Inc. v. Addison-Wesley Publishing Co., Inc., supra note 46; cf Warner-Lambert Co. v. McCrory's Corp., 718 F Supp 389, 395, 12 USPQ2d 1884, 1888 (D NJ 1989) (the court denied plaintiffs motion for a preliminary injunction but held that plaintiff should not be penalized for delay specifically attributable to the conduct of a confusion survey, since "[t]his type of good faith preparation for litigation should not be used to subsequently bar plaintiff from obtaining injunctive relief'). 93. FRCP 11 94. In one recent copyright case involving a request for expedited relief, plaintiff's counsel was ordered to pay defendant $1100 in costs and damages, although there was no finding that the plaintiffs misconduct, as perceived by the court, was the result of haste in seeking preliminary relief. See Warner Bros., Inc. v. Dae Rim Trading Inc., 877 F2d 1120, 11 USPQ2d 1272 (CA 2 1989).

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sanctions on the plaintiff on the ground that the plaintiff must have known that a nine month delay would "doom its application for preliminary relief."95 The district court for the Southern District of New York denied defendant's request, holding that there is no "per se" rule in the Second Circuit barring an injunction in circumstances involving substantial delay.96

D. Pendency of Proceedings in the Patent and Trademark Office

In jurisdictions in which the courts examine not only the plaintiff's delay in moving for a preliminary injunction but also whether the defendant has relied to its detriment on plaintiff's inaction,97 the fact that the plaintiff has previously instituted an opposition or cancellation proceeding in the United States Patent and Trademark Office may preclude a finding of detrimental reliance.9" As the district court explained in Floralife, Inc. v. Floraline International, Inc.:

While a "Notice of Opposition to Registration is not a claim of infringement," it is "an assertion by the owner of a trademark that the applicant's proposed mark is likely to confuse the public as to the source of the product or service." Thus, a notice of opposition sufficiently informs the registrant of the trademark holder's objections and renders unreasonable any detriment the registrant may suffer in reliance on the plaintiffs delay in filing suit."°

95. Jewelers of America, Inc. v. Norayr Amirghanyan, No. 86-4371 (SDNY 4/2/87) (available on LEXIS®). 96. Ibid. 97. See supra note 19 and accompanying text. 98. Horizon Financial, F.A. v. Horizon Bancorp., supra note 11 at 1705; Earth Technology Corp. v. Environmental Research & Technology, Inc., supra note 19 at 587; Steinway & Sons v. Robert Demars & Friends, supra note 62 at 960-61. 99. Supra note 77, 100. Id at 113 (quoting James Burrough Ltd. v. Sign of the Beefeater, Inc., 572 F2d 574, 578 fn 5, 197 USPQ 277, 279 (CA 7 1978)).

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While the pendency of adversarial proceedings in the Patent and Trademark Office may excuse a plaintiff's delay in moving for a preliminary injunction in some jurisdictions, at least one court has rejected a plaintiff's excuse that it deferred filing suit until its mark was registered in order to obtain the benefits accompanying federal registration.'01 As the court observed, "[b]y waiting for its certificate of registration to issue, the [P]laintiff may have improved its chances for a permanent injunction. In so waiting, however, it also belied its claim that there is an urgent need for speedy action 10 2 to protect its rights.'

E. Docket Crowding

A plaintiffs inability to obtain an early trial date in a long-pending trademark infringement action has also been held to excuse a delay in moving for preliminary injunctive relief.'0 3 In one case, Frisch's Restaurants, Inc. v. Elby's Big Boy of Steubenville Inc.," 4 plaintiff filed suit in November 1978 and moved for a preliminary injunction in October 1980 when it "became apparent that docket constraints in the district court would preclude a plenary hearing for an extended period of time."'0 5 The Court of Appeals for the Sixth Circuit observed that "[]nstead of slumbering on its rights, Frisch's sought to draw the court's attention to its dilemma as soon as practicable by applying for a preliminary injunction."' 6

101. John Lemmon Films, Inc. v. Atlantic Releasing Corp., supra note 53. 102. Id at 996, 227 USPQ at 389. 103. Volkswagenwerk, G.m.b.H. v. Frank, supra note 103 at 917, 131 USPQ at 237 (plaintiff filed suit in May 1960 and moved for preliminary injunctive relief in October 1961; the court granted plaintiffs motion, holding that "[tihe delay in seeking injunctive relief is explained in terms of belief by plaintiffs that the cause would be tried at an earlier date than February 5, 1962, on which date it is now set for trial on the merits . . 104. Supra note 8. 105. 670 F2d at 652 fn 6, 214 USPQ at 23. 106. Ibid.

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CONCLUSION

The decision to file a motion for a preliminary injunction in a trademark infringement action usually implicates a variety of tactical considerations. In this article we have iso- lated one issue-delay-which can be overlooked or de- emphasized by the plaintiff because it has little bearing on the substantive merits of the infringement claim itself. Be- cause a presumption of irreparable harm flows from proof of a likelihood of success on the merits, the practitioner's evaluation of the probability of success of a preliminary injunction motion tends to be focused on the merits of the infringement claim. Where there has been delay in moving for the preliminary injunction, however, a separate evaluation of the impact of the delay on the likelihood of success on the motion is in order. No per se rule can or should govern this issue. Inexcus- able delay in moving for preliminary relief after the initial or escalated infringement has been discovered, or after settlement negotiations have irretrievably broken down, clearly cuts against the plaintiff's plea of irreparable harm requiring extraordinary judicial intervention. On the other hand, a plaintiff which explores the possibility of an extra-judicial settlement of a dispute in an expeditious manner or which defers filing the motion until the facts of the defendant's infringement are clearly understood should not have to fear the court's hostility for having waited until the appropriate time to seek relief. We have analyzed the factors that courts have addressed in determining whether plaintiff's delay is excusable or excessive. An evaluation of these factors, and any others which may bear on the issue of delay in a particular case, should be made in determining whether, under all the circumstances, plaintiff's delay in seeking a preliminary injunction was reasonable.

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APPENDIX FIRST CIRCUIT Holding Case Delay Length on Motion

Jordan K. Rand, Ltd. 3 months granted v. Lazoff Bros., Inc., 537 F Supp 587, 217 USPQ 795 (D PR 1982)

Salt Water less than 6 months granted Sportsman, Inc. v. B.A.S.S. Inc., 685 F Supp 12, 4 USPQ2d 1407 (D Mass 1987), as amended 5 USPQ2d 1620 (D Mass 1987)

Calamari Fisheries, 21 months after first granted Inc. v. The Village use; 1 month after Catch, Inc., 698 F expansion caused Supp 994, 8 USPQ2d increased level of 1953 (D Mass 1988) confusion

SECOND CIRCUIT

Majorica, S.A. v. R.H. several years denied Macy & Co., 762 F2d 7, 226 USPQ 624 (CA 2 1985)

Citibank, N.A. v. 10 weeks after direct denied Citytrust, 756 F2d notice of actual use; 9 273, 225 USPQ 708 months after notice of (CA 2 1985) intended use in press; years after notice of use in another state

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Holding Case Delay Length on Motion Harlequin Enterprises 6 months after notice granted Ltd. v. Gulf & of intended use; 3 Western Corp., 644 months after notice of F2d 946, 210 USPQ 1 actual use (CA 2 1981) Mathematica Policy 10 months denied Research, Inc. v. Addison-Wesley Publishing Co. Inc., 11 USPQ2d 1391 (SDNY 1989) Comic Strip, Inc. v. 7 months denied Fox Television Stations, Inc., 710 F Supp 976, 10 USPQ2d 1608 (SDNY 1989) Kusan, Inc. V. Alpha 17-18 months denied Distributors, Inc., 693 F Supp 1372, 7 USPQ2d 1211 (D Conn 1988) Artemide Spa v. 7 months granted Grandlite Design & in part Mfg. Co. Inc., 672 F Supp 698, 4 USPQ2d 1915 (SDNY 1987) Great Lakes Mink 20 months denied Assn. v. Furrari, Inc., No. 86-6038 (SDNY 12/21/87) (available on LEXIS®) Ventura Travelware approximately 18 granted Inc. v. A to Z Luggage months Co., 1 USPQ2d 1552 (EDNY 1986)

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Holding Case Delay Length on Motion Allen Organ Co. v. 7-8 months denied CBS, Inc., 230 USPQ 479 (SDNY 1986) Gear, Inc. v. L.A. 17-18 months denied Gear California, Inc., 637 F Supp 1323, 227 USPQ 980 (SDNY 1986) Nina Ricci S.A.R.L. v. 4 months from notice, denied Gemcraft Ltd., 612 F including 6 weeks Supp 1520, 226 USPQ from breakdown of 575 (SDNY 1985) settlement talks Calvin Klein Co. v. 7 years of use; denied Farah Mfg. Co. Inc., plaintiffs claim of 229 USPQ 795 (SDNY less than 6 months 1985) notice rejected I. Peiser Floors, Inc. 2 years granted v. I.J. Peiser's Sons, Inc., No. 81-3359 (SDNY 10/4/82) (available on LEXIS®) Exxon Corp. v. Xoil approximately 12 denied Energy Resources, months Inc., 552 F Supp 1008, 216 USPQ 634 (SDNY 1981) Nike, Inc. v. Rubber several months granted Mfgrs. Assn., 509 F Supp 919, 212 USPQ 225 (SDNY 1981) C.B. Sports Inc. v. 6 months granted Gaechter-Haber & Associates, Inc., 210 USPQ 597 (D Vt 1981)

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Holding Case Delay Length on Motion Le Sportsac, Inc. v. 10 months denied Dockside Research, Inc., 478 F Supp 602, 205 USPQ 1055 (SDNY 1979) Mego Corp. v. Mattel, 7 months after notice denied Inc., 203 USPQ 377 of intended use (SDNY 1978)

Programmed Tax 4-5 months after denied System, Inc. v. actual notice; 3 years Raytheon Co., 419 F after first use Supp 1251, 193 USPQ 435 (SDNY 1976)

Le Cordon Bleu 13 weeks denied S.a.r.l. v. BPC Publishing Ltd., 327 F Supp 267, 170 USPQ 477 (SDNY 1971)

Gianni Cereda 7-1/2 months denied Fabrics, Inc. v. Bazaar Fabrics, Inc., 173 USPQ 188 (SDNY 1971) (copyright and trademark claims)

Helena Rubenstein, 20 months denied Inc. v. Frances Denney, Inc., 286 F Supp 132, 159 USPQ 346 (SDNY 1968)

Stix Products, Inc. v. preliminary denied United Merchants & injunction motion Mfgrs., Inc., 273 F filed 5 years after suit Supp 250, 154 USPQ 477 (SDNY 1967)

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Holding Case Delay Length on Motion Goodyear Tire & 8-9 years denied Rubber Co. v. Topps of Hartford, Inc., 247 F Supp 899, 147 USPQ 240 (D Conn 1965) Colgate-Palmolive Co. 20 months granted v. North American Chemical Corp., 238 F Supp 81, 144 USPQ 266 (SDNY 1964) Gillette Co. v. Ed 4-5 years denied Pinaud, Inc., 178 F Supp 618, 123 USPQ 531 (SDNY 1959) My-T Fine Corp. v. 2 years granted Samuels, 69 F2d 76, 21 USPQ 94 (CA 2 1934)

THIRD CIRCUIT Warner Lambert Co. 12 months after first denied v. McCrory's Corp., use; 5 months after 718 F Supp 389, 12 claimed actual notice USPQ2d 1884 (D NJ 1989) Country Floors, Inc. v. at least 2 years actual denied Gepner, 11 USPQ2d notice; up to 6 years 1401 (ED Pa 1989) constructive notice Mars, Inc. v. H.P. approximately 19 denied Mayer Corp., No. 88- months 2252 (D NJ 8/19/88) (available on LEXIS®) (not for publication) HeinOnline -- 80 Trademark Rep. 65 1990 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12Vol. 80 TMRPage 32 of 135

Holding Case Delay Length on Motion Reedco, Inc. v. 17 months after denied Hoffmann-La Roche, actual notice; years Inc., 667 F Supp 1072, after notice in the 2 USPQ2d 1994 (D NJ press 1987) Horizon Financial, 13 years use; 8 granted F.A. v. Horizon months after Bancorp., 2 USPQ2d geographic expansion 1696 (ED Pa 1987) of defendant's use Louis Rich, Inc. v. 2 months granted Horace W. Longacre, Inc., 423 F Supp 1327, 195 USPQ 308 (ED Pa 1976)

FOURTH CIRCUIT John Lemmon Films, 8 months denied Inc. v. Atlantic Releasing Corp., 617 F Supp 992, 227 USPQ 386 (WD NC 1985)

FIFTH CIRCUIT American Rice, Inc. v. 3 weeks after granted Arkansas Rice increased level of Growers Cooperative infringement; 4 years Assn., 532 F Supp after less 1376, 214 USPQ 936 objectionable use (SD Tex 1982), affd 701 F2d 408, 218 USPQ 489 (CA 5 1983)

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Holding Case Delay Length on Motion SIXTH CIRCUIT Frisch's Restaurants, at least 2 years granted Inc. v. Elby's Big Boy of Steubenville Inc., 514 F Supp 704, 213 USPQ 559 (SD Ohio 1981), affd 670 F2d 642, 214 USPQ 15 (CA 6 1982), cert denied 459 US 916 (1982) Central Benefits 18 months granted Mutual Insurance Co. v. Blue Cross & Blue Shield Assn., 711 F Supp 1423, 11 USPQ2d 1103 (SD Ohio 1989)

SEVENTH CIRCUIT Helene Curtis suit filed within granted Industries, Inc. v. weeks of notice; Church & Dwight Co. preliminary Inc., 560 F2d 1325, injunction filed 13 195 USPQ 218 (CA 7 months later 1977), cert denied 434 US 1070, 197 USPQ 592 (1978) Ideal Industries, Inc. suit filed 7 months granted v. Gardner Bender, after notice; Inc., 612 F2d 1018, preliminary 204 USPQ 177 (CA 7 injunction motion 1979), cert denied 447 filed 8 months later US 924, 206 USPQ 864 (1980)

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Holding Case Delay Length on Motion Vaughan Mfg. Co. v. 10 months granted Brikam International Inc., 814 F2d 346, 1 USPQ2d 2067 (CA 7 1987) American Airlines a few months notice granted Inc. v. A 1-800-A-M-E- by high level R-I-C-A-N Corp., 622 employee; earlier F Supp 673, 228 notice by sales USPQ 225 (ND Ill personnel 1985) Universal City 3 months granted Studios, Inc. v. Mueller Chemical Co., No. 81-5737 (ND Ill 11/24/82) (available on LEXIS®) Floralife, Inc. v. at least 3 years notice granted Floraline of limited use; less International, Inc., than 3 weeks after 633 F Supp 108 (ND knowledge of Ill 1985); later expansion of use proceeding 807 F2d 518, 1 USPQ2d 1132 (CA 7 1986) Stokely-Van Camp 3 months denied Inc. v. Coca-Cola Co., 2 USPQ2d 1225 (ND Ill 1987)

EIGHTH CIRCUIT Mutual of Omaha 12 months granted Insurance Co. v. Novak, 775 F2d 247, 227 USPQ 801 (CA 8 1985)

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Holding Case Delay Length on Motion NINTH CIRCUIT

National Yellow 3 years denied Pages Service Assn. v. O'Connor Agency, Inc., 9 USPQ2d 1516 (CD Calif 1988)

Earth Technology 2 years granted Corp. v. Environmental Research & Technology, Inc., 222 USPQ 585 (CD Calif 1983)

Steinway & Sons v. 2 years granted Robert Demars & Friends, 210 USPQ 954 (CD Calif 1981)

TENTH CIRCUIT

GTE Corp. v. 3 years denied Williams, 731 F2d 676, 222 USPQ 803 (CA 10 1984)

Volkswagenwerk, 17 months after granted G.m.b.H. v. Frank, lawsuit 198 F Supp 916, 131 USPQ 236 (D Colo 1961)

Cyclonaire Corp. v. 6 months granted United States Systems, Inc., 209 USPQ 310 (D Kan 1980)

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Holding Case Delay Length on Motion ELEVENTH CIRCUIT Original Appalachian 5-10 months granted Artworks, Inc. v. Topps Chewing Gum, Inc., 642 F Supp 1031, 231 USPQ 850 (ND Ga 1986)

D.C. CIRCUIT Delmatoff, Gerow, 12 months denied Morris, Langhans, Inc. v. Children's Hospital National Medical Center, 12 USPQ2d 1136 (DC DC 1989)

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Citation: 85 Trademark Rep. 1 1995

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DELAY IN FILING PRELIMINARY INJUNCTION MOTIONS: A FIVE YEAR UPDATE By Sandra Edelman*

I. INTRODUCTION Five years ago, The Trademark Reporter® published an article examining the subject of delay in the context of a preliminary injunction motion.1 The article offered general guidelines for determining the length of time that constitutes inexcusable and excusable delay and analyzed the principal reasons accepted by courts for the delay. An Appendix to the article presented a survey of cases, arranged by federal circuit, showing the periods of time found to be excusable or excessive in moving for a preliminary injunction. With the passage of time, and the addition of several dozen more cases to the analysis, the article's basic conclusions remain essentially the same: (1) A delay of three months or less is usually considered acceptable.2 (2) Between four and twelve months, the cases diverge.'

* Partner in the firm of Townley & Updike, New York, New York, Associate Member of the International Trademark Association; member of the Editorial Board of The Trademark Reporter®. 1. Robert Lloyd Raskopf and Sandra Edelman, Delay in Filing Preliminary Injunction Motions: How Long Is TIbo Long?, 80 TMR 36 (1990). 2. See, eg, S&R Corp. v. Jiffy Lube International, Inc., 968 F2d 371, 23 USPQ2d 1201 (CA 3 1993) (3 month delay); Bausch & Lomb, Inc. v. Nevitt Sales Corp., 810 F Supp 466, 26 USPQ2d 1275 (WDNY 1993) (1 month after increased scope of infringement); National Rural Electric Cooperative Assn. v. National Agricultural Chemical Assn., 26 USPQ2d 1294 (DC DC 1992) (several weeks after expansion of infringement); Universal Motor Oils Co. v. Amoco Oil Co., 15 USPQ2d 1613 (D Kan 1990) (3 month delay); see also Appendix at the end of this article ("Appendix"). 3. See, eg, Kraft General Foods, Inc. v. Allied Old English, Inc., 831 F Supp 123, 31 USPQ2d 1094 (SDNY 1993) (7 month delay; motion granted); Chase Manhattan Corp. v. Northwestern Mutual Life, 1993 WL 60602 (SDNY 1993) (11 month delay; motion denied); W.L. Gore & Associates, Inc. v. btes, Inc., 23 USPQ2d 1091 (D Del 1992) (4 month delay; motion granted); Studio 1712, Inc. v. Etna Products Co., 777 F Supp 844, 22 USPQ2d 1280 (D Colo 1991) (10 month delay; motion granted); Lanvin Inc. v. Colonia, 739 F Supp 182 (SDNY 1990) (in an action involving breach of a licensing agreement, the court denied a

Vol. 85 TMR

HeinOnline -- 85 Trademark Rep. [xx] 1995 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 39 of 135 Vol. 85 TMR (3) In most cases involving a delay of a year or longer, preliminary injunctive relief is denied,4 except where intentional infringement by the defendant overcomes the adverse effect of the movant's delay.5 (4) Ongoing settlement negotiations6 and changes in the scope of infringement7 are the reasons most frequently cited by courts in finding a period of delay to be excusable. An Updated Appendix to this article includes all of the cases from the earlier Appendix, supplemented by cases decided since 1989. First, however, it is worth reviewing some recent decisions that provide additional insight into how delay is measured, whether preliminary injunction motions may be used as a tactical maneuver in ongoing litigation, and what constitutes excusable delay.

preliminary injunction motion brought over seven months after plaintiff confirmed, by an audit, its awareness of a violation of the agreement); Century Time Ltd. v. Interchron, 729 F Supp 366, 14 USPQ2d 1765 (SDNY 1990) (6 month delay; motion denied); Supercuts, Inc. v. Super Clips, 18 USPQ2d 1378 (D Mass 1990) (10 month delay; motion granted); see also Appendix. 4. See, eg, TLbmmy Hilfiger U.S.S., Inc. v. Siegfried & Parzifal, Inc., 1994 WL 86398 (SDNY 1994) (as much as 2-3 year delay); Jordache Enterprises, Inc. v. Levi Strauss & Co., 841 F Supp 506 (SDNY 1993) (4 year delay); H.G.I. Marketing Services, Inc. v. Pepsico, Inc., 1992 WL 349675 (NDNY 1992) (2-4 year delay); L.G.B., Inc. v. Gitano Group, Inc., 769 F Supp 1236 (SDNY 1991) (18 month delay); American International Group, Inc. v. American International Airways, Inc., 726 F Supp 1470, 14 USPQ2d 1933 (ED Pa 1989) (3 year delay); see also Appendix. 5. Dial-A-Mattress Operating Corp. v. Mattress Madness, Inc., 841 F Supp 1339 (EDNY 1994) (although plaintiff waited over 3 years to file a preliminary injunction motion, the court granted the motion, citing the defendant's bad faith, fraudulent conduct and intentional misappropriation of plaintiffs good will); see also Grand Lodge Fraternal Order of Police v. Labor Council Michigan FOP, Inc., 1994 US App LEXIS® 30788 (CA 6 1994) (not for publication) (notwithstanding plaintiffs knowledge for more than two years of defendant's infringing use, preliminary injunction granted where defendant had engaged in misleading and possibly fraudulent solicitation of funds), 6. See, eg, Ocean Garden, Inc. v. Marktrade Company, Inc., 953 F2d 500, 21 USPQ2d 1493 (CA 9 1991); Rockland Mortgage Corp. v. Shareholder's Funding Inc., 835 F Supp 182, 30 USPQ2d 1270 (D Del 1993) (the court held that plaintiffs six month delay was excusable because the time was spent, in part, in attempting to resolve the matter without resorting to litigation); American Direct Marketing v. Azad International, Inc., 783 F Supp 84, 22 USPQ2d 1108 (EDNY 1992) (concluding that the plaintiff was not likely to succeed on the merits of its claims, the court denied the motion for preliminary injunctive relief, but specifically found that plaintiffs 3-6 month delay, arising out of reasonable attempts to settle the matter out of court, did not otherwise undercut plaintiffs entitlement to expedited relief); Redmond Products, Inc. v. Body Shop, Inc., 20 USPQ2d 1233 (D Minn 1991). 7. See, eg, National Rural Electric Cooperative Assn. v. National Agricultural Chemical Assn., supra note 2 at 1298 (although 3 years had elapsed since defendant's infringing conduct commenced, the court granted the motion for a preliminary injunction where plaintiff had moved within several weeks of learning that defendant had dramatically expanded its operations); W.L. Gore & Associates, Inc. v. 'Ibtes, Inc, supra note 3 (court found that defendant's false advertising had "inched up" over a 2Y2 year period).

HeinOnline -- 85 Trademark Rep. 1 1995 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 40 of 135 Vol. 85 TMR A. Measuring the Period of Delay Delay is generally measured from the date the movant knew or should have known of the defendant's infringement.8 This standard of actual or constructive notice is sometimes difficult to apply. For example, what if the plaintiff learns that the defendant intends to introduce an infringing product but many months pass before the product is actually introduced to the market? Or, in cases of gradual encroachment occurring over a period of months or years, what is the triggering event from which the movant's delay should be measured? King v. Innovation Books,9 a suit between the author Stephen King and the producers of the film "The Lawnmower Man," illustrates the problem that arises when a temporal gap exists between the announcement of a defendant's plans and the actual sale of the allegedly infringing product or service. King first learned in October 1991, from reading a film magazine, that defendant intended to distribute a motion picture using the title of one of his stories. He promptly wrote a letter objecting to any "possessory credit" for the film.1° A few weeks later, King managed to secure a copy of the screenplay. The screenplay contained the objectionable possessory credit, but King was unable to view the film and screen credits until March 1992. Three months later, he brought suit and a motion for a preliminary injunction under Section 43(a) of the Lanham Act.1" The Court of Appeals for the Second Circuit affirmed the grant of a preliminary injunction enjoining the use of possessory credit, rejecting defendant's contention that King's delay rebutted the presumption of irreparable injury. 2 As the court explained, the actions taken by King between October 1991 and June 1992 to apprise defendants of his objections and to obtain a copy of the film preserved the presumption of irreparable harm."

8. See Paramount Pictures Corp. v. Video Broadcasting Systems Inc, 724 F Supp 808, 822, 12 USPQ2d 1862 (D Kan 1989); see also Raskopf and Edelman, supra note 1 at 45-47. 9. 976 F2d 824, 24 USPQ2d 1435 (CA 2 1992). 10. Id at 827, 24 USPQ2d 1435. 11. Id at 828, 24 USPQ2d 1435. 12. Id at 831, 24 USPQ2d 1435. 13. Ibid. The court also found that defendants contributed to King's delay in seeking preliminary injunctive relief by refusing to make the final film version available to him at an earlier point in time. Hoping to stave off a dispute, the defendants declined to assist King's efforts to view the film before the opening date. Id at 833, 24 USPQ2d 1435; Thomas & Betts Corp. v. Panduit Corp., 1994 US Dist LEXIS® 18113 (ND Ill 1994) (9-10 months before moving for preliminary relief, plaintiff heard rumors about defendant's production introduction and brought the motion 3 months after seeing actual product specimens); see also Mastercard International, Inc. v. Sprint Communications Co., 30 USPQ2d 1963, 1966-67 (SDNY 1994) (in dicta, the court found that Mastercard did not have to take immediate action in mid-1993 when it learned that Sprint planned to promote a

HeinOnline -- 85 Trademark Rep. 2 1995 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 41 of 135 Vol. 85 TMR The problem of measuring delay in a case of gradual encroachment was addressed in Nabisco Brands, Inc. v. Canusa Corp. 4 Nabisco first contemplated bringing an infringement suit in late 1987, when it learned that Canusa was selling an imitation LIFESAVERS product in the United States. 5 Canusa's sales then dropped off sharply, and Nabisco decided not to pursue the matter.16 Between July and October 1988, Nabisco became aware that sales had increased and that Canusa had offered to sell the infringing product to a large LIFESAVERS customer, K-Mart. 7 At that point, Nabisco reconsidered litigation, but did not file suit or seek preliminary injunctive relief until March 1989." The Nabisco court rejected the proposition that delay must necessarily be measured from the date on which the defendant first uses the contested mark. Rather, the triggering event is the "date that the defendant's acts first significantly impacted on the plaintiffs goodwill and business reputation."' 19 In this instance, the court concluded that Nabisco was justified in waiting to bring suit until the defendants' sales had become a competitive threat. °

B. The PreliminaryInjunction Motion as a Tactical Maneuver in Ongoing Litigation In a surprising number of recent cases, the plaintiff commenced a lawsuit reasonably promptly after learning of an infringement, but then delayed a significant period of time before seeking preliminary injunctive relief. In most cases, the court granted the motion, notwithstanding delays ranging from five to seventeen months between actual notice of the infringing act and the motion for expedited relief.2' In some instances, however, this

calling card at the 1994 World Cup games-allegedly a violation of an exclusive license given to Mastercard-since the games were not set to begin until June 1994). 14. 722 F Supp 1287, 11 USPQ2d 1788 (MD NC), affd mem 892 F2d 74, 14 USPQ2d 1324 (CA 4 1989). 15. Nabisco had first learned of defendant's product in 1984 when it was in limited distribution in Puerto Rico. At that time, Nabisco initiated an opposition proceeding against registration of the product label, but withdrew the proceeding based on defendants' representation that the foray into Puerto Rico was only a test and that they did not anticipate any future endeavor. Id 722 F Supp at 1289, 11 USPQ2d 1788. 16. Id at 1290, 11 USPQ2d 1788. 17. Ibid. 18. Ibid. 19. Id at 1292, 11 USPQ2d at 1792 (quoting 2 J. Thomas McCarthy, Trademarks and Unfair Competition, §31:6 at 570 (2d ed 1984)). 20. Id at 1292, 11 USPQ2d 1788. 21. See, eg, Ocean Garden, Inc. v. Marktrade Co. Inc, supra note 6 (complaint filed 4 months after plaintiff learned of defendant's plans to introduce an infringing product; preliminary injunction brought 6 months later: motion granted); Sega Enterprises Ltd. v. Accolade Inc., 785 F Supp 1392, 23 USPQ2d 1440 (ND Calif 1992) (lawsuit brought 1

HeinOnline -- 85 Trademark Rep. 3 1995 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 42 of 135 Vol. 85 TMR 5 litigation strategy led to the denial of the motion.22 In cases where the intervening time between complaint and motion was devoted to efforts to negotiate a settlement,23 or where the plaintiffs discovery efforts uncovered new circumstances justifying expedited relief, the court's decision to excuse the delay is perhaps under- standable. Often, however, the court does not cite any reason for the plaintiffs failure to seek preliminary injunctive relief at the outset of litigation, nor does it explain how "irreparable injury" could exist so long after the plaintiff first learned of the defendant's infringement.24 Courts in the Second Circuit have taken a dim view of this practice, particularly when the delayed filing of the preliminary injunction motion smacks of tactical maneuvering. For example, in Century Time Ltd. v. Interchron,25 the plaintiff became aware of defendant's allegedly infringing watch products in July 1989; it filed suit in September 1989, but waited until January 30, 1990 to file a preliminary injunction motion, four days before an important trade show at which plaintiff knew defendant intended to display the products at issue.26 In denying the motion, the court chastised the plaintiff: "We simply cannot tolerate tactical maneuvering, in injunction matters, whereby parties sit back and wait for what injurious to the procedural fairness they believe to be timing27 most for their adversaries. A stiff rebuke was likewise delivered in a case involving a licensing dispute between the National Football League Player's Association and National Football League Properties, Inc.2" The

months after notice of infringement; preliminary injunction motion brought 3 4 months later: motion granted); Transfer Print Foils, Inc. v. Transfer Print America Inc., 720 F Supp 425, 12 USPQ2d 1753 (D NJ 1989) (plaintiff commenced action 5 months after it learned of defendant's infringing conduct; preliminary injunction motion filed 11 months later: motion granted). 22. See, eg, Century Time Ltd. v. Interchron, supra note 3. 23. See, eg, Supercuts Inc. v. Super Clips, supra note 3 (delay between commencement of suit and filing of preliminary injunction motion excused because of settlement negotiations); P.T.C. Brands, Inc. v. Conwood Co. L.P., 28 USPQ3d 1895 (WD Ky 1993) (preliminary injunction motion filed after expedited discovery). 24. P.T.C. Brands, Inc. v. Conwood Co. L.P., supra note 23 (suit filed 2 months after plaintiff learned of expansion in infringement; preliminary injunction motion filed 6 months later: motion granted); Transfer Print Foils, Inc. v. Transfer Print America Inc, supra note 21. 25. Supra note 3. 26. Id at 368, 14 USPQ2d 1765. 27. Id at 368, 14 USPQ2d at 1766; see also Wilson-Cook Medical, Inc. v. Wiltex, Inc., 18 USPQ2d 1642, 1644 (CA 4 1991) (Fourth Circuit affirmed the denial of preliminary injunctive relief and made note of defendant's argument that plaintiff had "strategically" waited to file suit on the eve of an important medical conference at which defendant planned to promote its business). 28. 1991 WL 79325 (SDNY 1991).

HeinOnline -- 85 Trademark Rep. 4 1995 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 43 of 135 Vol. 85 TMR Player's Association initially filed and withdrew a motion for preliminary relief, then later re-filed the motion and twice voluntarily extended the return date of the later motion.29 The court denied the motion, stating: "[A] motion for a preliminary injunction is a request for extraordinary and urgent relief, not a casual entry on the list of litigation strategies to be postponed or renewed as a carrot or stick depending on the progress of litigation."" In sum, a mid-litigation preliminary injunction motion can be successful, but the plaintiff should have a good reason for not having moved at the outset-especially in the Second Circuit.

C. Excusable and Inexcusable Delay Settlement negotiations and an expansion in the scope of infringement continue to lead the list of acceptable excuses for delay in seeking preliminary injunctive relief. As previously indicated,31 however, a plaintiff must move promptly after settlement negotiations break down or after it learns of a significant increase in the defendant's infringing conduct. For example, in L.G.B., Inc. v. Gitano Group, Inc., 2 the defendant waited more than a year and a half after the plaintiff instituted a declaratory judgment action to file a preliminary injunction motion. Although part of the eighteen month period of delay was occupied by settlement discussions, the court denied the motion, holding that it was doubtful that the settlement negotiation period, exceeding a year after the action was commenced, should be subtracted from the period of delay.3 The plaintiff was also faulted for waiting an additional four months after advising the court that settlement efforts had been exhausted.' In contrast, a preliminary injunction was granted in National Rural Electric Cooperative Association v. National Agricultural Chemical Association35 where, notwithstanding plaintiffs three years' knowledge of infringing conduct by the defendant on a limited scale, the preliminary injunction motion was brought

29. Id at 3. 30. Ibid. 31. Raskopf and Edelman, supra note 1 at 50-56. 32. Supra note 4. 33. Id at 1242. 34. Ibid; see also Museum Boutique Intercontinental, Ltd. v. Picasso, 1995 US Dist LEXIS® 1085 (SDNY 1995) (preliminary injunction denied where parties had been engaged in settlement negotiations for many years). 35. Supra note 2.

HeinOnline -- 85 Trademark Rep. 5 1995 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 44 of 135 Vol. 85 TMR within a few weeks after plaintiff learned of a dramatic expansion of defendant's operations. 6 The District Court of Colorado was particularly forgiving of a ten month delay in Studio 1712, Inc. v. Etna Products Co.,37 in which the plaintiff pleaded "dire financial circumstances" and plaintiffs counsel stated that he needed to acquaint himself with the area of law so that he could, consistent with Rule 11, file the motion for preliminary injunctive relief.38 The Southern District of New York was considerably less lenient in Chase Manhattan Corp. v. Northwestern Mutual Life,39 in which the plaintiffs excuses included the need to conduct a survey and its inability to find out when defendant's allegedly infringing commercials would be broadcast.4 ° Not surprisingly, a plaintiff who claimed he was "too busy to commence a lawsuit,"41 did not obtain emergency relief from the court.

II. CONCLUSION Delay by a plaintiff in moving for a preliminary injunction in a trademark or unfair competition action is only one of many factors a court considers in determining whether expedited relief is appropriate. Nevertheless, it is an important factor, and courts have consistently required applicants for the extraordinary remedy of a preliminary injunction to demonstrate that relief has been urgently and quickly sought. Five years since publication of the original article on this subject, the lessons remain the same: a delay of three months or less is generally acceptable, but it behooves the movant to offer an adequate explanation to justify delays in the six to twelve month range. Good faith settlement efforts will not be penalized and gradual encroachment on the movant's rights will excuse a delay in seeking expedited relief, but the plaintiff must move promptly after settlement efforts come to

36. Id at 1298. 37. Supra note 3. 38. Id at 853, 22 USPQ2d 1280. 39. Supra note 3. 40. Id at 3-4 (the plaintiff in Chase also sought to justify its delay on the ground that it was attempting to settle the matter, but the court rejected this excuse as well, observing that defendant had made it clear to plaintiff at the outset of settlement negotiations that defendant did not intend to stop the conduct challenged by plaintiff); cf Lisa Frank, Inc. v. Impact International, Inc., 799 F Supp 980 (D Ariz 1992) (court excused plaintiffs delay in moving for a preliminary injunction for 3 months after learning of an increase in the scope of infringement, noting that plaintiff had been busy responding to 453 document requests and several motions served by defendants). 41. Cuddle Wit, Inc. v. Chan, 14 USPQ2d 1572 (SDNY 1989) (7 month delay in a copyright infringement action). HeinOnline -- 85 Trademark Rep. 6 1995 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 45 of 135 8 Vol. 85 TMR naught or after the plaintiff has learned of a qualitative change in the scope of infringement.

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UPDATED APPENDIX

First Circuit

Holding Case Delay Length on Motion

Supercuts, Inc. v. Super Clips, 18 10 months: suit brought granted USPQ2d 1378 (D Mass 1990) after 1 month; motion filed 9 months later

Calamari Fisheries, Inc v. Village 21 months after first use; 1 granted Catch, Inc, 698 F Supp 994, 8 month after expansion USPQ2d 1953 (D Mass 1988) caused increased level of confusion

Salt Water Sportsman, Inc. v. less than 6 months granted B.A.S.S. Inc., 685 F Supp 12, 4 USPQ2d 1407 (D Mass 1987), as amended 5 USPQ2d 1620 (D Mass 1987)

Jordan K. Rand, Ltd. v. Lazoff 3 months granted Bros., Inc., 537 F Supp 587, 217 USPQ 795 (D PR 1982)

Second Circuit

King v. Innovation Books, 976 F2d 11 months from knowledge granted 824, 24 USPQ2d 1435 (CA 2 1992) of intended use, including 3 months from knowledge of actual use

Majorica, S.A. v. R.H. Macy & Co., several years denied 762 F2d 7, 226 USPQ 624 (CA 2 1985)

Citibank, N.A. v. Citytrust, 756 10 weeks after direct denied F2d 273, 225 USPQ 708 (CA 2 notice of actual use; 9 1985) months after notice of intended use in press; years after notice of use in another state

Harlequin Enterprises Ltd. v. Gulf 6 months after notice of granted & Western Corp., 644 F2d 946, 210 intended use; 3 months USPQ 1 (CA 2 1981) after notice of actual use

My-T Fine Corp. v. Samuels, 69 2 years granted F2d 76, 21 USPQ 94 (CA 2 1934)

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Holding Case Delay Length on Motion

Museum Boutique Intercontinental, 14 years of coexistence, denied Ltd. v. Picasso, 1995 US Dist allegedly infringing newer LEXIS® 1085 (SDNY 1995) uses found not qualitatively different from prior uses

CBS Inc. v. Liederman, 866 F Supp 11 months from first denied (but 763, 33 USPQ2d 1333 (SDNY knowledge of infringing delay found 1994), affd 1995 US App LEXIS® use; 3 months after reasonable) 1532 (CA 2 1995) responsible parties located

Mastercard International, Inc. v. 6-9 months from granted Sprint Communications Co., 30 knowledge of intended use (dicta) USPQ2d 1963 (SDNY 1994)

Tommy Hilfiger U.S.S., Inc. v. 2-3 years from notice of denied Siegfried & Parzifal, Inc., 1994 WL initial elements of 86398 (SDNY 1994) infringement

Dial-A-Mattress Operating Corp. v. 3-4 years granted Mattress Madness, Inc., 841 F Supp 1339 (EDNY 1994)

Jordache Enterprises, Inc. v. Levi 4 years denied Strauss & Co., 841 F Supp 506 (SDNY 1993)

Kraft General Foods, Inc. v. Allied 7 months from publication granted Old English, Inc., 831 F Supp 123, of defendant's mark 31 USPQ2d 1094 (SDNY 1993)

Chase Manhattan Corp. v. 11 months: suit brought denied Northwestern Mutual Life, 1993 after 5 months; motion WL 60602 (SDNY 1993) filed 6 months later

Bausch & Lomb, Inc. v. Nevitt 1 month after increased granted Sales Corp., 810 F Supp 466, 26 scope of infringement USPQ2d 1275 (WDNY 1993)

H.G.I. Marketing Services, Inc. v. 2-4 years denied Pepsico, Inc., 1992 WL 349675 (NDNY 1992)

American Direct Marketing v. Azad 3-6 months denied (but International, Inc., 783 F Supp 84, delay found 22 USPQ2d 1108 (EDNY 1992) excusable)

MGM Pathe Communications Co. v. 6 months granted Pink Panther Patrol, 774 F Supp 869, 21 USPQ2d 1208 (SDNY 1991)

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Holding Case Delay Length on Motion

L.G.B., Inc. v. Gitano Group, Inc., 18 months denied 769 F Supp 1236 (SDNY 1991)

National Football League Player's 9 months denied Assn. v. National Football League Properties, Inc-, 1991 WL 79325 (SDNY 1991) (licensing dispute)

Century Time Ltd. v. Interchron, 6 months: suit brought denied 729 F Supp 366, 14 USPQ2d 1765 after 2 months; motion (SDNY 1990) filed 4 months later

Lanvin Inc. v. Colonia, 739 F Supp 7 months denied 182 (SDNY 1990) (licensing dispute)

Mathematica Policy Research, Inc. 10 months denied v. Addison-Wesley Publishing Co. Inc., 11 USPQ2d 1391 (SDNY 1989)

Comic Strip, Inc. v. Fox Tlevision 7 months denied Stations, Inc, 710 F Supp 976, 10 USPQ2d 1608 (SDNY 1989)

Kusan, Inc v. Alpha Distributors, 17-18 months denied Inc, 693 F Supp 1372, 7 USPQ2d 1211 (D Conn 1988)

Artemide Spa v. Grandlite Design 7 months granted in & Mfg. Co. Ltd., 672 F Supp 698, 4 part USPQ2d 1915 (SDNY 1987)

Great Lakes Mink Assn. v. Furrari, 20 months denied Inc, No. 86-6038 (SDNY 12/21/87) (available on LEXIS ®)

Ventura Travelware Inc. v. A to Z approximately 18 months granted Luggage Co., 1 USPQ2d 1552 (EDNY 1986)

Allen Organ Co. v. CBS, Inc., 230 7-8 months denied USPQ 479 (SDNY 1986)

Gear, Inc v. L.A. Gear California, 17-18 months denied Inc., 637 F Supp 1323, 229 USPQ 980 (SDNY 1986)

Nina Ricci S.A.R.L. v. Gemcraft 4 months from notice, denied Ltd., 612 F Supp 1520, 226 USPQ including 6 weeks from 575 (SDNY 1985) breakdown of settlement talks

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Holding Case Delay Length on Motion

Calvin Klein Co. v. Farah Mfg. Co. 7 years of use; plaintiffs denied Ina, 229 USPQ 795 (SDNY 1985) claim of less than 6 months notice rejected

I. Peiser Floors, Inc. v. I.J. Peiser's 2 years granted Sons, Inc., No. 81-3359 (SDNY 10/4/82) (available on LEXIS ®)

Exxon Corp. v. Xoil Energy approximately 12 months denied Resources, Inc., 552 F Supp 1008, 216 USPQ 634 (SDNY 1981)

Nike, Inc. v. Rubber Mfrs. Assn., several months granted 509 F Supp 919, 212 USPQ 225 (SDNY 1981)

C.B. Sports Inc v. Gaechter-Haber 6 months granted & Associates, Inc., 210 USPQ 597 (D Vt 1981)

Le Sportsac, Inc. v. Dockside 10 months denied Research, Inc., 478 F Supp 602, 205 USPQ 1055 (SDNY 1979)

Mego Corp. v. Mattel, Inc., 203 7 months after notice of denied USPQ 377 (SDNY 1978) intended use

Programmed Tax System, Inc. v. 4-5 months after actual denied Raytheon Co., 419 F Supp 1251, notice; 3 years after first 193 USPQ 435 (SDNY 1976) use

Le Cordon Bleu S.a.r.l. v. BPC 13 weeks denied Publishing Ltd., 327 F Supp 267, 170 USPQ 477 (SDNY 1971)

Gianni Cereda Fabrics, Inc v. 7 1/2 months denied Bazaar Fabrics, Inc., 173 USPQ 188 (SDNY 1971) (copyright and trademark claims)

Helena Rubenstein, Inc. v. Frances 20 months denied Denney, Inc., 286 F Supp 132, 159 USPQ 346 (SDNY 1968)

Stix Products, Inc. v. United preliminary injunction denied Merchants & Mfrs., Inc., 273 F motion filed 5 years after Supp 250, 154 USPQ 477 (SDNY suit 1967)

Goodyear Tire & Rubber Co. v. 8-9 years denied Topps of Hartford, Inc., 247 F Supp 899, 147 USPQ 240 (D Conn 1965)

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Holding Case Delay Length on Motion

Colgate-Palmolive Co. v. North 20 months granted American Chemical Corp., 238 F Supp 81, 144 USPQ 266 (SDNY 1964)

Gillette Co. v. Ed Pinaud, Inc., 178 4-5 years denied F Supp 618, 123 USPQ 531 (SDNY 1959) Third Circuit

S&R Corp. v. Jiffy Lube 3 1/2 months granted International, Inc., 968 F2d 371, 23 USPQ2d 1201 (CA 3 1993)

Rockland Mortgage Corp. v. 6 months: suit brought granted Shareholder's Funding Inc., 835 F after 2 months; motion Supp 182, 30 USPQ2d 1270 (D Del filed 4 months later 1993)

Accu Personnel, Inc. v. AccuStaff 9 months after knowledge granted Inc., 823 F Supp 1161, 27 USPQ2d of intended use, including 1801 (D Del 1993) 2 months after knowledge of expanded activity

W.L. Gore & Associates, Inc. v. 4 months after increased granted Tbtes, Inc., 23 USPQ2d 1091 (D Del scope of activity 1992)

Warner Lambert Co. v. McCrory's 12 months after first use; 5 denied Corp., 718 F Supp 389, 12 USPQ2d months after claimed 1884 (D NJ 1989) actual notice

American International Group, Inc. 3 years denied v. American International Airways, Inc., 726 F Supp 1470, 14 USPQ2d 1933 (ED Pa 1989)

Transfer Print Foils, Inc. v. 16 months: suit brought granted Transfer Print America, 720 F after 5 months; motion Supp 425, 12 USPQ2d 1753 (D NJ filed 11 months later 1989)

Country Floors, Inc. v. Gepner, 11 at least 2 years actual denied USPQ2d 1401 (ED Pa 1989) notice; up to 6 years constructive notice

Mars, Inc. v. H.P. Mayer Corp., approximately 19 months denied 1988 US Dist LEXIS® 9069 (D NJ 1988) (not for publication)

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Holding Case Delay Length on Motion

Reedco, Ina v. Hoffmann-La Roche, 17 months after actual denied Inc., 667 F Supp 1072, 2 USPQ2d notice; years after notice in 1994 (D NJ 1987) the press

Horizon Financial, F.A. v. Horizon 13 years use; 8 months granted Bancorp., 2 USPQ2d 1696 (ED Pa after geographic expansion 1987) of defendant's use

Louis Rich, Inc. v. Horace W. 2 months granted Longacre, Inc., 423 F Supp 1327, 195 USPQ 308 (ED Pa 1976)

Fourth Circuit

Wilson-Cook Medical, Ina v. 1 year denied Wiltex, Inc., 18 USPQ2d 1642 (CA 4 1991)

Rubbermaid Commercial Products, almost 2 years, including 8 granted Inc. v. Contico International, Inc., months after issuance of 836 F Supp 1247, 29 USPQ2d 1574 design patent (WD Va 1993) (design patent and trade dress case)

Nabisco Brands, Inc. v. Conusa 5-8 months from increase granted Corp., 722 F Supp 1287, 11 in scope of infringement USPQ2d 1788 (MD NC 1989), affd mem 892 F2d 74, 14 USPQ2d 1324 (CA 4 1989)

John Lemmon Films, Inc. v. 8 months denied Atlantic Releasing Corp., 617 F Supp 992, 227 USPQ 386 (WD NC 1985)

Fifth Circuit

TJM Corp. v. Xerox Corp., 25 17 months: suit brought denied USPQ2d 1067 (ED La 1992) after 14 months; motion filed 3 months later

American Rice, Inc. v. Arkansas 3 weeks after increased granted Rice Growers Cooperative Assn., level of infringement; 4 532 F Supp 1376, 214 USPQ 936 years after less (SD Tex 1982), affd 701 F2d 408, objectionable use 218 USPQ 489 (CA 5 1983)

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Holding Case Delay Length on Motion Sixth Circuit

Grand Lodge Fraternal Order of more than 2 years after granted Police v. Labor Council Michigan actual notice of infringing FOP, Inc., 1994 US App LEXISO use 30788 (CA 6 1994) (not for publication)

P.T.C. Brands, Inc. v. Conwood Co. 8 months: suit brought granted L.P., 28 USPQ2d 1895 (WD Ky after 2 months; motion 1993) filed 6 months later

Blockbuster Entertainment Group approximately 10 months granted v. Laylco, Inc., 869 F Supp 505 (ED after actual notice; use Mich 1994) commenced 4 years earlier

Central Benefits Mutual Insurance 18 months granted Co. v. Blue Cross & Blue Shield Assn., 711 F Supp 1423, 11 USPQ2d 1103 (SD Ohio 1989)

Frisch's Restaurants, Inc. v. Elby's at least 2 years granted Big Boy of Steubenville Inc., 514 F Supp 704, 213 USPQ 559 (SD Ohio 1981), affd 670 F2d 642, 214 USPQ 15 (CA 6 1982), cert denied 459 US 916 (1982) Seventh Circuit

Helene Curtis Industries, Inc. v. suit filed within weeks of granted Church & Dwight Co. Inc., 560 F2d notice; preliminary 1325, 195 USPQ 218 (CA 7 1977), injunction filed 13 months cert denied 434 US 1070, 197 later USPQ 592 (1978)

Ideal Industries, Inc. v. Gardner suit filed 7 months after granted Bender, Inc., 612 F2d 1018, 204 notice; preliminary USPQ 177 (CA 7 1979), cert denied injunction motion filed 8 447 US 924, 206 USPQ 864 (1980) months later

Vaughan Mfg. Co. v. Brikam 10 months granted International Inc., 814 F2d 346, 1 USPQ2d 2067 (CA 7 1987)

Thomas & Betts Corp. v. Panduit 10 months after rumor of granted Corp., 1994 US Dist LEXIS ® 18113 infringing product; 3 (ND Ill 1994) months after seeing product sample

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Holding Case Delay Length on Motion

Eldon Industries, Inc. v. 4 1/2 years: suit brought denied Rubbermaid, Inc., 735 F Supp 786, after 4 years; motion filed 17 USPQ2d 1280 (ND 111 1990) 6 1/2 months later

Stokely-Van Camp Inc. v. Coca- 3 months denied Cola Co., 2 USPQ2d 1225 (ND Ill 1987)

American Airlines Inc. v. A 1-800- a few months notice by granted A-M-E-R-I-C-A-N Corp., 622 F Supp high level employee; 673, 228 USPQ 225 (ND Ill 1985) earlier notice by sales personnel

Floralife, Inc. v. Floraline at least 3 years notice of granted International, Inc, 633 F Supp 108 limited use; less than 3 (ND Ill 1985); later proceeding 807 weeks after knowledge of F2d 518, 1 USPQ2d 1132 (CA 7 expansion of use 1986)

Universal City Studios, Inc v. 3 months granted Mueller Chemical Co., No. 81-5737 (ND Ill 11/24/82) (available on LEXIS®) Eighth Circuit

Mutual of Omaha Insurance Co. v. 12 months granted Novak, 775 F2d 247, 227 USPQ 801 (CA 8 1985) Ninth Circuit

Ocean Garden, Inc. v. Marktrade 11 months from notice of granted Co. Inc, 953 F2d 500, 21 USPQ2d intended sale, including 2- 1493 (CA 9 1991) 3 months from notice of actual sale

Creative 'Ibchnology Ltd. v. SRT 6 months after notice and granted Inn, 29 USPQ2d 1474 (ND Calif sending of protest letter 1993)

Sega Enterprises Ltd. v. Accolade 5 months: suit brought granted Inc., 785 F Supp 1392, 23 USPQ2d after 1 1/2 months; motion 1440 (ND Calif 1992) filed 3 1/2 months later

Lisa Frank, Inc. v. Impact 7 months after filing granted International, Inc., 799 F Supp 980 complaint; 3 months after (D Ariz 1992) knowledge of expanded line of infringing products

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Holding Case Delay Length on Motion

National Yellow Pages Service 3 years granted Assn. v. O'Connor Agency, Inc., 9 USPQ2d 1516 (CD Calif 1988)

Earth Technology Corp. v. 2 years granted Environmental Research & Technology, Inc., 222 USPQ 585 (CD Calif 1983)

Steinway & Sons v. Robert Demars 2 years granted & Friends, 210 USPQ 954 (CD Calif 1981) Tenth Circuit

GTE Corp. v. Williams, 731 F2d 3 years denied 676, 222 USPQ 803 (CA 10 1984)

Studio 1712, Inc. v. Etna Products 10 months: suit brought granted Co., 777 F Supp 844, 22 USPQ2d after 4 months; motion 1280 (D Colo 1991) filed 6 months later

Universal Motor Oils Co. v. Amoco 3 months granted Oil Co., 15 USPQ2d 1613 (D Kan 1990)

Paramount Pictures Corp. v. Video 15 months denied Broadcasting Systems, 724 F Supp 808, 12 USPQ2d 1862 (D Kan 1989)

Cyclonaire Corp. v. United States 6 months granted Systems, Inc., 209 USPQ 310 (D Kan 1980)

Volkswagenwerk, G.m.b.H. v. 17 months after lawsuit granted Frank, 198 F Supp 916, 131 USPQ 236 (D Colo 1961) Eleventh Circuit

Glen Raven Mills, Inc. v. Ramada 16 months from notice of denied, but International, Inc., 1994 WL intended use, including 11 court found 230365 (MD Fla 1994) months after notice of that actual use plaintiff had acted promptly

Bellsouth Advertising & Publishing 7-8 months granted Corp. v. Real Color Pages, Inc., 792 F Supp 775 (MD Fla 1991)

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Holding Case Delay Length on Motion

Original Appalachian Artworks, 5-10 months granted Inc. v. Topps Chewing Gum, Inc, 642 F Supp 1031, 231 USPQ 850 (ND Ga 1986) D.C. Circuit

National Rural Electric several weeks after granted Cooperative Assn. v. National knowledge of increased Agricultural Chemical Assn., 26 scope of infringement USPQ2d 1294 (DC DC 1992)

Delmatoff, Gerow, Morris, 12 months denied Langhans, Inc. v. Children's Hospital National Medical Center, 12 USPQ2d 1136 (DC DC 1989)

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Official Journal of the International Trademark Association

Dilution Redefined for the Year 2002 Jerre B. Swann, Sr.

The Incorporeal Curtain: The EEA Is Closed to Extra-Market Gray Goods Thomas Hays

Delay in Filing Preliminary Injunction Motions: Update 2002 Sandra Edelman

The Shape of Things to Come— Emerging Theories of Design Protection Jonathan E. Moskin

Brief of Amicus Curiae The International Trademark Association in Partial Support of Appellees/Cross-Appellants in Taylor Corporation v. Sigma Chi Fraternity and Sigma Chi Corporation

Vol. 92 May-June, 2002 No. 3 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 57 of 135

Vol. 92 TMR 647

DELAY IN FILING PRELIMINARY INJUNCTION MOTIONS: UPDATE 2002

By Sandra Edelman*

I. INTRODUCTION The pace of life has noticeably quickened since 1995, when The Trademark Reporter® last published an update on the issue of delay in filing preliminary injunction motions.1 In the intervening seven years, the Internet has exploded as a medium of personal communication and business transactions, with brand names such as eSpeed and features such as Instant Messenger aptly conveying the near-instantaneous nature of interactions on the World Wide Web. As James Gleick observed in his book entitled Faster, “We have reached the epoch of the nanosecond. This is the heyday of speed.”2 In light of technological and cultural changes that have increasingly led to an “ASAP” business culture, it was interesting to investigate whether courts now apply a more stringent standard in determining whether a movant waited too long before seeking expedited injunctive relief.3 A review of the cases decided since 1995 reveals that standards have not materially changed, except in the Second Circuit, home of the proverbial “New York minute.”4 While the two previous articles on this subject expressed general rules for evaluating delay on a nationwide basis, this article will articulate two sets of general rules, one for cases within the Second

* Partner in the firm of Dorsey & Whitney LLP, New York, New York, Associate Member of the International Trademark Association; Original Articles Editor of The Trademark Reporter® and member INTA/CPR Panel of Neutrals. The author would like to thank Adam Sherman, associate at Dorsey & Whitney, for his assistance in preparing this article. 1. S. Edelman, “Delay in Filing Preliminary Injunction Motions: A Five Year Update,” 85 TMR 1 (1995) (updating R.L. Raskopf & S. Edelman, “Delay in Filing Preliminary Injunction Motions: How Long Is Too Long?” 80 TMR 36 (1990)). 2. J. Gleick, Faster—The Acceleration of Just About Everything (Pantheon Books 1999). 3. A plaintiff’s delay is one of the factors courts consider in deciding whether the “irreparable injury” element of the legal standard for obtaining a preliminary injunction has been met. See, e.g., Tough Traveler, Ltd. v. Outbound Products, 60 F.3d 964, 967, 35 U.S.P.Q.2d 1617, 1620 (2d Cir. 1995); GTE Corp. v. Williams, 731 F.2d 676, 678, 222 U.S.P.Q. 803, 805 (10th Cir. 1984). 4. Definitions of the expression “New York minute” include “the time it takes for the light in front of you to turn green and the guy behind you to honk his horn.” See W. Safire, N.Y. Times Section 6, p. 12, col. 3 (Oct. 19, 1986). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 58 of 135

648 Vol. 92 TMR

Circuit5 and the other for cases in the rest of the federal circuits in the country. The article will also discuss the differences that continue to exist among the various federal circuits as to whether prejudice to the defendant should be considered part of the delay analysis. The various explanations for delay that are deemed excusable by the courts will be examined, including: ongoing settlement negotiations; the need to investigate the alleged infringement; and changes in the scope or nature of the defendant’s infringement. Interestingly, a number of cases reported in the last seven years cite the litigation conduct of the plaintiff after commencement of the lawsuit as indicating a less than urgent need for relief, and these cases will be discussed as well. An updated Appendix to this article includes all of the cases from the earlier two articles, supplemented by cases decided since 1995. The cases are arranged by federal circuit, with the appellate cases in each circuit, if any, preceding the district court decisions. The Appendix includes trademark and unfair competition cases, and a few cases involving licensing disputes. Copyright decisions and cases involving both trademark and copyright issues that were decided based on the copyright claim are not included in this review. The periods of delay set forth in the Appendix have been measured from the date of plaintiff’s first actual notice of the defendant’s infringement (or a date of constructive notice determined by the court), to the date when the preliminary injunction motion was filed. This method of measurement reflects the legal standard that “[a]ny delay attributable to a plaintiff must be measured from the time the plaintiff knew or should have known that infringement had ripened into a provable claim.”6 Some reported decisions incorrectly focus only on the delay that occurred between the time the plaintiff first filed suit and the time

5. Although the Second Circuit encompasses New York, Connecticut and Vermont, virtually all of the cases in this Circuit involving the issue of delay emanate from one of the four judicial districts in New York, with the greatest concentration of cases arising in the Southern District of New York. 6. See Big O Tires, Inc. v. Bigfoot 4x4, Inc., 167 F. Supp. 2d 1216, 1229 (D. Colo. 2001) (citing Kason Co. v. Exxon Corp., 209 F.3d 562, 570, 54 U.S.P.Q.2d 1413, 1419 (6th Cir. 2000); Gasser Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770, 777, 34 U.S.P.Q.2d 1822, 1825 (Fed. Cir. 1995); Standard Oil Co. v. Standard Oil Co., 252 F.2d 65, 116 U.S.P.Q. 176 (10th Cir. 1958)). Whether a plaintiff “should have known” earlier about an infringement is generally a question of whether a plaintiff was reasonably vigilant in monitoring the marketplace. In a case reported in 2000, the court observed somewhat quaintly (in light of the active enforcement of trademark owners’ rights on the Internet since the mid-1990s) that “The owner of a registered mark would not necessarily expect that it was likely to be infringed on the Internet and so police the Internet.” First Jewellery Company of Canada, Inc. v. Internet Shopping Network LLC, 53 U.S.P.Q.2d 1838, 1845 (S.D.N.Y. 2000). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 59 of 135

Vol. 92 TMR 649

it moved for preliminary injunctive relief,7 thus ignoring the equally relevant period of time that elapsed between the plaintiff’s first notice of the infringement and its decision to institute litigation. In this type of case, when the motion was filed much later than the complaint, both dates, where available, are used in the Appendix. It should also be noted that some cases involving the issue of delay in filing a preliminary injunction motion have been omitted because the period of delay was too difficult to measure based on the court’s recitation of facts.8 Finally, in reviewing the decisions listed in the Appendix, it is important to bear in mind that the delay by the plaintiff was usually only one of many issues considered by the court in deciding whether to grant or deny the motion for a preliminary injunction, although in a few cases the plaintiff’s delay was an influential factor in the denial of relief.9 Moreover, as noted in the first article in this series, when a case is weak on the merits, the court is more likely to find the plaintiff’s delay to be inexcusable, providing a clear and convenient reason for denying the relief requested.10 Conversely, when a defendant has acted intentionally or engaged in other egregious conduct, the court is likely to de-emphasize the issue of delay and be more tolerant of a plaintiff’s failure to move promptly.11

II. GENERAL STANDARDS FOR EVALUATING DELAY In cases outside of the Second Circuit, the following general rules apply:

7. See, e.g., GoTo.com v. Walt Disney Co., 202 F.3d 1199, 53 U.S.P.Q.2d 1652 (9th Cir. 2000). 8. E.g., Westchester Media v. PRL USA Holdings, Inc., 103 F. Supp. 2d 935 (S.D. Tex. 1998), aff’d in part and vacated and remanded in part, 214 F.3d 658, 55 U.S.P.Q.2d 1255 (5th Cir. 2000). 9. See, e.g., Tough Traveler, Ltd. v. Outbound Products, 60 F.3d 964, 968, 35 U.S.P.Q.2d 1617, 1621 (2d Cir. 1995); Krueger International, Inc. v. Nightingale, Inc., 915 F. Supp. 595, 613, 40 U.S.P.Q.2d 1334, 1348 (S.D.N.Y. 1996); Del-Rain Corp. v. Pelonis USA Ltd., 1995 WL 116043 *6 (W.D.N.Y. 1995). 10. Raskopf & Edelman, supra n. 1, 80 TMR at 44; Magnet Communications, LLC v. Magnet Communications, Inc., 2001 WL 1097965, *1 (S.D.N.Y. 2001); ImOn, Inc. v. ImaginOn, Inc., 90 F. Supp. 2d 345, 350 (S.D.N.Y. 2000). 11. Sunquest Information Systems, Inc. v. Park City Solutions, Inc., 130 F. Supp. 2d 680, 697 (W.D. Pa. 2000); Porsche Cars North America, Inc. v. Manny’s Porshop, Inc., 972 F. Supp. 1128, 1132-33, 43 U.S.P.Q.2d 1475, 1479 (N.D. Ill. 1997); Bulova Corp. v. Bulova Do Brasil Com. Rep. Imp. & Exp. Ltda., 144 F. Supp. 2d 1329, 1332, 59 U.S.P.Q.2d 1077, 1079 (S.D. Fla. 2001). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 60 of 135

650 Vol. 92 TMR (1) A delay of less than six months is usually considered acceptable,12 unless there is a strong showing of prejudice to the defendant;13 (2) Between six and twelve months, the decisions vary, although it is not uncommon to see preliminary injunction motions granted notwithstanding delays of eight to twelve months;14 and (3) In most cases involving a delay of a year or longer, preliminary injunctive relief is denied,15 except where intentional infringement or other objectionable conduct by the defendant overcomes the adverse effect of the movant’s extended delay.16 In cases within the Second Circuit, the following generalizations apply: (1) A delay of less than three months is usually acceptable;17 (2) Between three and six months, the decisions vary;18

12. See, e.g., Montblanc-Simplo GMBH v. Staples, Inc., 172 F. Supp. 2d 231 (D. Mass. 2001); Avent America, Inc. v. Playtex Products, Inc., 68 F. Supp. 2d 920 (N.D. Ill. 1999); Philip Morris, Inc. v. Allen Distributors, Inc., 48 F. Supp. 2d 844, 51 U.S.P.Q.2d 1013 (S.D. Ind. 1999); Anheuser-Busch, Inc. v. Customer Co., 947 F. Supp. 422, 39 U.S.P.Q.2d 1850 (N.D. Cal. 1996). 13. See, e.g., Packerware Corp. v. Corning Consumer Products Co., 895 F. Supp. 1438 (D. Kan. 1995). 14. Granting relief: Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co., 129 F. Supp. 2d 351, 57 U.S.P.Q.2d 1522 (D.N.J. 2000); Ty, Inc. v. Jones Group, Inc., 237 F.3d 891, 57 U.S.P.Q.2d 1617 (7th Cir. 2001); Ty, Inc. v. Softbelly’s, Inc., 2001 WL 125321 (N.D. Ill. 2001); Guess?, Inc. v. Tres Hermanos Inc., 993 F. Supp. 1277, 45 U.S.P.Q.2d 1179 (C.D. Cal. 1997); GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 53 U.S.P.Q.2d 1652 (9th Cir. 2000). Denying relief: Media3 Technologies, LLC v. Mail Abuse Prevention System, LLC, 2001 WL 92389 (D. Mass. 2001); McDonald’s Corp. v. Burger King Corp., 87 F. Supp. 2d 722, 54 U.S.P.Q.2d 1507 (E.D. Mich. 1999); Reins of Life, Inc. v. Vanity Fair Corp., 5 F. Supp. 2d 629, 45 U.S.P.Q.2d 1854 (N.D. Ind. 1997); RWT Corp. v. Wonderware Corp., 931 F. Supp. 583 (N.D. Ill. 1996); Golden Bear International, Inc. v. Bear U.S.A., Inc., 969 F. Supp. 742, 42 U.S.P.Q.2d 1283 (N.D. Ga. 1996). 15. Fritz v. Arthur D. Little, Inc., 944 F. Supp. 95, 41 U.S.P.Q.2d 1352 (D. Mass. 1996); Amicus Communications, L.P. v. Hewlett-Packard Co., 1999 WL 495921 (W.D. Tex. 1999); Hubbard Feeds, Inc. v. Animal Feed Supplement, Inc., 182 F.3d 598, 51 U.S.P.Q.2d 1373 (8th Cir. 1999); Fogerty v. Poor Boy Productions, Inc., 124 F.3d 211 (9th Cir. 1997) (unpublished); but see Times Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157, 54 U.S.P.Q.2d 1577 (3d Cir. 2000), cert. denied, 531 U.S. 1071, 121 S. Ct. 760 (2001); Ty, Inc. v. Publications Intern., Ltd., 81 F. Supp. 2d 899 (N.D. Ill. 2000). 16. Porsche Cars North America, Inc. v. Manny’s Porshop, Inc., 972 F. Supp. 1128, 43 U.S.P.Q.2d 1475 (N.D. Ill. 1997); Bulova Corp. v. Bulova Do Brasil Com. Rep. Imp. & Exp. Ltda., 144 F. Supp. 2d 1329, 59 U.S.P.Q.2d 1077 (S.D. Fla. 2001). 17. See, e.g., First Jewellery Co. of Canada, Inc. v. Internet Shopping Network LLC, 53 U.S.P.Q.2d 1838 (S.D.N.Y. 2000); Marshak v. Thomas, 1998 WL 476192 (E.D.N.Y. 1998); Ryan v. Vulpine Stamp Co., 107 F. Supp. 2d 369 (S.D.N.Y. 2000); Tactica International, Inc. v. Atlantic Horizon International, Inc., 154 F. Supp. 2d 586 (S.D.N.Y. 2001). 18. Granting relief: see, e.g., Lexington Management Corp. v. Lexington Capital Partners, 10 F. Supp. 2d 271 (S.D.N.Y. 1998); Firma Melodiya v. ZYX Music GmbH, 882 F. Supp. 1306 (S.D.N.Y. 1995); Yurman Design Inc. v. Diamonds and Time, 169 F. Supp. 2d 181 (S.D.N.Y. 2001). Denying relief: see, e.g., Magnet Communications, LLC v. Magnet Communications, Inc., 2001 WL 1097965 (S.D.N.Y. 2001); Greenpoint Financial Corp. v. Sperry & Hutchinson Co., 116 F. Supp. 2d 405 (S.D.N.Y. 2000); ImOn, Inc. v. ImaginOn, Inc., 90 F. Supp. 2d 345 (S.D.N.Y. 2000); Bear U.S.A., Inc. v. A.J. Sheepskin & Leather Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 61 of 135

Vol. 92 TMR 651 (3) For cases in which the delay is between six and twelve months, there is a significant risk that the motion will be denied;19 and (4) In light of the above, any plaintiff should carefully consider the high risks and attendant extra fees and costs of seeking preliminary injunctive relief from a New York federal court when the delay is greater than one year.20

III. THE SECOND CIRCUIT’S STRICTER STANDARD It is now quite risky to file a preliminary injunction motion in the Second Circuit if the plaintiff has delayed more than three months from the date it first had notice of the defendant’s infringement. Before 1995, there were a few cases in which preliminary injunctive relief was denied when the delay was four or five months,21 and one or two cases denying relief when the delay was three months or less.22 But it was also not unusual to have a motion for injunctive relief granted by a court in the Second Circuit when the plaintiff delayed in taking action for periods ranging from six to nine months.23 Since 1995, a number of cases in the Second Circuit have applied a very strict standard in evaluating the plaintiff’s delay,

Outerwear, Inc., 909 F. Supp. 896, 38 U.S.P.Q.2d 1640 (S.D.N.Y. 1995); Cheng v. Dispeker, 35 U.S.P.Q.2d 1493 (S.D.N.Y. 1995). 19. Since 1995, all of the cases in the Second Circuit involving delays ranging from six to twelve months have denied preliminary injunctive relief. See, e.g., Media Group, Inc. v. Ontel Products Corp., 2001 WL 169776 (D. Conn. 2001); Marcy Playground, Inc. v. Capitol Records, Inc., 6 F. Supp. 2d 277 (S.D.N.Y. 1998); Krueger International, Inc. v. Nightingale Inc., 915 F. Supp. 595, 40 U.S.P.Q.2d 1334 (S.D.N.Y. 1996); Swanson v. Georgetown Collection, Inc., 1995 WL 72717 (N.D.N.Y. 1995). Prior to 1995, however, there are cases in which preliminary injunctive relief was granted notwithstanding delays of six to nine months. See infra n. 23. 20. See, e.g., Ushodaya Enterprises, Ltd. v. V.R.S. Intern., Inc., 47 U.S.P.Q.2d 1223 (S.D.N.Y. 1998); Museum Boutique Intercontinental, Ltd. v. Picasso, 880 F. Supp. 153 (S.D.N.Y. 1995). 21. Nina Ricci S.A.R.L. v. Gemcraft Ltd., 612 F. Supp. 1520, 226 U.S.P.Q. 575 (S.D.N.Y. 1985); Programmed Tax System, Inc. Raytheon Co., 419 F. Supp. 1251, 193 U.S.P.Q. 435 (S.D.N.Y. 1976). 22. See Le Cordon Bleu S.a.r.l. v. BPC Publishing Ltd., 327 F. Supp. 267, 170 U.S.P.Q. 477 (S.D.N.Y. 1971) (denying relief when there was a 13 week delay). As previously noted in the first article on this subject, the decision in Citibank N.A. v. Citytrust, 756 F.2d 273, 275, 225 U.S.P.Q. 708, 710 (2d Cir. 1985), has often been cited as a case involving a ten week delay; in fact, Citibank had at least nine months notice of the defendant’s allegedly infringing activities. See Raskopf & Edelman, supra n. 1, 80 TMR at 48. 23. 6 to 9 months: Harlequin Enterprises Ltd. v. Gulf & Western Corp., 644 F.2d 946, 210 U.S.P.Q. 1 (2d Cir. 1981); Mastercard International, Inc. v. Sprint Communications Co., 30 U.S.P.Q.2d 1963 (S.D.N.Y. 1994); Kraft General Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123, 31 U.S.P.Q.2d 1094 (S.D.N.Y. 1993); MGM Pathe Communications Co. v. Pink Panther Patrol, 774 F. Supp. 869, 21 U.S.P.Q.2d 1208 (S.D.N.Y. 1991); C.B. Sports Inc. v. Gaechter-Haber & Associates, Inc., 210 U.S.P.Q. 597 (D. Vt. 1981). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 62 of 135

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denying relief when the delay was three to six months in length.24 The stringency of the New York approach is starkly demonstrated in Bear U.S.A., Inc. v. A.J. Sheepskin & Leather Outerwear, Inc.,25 a 1995 decision by Judge Lewis Kaplan of the Southern District of New York, involving the plaintiff’s efforts to protect its BEAR trademark for outerwear, jeans and boots from infringing use by the defendant on a variety of apparel products.26 The facts concerning the plaintiff’s alleged delay in this case are quite complicated: the defendant introduced various infringing products at different times and the parties vigorously disputed what the plaintiff knew about each of the defendant’s products and when it knew it. Ultimately, however, Judge Kaplan determined that (1) the plaintiff knew in June and July 1995 that defendant was the source of BEAR jeans and shirts that plaintiff had previously seen on the market; (2) plaintiff confirmed that defendant was the source of BEAR light jackets in August 1995; and (3) plaintiff became aware of defendant’s BEAR boots in September 1995.27 The plaintiff filed a complaint in late September 1995 and moved for preliminary injunctive relief in mid-October 1995.28 Based on this factual record, the court found that plaintiff had not unreasonably delayed with respect to defendant’s sale of boots (one month delay) and jackets (two month delay), and thus granted preliminary injunctive relief as to these products.29 However, the court held that because the plaintiff had been aware of defendant’s infringing jeans for nearly four months and the shirts for approximately three months, the “plaintiff’s lack of diligence militates against enjoining defendants from selling those items pending a prompt trial.”30 The court reached this conclusion notwithstanding a specific finding that the defendant’s pants and shirts were likely to cause confusion with plaintiff’s products,31 so there is no question that the plaintiff’s delay of three to four months as to these two products was the determining factor in the denial of relief. Three years later in Gidatex, S.R.L. v. Campaniello Imports, Ltd.,32 the court cited Judge Kaplan’s opinion in Bear U.S.A. and held that “courts typically decline to grant preliminary injunctions

24. See supra n. 18. 25. 909 F. Supp. 896 (S.D.N.Y. 1995). 26. Id. at 902. 27. Id. 28. Id. 29. Id. at 910. 30. Id. 31. Id. 32. 13 F. Supp. 2d 417 (S.D.N.Y. 1998). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 63 of 135

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in the face of unexplained delays of more than two months.”33 As an initial matter, it was not even necessary for the court to enunciate such a rigid standard because the plaintiff’s delay in Gidatex exceeded two years.34 Moreover, even assuming the Gidatex court was taking into account cases only within the Second Circuit,35 the observation that it is “typical” for courts to deny motions when the delay is more than two months is still not accurate because there were, at the time Gidatex was decided, a number of cases within the Second Circuit that had granted preliminary injunction motions when the plaintiff’s delay exceeded three months.36 In addition, while the Gidatex court cited Century Time Ltd. v. Interchron Ltd.37 as an example of a case in which relief was denied when the delay was “over two months,”38 Interchron involved a total delay of six months. The plaintiff in Interchron brought suit two months after learning of the defendant’s infringement but did not file its preliminary injunction motion until four months later.39 Similarly, the Gidatex court cited Comic Strip, Inc. v. Fox Television Stations, Inc.40 as having involved a three month delay,41 when in fact the plaintiff in that case delayed a total of seven months between its first notice of the infringement and the motion for a preliminary injunction.42 Since Bear and Gidatex were decided, a number of cases in New York’s federal district courts have denied relief when the plaintiff’s delay was only three to four months,43 a standard much

33. Id. at 419 (emphasis added). 34. Id. at 419-20. 35. Note, however, that the Gidatex opinion included a “But see” cite to a Ninth Circuit appellate decision, Gilder v. PGA Tour, Inc., 936 F.2d 417, 423 (9th Cir. 1991), in which a four month delay was upheld as reasonable. 36. Harlequin Enterprises Ltd. v. Gulf & Western Corp., 644 F.2d 946, 210 U.S.P.Q. 1 (2d Cir. 1981); Mastercard International, Inc. v. Sprint Communications Co., 30 U.S.P.Q.2d 1963 (S.D.N.Y. 1994); Dial-A-Mattress Operating Corp. v. Mattress Madness, Inc., 841 F. Supp. 1339, 33 U.S.P.Q.2d 1961 (E.D.N.Y. 1994); Kraft General Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123, 31 U.S.P.Q.2d 1094 (S.D.N.Y. 1993); MGM Pathe Communications Co. v. Pink Panther Patrol, 774 F. Supp. 869, 21 U.S.P.Q.2d 1208 (S.D.N.Y. 1991); Ventura Travelware, Inc. v. A to Z Luggage Co., 1 U.S.P.Q.2d 1552 (E.D.N.Y. 1986). 37. 729 F. Supp. 366, 14 U.S.P.Q.2d 1765 (S.D.N.Y. 1990). 38. 13 F. Supp. 2d at 419. 39. 729 F. Supp.at 367-68, 14 U.S.P.Q.2d at 1766-67. 40. 710 F. Supp. 976, 10 U.S.P.Q.2d 1608 (S.D.N.Y. 1989). 41. 13 F. Supp. 2d at 419. 42. 710 F. Supp. at 981, 10 U.S.P.Q.2d at 1613; 13 F. Supp. 2d at 419 (the three month period cited by the Gidatex court referred only to the time between the last settlement correspondence between the parties and the initiation of the legal action). 43. See, e.g., Magnet Communications, LLC v. Magnet Communications, Inc., 2001 WL 1097965 (S.D.N.Y. 2001); Greenpoint Financial Corp. v. Sperry & Hutchinson Co., 116 F. Supp. 2d 405 (S.D.N.Y. 2000); ImOn, Inc. v. ImaginOn, Inc., 90 F. Supp. 2d 345 (S.D.N.Y. 2000). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 64 of 135

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more demanding than that applied in other circuits.44 Remarkably, as well, given the much longer periods of delay that have been deemed acceptable in other circuits, the courts in New York frequently expect a plaintiff who has delayed only two to three months to have a good excuse as to why it did not move for relief sooner. For example, in Marshak v. Thomas,45 a case involving the defendant’s unauthorized performances using the name “The Drifters,” the court initially found that a “nearly two-month delay in seeking preliminary injunctive relief militates against the finding of irreparable harm,”46 but then held that the delay was excusable because the plaintiff had, during the two-month period, sent a demand letter to the defendant and had contacted the venues where the defendant was scheduled to perform in order to obtain relief there.47 Likewise, in Ryan v. Volpone Stamp Co.,48 a case involving a dispute over a license granted by pitcher Nolan Ryan to a merchandising company, the plaintiff delayed a mere ten weeks in moving for a preliminary injunction.49 Given the brevity of the delay, the court could have merely rejected out of hand the defendant’s argument that Ryan’s claim of irreparable harm was undermined by the ten-week delay in seeking relief. Instead, the court unnecessarily justified its decision by reciting that Ryan had sent two cease and desist letters during this period and, at the defendant’s request, postponed filing the motion only after the defendant signed a stipulation providing that the deferral of the motion would not be cited by the defendant against Ryan.50

IV. PREJUDICIAL RELIANCE AS A FACTOR IN THE DELAY ANALYSIS For many years, the various federal circuits have differed as to whether prejudicial reliance by the defendant is an element of the delay analysis.51 In a 1985 decision, Majorica, S.A. v. R.H. Macy &

44. See supra n. 12. 45. 1998 WL 476192 (E.D.N.Y. 1998). 46. Id. at *12. 47. Id. 48. 107 F. Supp. 2d 369 (S.D.N.Y. 2000). 49. Id. at 404. 50. Id. at 404-05; see also General Cigar Co. v. G.D.M. Inc., 988 F. Supp. 647, 662-63 (S.D.N.Y. 1997) (noting plaintiff’s exchange of correspondence with the defendant and receipt of additional information about the defendant’s activities); Les Ballets Trockadero de Monte Carlo, Inc. v. Trevino, 945 F. Supp. 563, 574 (S.D.N.Y. 1996) (plaintiff sent a cease and desist letter and awaited the return of its dance troupe from Japan before taking any action against the defendants that would compromise the Japan engagement). 51. See Raskopf & Edelman, supra n. 1, 80 TMR at 40-42. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 65 of 135

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Co.,52 the Second Circuit held that lack of diligence in moving for preliminary relief, even absent any prejudicial reliance by the defendant, may “preclude the granting of preliminary injunctive relief, because it goes primarily to the issue of irreparable harm rather than occasioned prejudice.”53 In contrast, the Seventh and the Third Circuits have considered the prejudicial reliance by the defendant to be an essential part of the delay analysis.54 The lack of uniformity among the various circuit courts as to the relevance of the defendant’s prejudicial reliance continues to be shown in cases reported during the past seven years. Indeed, a 1997 district court decision in the Seventh Circuit, Philip Morris, Inc. v. Allen Distributors, Inc.,55 explicitly acknowledged that it was not following the Second Circuit’s position, holding instead that a plaintiff’s delay would undercut the showing of irreparable injury only if the delay “lulled [the defendant] into a false sense of security or ... [the defendant] acted in reliance on the plaintiff’s delay.”56 Cases in the Third57 and Tenth58 Circuits as well evaluate prejudice to the defendant as part of the delay analysis. Cases in the Second Circuit continue to hold that in assessing a plaintiff’s delay in filing a preliminary injunction motion, prejudice to the defendant is not a required element of the analysis.59

V. EXCUSABLE AND INEXCUSABLE DELAY As set forth in the initial article on preliminary injunction and delay in 1990, the reasons why a plaintiff has waited to seek relief may be as important as the length of the delay, and if the plaintiff has a good explanation for waiting, the delay will be deemed excusable. 60

52. 762 F.2d 7, 8, 226 U.S.P.Q. 624, 624 (2d Cir. 1985). 53. Id. 54. Raskopf & Edelman, supra n. 1, 80 TMR at 41 n. 19. 55. 48 F. Supp. 2d 844, 51 U.S.P.Q.2d 1013 (S.D. Ind. 1997). 56. Id. at 854, 51 U.S.P.Q.2d at 1020 (quoting Vaughan Manufacturing Co. v. Brikam International, Inc., 814 F.2d 346, 351 (7th Cir. 1987)); see also Ty, Inc. v. Jones Group Inc., 237 F.2d 891, 903, 57 U.S.P.Q.2d 1617 (7th Cir. 2001). 57. See Sunquest Information Systems, Inc. v. Park City Solutions, Inc., 130 F. Supp. 2d 680, 697 (W.D. Pa. 2000). 58. See Big O Tires, Inc. v. Bigfoot 4x4, Inc., 167 F. Supp. 2d 1216, 1228 (D. Colo. 2001). 59. See, e.g., Del-Rain Corp. v. Pelonis USA Ltd., 1995 WL 116043, *6 (S.D.N.Y. 1995); Swanson v. Georgetown Collection, Inc., 1995 WL 72717, *9 (S.D.N.Y. 1995); cf. Gidatex, S.R.L. v. Campaniello Imports, Ltd., 13 F. Supp. 2d 417, 419 n. 1 (S.D.N.Y. 1998) (While a finding of prejudice is not required before a request for a preliminary injunction can be denied on grounds of inexcusable delay, “the existence of prejudice to the non-movant caused by the movant’s delay is also a relevant factor.”). 60. Raskopf & Edelman, supra n. 1, 80 TMR at 50-60. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 66 of 135

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A. Settlement Negotiations Consistently over the past twelve years, courts have accepted the explanation that a plaintiff delayed because it was attempting to negotiate a settlement of the matter.61 The court recently observed in Big O Tires, Inc. v. Bigfoot 4x4, Inc.,62 “As a matter of public policy, the law favors and encourages settlements. The settlement of actions should be fostered to avoid protracted, wasteful and expensive litigation. Particularly in complex cases, the litigants should be encouraged to determine their respective rights between themselves.”63 Accordingly, the court held that delays resulting from good faith attempts to negotiate a settlement would not undercut the showing of irreparable harm. Consistent with this judicial philosophy, many cases throughout the different judicial circuits have held that the good faith conduct of settlement negotiations will excuse a delay in seeking preliminary injunctive relief,64 even when the negotiations are protracted in length or conducted at a leisurely pace. Once settlement talks break down, however, the plaintiff is expected to seek relief promptly. The “leisurely” approach to settlement negotiations is illustrated by the plaintiff’s conduct in Times Mirror Magazines, Inc. v. Las Vegas Sports News, LLC,65 a case in which the Third Circuit held that the plaintiff’s fifteen-month delay “attributable to negotiations between the parties” was acceptable and did not rebut the plaintiff’s showing of irreparable injury.66 While the appellate decision in this case is short of the details of exactly what the plaintiff was doing during these fifteen months, according to the lower court opinion in Times Mirror,67 the plaintiff learned of the defendant’s infringement in August 1997, sent a cease and desist letter one month later, attempted to negotiate a settlement for the next thirteen months until October 1998, and then continued to

61. Edelman, supra n. 1, 85 TMR at 6-7. 62. 167 F. Supp. 2d 1216 (D. Colo. 2001). 63. Id. at 1229 (citations omitted). 64. Lexington Management Corp. v. Lexington Capital Partners, 10 F. Supp. 2d 271, 277 n. 3 (S.D.N.Y. 1998); Avent America, Inc. v. Playtex Products, Inc., 68 F. Supp. 2d 920, 933 (N.D. Ill. 1999); Marshak v. Thomas, 1998 WL 476192, *12 (E.D.N.Y. 1998); eBay, Inc. v. Bidder’s Edge, Inc., 100 F. Supp. 2d 1058, 56 U.S.P.Q.2d 1856 (N.D. Cal. 2000); Guess?, Inc. v. Tres Hermanos, Inc., 993 F. Supp. 1277, 45 U.S.P.Q.2d 1179 (C.D. Cal. 1997); cf. Mobilificio San Giacomo S.p.A. v. Stoffi, 1997 WL 699299 (D. Del. 1997) (finding that the plaintiff’s delay was in good faith because it allowed defendants time to discontinue use of the “San Giacomo” mark.). 65. 212 F.3d 157, 54 U.S.P.Q.2d 1577 (3d Cir. 2000). 66. Id. at 169, 54 U.S.P.Q.2d at 1584. 67. 50 U.S.P.Q.2d 1454 (E.D. Pa. 1999). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 67 of 135

Vol. 92 TMR 657 investigate the matter for another several weeks before filing suit.68 Similarly, the Illinois district court in Ty, Inc. v. Publications International, Ltd.69 held that the conduct of settlement negotiations over a fourteen-month period “does not impinge on the showing of irreparable injury.”70 Lesser, but still extended periods of settlement negotiations of nine months and eight months, respectively, were permitted by the California district court in Guess?, Inc. v. Tres Hermanos, Inc.71 and by the Massachusetts district court in Boustany v. Boston Dental Group, Inc.72 As noted, once it becomes apparent that a settlement is not achievable or the talks break down, a plaintiff may be faulted if it delays further in filing a preliminary injunction motion. For example, in New Dana Perfumes Corp. v. New Tinkerbell, Inc.,73 the court criticized the plaintiff, among other reasons, for letting five months lapse after the end of “active negotiations” before moving for relief.74 Lesser delays of two months from the cessation of settlement negotiations were cited by the courts in Marcy Playground, Inc. v. Capital Records, Inc.75 and Swanson v. Georgetown Collection, Inc.76 as a ground for denying preliminary injunctive relief.

B. Investigation of the Infringement As the Second Circuit has held, “a delay caused by the plaintiff’s good faith efforts to investigate an infringement does not rebut the presumption of irreparable harm.”77 Of course, there must be some material unknown facts that need to be investigated.78 If such a factual showing can be made, a court will

68. Id. at 1456-57. 69. 81 F. Supp. 2d 899 (N.D. Ill. 2000). 70. Id. at 903-04. 71. 993 F. Supp. 1277, 1286, 45 U.S.P.Q.2d 1179, 1187 (C.D. Cal. 1997). 72. 42 F. Supp. 2d 100, 112 (D. Mass. 1999). 73. 131 F. Supp. 2d 616 (M.D. Pa. 2001). 74. Id. at 625. 75. 6 F. Supp. 2d 277, 281 (S.D.N.Y. 1998). 76. 1995 WL 27717 at *8 (N.D.N.Y. 1995). 77. Tom Doherty Associates, Inc. v. Saban Entertainment, Inc., 60 F.3d 27, 39, 35 U.S.P.Q.2d 1537, 1546 (2d Cir. 1995); see also Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co., 129 F. Supp. 2d 351, 368, 57 U.S.P.Q.2d 1522, 1535 (D.N.J. 2000); Philip Morris, Inc. v. Allen Distributors, Inc., 48 F. Supp. 2d 844, 854, 51 U.S.P.Q.2d 1013, 1023 (S.D. Ind. 1999). 78. See, e.g., Tough Traveler, Ltd. v. Outbound Products, 60 F.3d 964, 968, 35 U.S.P.Q.2d 1617, 1619 (2d Cir. 1995) (court noted that the evidence did not show that plaintiff’s delay was attributable to the pursuit of further investigation); Cheng v. Dispeker, Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 68 of 135

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commend a plaintiff for acting “as a responsible litigant should”79 by investigating the necessary facts and hiring a lawyer to advise on the viability of potential claims.80 Similarly, time taken to develop survey evidence in support of a motion for a preliminary injunction has also been recognized as a legitimate reason for a delay in seeking relief.81

C. Assessing the Severity of the Infringement The district court in Sunquest Information Systems, Inc. v. Park City Solutions, Inc.82 declined to “punish” a plaintiff for “failing to sue at a time when it had no idea about the scope or severity” of an alleged infringement.83 Likewise, the district court in Novartis Consumer Health84 did not penalize the plaintiff for waiting until the infringement had a “measurable impact” on the plaintiff’s market.85 Waiting to assess the commercial impact of the infringement can be risky, however. As the Second Circuit held in Tom Doherty Associates,86 a delay in seeking preliminary relief will rebut the presumption of irreparable injury when the “fair inference” can be drawn that the trademark owner initially “concluded that there was no infringement but later brought an action because of the strength of the commercial competition.”87

D. Change in the Scope or Nature of the Infringement A material change in the scope or nature of the defendant’s infringement can excuse a plaintiff’s decision not to move for a preliminary injunction when it first learned of the defendant’s use

35 U.S.P.Q.2d 1493, 1497 (S.D.N.Y. 1995) (plaintiffs “were aware of the extent of the infringement and did not need to investigate further before filing suit”). 79. Sunquest Information Systems, Inc. v. Park City Solutions, Inc., 130 F. Supp. 2d 680, 698 (W.D. Pa. 2000). 80. Id. 81. Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals, Inc. 129 F. Supp. 2d 351, 368, 57 U.S.P.Q.2d 1522, 1534 (D.N.J. 2000). 82. 130 F. Supp. 2d 680 (W.D. Pa. 2000). 83. Id. at 698 (citing Playboy Enterprises v. Chuckleberry Publishing, 486 F. Supp. 414, 434-35, 206 U.S.P.Q. 70, 87-88 (S.D.N.Y. 1980) (“[P]arties should not be encouraged to sue before a practical need to do so has been clearly demonstrated.”)). 84. 129 F. Supp. 2d 351, 57 U.S.P.Q.2d 1522 (D.N.J. 2000). 85. Id. at 368, 57 U.S.P.Q.2d at 1534. 86. 60 F.3d 27, 35 U.S.P.Q.2d 1537 (2d Cir. 1995); see also Krueger International, Inc. v. Nightingale Inc., 915 F. Supp. 595, 612-13, 40 U.S.P.Q.2d 1334 (S.D.N.Y. 1996) (the court criticized the plaintiff’s “nonchalance” in seeking relief and noted that the evidence suggested that “plaintiff did not begin to think about a trade dress infringement claim until it ... lost [a] contract [to the defendant and the defendant’s product began] appearing at trade shows—ie until [it] decided to take the competitive threat seriously.”) 87. 60 F.3d at 39, 35 U.S.P.Q.2d at 1546. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 69 of 135

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of an infringing mark.88 In the past seven years, however, a number of cases have rejected this argument because the plaintiff failed to prove that the defendant’s alleged infringement had in fact materially changed.89 In Amicus Communications, L.P. v. Hewlett-Packard Co.,90 the plaintiff sought to enjoin the defendant’s use of the mark PAVILION in connection with a line of computers that featured software to facilitate Internet access. In response to the defendant’s argument that plaintiff had known of its computers for more than three years before seeking a preliminary injunction, the plaintiff contended that the defendant’s product had initially been promoted as a multimedia/game computer and that the defendant had only recently begun expanding its market by promoting the Internet access features of the product.91 The court found that while the defendant’s product had in fact been marketed initially as a multimedia computer, it was unrebutted that the product could always access the Internet, and thus the delay was not excusable.92

E. The Preliminary Injunction Motion as a Tactical Maneuver Timing a preliminary injunction motion to place one’s adversary at the maximum competitive disadvantage continues to be disfavored by the courts,93 as illustrated by the facts in The Media Group v. Ontel Products Corp.94 The plaintiff in this case learned of the defendant’s alleged infringement in May or June of 2000, filed the lawsuit in October 2000, and then waited until January 10, 2001, just days before the defendant intended to market its products at a major trade show, to file the motion for a

88. Edelman, supra n. 1, 85 TMR at 6-7. 89. See, e.g., New Dana Perfumes Corp. v. New Tinkerbell, Inc., 131 F. Supp. 2d 616, 630 (M.D. Pa. 2001) (“the evidence of this case does not support a finding of progressive encroachment in the context of plaintiff’s broad claims”); Del-Rain Corp. v. Pelonis USA Ltd., 1995 WL 116043 at *6 (plaintiff’s claim that the defendant “dramatically changed its packaging and advertising ... finds no support in the record”); Museum Boutique Intercontinental Ltd. v. Picasso, 880 F. Supp. 153, 165 (S.D.N.Y. 1995) (the previous objectionable uses of the Picasso trademarks and images was found “not qualitatively different” from the more recent uses that gave rise to the motion for a preliminary injunction). 90. 1999 WL 495921 (W.D. Tex. 1999). 91. Id. at *18. 92. Id. The plaintiff in Amicus also argued that its delay was excusable because it had sent the defendant a protest letter early on and had commenced opposition proceedings against the defendant’s mark in the United States Patent and Trademark Office. The court rejected this argument, holding that “opposing a claim for registration is not the same as filing a federal lawsuit to enjoin use.” Id. 93. See Edelman, supra n. 1, 85 TMR at 4-6. 94. 2001 WL 169776 (S.D.N.Y. 2001). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 70 of 135

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preliminary injunction.95 The court denied the motion and criticized what “appears to be tactical maneuvering by [plaintiff] to sit back and wait for what they believe to be timing most injurious to the procedural fairness for their adversaries.”96

VI. PLAINTIFF’S LITIGATION CONDUCT AS A FACTOR IN THE DENIAL OF RELIEF In a number of cases reported since 1995, the courts have denied motions for preliminary injunctive relief based on actions taken (or not taken) by the plaintiff once the suit was brought. The general lesson to be learned by these cases is that if a party asks the court for relief on an expedited basis, it must conduct itself in the litigation as if the need for judicial action is truly urgent. For example, in Federal Express Corp. v. Federal Espresso, Inc.,97 the plaintiff moved for a preliminary injunction against the defendant’s use of the name FEDERAL ESPRESSO for a coffee shop. The district court denied the motion and the plaintiff appealed.98 The Second Circuit affirmed the denial of preliminary injunctive relief, relying, in part, on the plaintiff’s post-motion conduct. As the court stated, “[A]lthough there apparently was no delay by Federal Express in bringing the present action, this Court may take into account whether or not a plaintiff has been assiduous in pursuing the litigation once started. At the oral argument of this appeal, which took place nearly a year after the district court denied the preliminary injunction motion, Federal Express informed us that nothing had been done in the district court to speed the proceedings toward an ultimate resolution of the merits. This seeming lack of urgency on the part of a plaintiff who has been denied interim relief tends to confirm the view that irreparable harm was not imminent.”99 Post-motion conduct was cited by the district court in Origins Natural Resources, Inc. v. Kotler.100 In this case, the plaintiff initially filed its complaint and moved for preliminary injunctive

95. Id. at *3 (quoting Century Time Ltd. v. Interchron Ltd., 729 F. Supp. 366, 368, 14 U.S.P.Q.2d 1765, 1767 (S.D.N.Y. 1990)). 96. 2001 WL 169776 at *1. 97. 201 F.3d 168, 53 U.S.P.Q.2d 1345 (2d Cir. 2000). 98. 201 F.3d at 170, 53 U.S.P.Q.2d at 1347. 99. Id. at 178, 53 U.S.P.Q.2d at 1353; see also Fabrication Enterprises, Inc. v. Hygenic Corp., 64 F.3d 53, 62, 35 U.S.P.Q.2d 1753, 1759 (2d Cir. 1995) (the plaintiff appealed both a grant of summary judgment to the defendant and the denial of its motion for a preliminary injunction; in remanding the matter back to the district court for reconsideration of the plaintiff’s motion for preliminary injunctive relief, the Second Circuit stated that the district court was entitled to consider whether the movant’s “failure to take an interlocutory appeal or to seek expedited handling of, or a stay pending, this appeal has a bearing on any contention that a preliminary injunction should be issued at this late date.”). 100. 2001 WL 492429 (S.D.N.Y. 2001). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 71 of 135

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relief in federal court in New Mexico in October 2000.101 The defendant then moved to dismiss for lack of personal jurisdiction, and the New Mexico court stayed the motion for a preliminary injunction, set a briefing schedule on the jurisdictional motion and ordered the parties to conduct discovery.102 In March 2001, the New Mexico court granted the defendant’s motion to dismiss and plaintiff immediately re-filed its complaint and preliminary injunction motion in federal court in New York.103 The New York district court denied the re-filed motion, holding that “plaintiff’s delay in filing its complaint, particularly combined with the fact that it was content to wait for the New Mexico court’s ruling on defendant’s motion, hardly supports a claim that its harm is imminent and irreparable.”104 Indeed, as the court observed, “Although plaintiff may not have been able to speed up the [New Mexico] court’s timetable, plaintiff was free to re-file its action in the Southern District of New York, thereby ensuring personal jurisdiction over the defendant and prompt attention to its complaints.”105 In another case, Magnet Communications, LLC v. Magnet Communications, Inc.,106 the movant for preliminary injunctive relief did not even initiate the litigation after it learned of the infringing mark but rather waited for the other party to bring an action for declaratory relief.107 The movant then delayed in filing the motion until twelve weeks after the declaratory judgment suit was brought and then, due to apparent discovery and scheduling difficulties, did not appear before the court for oral argument until seven months later.108 Based on this apparent lack of urgency after the declaratory action was filed, the court held that the “cumulative time delay certainly renders inoperative any presumption of irreparable injury.”109

101. Id. at *2. 102. Id. 103. Id. 104. Id. 105. Id. at n. 3. 106. 2001 WL 1097965 (S.D.N.Y. 2001). 107. Id. at *1. 108. Id.; see also The Media Group, Inc. v. Ontel Products Corp., 2001 WL 169776 at *3 (D. Conn. 2001) (among a variety of reasons for holding that the plaintiff inexcusably delayed in moving for preliminary relief, the court noted that the plaintiff initially contended that it needed the court to rule before a trade show took place, but then was willing to delay the hearing on the motion until after the trade show was over). 109. 2001 WL 1097965 at *1; see also Swanson v. Georgetown Collection, Inc., 1995 WL 72717, at *9 (N.D.N.Y. 1995) (the court held that the fact that plaintiff had no plausible excuse for filing the preliminary injunction motion until 2 1/2 months after filing the complaint undercut the showing of irreparable harm). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 72 of 135

662 Vol. 92 TMR An interesting reason for denying relief on the ground of delay was offered by the district court in McDonald’s Corp. v. Burger King Corp.,110 a case involving McDonald’s effort to enjoin Burger King’s use of the designation “Big Kid’s Meal.”111 At the time McDonald’s filed its motion for a preliminary injunction on July 8, 1999, it had an application pending in the United States Patent and Trademark Office (“USPTO”) to register “Big Kid’s Meal.” An office action rejecting the mark had been issued by the USPTO in March 1999. In support of its holding that McDonald’s had inexcusably delayed in asserting its rights, the court cited the fact that McDonald’s had waited until the end of the six-month window for responding to the office action (and one week before the preliminary injunction hearing in the case) to file its response in the USPTO. Thus, as in the cases discussed above, the court in McDonald’s focused not only on the length of time between the notice of infringement and the motion for preliminary relief, it also examined other actions by the movant after the suit was filed to assess whether expedited relief was truly warranted. These cases show that not only does a plaintiff have to act promptly in filing a preliminary injunction motion after it learns of an infringement, it must conduct itself thereafter in a fashion consistent with the request for expedited relief. If a plaintiff acts as if the matter is not particularly urgent, the court may tend to agree.

VII. CONCLUSION A plaintiff seeking preliminary injunctive relief must move promptly after becoming aware of acts of alleged infringement or unfair competition, or risk a finding that it has not established a threat of irreparable harm. No uniform standard exists, however, as to whether the plaintiff has moved promptly enough. Certainly in the Second Circuit, and particularly within the New York federal judicial districts, “promptly” means three months or less. Outside of the Second Circuit, delays up to six months will likely be considered acceptable, and even longer delays of six to twelve months may not necessarily disqualify the plaintiff from obtaining expedited relief. A court is more likely to excuse a plaintiff’s delay if it is attributable to settlement negotiations conducted actively and diligently, or if the plaintiff has a legitimate need to investigate the defendant’s infringement or develop evidence in support of the motion for a preliminary injunction. Finally, even after a plaintiff has commenced suit or filed a motion for preliminary relief, it must

110. 87 F. Supp. 2d 722, 54 U.S.P.Q.2d 1507 (E.D. Mich. 1999). 111. 87 F. Supp. 2d at 724, 54 U.S.P.Q.2d at 1508. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 73 of 135

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UPDATED APPENDIX 2002 FIRST CIRCUIT

HOLDING DELAY ON CASE LENGTH MOTION Montblanc-Simplo GMBH v. 2 months granted Staples, Inc., 172 F. Supp. 2d 231 (D. Mass. 2001) Media3 Technologies, LLC v. Mail 6 months denied Abuse Prevention System, LLC, 2001 WL 92389 (D. Mass. 2001) Boustany v. Boston Dental Group, 8 months granted Inc., 42 F. Supp. 2d 100 (D. Mass. 1999) Fritz v. Arthur D. Little, Inc., 944 At least 2 denied F. Supp. 95, 41 U.S.P.Q.2d 1352 (D. years Mass. 1996) constructive notice Supercuts, Inc. v. Super Clips, 18 10 months: granted U.S.P.Q.2d 1378 (D. Mass. 1990) suit brought after 1 month; motion filed 9 months later Calamari Fisheries, Inc. v. The 21 months granted Village Catch, Inc., 698 F. Supp. after first use; 994, 8 U.S.P.Q.2d 1953 (D. Mass. 1 month after 1988) expansion caused increased level of confusion Salt Water Sportsman, Inc. v. less than 6 granted B.A.S.S. Inc., 685 F. Supp. 12, 4 months U.S.P.Q.2d 1407 (D. Mass. 1987), as amended 5 U.S.P.Q.2d 1620 (D. Mass. 1987) Jordan K. Rand, Ltd. v. Lazoff 3 months granted Bros., Inc., 537 F. Supp. 587, 217 U.S.P.Q. 795 (D.P.R. 1982) SECOND CIRCUIT Tough Traveler, Ltd. v. Outbound 13 months vacating Products, 60 F.3d 964, 35 (complaint district U.S.P.Q.2d 1617 (2d Cir. 1995) filed after 9 court’s grant months) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 75 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Tom Doherty Associates, Inc. v. 4 months affirming Saban Entertainment, Inc., 60 F.3d district 27, 35 U.S.P.Q.2d 1537 (2d Cir. court’s grant 1995) King v. Innovation Books, 976 F.2d 11 months granted 824, 24 U.S.P.Q.2d 1435 (2d Cir. from 1992) knowledge of intended use, including 3 months from knowledge of actual use Majorica, S.A. v. R.H. Macy & Co., several years denied 762 F.2d 7, 226 U.S.P.Q. 624 (2d Cir. 1985) Citibank, N.A. v. Citytrust, 756 10 weeks after denied F.2d 273, 225 U.S.P.Q. 708 (2d Cir. direct notice of 1985) actual use; 9 months after notice of intended use in press; years after notice of use in another state Harlequin Enterprises Ltd. v. Gulf 6 months after granted & Western Corp., 644 F.2d 946, 210 notice of U.S.P.Q. 1 (2d Cir. 1981) intended use; 3 months after notice of actual use My-T-Fine Corp. v. Samuels, 69 2 years granted F.2d 76, 21 U.S.P.Q. 94 (2d Cir. 1934) Yurman Design Inc. v. Diamonds 4 months granted and Time, 169 F. Supp. 2d 181 (S.D.N.Y. 2001) Tactica Intern., Inc. v. Atlantic 1 month granted Horizon Intern., Inc., 154 F. Supp. 2d 586 (S.D.N.Y. 2001) Magnet Communications, LLC v. 3 months denied Magnet Communications, Inc., 2001 WL 1097965 (S.D.N.Y. 2001) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 76 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Media Group, Inc. v. Ontel Products 7-8 months denied Corp., 2001 WL 169776 (D. Conn. (complaint 2001) filed after 4-5 months) Origins Natural Resources, Inc. v. 4-6 months denied Kotler, 2001 WL 492429 (S.D.N.Y. 2001) Greenpoint Financial Corp. v. 4 months denied Sperry & Hutchinson Co., 116 F. Supp. 2d 405 (S.D.N.Y. 2000) Ryan v. Vulpine Stamp Co., 107 F. 2 months granted Supp. 2d 369 (S.D.N.Y. 2000) ImOn, Inc. v. ImaginOn, Inc., 90 F. 4 months denied Supp. 2d 345 (S.D.N.Y. 2000) First Jewellery Co. of Canada, Inc. 2 months granted v. Internet Shopping Network LLC, 53 U.S.P.Q.2d 1838 (S.D.N.Y. 2000) Gidatex, S.r.L. v. Campaniello more than 2 denied Imports, Ltd., 13 F. Supp. 2d 417, years (5-8 47 U.S.P.Q.2d 1701 (S.D.N.Y. 1998) months after termination of related litigation between parties) Lexington Management Corp. v. 5-6 months granted Lexington Capital Partners, 10 F. Supp. 2d 271 (S.D.N.Y. 1998)

Marcy Playground, Inc. v. Capitol 9 months denied Records, Inc., 6 F. Supp. 2d 277 (S.D.N.Y. 1998) Marshak v. Thomas, 1998 WL 2 months granted 476192 (E.D.N.Y. 1998) Ushodaya Enterprises, Ltd. v. almost 3 years denied V.R.S. Intern., Inc., 47 U.S.P.Q.2d at minimum 1223 (S.D.N.Y. 1998) General Cigar Co., Inc. v. G.D.M. 3 months granted Inc., 988 F. Supp. 647, 45 U.S.P.Q.2d 1481 (S.D.N.Y. 1997) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 77 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Les Ballets Trockadero de Monte 2 months granted Carlo, Inc. v. Trevino, 945 F. Supp. 563, 41 U.S.P.Q.2d 1109 (S.D.N.Y. 1996) Krueger International, Inc. v. 6-9 months denied Nightingale Inc., 915 F. Supp. 595 (S.D.N.Y. 1996) Bear U.S.A., Inc. v. A.J. Sheepskin 1-2 months for granted as to & Leather Outerwear, Inc., 909 F. some 1-2 month Supp. 896, 38 U.S.P.Q.2d 1640 infringing delay; denied (S.D.N.Y. 1995) products; 3-4 as to 3-4 months for month delay other infringing products Trustco Bank, Nat. Ass’n v. Glens 3 months denied (but Falls National Bank and Trust Co., delay found N.A., 903 F. Supp. 335 (N.D.N.Y. excusable) 1995) Firma Melodiya v. ZYX Music 3-4 months granted GmbH, 882 F. Supp. 1306 (S.D.N.Y. 1995) Museum Boutique Intercontinental, 14 years (15 denied Ltd. v. Picasso, 880 F. Supp. 153 months from (S.D.N.Y. 1995) alleged change in scope of infringement while standstill agreement in effect) Cheng v. Dispeker, 35 U.S.P.Q.2d 5 months denied 1493 (S.D.N.Y. 1995) Del-Rain Corp. v. Pelonis USA Ltd., 23 months denied 1995 WL 116043 (W.D.N.Y. 1995) Swanson v. Georgetown Collection, 8 months denied Inc., 1995 WL 72717 (N.D.N.Y. (complaint 1995) filed after 5 months) Mastercard International, Inc. v. 6-9 months granted Sprint Communications Co., 30 from (dicta) U.S.P.Q.2d 1963 (S.D.N.Y. 1994) knowledge of intended use Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 78 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Tommy Hilfiger U.S.A., Inc. v. 2-3 years from denied Siegfried & Parzifal, Inc., 31 notice of U.S.P.Q.2d 1222 (S.D.N.Y. 1994) initial elements of infringement Dial-A-Mattress Operating Corp. v. 3-4 years granted Mattress Madness, Inc., 841 F. Supp. 1339 (E.D.N.Y. 1994) Jordache Enterprises, Inc. v. Levi 4 years denied Strauss & Co., 841 F. Supp. 506 (S.D.N.Y. 1993) Kraft General Foods, Inc. v. Allied 7 months from granted Old English, Inc., 831 F. Supp. 123, publication of 31 U.S.P.Q.2d 1094 (S.D.N.Y. 1993) defendant’s mark Chase Manhattan Corp. v. 11 months: denied Northwestern Mutual Life, 1993 suit brought WL 60602 (S.D.N.Y. 1993) after 5 months; motion filed 6 months later Bausch & Lomb, Inc. v. Nevitt Sales 1 month after granted Corp., 810 F. Supp. 466, 26 increased U.S.P.Q.2d 1275 (W.D.N.Y. 1993) scope of infringement H.G.I. Marketing Services, Inc. v. 2-4 years denied Pepsico, Inc., 1992 WL 349675 (N.D.N.Y. 1992) American Direct Marketing v. Azad 3-6 months denied (but International, Inc., 783 F. Supp. 84, delay found 22 U.S.P.Q.2d 1108 (E.D.N.Y. 1992) excusable) MGM Pathe Communications Co. v. 6 months granted Pink Panther Patrol, 774 F. Supp. 869, 21 U.S.P.Q.2d 1208 (S.D.N.Y. 1991) National Football League Players 9 months denied Association v. National Football League Properties, Inc., 1991 WL 79325 (S.D.N.Y. 1991) (licensing dispute) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 79 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Century Time Ltd. v. Interchron, 6 months: suit denied 729 F. Supp. 366, 14 U.S.P.Q.2d brought after 1765 (S.D.N.Y. 1990) 2 months; motion filed 4 months later Lanvin, Inc. v. Colonia, 739 F. 7 months denied Supp. 182 (S.D.N.Y. 1990) (licensing dispute) Mathematica Policy Research, Inc. 10 months denied v. Addison-Wesley Publishing Co. Inc., 11 U.S.P.Q.2d 1391 (S.D.N.Y. 1989) Comic Strip, Inc. v. Fox Television 7 months denied Stations, Inc., 710 F. Supp. 976, 10 U.S.P.Q.2d 1608 (S.D.N.Y. 1989) Kusan, Inc. v. Alpha Distributors, 17-18 months denied Inc., 693 F. Supp. 1372, 7 U.S.P.Q.2d 1211 (D. Conn. 1988) Artemide Spa v. Grandlite Design & 7 months granted in Mfg. Co., Inc., 672 F. Supp. 698, 4 part U.S.P.Q.2d 1915 (S.D.N.Y. 1987) Great Lakes Mink Assn. v. Furrari, 20 months denied Inc., No. 86-6038 (S.D.N.Y. 12/21/87), 1987 U.S. Dist. LEXIS 11800 Ventura Travelware, Inc. v. A to Z approximately granted Luggage Co., 1 U.S.P.Q.2d 1552 18 months (E.D.N.Y. 1986) Allen Organ Co. v. CBS, Inc., 230 7-8 months denied U.S.P.Q. 479 (S.D.N.Y. 1986) Gear, Inc. v. L.A. Gear California, 17-18 months denied Inc., 637 F. Supp. 1323, 227 U.S.P.Q. 980 (S.D.N.Y. 1986) Nina Ricci S.A.R.L. v. Gemcraft 4 months from denied Ltd., 612 F. Supp. 1520, 226 notice, U.S.P.Q. 575 (S.D.N.Y. 1985) including 6 weeks from breakdown of settlement talks Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 80 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Calvin Klein Co. v. Farah Mfg. Co., 7 years of use; denied Inc., 229 U.S.P.Q. 795 (S.D.N.Y. plaintiff’s 1985) claim of less than 6 months’ notice rejected I. Peiser Floors, Inc. v. I.J. Peiser’s 2 years granted Sons, Inc., No. 81-3359 (S.D.N.Y. 10/4/82), 1982 U.S. Dist. LEXIS 15465 Exxon Corp. v. Xoil Energy approximately denied Resources, Inc., 552 F. Supp. 1008, 12 months 216 U.S.P.Q. 634 (S.D.N.Y. 1981) Nike, Inc. v. Rubber Mfrs. Assn., several granted 509 F. Supp. 919, 212 U.S.P.Q. 225 months (S.D.N.Y. 1981) C.B. Sports, Inc. v. Gaechter-Haber 6 months granted & Associates, Inc., 210 U.S.P.Q. 597 (D. Vt. 1981) Le Sportsac, Inc. v. Dockside 10 months denied Research, Inc., 478 F. Supp. 602, 205 U.S.P.Q. 1055 (S.D.N.Y. 1979) Mego Corp. v. Mattel, Inc., 203 7 months after denied U.S.P.Q. 377 (S.D.N.Y. 1978) notice of intended use Programmed Tax System, Inc. 4-5 months denied Raytheon Co., 419 F. Supp. 1251, after actual 193 U.S.P.Q. 435 (S.D.N.Y. 1976) notice; 3 years after first use Le Cordon Bleu S.a.r.l. v. BPC 13 weeks denied Publishing Ltd., 327 F. Supp. 267, 170 U.S.P.Q. 477 (S.D.N.Y. 1971) Gianni Cereda Fabrics, Inc. v. 7 1/2 months denied Bazaar Fabrics, Inc., 173 U.S.P.Q. 188 (S.D.N.Y. 1971) (copyright and trademark claims) Helena Rubenstein, Inc. v. Frances 20 months denied Denney, Inc., 286 F. Supp. 132, 159 U.S.P.Q. 346 (S.D.N.Y. 1968) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 81 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Stix Products, Inc. v. United preliminary denied Merchants & Mfrs., Inc., 273 F. injunction Supp. 250, 154 U.S.P.Q. 477 motion filed 5 (S.D.N.Y. 1967) years after suit Goodyear Tire & Rubber Co. v. 8-9 years denied Topps of Hartford, Inc. 247 F. Supp. 899, 147 U.S.P.Q. 240 (D. Conn. 1965) Colgate-Palmolive Co. v. North 20 months granted American Chemical Corp. 238 F. Supp. 81, 144 U.S.P.Q. 266 (S.D.N.Y. 1964) Gillette Co. v. Ed Pinaud, Inc., 178 4-5 years denied F. Supp. 618, 123 U.S.P.Q. 531 (S.D.N.Y. 1959) THIRD CIRCUIT Times Mirror Magazines, Inc. v. Las 14-15 months grant Vegas Sports News, L.L.C., 212 affirmed F.3d 157, 54 U.S.P.Q.2d 1577 (3d Cir. 2000), cert. denied, 531 U.S. 1071, 121 S. Ct. 760 (2001) Pappan Enterprises, Inc. v. 5 weeks reversed Hardee’s Food Systems, Inc., 143 district F.3d 800, 46 U.S.P.Q.2d 1769 (3d court’s denial Cir. 1998) S&R Corp. v. Jiffy Lube 3 1/2 months granted International, Inc., 968 F.2d 371, 23 U.S.P.Q.2d 1201 (3d Cir. 1993) J & J Snack Foods, Corp v. Nestle 10 months denied USA, Inc., 149 F. Supp. 2d 136 (complaint (D.N.J. 2001) filed after 2 months) New Dana Perfumes Corp. v. The 50 years (as to denied Disney Store, Inc., 131 F. Supp. 2d one claim); 9- 616 (M.D. Pa. 2001) 10 months (as to another claim) Sunquest Information Systems, Inc. 15 months granted v. Park City Solutions, Inc., 130 F. Supp. 2d 680 (W.D. Pa. 2000) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 82 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Novartis Consumer Health, Inc. v. 9 months (as granted Johnson & Johnson-Merck to claim Consumer Pharmaceuticals Co., 129 against F. Supp. 2d 351, 57 U.S.P.Q.2d product 1522 (D.N.J. 2000) name); 4 months (as to advertising claim) Mobilificio San Giacomo S.p.A. v. 6 months after granted Stoffi, 1997 WL 699299 (D. Del. filing suit (but 1997) 1 month after use of mark became unauthorized) Rockland Mortgage Corp. v. 6 months: suit granted Shareholder’s Funding Inc., 835 F. brought after Supp. 182, 30 U.S.P.Q.2d 1270 (D. 2 months; Del. 1993) motion filed 4 months later Accu Personnel, Inc. v. AccuStaff 9 months after granted Inc., 823 F. Supp. 1161, 27 knowledge of U.S.P.Q.2d 1801 (D. Del. 1993) intended use, including 2 months after knowledge of expanded activity W.L. Gore & Associates, Inc. v. 4 months after granted Totes, Inc., 23 U.S.P.Q.2d 1091 (D. increased Del. 1992) scope of activity Warner Lambert Co. v. McCrory’s 12 months denied Corp., 718 F. Supp. 389, 12 after first use; U.S.P.Q.2d 1884 (D.N.J. 1989) 5 months after claimed actual notice American International Group, Inc. 3 years denied v. American International Airways, Inc., 726 F. Supp. 1470, 14 U.S.P.Q.2d 1933 (E.D. Pa. 1989) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 83 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Transfer Print Foils, Inc. v. 16 months: granted Transfer Print America, 720 F. suit brought Supp. 425, 12 U.S.P.Q.2d 1753 after 5 (D.N.J. 1989) months; motion filed 11 months later Country Floors, Inc. v. Gepner, 11 at least 2 denied U.S.P.Q.2d 1401 (E.D. Pa. 1989) years’ actual notice; up to 6 years’ constructive notice Mars, Inc. v. H.P. Mayer Corp., approximately denied 1988 U.S. Dist. LEXIS 9069 (D.N.J. 19 months 1988) (not for publication) Reedco, Inc. v. Hoffmann-La Roche, 17 months denied Inc., 667 F. Supp. 1072, 2 after actual U.S.P.Q.2d 1994 (D.N.J. 1987) notice; years after notice in the press Horizon Financial, F.A. v. Horizon 13 years use; 8 granted Bancorp., 2 U.S.P.Q.2d 1696 (E.D. months after Pa. 1987) geographic expansion of defendant’s use Louis Rich, Inc. v. Horace W. 2 months granted Longacre, Inc., 423 F. Supp. 1327, 195 U.S.P.Q. 308 (E.D. Pa. 1976) FOURTH CIRCUIT Wilson-Cook Medical, Inc. v. Wiltex, 1 year denied Inc., 18 U.S.P.Q.2d 1642 (4th Cir. 1991) Nabisco Brands, Inc. v. Conusa 5-8 months granted Corp., 722 F. Supp. 1287, 11 from increase U.S.P.Q.2d 1788 (M.D.N.C.) aff’d in scope of mem., 892 F.2d 74, 14 U.S.P.Q.2d infringement 1324 (4th Cir. 1989) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 84 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Rubbermaid Commercial Products, almost 2 granted Inc. v. Contico International, Inc., years, 836 F. Supp. 1247, 29 U.S.P.Q.2d including 8 1574 (W.D. Va. 1993) (design patent months after and trade dress case) issuance of design patent John Lemmon Films, Inc. v. 8 months denied Atlantic Releasing Corp., 617 F. Supp. 992, 227 U.S.P.Q. 386 (W.D.N.C. 1985) FIFTH CIRCUIT Amicus Communications, L.P. v. 2-3 years denied Hewlett-Packard Co., 1999 WL 495921 (W.D. Tex. 1999) TJM Corp. v. Xerox Corp., 25 17 months: denied U.S.P.Q.2d 1067 (E.D. La. 1992) suit brought after 14 months; motion filed 3 months later American Rice, Inc. v. Arkansas 3 weeks after granted Rice Growers Cooperative Assn., increased level 532 F. Supp. 1376, 214 U.S.P.Q. 936 of (S.D. Tex. 1982), aff’d, 701 F.2d 408, infringement; 218 U.S.P.Q. 489 (5th Cir. 1983) 4 years after less objectionable use SIXTH CIRCUIT McDonald’s Corp. v. Burger King 8-9 months denied Corp., 87 F. Supp. 2d 722, 54 U.S.P.Q.2d 1507 (E.D. Mich. 1999) P.T.C. Brands, Inc. v. Conwood Co. 8 months: suit granted L.P., 28 U.S.P.Q.2d 1895 (W.D. Ky. brought after 1993) 2 months; motion filed 6 months later Central Benefits Mutual Insurance 18 months granted Co. v. Blue Cross & Blue Shield Assn., 711 F. Supp. 1423, 11 U.S.P.Q.2d 1103 (S.D. Ohio. 1989) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 85 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Frisch’s Restaurants, Inc. v. Elby’s at least 2 granted Big Boy of Steubenville Inc., 514 F. years Supp. 704, 213 U.S.P.Q. 559 (S.D. Ohio 1981), aff’d, 670 F.2d 642, 214 U.S.P.Q. 15 (6th Cir. 1982), cert. denied, 459 U.S. 916 (1982) SEVENTH CIRCUIT Ty, Inc. v. Jones Group, Inc., 237 at least 8 grant F.3d 891, 57 U.S.P.Q.2d 1617 (7th months affirmed Cir. 2001) (motion filed 8 months after complaint was filed) Ideal Industries, Inc. v. Gardner suit filed 7 granted Bender, Inc., 612 F.2d 1018, 204 months after U.S.P.Q. 177 (7th Cir. 1979), cert. notice; denied, 447 U.S. 924, 206 U.S.P.Q. preliminary 864 (1980) injunction motion filed 8 months later Helene Curtis Industries, Inc. v. suit filed granted Church & Dwight Co., Inc., 560 within weeks F.2d 1325, 195 U.S.P.Q. 218 (7th of notice; Cir. 1977), cert. denied, 434 U.S. preliminary 1070, 197 U.S.P.Q. 592 (1978) injunction filed 13 months later Vaughan Mfg. Co. v. Brikam 10 months granted International, Inc., 814 F.2d 346, 1 U.S.P.Q.2d 2067 (7th Cir. 1987) Floralife, Inc. v. Floraline at least 3 granted International, Inc., 633 F. Supp. years notice of 108 (N.D. Ill. 1985); later limited use; proceeding 807 F.2d 518, 1 less than 3 U.S.P.Q.2d 1132 (7th Cir. 1986) weeks after knowledge of expanison of use Ty, Inc. v. Softbelly’s, Inc., 2001 WL 10 months granted 125321 (N.D. Ill. 2001) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 86 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Ty, Inc. v. Publications Intern., 14 months granted Ltd., 81 F. Supp. 2d 899 (N.D. Ill. 2000) Avent America, Inc. v. Playtex 2-3 months granted Products, Inc., 68 F. Supp. 2d 920 (N.D. Ill. 1999) Philip Morris, Inc. v. Allen 5 months granted Distributors, Inc., 48 F. Supp. 2d 844, 51 U.S.P.Q.2d 1013 (S.D. Ind. 1999) Reins of Life, Inc. v. Vanity Fair 8-9 months denied Corp., 5 F. Supp. 2d 629, 45 U.S.P.Q.2d 1854 (N.D. Ind. 1997) Porsche Cars North America, Inc. v. 4 years (10 granted Manny’s Porshop, Inc., 972 F. Supp. years from 1128, 43 U.S.P.Q.2d 1475 (N.D. Ill. first 1997) infringement dispute) RWT Corp. v. Wonderware Corp., 9 months denied 931 F. Supp. 583 (N.D. Ill. 1996) Eldon Industries, Inc. v. 4 1/2 years: denied Rubbermaid, Inc., 735 F. Supp. 786, suit brought 17 U.S.P.Q.2d 1280 (N.D. Ill. 1990) after 4 years; motion filed 6 1/2 months later Stokely-Van Camp, Inc. v. Coca- 3 months denied Cola Co., 2 U.S.P.Q.2d 1225 (N.D. Ill. 1987) American Airlines, Inc. v. A 1-800- a few months granted A-M-E-R-I-C-A-N Corp., 622 F. notice by high Supp. 673, 228 U.S.P.Q. 225 (N.D. level Ill. 1985) employee; earlier notice by sales personnel Universal City Studios, Inc. v. 3 months granted Mueller Chemical Co., 223 U.S.P.Q. 798 (N.D. Ill. 1983) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 87 of 135

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EIGHTH CIRCUIT Hubbard Feeds, Inc. v. Animal Feed 4 years denied Supplement, Inc., 182 F.3d 598, 51 U.S.P.Q.2d 1373 (8th Cir. 1999) Mutual of Omaha Insurance Co. v. 12 months granted Novak, 775 F.2d 247, 227 U.S.P.Q. 801 (8th Cir. 1985) NINTH CIRCUIT GoTo.com, Inc. v. Walt Disney Co., at least 5 grant 202 F.3d 1199, 53 U.S.P.Q.2d 1652 months affirmed (9th Cir. 2000) (additional delay prior to filing of complaint) Fogerty v. Poor Boy Productions, more than 1 reversing Inc., 124 F.3d 211 (9th Cir. 1997) year district court (unpublished) grant Ocean Garden, Inc. v. Marktrade 11 months granted Co., 953 F.2d 500, 21 U.S.P.Q.2d from notice of 1493 (9th Cir. 1991) intended sale, including 2-3 months from notice of actual sale eBay, Inc. v. Bidder’s Edge, Inc., 2 years granted 100 F. Supp. 2d 1058 (N.D. Cal. 2000) (trespass and trademark case) Playboy Enterprises, Inc. v. 11 months denied Netscape Communications Corp., 55 F. Supp. 2d 1070, 52 U.S.P.Q.2d 1162 (C.D. Cal. 1999) Sun Microsystems, Inc. v. Microsoft 6 weeks granted Corp., 999 F. Supp. 1301, 46 U.S.P.Q.2d 1531 (N.D. Cal. 1998) Guess?, Inc. v. Tres Hermanos, Inc., 9 months granted 993 F. Supp. 1277, 45 U.S.P.Q.2d 1179 (C.D. Cal. 1997) Anheuser-Busch, Inc. v. Customer 2-3 months granted Co., 947 F. Supp. 422 (N.D. Cal. 1996) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 88 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Creative Technology Ltd. v. SRT, 6 months after granted Inc., 29 U.S.P.Q.2d 1474 (N.D. Cal. notice and 1993) sending of protest letter Sega Enterprises Ltd. v. Accolade, 5 months: suit granted Inc., 785 F. Supp. 1392, 23 brought after U.S.P.Q.2d 1440 (N.D. Cal. 1992) 1 1/2 months; motion filed 3 1/2 months later Lisa Frank, Inc. v. Impact 7 months after granted International, Inc., 799 F. Supp. filing 980 (D. Ariz. 1992) Complaint; 3 months after knowledge of expanded line of infringing products National Yellow Pages Service 3 years granted Assn. v. O’Connor Agency, Inc., 9 U.S.P.Q.2d 1516 (C.D. Cal. 1988) Earth Technology Corp. v. 2 years granted Environmental Research & Technology, Inc., 222 U.S.P.Q. 585 (C.D. Cal. 1983) Steinway & Sons v. Robert Demars 2 years granted & Friends, 210 U.S.P.Q. 954 (C.D. Cal. 1981)

TENTH CIRCUIT GTE Corp. v. Williams, 731 F.2d 3 years denied 676, 222 U.S.P.Q. 803 (10th Cir. 1984) Big O Tires, Inc. v. Bigfoot 4x4, Inc., more than 2 granted 167 F. Supp. 2d 1216 (D. Colo. years 2001) Packerware Corp. v. Corning 3-4 months denied Consumer Products Co., 895 F. Supp. 1438 (D. Kan. 1995) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 89 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Studio 1712, Inc. v. Etna Products 10 months: granted Co., 777 F. Supp. 844, 22 suit brought U.S.P.Q.2d 1280 (D. Colo. 1991) after 4 months; motion filed 6 months later Universal Motor Oils Co. v. Amoco 3 months granted Oil Co., 15 U.S.P.Q.2d 1613 (D. Kan. 1990) Paramount Pictures Corp. v. Video 15 months denied Broadcasting Systems, 724 F. Supp. 808, 12 U.S.P.Q.2d 1862 (D. Kan. 1989) Cyclonaire Corp. v. United States 6 months granted Systems, Inc. 209 U.S.P.Q. 310 (D. Kan. 1980) Volkswagenwerk, G.m.b.H. v. 17 months granted Frank, 198 F. Supp. 916, 131 after lawsuit U.S.P.Q. 236 (D. Colo. 1961) ELEVENTH CIRCUIT Bulova Corp. v. Bulova Do Brasil 4 1/2 years granted Com. Rep. Imp. & Exp. Ltda., 144 F. Supp. 2d 1329, 59 U.S.P.Q.2d 1077 (S.D. Fla. 2001) Golden Bear International, Inc. v. 8 months (first denied Bear U.S.A., Inc., 969 F. Supp. 742, use was more 42 U.S.P.Q.2d 1283 (N.D. Ga. 1996) than a year prior to plaintiff’s first actual notice of use) Glen Raven Mills, Inc. v. Ramada 16 months denied, but International, Inc., 1994 WL from notice of court found 230365 (M.D. Fla. 1994) intended use, that plaintiff including 11 had acted months after promptly notice of actual use Bellsouth Advertising & Publishing 7-8 months granted Corp. v. Real Color Pages, Inc., 792 F. Supp. 775 (M.D. Fla. 1991) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 90 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Original Appalachian Artworks, 5-10 months granted Inc. v. Topps Chewing Gum, Inc., 642 F. Supp. 1031, 231 U.S.P.Q. 850 (N.D. Ga. 1986)

D.C. CIRCUIT National Rural Electric Cooperative several weeks granted Association v. National Agricultural after Chemical Association, 26 knowledge of U.S.P.Q.2d 1294 (D.D.C. 1992) increased scope of infringement Delmatoff, Gerow, Morris, 12 months denied Langhans, Inc. v. Children’s Hospital National Medical Center, 12 U.S.P.Q.2d 1136 (D.D.C. 1989) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 91 of 135

The Law Journal of the International Trademark Association

No Trolls Barred: Trademark Injunctions After eBay David H. Bernstein and Andrew Gilden

Delay in Filing Preliminary Injunction Motions: 2009 Edition Sandra Edelman

Genericness Surveys in Trademark Disputes: Evolution of Species E. Deborah Jay

Space Pirates, Hitchhikers, Guides, and the Public Interest: Transformational Trademark Law in Cyberspace Thomas C. Folsom

The Identification of Trademark Filing Strategies: Creating, Hedging, Modernizing, and Extending Brands

Philipp G. Sandner

Vol. 99 September-October, 2009 No. 5

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DELAY IN FILING PRELIMINARY INJUNCTION MOTIONS: 2009 EDITION

By Sandra Edelman∗

I. INTRODUCTION This is the fourth article in a series that has addressed the effect of a delay in filing a motion for preliminary injunction in a trademark lawsuit pending in a United States district court.1 The last article in the series in 2002 examined whether the advent of Internet communications in the business world had led to a more demanding requirement for speed in filing a motion for preliminary injunction than had been previously applied by the courts. The answer in 2002 was, not so much, except in the courts within the Second Circuit, which diverged from courts in other circuits by applying a more stringent standard to periods of delay in the three-to-six-month range.2 This article will provide an overview of the trademark cases that have been decided since 2002 that have devoted attention to the issue of delay in moving for a preliminary injunction, and will focus specifically on the applicable legal standards for evaluating delay, and the two primary reasons offered for excusable delay: (1) settlement and enforcement efforts by the plaintiff; and (2) an alleged expansion in the scope or nature of the defendant’s infringement. The 2009 Appendix includes all of the cases cited in the three prior articles in this series, supplemented by the cases that have been decided since 2002. As was done in prior appendices in the series, the cases are arranged by U.S. Circuit, with appellate court decisions preceding district court cases. The 2009 Appendix includes trademark and unfair competition cases as well as a few decisions involving both trademark and other intellectual property issues in which the delay issue was adjudicated with respect to the trademark claims involved.

∗ Partner, Dorsey & Whitney LLP, New York, NY; Associate Member, International Trademark Association. The author would like to thank David Cheng and Jonathan Montcalm, summer associates at Dorsey & Whitney, for their assistance with the research for this article. 1. See Sandra Edelman, Delay in Filing Preliminary Injunction Motions: Update 2002, 92 TMR 647 (2002); Sandra Edelman, Delay in Filing Preliminary Injunction Motions: A Five Year Update, 85 TMR 1 (1995); Robert L. Raskopf & Sandra Edelman, Delay in Filing Preliminary Injunction Motions: How Long Is Too Long? 80 TMR 36 (1990). 2. 92 TMR at 649-54. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 93 of 135

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II. CURRENT STANDARDS FOR EXCUSABLE DELAY Since 2002, it seems as if the speed of business decisions and communications has continued to accelerate, perhaps exemplified by the best-selling book entitled Blink by Malcolm Gladwell, which is about instantaneous intuitive decision-making;3 and the emergence of Twitter, a real-time, 140-character limited Internet messaging service. Has the faster pace of life since 2002 (real or imagined) led to greater expectations of speed in moving for expedited injunctive relief? Not really, but plaintiffs in the Second Circuit are still being held to a more demanding standard.

A. Generally Acceptable Periods of Delay in the Second Circuit Based on a review of the trademark cases that were decided between 2002 and 2009 in which the courts measured and evaluated delay as a factor in deciding whether to issue a preliminary injunction, trademark litigants in the Second Circuit—and especially those in the Southern and Eastern Districts of New York—have been expected to move more quickly than litigants in other circuits in seeking preliminary injunctive relief. Most of the motions for preliminary injunctive relief were denied in the Second Circuit, with delays ranging there from four months4 to 24 years.5 With a notable exception discussed below,6 in which the Court of Appeals for the Second Circuit vacated the district court’s denial of preliminary injunctive relief where there was a delay of approximately four to six months,7 the handful of cases in the Second Circuit in which the court granted a motion for preliminary injunction generally involved very short periods of delay,8 ranging from just two days9 to four months.10 Thus, as of

3. M. Gladwell, Blink: The Power of Thinking Without Thinking (Little, Brown & Co. 2005). See also T. Hayes & M.S. Malone, The Ten Year Century, Wall St. J., Aug. 11, 2009, at A17 (observing that faster computation technology and quicker online access has led to shorter decision cycles for business enterprises). 4. The Deal, LLC v. Korangy Publ’g, Inc., 309 F. Supp. 2d 512 (S.D.N.Y. 2004). 5. Air Cargo News, Inc. v. Tabmag Publ’g, Ltd., 2007 WL 1101183 (E.D.N.Y. Apr. 11, 2007). 6. See infra Part II.C. 7. Weight Watchers Int’l, Inc. v. Luigino’s Inc., 423 F.3d 137 (2d Cir. 2005). 8. A delay of up to 20 months was also excused in Kuklachev v. Gelfman, 2008 WL 5411641 (E.D.N.Y. Dec. 22, 2008), but the circumstances were quite atypical. The plaintiff, the Russian owner of the trademark MOSCOW CATS THEATER, first learned of the defendant’s infringing use in the United States in early 2007, but he was then in Russia, did not speak English, and it therefore took time to investigate and secure appropriate counsel, who sent several protest letters. The infringing activity then ceased by early 2008, and when the plaintiff learned of further threatened infringing performances in the fall of 2008,

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2009, plaintiffs litigating in the Second Circuit should move for preliminary injunctive relief within three months of actual or constructive notice of the infringement (or actionable expansion of infringement) in order to be confident of establishing the element of irreparable harm.

B. Generally Acceptable Periods of Delay Outside the Second Circuit Outside of the Second Circuit, the cases decided since 2002 indicate that plaintiffs who delay three months or less in seeking preliminary injunctive relief can also be confident they can show irreparable harm.11 However, it is not at all unusual for courts in other circuits to grant motions for a preliminary injunction where the period of delay has been six to seven months;12 nine to ten months;13 or even a year or more.14 On the other hand, it is also not unusual for courts outside of the Second Circuit to deny motions for preliminary injunction where the delay in seeking relief ranges from four to nine months.15 Overall, as of 2009, a plaintiff litigating outside of the Second Circuit who has delayed six months or more has a fighting chance of obtaining preliminary

he took “immediate” steps to file a motion for a preliminary injunction. Id. at ** 10-11. The court found that the delay was excusable because the “plaintiffs have diligently pursued their rights, to the extent practical, given that they are foreign nationals who do not speak English and are regularly on tour, making it difficult for them to determine the extent of harm as it occurred.” Id. 9. Virgin Enters. v. Nawab, 335 F.3d 141 (2d Cir. 2003). 10. Kadant, Inc. v. Seeley Mach., Inc., 244 F. Supp. 2d 19 (N.D.N.Y. 2003). In another case in the Western District of New York (and thus, like Kadant, not in the Southern or Eastern Districts of New York), the court found an almost one year delay from first knowledge of anticipated infringement to be reasonable, but denied the plaintiff’s motion on other grounds. See Dudley, D.C. v. Healthsource Chiropractic, Inc., 585 F. Supp. 2d 433 (W.D.N.Y. 2008). 11. See, e.g., Clam Corp. v. Innovative Outdoor Solution, Inc., 89 U.S.P.Q.2d 1314 (D. Minn. 2008); Nova Wines, Inc. v. Adler Fels Winery LLC, 467 F. Supp. 2d 965 (N.D. Cal. 2006); Lazzaroni USA Corp. v. Steiner Foods, 2006 U.S. Dist. LEXIS 74614 (D.N.J. 2006). 12. See, e.g., Oliva v. Ramirez, 2007 U.S. Dist. LEXIS 62011 (D.P.R. 2007); Keystone Consol. Indus. Inc. v. Mid-States Distrib. Co., 235 F. Supp. 2d 901 (C.D. Ill. 2002). 13. See, e.g., Jonathan Neil & Assocs., Inc. v. JNA Seattle, Inc., 2007 WL 788354 (W.D. Wash. Mar. 14, 2007); Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F. Supp. 2d 1146 (C.D. Cal. 2002). 14. See, e.g., Nat’l Council of Young Men’s Christian Assocs. of U.S. v. Human Kinetics Publishers, Inc., 2006 WL 752950 (N.D. Ill. Nov. 21, 2003); Conversive, Inc. v. Conversagent, Inc., 433 F. Supp. 2d 1079 (C.D. Cal. 2006). 15. See, e.g., Cascade Fin. Corp. v. Issaquah Cmty. Bank, 2007 WL 2871981 (W.D. Wash. Sept. 27, 2007); J.D. Williams & Co. v. Am. Home Mortgage Inv. Corp., 2005 WL 1429271 (W.D. Okla. June 13, 2005); MB Fin. Bank, N.A. v. MB Real Estate Serv., LLC, 2003 WL 752950 (N.D. Ill. Nov. 21, 2003). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 95 of 135

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injunctive relief, while that would not likely be the case within the Second Circuit. Even if the delay outside the Second Circuit is more than a year, there is still a chance of obtaining expedited preliminary injunctive relief, but the case must be strong on the merits and the equities, and the plaintiff better have a good excuse for the delay.

C. Outliers: Two Recent Examples of Appellate Court Leniency Interestingly, two appellate court decisions since 2002 in Circuits particularly active in the trademark field—the Second and the Third—were relatively lenient in evaluating both the length of the delay and the excuses offered by plaintiffs for their delay in seeking expedited injunctive relief. The Second Circuit’s decision in Weight Watchers International, Inc. v. Luigino’s, Inc.16 involved a motion by Weight Watchers to modify a preliminary injunction order that had been entered on June 30, 2003, against the use of packaging by Luigino’s that made certain references in a confusing manner to Weight Watchers’ POINTS trademark. That same month, Luigino’s introduced new packaging that Weight Watchers learned about “some time over the summer,” or the latest by September 2003.17 Weight Watchers then conducted informal testing to evaluate whether the Luigino’s packaging was confusing consumers; objected to the packaging for the first time on September 23, 2003; commissioned a formal consumer survey that was completed by the end of November 2003; and moved for a modification of the preliminary injunction order on January 16, 2004—almost seven months after first use of the new packaging by Luigino’s, and likely four to six months after Weight Watchers first had actual notice of the new packaging.18 The Second Circuit vacated the district court’s substantial denial of the Weight Watcher motion for preliminary injunction and remanded the case for further proceedings consistent with the opinion. The Second Circuit specifically addressed the argument by Luigino’s that Weight Watchers had unduly delayed in bringing the motion. The court acknowledged that it had previously found “delays of as little as ten weeks sufficient to defeat the presumption of irreparable harm,”19 but that it had also held that

16. 423 F.3d 137 (2d Cir. 2005). The author’s law firm was counsel to defendant Luigino’s in this action. 17. Id. at 140, 144. 18. Id. 19. Id. at 144 (citing Citibank, N.A. v. Citytrust, 756 F.2d 273, 276-77 (2d Cir. 1985)). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 96 of 135

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“a short delay does not rebut the presumption where there is good reason for it, as when a plaintiff is not certain of the infringing activity or has taken additional time to examine the infringing product.”20 After considering the facts concerning Weight Watchers’ delay, the court held, “While Weight Watchers did not act as promptly as it could have, the delay here, in all the circumstances, does not require denial of the modification it seeks.”21 Although it is not unusual for courts in other circuits to excuse a four- to six-month delay,22 the Weight Watchers case is a bit of an outlier in the Second Circuit, which the Weight Watchers court tacitly acknowledged by referring to its prior decision denying preliminary injunctive relief in a case involving a ten-week delay.23 Perhaps the court was inclined to be more forgiving of a delay where a preliminary injunction was already in place. The Third Circuit’s decision in Kos Pharmaceuticals, Inc. v. Andrx Corp.24 was also somewhat unusual in excusing a plaintiff’s delay of more than one year in moving for preliminary injunctive relief. The case involved an action by plaintiff Kos, the owner of the mark ADVICOR for a cholesterol medication, to enjoin the use of the mark ALTOCOR by defendant Andrx for its own cholesterol drug.25 A month after Kos began marketing the ADVICOR drug in December 2001, it learned that Andrx had received preliminary FDA (U.S. Food and Drug Administration) marketing approval to sell the same type of medication under the name ALTOCOR. In February 2002, Andrx’s trademark application to register ALTOCOR, which it filed in December 2000, was published for opposition by the U.S. Trademark Office.26 Kos contacted the FDA Division of Medication Errors in March 2002 to express its concerns about the Andrx mark, and sent two letters to Andrx in April 2002 objecting to its use of ALTOCOR. A month later in May 2002, Kos filed an opposition proceeding in the U.S. Trademark Office against Andrx’s trademark registration application. Andrx began marketing ALTOCOR in July 2002, and in January and February 2003, Kos sent Andrx information concerning multiple instances of alleged actual consumer confusion

20. 423 F.3d at 144-45. 21. Id. at 145. 22. See, e.g., PDL, Inc. v. All Star Driving School, 2007 WL 1515739 (E.D. Cal. May 22, 2007); Kadant, Inc. v. Seeley Mach., Inc., 244 F. Supp. 2d 19 (N.D.N.Y. 2003). 23. 423 F.3d at 144. 24. 369 F.3d 700 (3d Cir. 2004). 25. Id. at 703-04. 26. Id. at 704-05. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 97 of 135

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between the parties’ marks.27 It was not until August 2003 that Kos filed in a U.S district court a complaint against Andrx for trademark infringement and a motion for a preliminary injunction. The district court denied the Kos motion for preliminary injunctive relief, holding that Kos had failed to show a likelihood of success on the merits of its trademark infringement claims, but the Third Circuit reversed and remanded the case for the entry of preliminary injunctive relief.28 The Third Circuit addressed the issue of whether Kos’s delay had undercut its showing of irreparable harm, and initially disagreed with the district court’s finding that Kos had not generated sufficient goodwill to suffer irreparable harm in light of the relatively short period of time in which Kos’s ADVICOR drug had been on the market. As the Third Circuit pointed out, this finding was inconsistent with the district court’s further holding that Kos had developed a “high level of commercial strength” in its mark, evidenced by $70 million in sales.29 Moreover, as the Third Circuit observed, [W]e do not agree that a company’s goodwill is less likely to be irreparably harmed if it has used its mark for only a short time. Indeed, it could be argued that irreparable harm is more likely when a “young” mark, rather than an old and well- established mark, is infringed.30 Moving from its factual findings to the appropriate legal standard, the Third Circuit rejected the argument that Kos’s delay of more than 13 months after Andrx’s product was first marketed was sufficient to rebut the presumption of irreparable harm.31 Rather, the court clarified that under Third Circuit precedent,32 only “inexcusable” delay could defeat the presumption of irreparable harm in an appropriate case.33 As the court found, “Kos sought relief directly and through administrative proceedings from the time it learned of the proposed use of the ALTOCOR mark through the time it filed this suit.”34 In addition, Andrx was found to have contributed to Kos’s delay when it submitted alternate

27. Id. at 705. 28. Id. 29. Id. at 726. 30. Id. 31. Id. at 727. Note that the plaintiff’s total delay was much longer if measured from the date of its first notice of the defendant’s mark. 32. Times Mirror Magazines, Inc. v. Las Vegas Sports News, LLC, 212 F.3d 157 (3d Cir. 2000). 33. 369 F.3d at 727 (emphasis in original). 34. Id. at 721. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 98 of 135

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names to the FDA, and stated in its annual report that Kos had opposed its application for trademark registration and that Andrx might “seek to change the name of Altocor.”35 The court concluded, “Under these circumstances, no reasonable fact finder could find that Kos had waived its rights or conceded that it was not irreparably harmed by filing when it did.”36 Although the Third Circuit has generally been more tolerant of delay than has the Second Circuit, excusing a delay of at least 13 months is noteworthy. Of course, the involvement of pharmaceuticals with the possibility of medication error may have tipped the scales for the court37 in determining that preliminary injunctive relief was appropriate.

III. THE ROLE OF DELAY IN ADJUDICATING PRELIMINARY INJUNCTION MOTIONS An alleged delay in filing a motion for preliminary injunction is just one of many factors a court will consider in determining whether to grant or deny the motion. Most decisions involve a thorough examination of the plaintiff’s likelihood of success on the merits of its substantive trademark claims, for that is one of the pillars of the legal standard for granting a motion for preliminary injunction.38 Occasionally, the delay will be sufficiently long that a court will deny the motion on that basis alone, without even providing a written analysis of the merits of the plaintiff’s claims. For example, in Adventure Plus Enterprises, Inc. v. Gold Suit, Inc.,39 the court denied a motion for a preliminary injunction where the plaintiff waited nearly 15 months after discovering the alleged infringement to file its lawsuit, and then almost three more months before seeking a preliminary injunction, all without

35. Id. 36. Id. 37. The appellate court mentioned the district court’s finding that Kos had not established a “serious health risk” due to medication error, but nonetheless found that the public interest favored the issuance of injunctive relief. Id. at 730. 38. A plaintiff generally has to demonstrate a probability of success on the merits of its claims at trial; that it will suffer irreparable injury absent a preliminary injunction that will preserve the status quo pending trial; and that the balance of hardships tips in favor of the plaintiff. Courts in some circuits also examine whether the public interest favors granting preliminary injunctive relief. See generally 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §§ 30:31; 30:32 (4th ed. 2009) [hereinafter McCarthy]. 39. 2008 U.S. Dist. LEXIS (N.D. Tex. April 2, 2008). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 99 of 135

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offering any explanation for the delay.40 The court’s Memorandum Order in this case focused solely on the issue of delay.41 In other cases, the issue of delay played a supporting role, but was not case-determinative. In The Deal, LLC v. Korangy Publishing, Inc.,42 the plaintiff was aware of the defendant’s magazine in April 2003, but did not bring suit until October 2003, and then waited another four weeks to file a motion for preliminary injunctive relief. After addressing the issue of delay in a few brief paragraphs, the court stated, “While plaintiff’s delay in seeking relief informs the question of whether The Deal has suffered irreparable harm, the delay is not so lengthy as to require denial of the motion.”43 The court then proceeded to engage in an extended analysis as to why the plaintiff had failed to demonstrate a likelihood of success on its trademark infringement claims, resulting in a denial of the requested relief.44 The issue of delay in filing a motion for preliminary injunction received extensive treatment in a few cases, such as in Pharmacia Corp. v. Alcon Laboratories, Inc.45 Several pages of the court’s opinion denying the motion are devoted to the delay issue, even though the court also concluded that plaintiff Pharmacia had not made a showing of a likelihood of success on its trademark claims. Thus, the court could have addressed more briefly the issue of the plaintiff’s delay of more than one year in seeking expedited injunctive relief. The court rejected multiple reasons given by the plaintiff as to why it had waited so long to bring the motion, including patent negotiations, the possibility (deemed “remote” by the court) that the FDA would not approve the defendant’s product, the need to investigate the defendant’s product, and the defendant’s alleged bad faith in adopting the mark at issue.46 The court held that the plaintiff’s delay “was a separate but equally dispositive basis, apart from the weakness of Pharmacia’s case on

40. Id. at **3-4; see also n.56 for discrepancies in the court’s stated calculations in this case. 41. Id.; cf. Brockmeyer v. Hearst Corp., 2002 U.S. Dist. LEXIS 11725, at **10-13 (S.D.N.Y. June 27, 2002) (the court held that the delay of more than 15 months was a “sufficient ground” for the denial of the plaintiff’s preliminary injunction motion, but then also proceeded to analyze and determine that the plaintiff had not demonstrated a likelihood of success on the merits or the other substantive requirements for obtaining expedited relief). 42. 309 F. Supp. 2d 512 (S.D.N.Y. 2004). 43. Id. at 521 (emphasis in original). 44. Id. at 521, 530 (emphasis in original). 45. 201 F. Supp. 2d 335 (D.N.J. 2002). 46. Id. at 384-85. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 100 of 135

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the merits, for denying Pharmacia’s motion for a preliminary injunction.”47 Whether or not the issue of delay receives brief or thorough treatment, it often appears that a court will assess the reasonableness of the alleged delay in light of its overall views of the merits of the plaintiff’s case. If the plaintiff’s claims are perceived as weak, the court will not likely be tolerant of a delay in seeking relief.48 Conversely, when the merits are strong and/or the equities strongly disfavor the defendant, the court will more likely be forgiving of a plaintiff’s delay.49

IV. MEASURING THE PERIOD OF DELAY The court in Pharmacia Corp. v. Alcon Laboratories, Inc.,50 confirmed, Actual or constructive notice is the governing standard for measuring delay in moving for preliminary injunctive relief. Thus, courts consider both a trademark plaintiff’s actual knowledge of infringement and its constructive knowledge.51 The court explained that a trademark plaintiff has a duty to police the market for infringing uses. Thus, the “should have known” standard is “satisfied by contrasting the full scope of a party’s monitoring practices and the way it addressed marks it truly regarded as violating its rights, with its inactivity with respect to the mark it belatedly seeks to enjoin.”52 Although some judicial opinions make it easier to calculate the period of delay by providing a detailed chronology that reveals what happened and when, other courts address the issue of delay

47. Id. at 382. 48. See, e.g., Ultimate Trading Corp. v. Daus, 2007 WL 302 5681 (D.N.J. Oct. 15, 2007); Lapham v. Porach, 2007 WL 1224924 (S.D.N.Y. Apr. 25, 2007) (the plaintiff failed to establish likelihood of success on the merits); Richard A. Leslie Co. v. Birdie, LLC, 2007 WL 4245847 (S.D.N.Y. Nov. 26, 2007) (weak ownership rights demonstrated by the plaintiff); MJM Prods. v. Kelley Prods., Inc., 68 U.S.P.Q.2d 1131 (D.N.H. 2003) (the plaintiff’s unregistered mark lacked secondary meaning). 49. See, e.g., SMC Promotions, Inc. v. SMC Promotions, 355 F. Supp. 2d 1127 (C.D. Cal. 2005); Kadant, Inc. v. Seeley Mach., Inc., 244 F. Supp. 2d 19 (N.D.N.Y. 2003); Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F. Supp. 2d 1146 (C.D. Cal. 2002). 50. 201 F. Supp. 2d 335 (D.N.J. 2002). Where possible to discern from the recited facts, the calculation of time periods set out in the Appendix is based on this alternative standard of actual or constructive notice. 51. Id. at 382. 52. Id. at 382-83; see also Jonathan Neil & Assocs., Inc. v. JNA Seattle, Inc., 2007 WL 788354, at *6 (W.D. Wash. Mar. 14, 2007) (the relevant delay on a motion for a preliminary injunction “is the period from when the plaintiff knew or should have known of the allegedly infringing conduct until the initiation of the lawsuit.”). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 101 of 135

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more generally, without providing the specific information necessary to calculate or even roughly estimate the period of delay.53 Sometimes a court will highlight how long the plaintiff waited to move for preliminary injunctive relief after filing the lawsuit, which obviously leaves unaddressed how long the plaintiff knew about the defendant’s mark before commencing the litigation in the first place.54 In other cases, the court will quantify the period of delay and mention the exact dates of acquisition of knowledge and the filing of the motion for preliminary injunction, but the calculation is somewhat mystifying. For example, in Nature’s Life, Inc. v. Renew Life Formulas Inc.,55 the court stated that the plaintiff learned of the defendant’s design in January 2005, but did not file the motion for a preliminary injunction until August 2005. The court characterized this time period as a “nine month” delay,56 when it appears to be only seven months.

V. LACHES VERSUS DELAY Some courts continue to refer to the issue of delay in filing a motion for preliminary injunction as a “laches” defense,57 while other courts have drawn a clear distinction between the legal standard for finding laches at a full trial, and the more limited inquiry involved in evaluating whether a plaintiff has demonstrated irreparable injury for purposes of obtaining a

53. See, e.g., Novartis Animal Health U.S. Inc. v. Abbeyvet Export Ltd., 409 F. Supp. 2d 264, 268 (S.D.N.Y. 2005). The court in Novartis expressly declined “to calculate the degree of urgency” with any precision, holding that while Novartis had “not acted in a way that bespeaks the urgency usually connoted by ‘irreparable harm,’” it had acted sufficiently promptly that its attempts to resolve the dispute informally “should not be held against it.” Id. at 267-68. See also Verizon Cal. Inc. v. Navigation Catalyst Sys., Inc., 568 F. Supp. 2d 1088, 1097 (C.D. Cal. 2008) (court mentions only that there was “no significant delay”); Playmakers, LLC v. ESPN, Inc., 297 F. Supp. 2d 1277 (W.D. Wash. 2003) (providing only a vague description of the relevant dates). 54. See, e.g., Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F. Supp. 2d 1146, 1190 (C.D. Cal. 2002) (the court addressed the nine month delay between commencement of the action and the filing of the preliminary injunction motion, rather than focusing on the plaintiff’s first notice of the infringing conduct). 55. 2006 WL 62829 (D. Utah Jan. 11, 2006). 56. Id. at *7. In another instance of curious calculation, the court in Adventure Plus Enters., Inc. v. Gold Suit, Inc., 2008 U.S. Dist. LEXIS (N.D. Tex. Apr. 2, 2008), appears to calculate the time lapse between August 2005 and November 2006 as “nearly 18 months” when it in fact appears to be 15 months. In addition, the court in this case mentions that the plaintiff filed suit in November 2006, and then “waited another four months, until January 26, 2007 before seeking a preliminary injunction,” when the time lapse between the two filings appears to be only 2 ½ months. Id. at **3-4. 57. See, e.g., Oliva v. Ramirez, 2007 U.S. Dist. LEXIS (D.P.R. Aug. 21, 2007; SMC Promotions, Inc. v. SMC Promotions, 355 F. Supp. 2d 1127 (C.D. Cal. 2005). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 102 of 135

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preliminary injunction.58 Because laches generally involves the added factor of demonstrating prejudice to the defendant, the cases that characterize the issue of delay on a motion for preliminary injunction as a laches defense also require a showing that the defendant has been prejudiced by the plaintiff’s delay in seeking expedited injunctive relief. For example, in Jonathan Neil Associates, Inc. v. JNA Seattle, Inc.,59 the court characterized the issue of delay in filing a motion for preliminary injunction as one of laches, and then set out a two-part test for establishing the laches defense: “[A] party must show (1) that the claimant unreasonably delayed in filing suit; and (2) as a result of the delay, the party suffered prejudice.”60

VI. EXCUSABLE DELAY While defendants often argue that an extended period of delay is sufficient in itself to warrant denial of a motion for a preliminary injunction, it is important to bear in mind that only inexcusable delay will defeat the presumption of irreparable harm.61 The two reasons most commonly cited to justify a plaintiff’s delay in moving for a preliminary injunction continue to be: (1) investigative, enforcement and settlement efforts; and (2) an alleged expansion in the nature or scope of the defendant’s infringement that excuses the plaintiff’s past inaction.

A. Investigative, Enforcement and Settlement Efforts The federal courts appreciate that a plaintiff might need to investigate the relevant facts before running into court for a preliminary injunction, and courts value extrajudicial efforts to resolve disputes in order to avoid the time, expense and resources involved in litigation. Accordingly, investigative, enforcement and settlement efforts will generally excuse a delay in moving for a preliminary injunction, so long as the efforts are pursued diligently and credibly.62

58. See generally 5 McCarthy, supra note 38, § 31:32. 59. 2007 WL 788354 (W.D. Wash. Mar. 14, 2007). 60. Id. at *6; see also Oliva v. Ramirez, 2007 U.S. Dist. LEXIS 62011 at *5; cf. Keystone Consol. Indus. Inc. v. Mid-States Distrib. Co., 235 F. Supp. 2d 901, 915 (C.D. Ill. 2002) (“to prove the defense of delay in filing a motion for a preliminary injunction, the defendant must have been ‘lulled into a false sense of security or . . . acted in reliance on the plaintiff’s delay.’”) (citation omitted). 61. See Kos Pharms., Inc. v. Andrx Corp., 369 F.3d 700, 726-27 (3d Cir. 2004). 62. See Christian v. Alloy, Inc., 72 U.S.P.Q. 2d 1697, 1699 (S.D.N.Y. 2004) (“Settlement is highly favored by the courts and [the plaintiff’s] efforts to amicably resolve the matter are to be applauded, but the mere fact that [the plaintiff] attempted to negotiate a settlement

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In Christopher Norman Chocolates, Ltd. v. Schokinag Chocolates North America, Inc.,63 the court rejected the plaintiff’s excuse for its delay attributed to the pursuit of settlement discussions because the correspondence between the parties only occupied three months, “leaving unaccounted” a further period of delay of four months.64 Likewise, in Richard A. Leslie Co. v. Birdie LLC,65 the plaintiff sought to negotiate a settlement resolution with the defendant for two months, and when no settlement was reached, the plaintiff filed suit a few weeks later. However, the plaintiff did not move for a preliminary injunction for another three months after commencing the action. The court held that the initial two-month delay was excusable, but the later three-month period “is sufficiently long, in and of itself, to warrant denial of preliminary relief, as [the plaintiff’s] conclusory and unsubstantiated implication that he could not have moved more quickly is unpersuasive.”66 Plaintiffs are also expected to move promptly once it becomes clear to the plaintiff that the defendant will not discontinue the allegedly offending conduct. In Cascade Financial Corp. v. Issaquah Community Bank,67 the plaintiff became aware of the defendant’s allegedly infringing trademark for banking in January 2007 and promptly sent a cease and desist letter. When the defendants refused to comply, the plaintiffs sent a second letter with a deadline for a response of March 12, 2007. According to the court, when no response was received by the March 12 deadline, the plaintiffs were “on notice” that the defendants were not going to change the offending trademark. By waiting to sue until the defendant’s bank opened on July 16, 2007, and then waiting until August 1, 2007, two weeks later, to file a motion for a preliminary

does not relieve her of her burden to demonstrate irreparable harm. Settlement negotiations and a motion for preliminary relief are in no way mutually exclusive . . . .”). 63. 270 F. Supp. 2d 432 (S.D.N.Y. 2003). 64. Id. at 438-39. 65. 2007 WL 4245847 (S.D.N.Y. Nov. 26, 2007). 66. Id. at *2; see also GoNannies, Inc. v. GoAuPair.com, Inc., 464 F. Supp. 2d 603, 609 & n.5 (N.D. Tex. 2006) (“[A]lthough settlement discussions might entail some delay in seeking injunctive relief, it is difficult to see how they would support Plaintiff’s delay of over six (6) months from the time of learning of the alleged infringing conduct and seeking injunctive relief from the Court.”); J.D. Williams & Co. v. Am. Home Mortgage Inv. Corp., 2005 WL 1429271 (W.D. Okla. June 13, 2005) (finding that the plaintiff did not act diligently when it waited approximately six months to send a protest letter to the defendant and then did not file the suit or seek injunctive relief until an additional month later). 67. 2007 WL 2871981 (W.D. Wash. Sept. 27, 2007). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 104 of 135

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injunction, the plaintiff undercut the assertion of irreparable harm.68 The need to conduct a pre-litigation investigation received favorable treatment in Weight Watchers International, Inc. v. Luigino’s, Inc.,69 in which the court held that “a short delay” does not rebut the presumption of irreparable harm “where there is good need for it, as when a plaintiff is not certain of the infringing activity or has taken additional time to examine the infringing product.”70 In that case, as noted above,71 the court found that the plaintiff had not acted as promptly as it could have, but nonetheless excused a delay attributable in part to consumer testing of the defendant’s allegedly infringing products.72 Similarly, in MetLife, Inc. v. Metropolitan National Bank,73 the court excused a 3-1/2-month delay in taking action after the defendant’s alleged expansion of infringement, during which time the plaintiff investigated the likelihood of consumer confusion, including the commission of a market research study. As the court stated, “There is no evidence that this passage of time amounted to dilatory conduct on the plaintiffs’ part, or that it was due to anything more than an effort to investigate facts relevant to this motion.”74 On the other hand, in Pharmacia Corp. v. Alcon,75 the court rejected the plaintiff’s excuse based on the alleged need to investigate whether it had a valid trademark claim, holding,

68. Id. at *17; see also eAcceleration Corp. v. Trend Micro, Inc., 408 F. Supp. 2d 1110, 1122 & n. 4 (W.D. Wash. 2006) (the court acknowledged that some portion of the plaintiff’s delay was likely the result of attempts to resolve the matter without litigation, but by waiting to file suit until six months after the defendant made it clear it was unwilling to cease the allegedly infringing conduct, and then waiting over two additional months before moving for preliminary relief, the plaintiffs were unable to demonstrate the possibility of irreparable harm.) 69. 423 F.2d 137 (2d Cir. 2005). 70. Id. at 144-45. 71. See supra Part II.C. 72. Id. at 144. 73. 388 F. Supp. 2d 223 (S.D.N.Y. 2005). The author was counsel to the defendant in this action. 74. Id. at 237-38; see also Kuklachev v. Gelfman, 2008 WL 5411641 at *10 (E.D.N.Y. Dec. 22, 2008) (in excusing the plaintiff’s delay, the court cited a number of reasons, including “the need to investigate the nature of the infringement and to explore what legal recourse was possible”); Louis Vuitton Malletier v. Dooney & Bourke, Inc., 340 F. Supp. 2d 415 (S.D.N.Y 2004) (the court denied the plaintiff’s motion for a preliminary injunction but found that a six-month delay in seeking preliminary relief was excusable where it was attributable to the plaintiff’s efforts to “conduct an investigation and weigh the costs and benefits of pursuing a lawsuit.”) 75. 201 F. Supp. 2d 335 (D.N.J. 2002). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 105 of 135

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“Investigation is no excuse when the plaintiff is in possession of all of the necessary facts constituting the alleged infringement.”76

B. Expansion of the Scope or Nature of Infringement A change in the nature, extent or geographic reach of infringing conduct can excuse a delay in filing a motion for preliminary injunction, but courts will scrutinize whether the alleged change was material and will evaluate whether the plaintiff moved promptly after the material change became apparent. The court accepted this explanation for delay in Guinness United Distillers & Vintners B.V. v. Anheuser-Busch, Inc.,77 where defendant Anheuser-Bush initially conducted a test market of the “Red Label from Budweiser” brand in approximately 20 to 30 bars and restaurants in New York City in September 2001, and then decided in April 2002 to expand its test marketing to three other cities beginning in July 2002. Plaintiff Guinness brought suit in February 2002, but did not move for a preliminary injunction until June 2002. The court rejected Anheuser-Busch’s argument that a nine-month delay precluded preliminary injunctive relief, holding that Guinness was not required to have taken action earlier against “the limited distribution and media penetration of ‘Red Label from Budweiser’ to date . . . .”78 The geographic expansion of the defendant’s services into the plaintiff’s market in Boston Duck Tours, LP v. Super Duck Tours, LLC,79 likewise excused the plaintiff’s six years of prior knowledge and inaction against the defendant’s services in another city, notwithstanding the fact that the plaintiff had known about the defendant’s intent to expand into the plaintiff’s market for almost two years.80 The court in this case appeared to be persuaded by the fact that the plaintiff took legal action five weeks after the defendant’s actual geographic expansion, and that 30 reported instances of actual confusion had occurred in that brief time period.81 In contrast, in EMSL Analytical, Inc. v. Testamerica Analytical Testing Corp.,82 the court rejected the plaintiff’s attempt to excuse a six-year delay in filing suit and in seeking preliminary

76. Id. at 384. 77. 2002 WL 1543817 (S.D.N.Y. July 12, 2002). 78. Id. at ** 1, 2, 6. 79. 514 F. Supp. 2d 119 (D. Mass. 2007). 80. Id. at **2-3. 81. Id. at **15-16. 82. 2006 U.S. Dist. LEXIS 16672 (D.N.J. Apr. 4, 2006). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 106 of 135

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injunctive relief on the ground that it had only recently become aware that the defendant was offering a particular type of service. The court concluded that the nature of the infringement was apparent to the plaintiff long before it filed suit, and that the plaintiff even delayed six months in seeking injunctive relief after the plaintiff conceded it became aware of the full scope of the infringement.83 Similarly, in Air Cargo News, Inc. v. Tabmag Publishing, Ltd.,84 the court declined to excuse the plaintiff’s delay of more than 20 years in taking action against an allegedly infringing trade journal title, because it “failed to offer a tenable explanation as to why it made no objection, either formal or informal,” as the defendants systematically increased the number of copies it circulated over the past 24 years.85

C. Litigation Tactics Resulting in Delay Courts will occasionally examine the litigation conduct of the parties in evaluating whether a delay in filing a motion for a preliminary injunction is excusable. The excuse of alleged settlement efforts was rejected as a pretext for sharp litigation tactics in MJM Productions v. Kelley Productions, Inc.,86 a case involving the name of the defendant’s television series The Brotherhood of Poland, New Hampshire. Although the plaintiff admitted to knowing about the television series for more than six months, it waited until just sixteen days before the scheduled premiere of the television series to bring a motion for preliminary injunction. The court concluded that “the timing of the plaintiff’s request for injunctive relief was primarily the product of tactical, rather than practical considerations.”87 In Hodgdon Powder Co. v. Alliant Techsytems, Inc,88 the court denied the plaintiff’s motion for a preliminary injunction where the plaintiff had delayed seven months after becoming aware of the defendant’s allegedly infringing products. The court specifically pointed to the plaintiff’s chosen method of service of process on the defendant in explaining its decision:

83. Id. at **38-41; see also Christian v. Alloy, Inc., 72 U.S.P.Q.2d 1697 (S.D.N.Y. 2004) (the court rejected the plaintiff’s explanation as to why it did not take action against the defendant’s book series but then sought to enjoin a film bearing the same mark). 84. 2007 WL 1101183 (E.D.N.Y. Apr. 11, 2007). 85. Id. at *11. 86. 68 U.S.P.Q.2d 1131 (D.N.H. 2003). 87. Id. at 1135. 88. 2006 WL 2092391 (D. Kan. July 26, 2006). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 107 of 135

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After filing its Complaint, plaintiff chose to request a waiver of service under Federal Rule of Civil Procedure 4(d) instead of promptly serving defendant, which allowed defendant additional time to answer the complaint. Plaintiff’s tardiness in instigating this lawsuit is inconsistent with its current request for immediate temporary relief.89 This court apparently felt that if the plaintiff was asking the court for the urgent and extraordinary relief of a preliminary injunction, it should have acted as if the need for relief was in fact urgent by using the most expeditious form of service of process available. Litigation conduct by the defendant had the effect of undermining its defense of delay to a motion for preliminary injunction in Perfect 10, Inc. v. Cybernet Ventures, Inc.,90 a case involving both copyright and trademark claims. The court rejected the defendant’s argument that a nine-month period of delay between the date the action was commenced and the date the motion for a preliminary injunction was filed defeated the inference of irreparable harm.91 Citing the defendant’s dilatory tactics during the litigation, which the plaintiff characterized as “stonewalling,” the court pointed to “the constant stream of motions in the case, including three motions to dismiss and the multiplicity of theories presented in the case, which may have reasonably delayed the proceedings.”92

VII. CONCLUSION Inexcusable delay in filing a motion for preliminary injunction in a trademark case can have an adverse effect on the success of the motion, as it will undercut the showing of irreparable harm necessary to obtain expedited injunctive relief. While appropriate investigative efforts and settlement negotiations will provide a cushion of excusable delay, the asserted need to obtain additional information must not be pretextual, and the settlement efforts must be pursued diligently. In many cases, a plaintiff will attempt to account for years of knowledge of the defendant’s activities by pointing to new and

89. Id. at *3; see also Scientific Weight Loss, LLC v. U.S. Med. Care Holdings, LLC, 2008 WL 4533918 (C.D. Cal. Oct. 6, 2008) (in denying preliminary injunctive relief, in part based on the plaintiff’s delay, the court noted that the plaintiffs had twice stipulated to continue the preliminary injunction motion over a period of several months). 90. 213 F. Supp. 2d 1146 (C.D. Cal. 2002). 91. Id. at 1190. 92. Id. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 108 of 135

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different conduct that allegedly expands the nature, scope or geographic reach of the defendant’s infringement. Unless there has been a real, material change in the defendant’s actions that renders infringing what reasonably could have been deemed non- actionable in the past, courts will be reluctant to overlook a long prior history of coexistence between the parties when evaluating expedited injunctive relief. While each case has its own unique set of facts and equities, it is still possible to see broad patterns in the body of judicial opinions on delay in filing motions for preliminary injunction. The standards have stayed fairly consistent since 2002. A plaintiff in the Second Circuit should bring its motion for preliminary injunction within three months of notice of the defendant’s infringing conduct, or risk the significant likelihood that the motion will be denied. Greater latitude exists outside of the Second Circuit, where motions are frequently granted even when the delay ranges from four months up to one year. Of course, when filing a motion for preliminary injunction in any circuit, the sooner you file the better.

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UPDATED APPENDIX 2009 FIRST CIRCUIT

HOLDING DELAY ON CASE LENGTH MOTION Operation Able of Greater Boston, 6 weeks from granted in Inc., 2009 WL 2407753 (D. Mass. alleged part Aug. 3, 2009) expansion of infringement Oliva v. Ramirez, 2007 U.S. Dist. 6 months granted LEXIS 62011 (D.P.R. Aug. 21, 2007) Boston Duck Tours, LP v. Super 6 years after granted (as to Duck Tours, LLC, 514 F. Supp. 2d knowledge of trademark 119 (D. Mass. 2007) use in other claims) geographic

market 2 years after knowledge of intent to expand into plaintiff’s market 5 weeks after alleged expansion of infringement MJM Prods. v. Kelley Prods., Inc., 6-7 months denied 68 U.S.P.Q.2d 1131 (D.N.H. 2003) Montblanc-Simplo GMBH v. 2 months granted Staples, Inc., 172 F. Supp. 2d 231 (D. Mass. 2001) Media3 Tech., LLC v. Mail Abuse 6 months denied Prevention Sys., LLC, 2001 WL 92389 (D. Mass. 2001) Boustany v. Boston Dental Group, 8 months granted Inc., 42 F. Supp. 2d 100 (D. Mass. 1999) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 110 of 135

1092 Vol. 99 TMR

HOLDING DELAY ON CASE LENGTH MOTION Fritz v. Arthur D. Little, Inc., 944 At least 2 denied F. Supp. 95, 41 U.S.P.Q.2d 1352 (D. years Mass. 1996) constructive notice Supercuts, Inc. v. Super Clips, 18 10 months: granted U.S.P.Q.2d 1378 (D. Mass. 1990) suit brought after 1 month; motion filed 9 months later Calamari Fisheries, Inc. v. The 21 months granted Village Catch, Inc., 698 F. Supp. after first use; 994, 8 U.S.P.Q.2d 1953 (D. Mass. 1 month after 1988) expansion caused increased level of confusion Salt Water Sportsman, Inc. v. less than 6 granted B.A.S.S. Inc., 685 F. Supp. 12, 4 months U.S.P.Q.2d 1407 (D. Mass. 1987), as amended, 5 U.S.P.Q.2d 1620 (D. Mass. 1987) Jordan K. Rand, Ltd. v. Lazoff 3 months granted Bros., Inc., 537 F. Supp. 587, 217 U.S.P.Q. 795 (D.P.R. 1982) SECOND CIRCUIT Weight Watchers Int'l, Inc. v. 4-6 months denial Luigino’s, Inc., 423 F.3d 137 (2d vacated, with Cir. 2005) remand for entry of modified injunction Virgin Enters. Ltd. v. Nawab, 335 19 months denial F.3d 141 (2d Cir. 2003) after reversed knowledge of ITU applications 2 days after knowledge of actual infringement Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 111 of 135

Vol. 99 TMR 1093

HOLDING DELAY ON CASE LENGTH MOTION W.B. Marvin Mfg. Co. v. Howard 6 months denial Berger Co., 33 Fed. Appx. 588 (2d affirmed (motion filed 3 Cir. 2002) months after lawsuit commenced) Tough Traveler, Ltd. v. Outbound 13 months vacating Prods., 60 F.3d 964, 35 U.S.P.Q.2d (complaint district 1617 (2d Cir. 1995) filed after 9 court’s grant months) Tom Doherty Assoc., Inc. v. Saban 4 months affirming Entm’t, Inc., 60 F.3d 27, 35 district U.S.P.Q.2d 1537 (2d Cir. 1995) court’s grant King v. Innovation Books, 976 F.2d 11 months granted 824, 24 U.S.P.Q.2d 1435 (2d Cir. from 1992) knowledge of intended use, including 3 months from knowledge of actual use Majorica, S.A. v. R.H. Macy & Co., several years denied 762 F.2d 7, 226 U.S.P.Q. 624 (2d Cir. 1985) Citibank, N.A. v. Citytrust, 756 10 weeks after denied F.2d 273, 225 U.S.P.Q. 708 (2d Cir. direct notice of 1985) actual use; 9 months after notice of intended use in press; years after notice of use in another state Harlequin Enters. Ltd. v. Gulf & 6 months after granted Western Corp., 644 F.2d 946, 210 notice of U.S.P.Q. 1 (2d Cir. 1981) intended use; 3 months after notice of actual use My-T-Fine Corp. v. Samuels, 69 2 years granted F.2d 76, 21 U.S.P.Q. 94 (2d Cir. 1934) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 112 of 135

1094 Vol. 99 TMR

HOLDING DELAY ON CASE LENGTH MOTION Kuklachev v. Gelfman, 2008 WL 15-20 months granted 5411641 (E.D.N.Y. Dec. 22, 2008) from first acts of infringing performance name that later ceased within 1 month of resumed infringement Dudley, D.C. v. Healthsource almost 1 year denied (but Chiropractic, Inc., 585 F. Supp. 2d from note that 433 (W.D.N.Y. 2008) knowledge of delay was anticipated found infringement reasonable) 6 months from knowledge of actual infringing use Lapham v. Porach, 2007 WL Approximately denied 1224924 (S.D.N.Y. Apr. 25, 2007) 2 years since first use (actual knowledge unclear) Richard A. Leslie Co., Inc. v. Birdie, More than a denied LLC, 2007 WL 4245847 (S.D.N.Y. year after first Nov. 26, 2007) use 5 months after knowledge of infringement (motion filed 3 months after lawsuit commenced) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 113 of 135

Vol. 99 TMR 1095

HOLDING DELAY ON CASE LENGTH MOTION Air Cargo News, Inc. v. Tabmag Approximately denied Publ’g, Ltd., 2007 WL 1101183 24 years after (E.D.N.Y. Apr. 11, 2007) initial use of infringing mark Several months after knowledge of alleged expansion of infringement Total Control Apparel, Inc. v. DMD More than 19 denied Int’l Imports, LLC, 409 F. Supp. 2d months 403 (S.D.N.Y. 2006) Metlife, Inc. v. Metro. Nat’l Bank, 3.5 years after granted 388 F. Supp. 2d 223 (S.D.N.Y. 2005) first knowledge of defendant’s mark 3.5 months after knowledge of alleged expansion of infringement The Deal, LLC v. Korangy Publ’g, 4 months after denied Inc., 309 F. Supp. 2d 512 (S.D.N.Y. first 2004) knowledge of infringement (7 months after first use) Louis Vuitton Malletier v. Dooney 9-10 months denied & Bourke, Inc., 340 F. Supp. 2d 415 after (S.D.N.Y. 2004), aff’d in part and knowledge of vacated in part on other grounds, intended use 454 F.3d 408 (2d Cir. 2006) A few weeks after sending protest letter Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 114 of 135

1096 Vol. 99 TMR

HOLDING DELAY ON CASE LENGTH MOTION Christian v. Alloy, Inc., 72 Almost 2 years denied U.S.P.Q.2d 1697 (S.D.N.Y. 2004) Christopher Norman Chocolates, 8-9 months denied Ltd. v. Schokinag Chocolates N. Am., Inc., 270 F. Supp. 2d 432 (S.D.N.Y. 2003) Kadant, Inc. v. Seeley Mach., Inc., 4 months granted in 244 F. Supp. 2d 19 (N.D.N.Y. 2003) part M&G Elecs. Sales Corp. v. Sony 6-7 months denied Kabushiki Kaisha, 250 F. Supp. 2d (motion filed 6 91 (E.D.N.Y. 2003) months after lawsuit commenced) Guinness United Distillers & 9 months after granted Vintners B.V. v. Anheuser-Busch, first use in Inc., 64 U.S.P.Q.2d 1039 (S.D.N.Y. limited 2002) market 2 months after alleged expansion of infringement (motion filed 4 months after lawsuit commenced) Brockmeyer v. Hearst Corp., 2002 More than 16 denied U.S. Dist. LEXIS 11725 (S.D.N.Y. months after 2002) first knowledge of infringement (motion filed 2 months after lawsuit commenced) Yurman Design Inc. v. Diamonds 4 months granted and Time, 169 F. Supp. 2d 181 (S.D.N.Y. 2001) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 115 of 135

Vol. 99 TMR 1097

HOLDING DELAY ON CASE LENGTH MOTION Tactica Int’l, Inc. v. Atlantic 1 month granted Horizon Int’l, Inc., 154 F. Supp. 2d 586 (S.D.N.Y. 2001) Magnet Commc’ns, LLC v. Magnet 3 months denied Commc’ns, Inc., 2001 WL 1097965 (S.D.N.Y. 2001) Media Group, Inc. v. Ontel Prods. 7-8 months denied Corp., 2001 WL 169776 (D. Conn. (complaint 2001) filed after 4-5 months) Origins Nat’l Res., Inc. v. Kotler, 4-6 months denied 2001 WL 492429 (S.D.N.Y. 2001) Greenpoint Fin. Corp. v. Sperry & 4 months denied Hutchinson Co., 116 F. Supp. 2d 405 (S.D.N.Y. 2000) Ryan v. Vulpine Stamp Co., 107 F. 2 months granted Supp. 2d 369 (S.D.N.Y. 2000) ImOn, Inc. v. ImaginOn, Inc., 90 F. 4 months denied Supp. 2d 345 (S.D.N.Y. 2000) First Jewellery Co. of Canada, Inc. 2 months granted v. Internet Shopping Network LLC, 53 U.S.P.Q.2d 1838 (S.D.N.Y. 2000) Gidatex, S.r.L. v. Campaniello more than 2 denied Imports, Ltd., 13 F. Supp. 2d 417, years (5-8 47 U.S.P.Q.2d 1701 (S.D.N.Y. 1998) months after termination of related litigation between parties) Lexington Mgmt. Corp. v. 5-6 months granted Lexington Capital Partners, 10 F. Supp. 2d 271 (S.D.N.Y. 1998) Marcy Playground, Inc. v. Capitol 9 months denied Records, Inc., 6 F. Supp. 2d 277 (S.D.N.Y. 1998) Marshak v. Thomas, 1998 WL 2 months granted 476192 (E.D.N.Y. 1998) Ushodaya Enters., Ltd. v. V.R.S. almost 3 years denied Int’l, Inc., 47 U.S.P.Q.2d 1223 at minimum (S.D.N.Y. 1998) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 116 of 135

1098 Vol. 99 TMR

HOLDING DELAY ON CASE LENGTH MOTION Gen. Cigar Co., Inc. v. G.D.M. Inc., 3 months granted 988 F. Supp. 647, 45 U.S.P.Q.2d 1481 (S.D.N.Y. 1997) Les Ballets Trockadero de Monte 2 months granted Carlo, Inc. v. Trevino, 945 F. Supp. 563, 41 U.S.P.Q.2d 1109 (S.D.N.Y. 1996) Krueger Int’l, Inc. v. Nightingale 6-9 months denied Inc., 915 F. Supp. 595 (S.D.N.Y. 1996) Bear U.S.A., Inc. v. A.J. Sheepskin 1-2 months for granted as to & Leather Outerwear, Inc., 909 F. some 1-2 month Supp. 896, 38 U.S.P.Q.2d 1640 infringing delay; denied (S.D.N.Y. 1995) products; 3-4 as to 3-4 months for month delay other infringing products Trustco Bank, Nat. Ass’n v. Glens 3 months denied (but Falls Nat’l Bank & Trust Co., N.A., delay found 903 F. Supp. 335 (N.D.N.Y. 1995) excusable) Firma Melodiya v. ZYX Music 3-4 months granted GmbH, 882 F. Supp. 1306 (S.D.N.Y. 1995) Museum Boutique Intercontinental, 14 years (15 denied Ltd. v. Picasso, 880 F. Supp. 153 months from (S.D.N.Y. 1995) alleged change in scope of infringement while standstill agreement in effect) Cheng v. Dispeker, 35 U.S.P.Q.2d 5 months denied 1493 (S.D.N.Y. 1995) Del-Rain Corp. v. Pelonis USA Ltd., 23 months denied 1995 WL 116043 (W.D.N.Y. 1995) Swanson v. Georgetown Collection, 8 months denied Inc., 1995 WL 72717 (N.D.N.Y. (complaint 1995) filed after 5 months) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 117 of 135

Vol. 99 TMR 1099

HOLDING DELAY ON CASE LENGTH MOTION Mastercard Int’l, Inc. v. Sprint 6-9 months granted Commc’ns Co., 30 U.S.P.Q.2d 1963 from (dicta) (S.D.N.Y. 1994) knowledge of intended use Tommy Hilfiger U.S.A., Inc. v. 2-3 years from denied Siegfried & Parzifal, Inc., 31 notice of U.S.P.Q.2d 1222 (S.D.N.Y. 1994) initial elements of infringement Dial-A-Mattress Operating Corp. v. 3-4 years granted Mattress Madness, Inc., 841 F. Supp. 1339 (E.D.N.Y. 1994) Jordache Enters., Inc. v. Levi 4 years denied Strauss & Co., 841 F. Supp. 506 (S.D.N.Y. 1993) Kraft General Foods, Inc. v. Allied 7 months from granted Old English, Inc., 831 F. Supp. 123, publication of 31 U.S.P.Q.2d 1094 (S.D.N.Y. 1993) defendant’s mark Chase Manhattan Corp. v. Nw. 11 months: denied Mutual Life, 1993 WL 60602 suit brought (S.D.N.Y. 1993) after 5 months; motion filed 6 months later Bausch & Lomb, Inc. v. Nevitt Sales 1 month after granted Corp., 810 F. Supp. 466, 26 increased U.S.P.Q.2d 1275 (W.D.N.Y. 1993) scope of infringement H.G.I. Mktg. Serv., Inc. v. Pepsico, 2-4 years denied Inc., 1992 WL 349675 (N.D.N.Y. 1992) Am. Direct Mktg. v. Azad Int’l, Inc., 3-6 months denied (but 783 F. Supp. 84, 22 U.S.P.Q.2d delay found 1108 (E.D.N.Y. 1992) excusable) MGM Pathe Commc’ns Co. v. Pink 6 months granted Panther Patrol, 774 F. Supp. 869, 21 U.S.P.Q.2d 1208 (S.D.N.Y. 1991) Nat’l Football League Players Ass’n 9 months denied v. Nat’l Football League Props., Inc., 1991 WL 79325 (S.D.N.Y. 1991) (licensing dispute) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 118 of 135

1100 Vol. 99 TMR

HOLDING DELAY ON CASE LENGTH MOTION Century Time Ltd. v. Interchron, 6 months: suit denied 729 F. Supp. 366, 14 U.S.P.Q.2d brought after 1765 (S.D.N.Y. 1990) 2 months; motion filed 4 months later Lanvin, Inc. v. Colonia, 739 F. 7 months denied Supp. 182 (S.D.N.Y. 1990) (licensing dispute) Mathematica Policy Research, Inc. 10 months denied v. Addison-Wesley Publ’g Co. Inc., 11 U.S.P.Q.2d 1391 (S.D.N.Y. 1989) Comic Strip, Inc. v. Fox Television 7 months denied Stations, Inc., 710 F. Supp. 976, 10 U.S.P.Q.2d 1608 (S.D.N.Y. 1989) Kusan, Inc. v. Alpha Distribs., Inc., 17-18 months denied 693 F. Supp. 1372, 7 U.S.P.Q.2d 1211 (D. Conn. 1988) Artemide Spa v. Grandlite Design & 7 months granted in Mfg. Co., Inc., 672 F. Supp. 698, 4 part U.S.P.Q.2d 1915 (S.D.N.Y. 1987) Great Lakes Mink Ass’n v. Furrari, 20 months denied Inc., No. 86-6038 (S.D.N.Y. 12/21/87), 1987 U.S. Dist. LEXIS 11800 Ventura Travelware, Inc. v. A to Z approximately granted Luggage Co., 1 U.S.P.Q.2d 1552 18 months (E.D.N.Y. 1986) Allen Organ Co. v. CBS, Inc., 230 7-8 months denied U.S.P.Q. 479 (S.D.N.Y. 1986) Gear, Inc. v. L.A. Gear Cal., Inc., 17-18 months denied 637 F. Supp. 1323, 227 U.S.P.Q. 980 (S.D.N.Y. 1986) Nina Ricci S.A.R.L. v. Gemcraft 4 months from denied Ltd., 612 F. Supp. 1520, 226 notice, U.S.P.Q. 575 (S.D.N.Y. 1985) including 6 weeks from breakdown of settlement talks Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 119 of 135

Vol. 99 TMR 1101

HOLDING DELAY ON CASE LENGTH MOTION Calvin Klein Co. v. Farah Mfg. Co., 7 years of use; denied Inc., 229 U.S.P.Q. 795 (S.D.N.Y. plaintiff’s 1985) claim of less than 6 months’ notice rejected I. Peiser Floors, Inc. v. I.J. Peiser’s 2 years granted Sons, Inc., No. 81-3359 (S.D.N.Y. 10/4/82), 1982 U.S. Dist. LEXIS 15465 Exxon Corp. v. Xoil Energy Res., approximately denied Inc., 552 F. Supp. 1008, 216 12 months U.S.P.Q. 634 (S.D.N.Y. 1981) Nike, Inc. v. Rubber Mfrs. Ass’n, several granted 509 F. Supp. 919, 212 U.S.P.Q. 225 months (S.D.N.Y. 1981) C.B. Sports, Inc. v. Gaechter-Haber 6 months granted & Assoc., Inc., 210 U.S.P.Q. 597 (D. Vt. 1981) Le Sportsac, Inc. v. Dockside 10 months denied Research, Inc., 478 F. Supp. 602, 205 U.S.P.Q. 1055 (S.D.N.Y. 1979) Mego Corp. v. Mattel, Inc., 203 7 months after denied U.S.P.Q. 377 (S.D.N.Y. 1978) notice of intended use Programmed Tax Sys., Inc. 4-5 months denied Raytheon Co., 419 F. Supp. 1251, after actual 193 U.S.P.Q. 435 (S.D.N.Y. 1976) notice; 3 years after first use Le Cordon Bleu S.a.r.l. v. BPC 13 weeks denied Publ’g Ltd., 327 F. Supp. 267, 170 U.S.P.Q. 477 (S.D.N.Y. 1971) Gianni Cereda Fabrics, Inc. v. 7 1/2 months denied Bazaar Fabrics, Inc., 173 U.S.P.Q. 188 (S.D.N.Y. 1971) (copyright and trademark claims) Helena Rubenstein, Inc. v. Frances 20 months denied Denney, Inc., 286 F. Supp. 132, 159 U.S.P.Q. 346 (S.D.N.Y. 1968) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 120 of 135

1102 Vol. 99 TMR

HOLDING DELAY ON CASE LENGTH MOTION Stix Prods., Inc. v. United preliminary denied Merchants & Mfrs., Inc., 273 F. injunction Supp. 250, 154 U.S.P.Q. 477 motion filed 5 (S.D.N.Y. 1967) years after suit Goodyear Tire & Rubber Co. v. 8-9 years denied Topps of Hartford, Inc. 247 F. Supp. 899, 147 U.S.P.Q. 240 (D. Conn. 1965) Colgate-Palmolive Co. v. N. Am. 20 months granted Chem. Corp. 238 F. Supp. 81, 144 U.S.P.Q. 266 (S.D.N.Y. 1964) Gillette Co. v. Ed Pinaud, Inc., 178 4-5 years denied F. Supp. 618, 123 U.S.P.Q. 531 (S.D.N.Y. 1959) THIRD CIRCUIT Kos Pharms., Inc. v. Andrx Corp., Approximately reversal of 369 F. 3d 700 (3d Cir. 2004) 18 months denial and since first remand for knowledge of entry intended use of infringing mark At least 13 months since knowledge of sale of infringing products Times Mirror Magazines, Inc. v. Las 14-15 months grant Vegas Sports News, L.L.C., 212 affirmed F.3d 157, 54 U.S.P.Q.2d 1577 (3d Cir. 2000), cert. denied, 531 U.S. 1071, 121 S. Ct. 760 (2001) Pappan Enters., Inc. v. Hardee’s 5 weeks reversed Food Sys., Inc., 143 F.3d 800, 46 district U.S.P.Q.2d 1769 (3d Cir. 1998) court’s denial S&R Corp. v. Jiffy Lube Int’l, Inc., 3 1/2 months granted 968 F.2d 371, 23 U.S.P.Q.2d 1201 (3d Cir. 1993) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 121 of 135

Vol. 99 TMR 1103

HOLDING DELAY ON CASE LENGTH MOTION Ultimate Trading Corp. v. Daus, 5 months denied 2007 WL 3025681 (D.N.J. Oct. 15, 2007) Medavante, Inc. v. Proxymed, Inc., 4 months granted 2006 U.S. Dist. LEXIS 74614 (D.N.J. Oct. 12, 2006) Lazzaroni USA Corp. v. Steiner 2 months granted Foods, 2006 U.S. Dist. LEXIS 20962 (D.N.J. Apr. 10, 2006) EMSL Analytical, Inc. v. 4-6 years after Testamerica Analytical Testing first Corp., 2006 WL 892718 (D.N.J. Apr. knowledge of 4, 2006) infringing uses 6 months after knowledge of alleged expansion of infringement Pharmacia Corp. v. Alcon Labs., Approximately denied Inc., 201 F. Supp. 2d 335 (D.N.J. 2 years since 2002) constructive knowledge Approximately 1 year since actual knowledge J & J Snack Foods Corp. v. Nestlé 10 months denied USA, Inc., 149 F. Supp. 2d 136 (complaint (D.N.J. 2001) filed after 2 months) New Dana Perfumes Corp. v. The 50 years (as to denied Disney Store, Inc., 131 F. Supp. 2d one claim); 9- 616 (M.D. Pa. 2001) 10 months (as to another claim) Sunquest Info. Sys., Inc. v. Park 15 months granted City Solutions, Inc., 130 F. Supp. 2d 680 (W.D. Pa. 2000) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 122 of 135

1104 Vol. 99 TMR

HOLDING DELAY ON CASE LENGTH MOTION Novartis Consumer Health, Inc. v. 9 months (as granted Johnson & Johnson-Merck to claim Consumer Pharms. Co., 129 F. against Supp. 2d 351, 57 U.S.P.Q.2d 1522 product (D.N.J. 2000) name); 4 months (as to advertising claim) Mobilificio San Giacomo S.p.A. v. 6 months after granted Stoffi, 1997 WL 699299 (D. Del. filing suit (but 1997) 1 month after use of mark became unauthorized) Rockland Mortgage Corp. v. 6 months: suit granted Shareholder’s Funding Inc., 835 F. brought after Supp. 182, 30 U.S.P.Q.2d 1270 (D. 2 months; Del. 1993) motion filed 4 months later Accu Personnel, Inc. v. AccuStaff 9 months after granted Inc., 823 F. Supp. 1161, 27 knowledge of U.S.P.Q.2d 1801 (D. Del. 1993) intended use, including 2 months after knowledge of expanded activity W.L. Gore & Assoc., Inc. v. Totes, 4 months after granted Inc., 23 U.S.P.Q.2d 1091 (D. Del. increased 1992) scope of activity Warner Lambert Co. v. McCrory’s 12 months denied Corp., 718 F. Supp. 389, 12 after first use; U.S.P.Q.2d 1884 (D.N.J. 1989) 5 months after claimed actual notice Am. Int’l Group, Inc. v. Am. Int’l 3 years denied Airways, Inc., 726 F. Supp. 1470, 14 U.S.P.Q.2d 1933 (E.D. Pa. 1989) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 123 of 135

Vol. 99 TMR 1105

HOLDING DELAY ON CASE LENGTH MOTION Transfer Print Foils, Inc. v. 16 months: granted Transfer Print Am., 720 F. Supp. suit brought 425, 12 U.S.P.Q.2d 1753 (D.N.J. after 5 1989) months; motion filed 11 months later Country Floors, Inc. v. Gepner, 11 at least 2 denied U.S.P.Q.2d 1401 (E.D. Pa. 1989) years’ actual notice; up to 6 years’ constructive notice Mars, Inc. v. H.P. Mayer Corp., approximately denied 1988 U.S. Dist. LEXIS 9069 (D.N.J. 19 months 1988) (not for publication) Reedco, Inc. v. Hoffmann-La Roche, 17 months denied Inc., 667 F. Supp. 1072, 2 after actual U.S.P.Q.2d 1994 (D.N.J. 1987) notice; years after notice in the press Horizon Fin., F.A. v. Horizon 13 years use; 8 granted Bancorp., 2 U.S.P.Q.2d 1696 (E.D. months after Pa. 1987) geographic expansion of defendant’s use Louis Rich, Inc. v. Horace W. 2 months granted Longacre, Inc., 423 F. Supp. 1327, 195 U.S.P.Q. 308 (E.D. Pa. 1976) FOURTH CIRCUIT Wilson-Cook Med., Inc. v. Wiltex, 1 year denied Inc., 18 U.S.P.Q.2d 1642 (4th Cir. 1991) Nabisco Brands, Inc. v. Conusa 5-8 months granted Corp., 722 F. Supp. 1287, 11 from increase U.S.P.Q.2d 1788 (M.D.N.C.), aff’d in scope of mem., 892 F.2d 74, 14 U.S.P.Q.2d infringement 1324 (4th Cir. 1989) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 124 of 135

1106 Vol. 99 TMR

HOLDING DELAY ON CASE LENGTH MOTION Garden & Gun, LLC v. Twodalgals, 5-6 weeks granted in LLC, 2008 WL 3925276 (W.D.N.C. part Aug. 21, 2008) Fairbanks Capital Corp. v. Kenney, More than 10 granted in 303 F. Supp. 2d 583 (D. Md. 2003) months; part potentially up to 2 years Great Eastern Resort Corp. v. Several years granted Virtual Resort Solutions, LLC, 189 since F. Supp. 2d 469 (W.D. Va. 2002) knowledge of initial use 7 months after knowledge of alleged expansion of infringement Rubbermaid Comm’l Prods., Inc. v. almost 2 granted Contico Int’l, Inc., 836 F. Supp. years, 1247, 29 U.S.P.Q.2d 1574 (W.D. Va. including 8 1993) (design patent and trade months after dress case) issuance of design patent John Lemmon Films, Inc. v. 8 months denied Atlantic Releasing Corp., 617 F. Supp. 992, 227 U.S.P.Q. 386 (W.D.N.C. 1985) FIFTH CIRCUIT H.D. Vest, Inc. v. H.D. Vest Mgmt. at least 5 and denied & Servs., LLC, 2009 WL 1766095 up to 11 (N.D. Tex. June 23, 2009) months Innovation Ventures, LLC v. 9 months denied Ultimate Lifestyles, LLC, 2009 WL 1490588 (E.D. Tex. May 27, 2009) Ellipse Commc’ns, Inc. v. Caven, more than 7 denied 2009 WL 497268 (N.D. Tex Feb. 26, months 2009) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 125 of 135

Vol. 99 TMR 1107

HOLDING DELAY ON CASE LENGTH MOTION Adventure Plus Enters., Inc. v. Gold 17 months denied Suit, Inc., 2008 U.S. Dist. LEXIS (motion filed 27220 (N.D. Tex. Apr. 2, 2008) almost 3 months after lawsuit commenced) GoNannies, Inc. v. GoAuPair.com, 7 years after denied Inc., 464 F. Supp. 2d 603 (N.D. Tex. initial use 2006) 6 months after alleged expansion of infringement Amicus Commc’ns, L.P. v. Hewlett- 2-3 years denied Packard Co., 1999 WL 495921 (W.D. Tex. 1999) TJM Corp. v. Xerox Corp., 25 17 months: denied U.S.P.Q.2d 1067 (E.D. La. 1992) suit brought after 14 months; motion filed 3 months later Am. Rice, Inc. v. Arkansas Rice 3 weeks after granted Growers Coop. Ass’n, 532 F. Supp. increased level 1376, 214 U.S.P.Q. 936 (S.D. Tex. of 1982), aff’d, 701 F.2d 408, 218 infringement; U.S.P.Q. 489 (5th Cir. 1983) 4 years after less objectionable use SIXTH CIRCUIT Guar. Residential Lending, Inc. v. 6 years after denied Homestead Mortg. Co., 2005 U.S. initial use Dist. LEXIS 43640 (E.D. Mich. (motion by Dec. 13, 2005), later proceeding, 291 counterclaim Fed. Appx. 734 (6th Cir. 2008) plaintiff filed 9 months after lawsuit commenced) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 126 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Wells Fargo v. WhenU.com, Inc., 9 months denied 293 F. Supp. 2d 734 (E.D. Mich. 2003) R.L. Polk & Co. v. Infousa, Inc., 230 3 months dranted F. Supp. 2d 780 (E.D. Mich. 2002) McDonald’s Corp. v. Burger King 8-9 months denied Corp., 87 F. Supp. 2d 722, 54 U.S.P.Q.2d 1507 (E.D. Mich. 1999) P.T.C. Brands, Inc. v. Conwood Co. 8 months: suit granted L.P., 28 U.S.P.Q.2d 1895 (W.D. Ky. brought after 1993) 2 months; motion filed 6 months later Central Benefits Mutual Insurance 18 months granted Co. v. Blue Cross & Blue Shield Ass’n, 711 F. Supp. 1423, 11 U.S.P.Q.2d 1103 (S.D. Ohio. 1989) Frisch’s Rests., Inc. v. Elby’s Big at least 2 granted Boy of Steubenville Inc., 514 F. years Supp. 704, 213 U.S.P.Q. 559 (S.D. Ohio 1981), aff’d, 670 F.2d 642, 214 U.S.P.Q. 15 (6th Cir. 1982), cert. denied, 459 U.S. 916 (1982) SEVENTH CIRCUIT AM Gen. Corp. v. DaimlerChrysler Years after denial Corp., 311 F.3d 796 (7th Cir. 2002) knowledge of affirmed initial use At least 6 months after knowledge of alleged expansion of infringement Ty, Inc. v. Jones Group, Inc., 237 at least 8 grant F.3d 891, 57 U.S.P.Q.2d 1617 (7th months affirmed Cir. 2001) (motion filed 8 months after complaint was filed) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 127 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Ideal Indus., Inc. v. Gardner suit filed 7 granted Bender, Inc., 612 F.2d 1018, 204 months after U.S.P.Q. 177 (7th Cir. 1979), cert. notice; denied, 447 U.S. 924, 206 U.S.P.Q. preliminary 864 (1980) injunction motion filed 8 months later Helene Curtis Indus., Inc. v. suit filed granted Church & Dwight Co., Inc., 560 within weeks F.2d 1325, 195 U.S.P.Q. 218 (7th of notice; Cir. 1977), cert. denied, 434 U.S. preliminary 1070, 197 U.S.P.Q. 592 (1978) injunction filed 13 months later Vaughan Mfg. Co. v. Brikam Int’l, 10 months granted Inc., 814 F.2d 346, 1 U.S.P.Q.2d 2067 (7th Cir. 1987) Country Inns & Suites by Carlson, less than 1 granted Inc. v. Nayan, LLC, 2008 WL month 4735267 (S.D. Ind. Oct. 28, 2008) Miyano Mach. USA, Inc. v. approximately granted Miyanohitec Mach., Inc., 576 F. 1 year Supp. 2d 868 (N.D. Ill. 2008) Nat’l Council of Young Men’s One year granted Christian Assocs. of U.S. v. Human Kinetics Publishers, Inc., 2006 WL 752950 (N.D. Ill. Mar. 15, 2006) MB Fin. Bank, N.A. v. MB Real 9 months denied Estate Servs., L.L.C., 2003 WL 22765022 (N.D. Ill. Nov. 21, 2003) Keystone Consol. Indus. Inc. v. Mid- 7 months granted States Distrib. Co., 235 F. Supp. 2d 901 (C.D. Ill. 2002) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 128 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Floralife, Inc. v. Floraline Int’l, Inc., at least 3 granted 633 F. Supp. 108 (N.D. Ill. 1985), years notice of later proceeding, 807 F.2d 518, 1 limited use; U.S.P.Q.2d 1132 (7th Cir. 1986) less than 3 weeks after knowledge of expanison of use Ty, Inc. v. Softbelly’s, Inc., 2001 WL 10 months granted 125321 (N.D. Ill. Feb. 9, 2001) Ty, Inc. v. Publications Int’l, Ltd., 14 months granted 81 F. Supp. 2d 899 (N.D. Ill. 2000) Avent Am., Inc. v. Playtex Prods., 2-3 months granted Inc., 68 F. Supp. 2d 920 (N.D. Ill. 1999) Philip Morris, Inc. v. Allen 5 months granted Distribs., Inc., 48 F. Supp. 2d 844, 51 U.S.P.Q.2d 1013 (S.D. Ind. 1999) Reins of Life, Inc. v. Vanity Fair 8-9 months denied Corp., 5 F. Supp. 2d 629, 45 U.S.P.Q.2d 1854 (N.D. Ind. 1997) Porsche Cars N. Am., Inc. v. 4 years (10 granted Manny’s Porshop, Inc., 972 F. Supp. years from 1128, 43 U.S.P.Q.2d 1475 (N.D. Ill. first 1997) infringement dispute) RWT Corp. v. Wonderware Corp., 9 months denied 931 F. Supp. 583 (N.D. Ill. 1996) Eldon Indus., Inc. v. Rubbermaid, 4 1/2 years: denied Inc., 735 F. Supp. 786, 17 suit brought U.S.P.Q.2d 1280 (N.D. Ill. 1990) after 4 years; motion filed 6 1/2 months later Stokely-Van Camp, Inc. v. Coca- 3 months denied Cola Co., 2 U.S.P.Q.2d 1225 (N.D. Ill. 1987) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 129 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Am. Airlines, Inc. v. A 1-800-A-M-E- a few months granted R-I-C-A-N Corp., 622 F. Supp. 673, notice by high 228 U.S.P.Q. 225 (N.D. Ill. 1985) level employee; earlier notice by sales personnel Universal City Studios, Inc. v. 3 months granted Mueller Chem. Co., 223 U.S.P.Q. 798 (N.D. Ill. 1983) EIGHTH CIRCUIT Hubbard Feeds, Inc. v. Animal Feed 4 years denied Supplement, Inc., 182 F.3d 598, 51 U.S.P.Q.2d 1373 (8th Cir. 1999) Mutual of Omaha Ins. Co. v. Novak, 12 months granted 775 F.2d 247, 227 U.S.P.Q. 801 (8th Cir. 1985) Cmty. of Christ Copyright Corp. v. approximately granted Devon Park Restoration Branch of 1 year Jesus Christ’s Church, 613 F. Supp. 2d 1140 (W.D. Mo. 2009) Clam Corp. v. Innovative Outdoor 1 year after denied Solutions, Inc., 89 U.S.P.Q. 2d 1314 initial use (D. Minn. 2008) 3 months after alleged expansion of infringement Gander Mountain Co. v. Cabela’s, 3 months after denied Inc., 2006 WL 2788184 (D. Minn. objectionable Sept. 26, 2006) conduct by defendant More than 2 years after litigation between parties began Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 130 of 135

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NINTH CIRCUIT GoTo.com, Inc. v. Walt Disney Co., at least 5 grant 202 F.3d 1199, 53 U.S.P.Q.2d 1652 months affirmed (9th Cir. 2000) (additional delay prior to filing of complaint) Fogerty v. Poor Boy Prods., Inc., more than 1 reversing 124 F.3d 211 (9th Cir. 1997) year district court (unpublished) grant Ocean Garden, Inc. v. Marktrade 11 months granted Co., 953 F.2d 500, 21 U.S.P.Q.2d from notice of 1493 (9th Cir. 1991) intended sale, including 2-3 months from notice of actual sale Protech Diamond Tools, Inc. v. Liao, almost 3 years denied 2009 WL 1626587 (N.D. Cal. June 8, 2009) Volkswagen AG v. Verdier Microbus Approximately granted and Camper, Inc., 2009 WL 928130 2 months (N.D. Cal. Apr. 3, 2009) Cascade Fin. Corp. v. Issaquah 6-7 months denied Cmty. Bank, 2007 WL 2871981 (W.D. Wash. Sept. 27, 2007) Topline Corp. v. 4273371 Can., Inc., 10 months granted 2007 WL 2332471 (W.D. Wash. Aug. 13, 2007) PDL, Inc. v. All Star Driving School, More than 3 granted 2007 WL 1515139 (E.D. Cal. May years after 22, 2007) initial use 4-6 months after knowledge of alleged expansion of infringement Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 131 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Studio Red Inc. v. Rockwell 8 months denied Architecture Planning and Design, P.C., 2007 WL 1462458 (N.D. Cal. May 18, 2007) Jonathan Neil & Assoc., Inc. v. JNA At least 9 granted Seattle, Inc., 2007 WL 788354 months (W.D. Wash. Mar. 14, 2007) Nova Wines, Inc. v. Adler Fels 1-3 months granted Winery LLC, 467 F. Supp. 2d 965 (N.D. Cal. 2006) Conversive, Inc. v. Conversagent, More than 1 granted Inc., 433 F. Supp. 2d 1079 (C.D. year Cal. 2006) eAcceleration Corp. v. Trend Micro, More than 1 denied Inc., 408 F. Supp. 2d 1110 (W.D. year Wash. 2006) First Franklin Fin. Corp. v. 11 years after denied Franklin First Fin., Ltd., 356 F. first use Supp. 2d 1048 (N.D. Cal. 2005) At least 2 and up to 7 months after claimed first knowledge SMC Promotions, Inc. v. SMC 4 months after granted Promotions, 355 F. Supp. 2d 1127 suit (C.D. Cal. 2005) commenced First notice by plaintiff unclear Rain Bird Corp. v. Hit Prods. Corp., At least 17 granted 72 U.S.P.Q.2d 1105 (C.D. Cal. 2004) months Nautilus Group, Inc. v. Icon Health Several granted and Fitness, Inc., 308 F. Supp. 2d months 1208 (W.D. Wash. 2003) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 132 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Perfect 10, Inc. v. Cybernet 9 months after granted Ventures, Inc., 213 F. Supp. 2d suit 1146 (C.D. Cal. 2002) commenced First notice by plaintiff unclear H.O. Sports, Inc. v. Earth & Ocean 1-2 months granted Sports, Inc., 57 U.S.P.Q.2d 1927 (W.D. Wash. 2001) eBay, Inc. v. Bidder’s Edge, Inc., 2 years granted 100 F. Supp. 2d 1058 (N.D. Cal. 2000) (trespass and trademark case) Playboy Enters., Inc. v. Netscape 11 months denied Commc’ns Corp., 55 F. Supp. 2d 1070, 52 U.S.P.Q.2d 1162 (C.D. Cal. 1999) Sun Microsystems, Inc. v. Microsoft 6 weeks granted Corp., 999 F. Supp. 1301, 46 U.S.P.Q.2d 1531 (N.D. Cal. 1998) Guess?, Inc. v. Tres Hermanos, Inc., 9 months granted 993 F. Supp. 1277, 45 U.S.P.Q.2d 1179 (C.D. Cal. 1997) Anheuser-Busch, Inc. v. Customer 2-3 months granted Co., 947 F. Supp. 422 (N.D. Cal. 1996) Creative Tech. Ltd. v. SRT, Inc., 29 6 months after granted U.S.P.Q.2d 1474 (N.D. Cal. 1993) notice and sending of protest letter Sega Enters. Ltd. v. Accolade, Inc., 5 months: suit granted 785 F. Supp. 1392, 23 U.S.P.Q.2d brought after 1440 (N.D. Cal. 1992) 1 1/2 months; motion filed 3 1/2 months later Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 133 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Lisa Frank, Inc. v. Impact Int’l, 7 months after granted Inc., 799 F. Supp. 980 (D. Ariz. filing 1992) Complaint; 3 months after knowledge of expanded line of infringing products Nat’l Yellow Pages Serv. Ass’n v. 3 years granted O’Connor Agency, Inc., 9 U.S.P.Q.2d 1516 (C.D. Cal. 1988) Earth Tech. Corp. v. Envtl. 2 years granted Research & Technology, Inc., 222 U.S.P.Q. 585 (C.D. Cal. 1983) Steinway & Sons v. Robert Demars 2 years granted & Friends, 210 U.S.P.Q. 954 (C.D. Cal. 1981) TENTH CIRCUIT GTE Corp. v. Williams, 731 F.2d 3 years denied 676, 222 U.S.P.Q. 803 (10th Cir. 1984) Close to My Heart, Inc. v. Up to 2 years denied Enthusiast Media LLC, 508 F. after initial Supp. 2d 963 (D. Utah 2007) use Several months after alleged expansion of infringement Hodgdon Powder Co., Inc. v. Alliant 7 months denied Techsystems, Inc., 2006 WL 2092391 (D. Kan. July 26, 2006) Nature's Life, Inc. v. Renew Life 7 months denied Formulas, Inc., 2006 WL 62829 (D. Utah Jan. 11, 2006) Pimentel & Sons Guitar Makers, More than 2 granted Inc. v. Pimentel, 2005 WL 3664269 and up to 10 (D.N.M. Oct. 12, 2005) months Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 134 of 135

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HOLDING DELAY ON CASE LENGTH MOTION J.D. Williams & Co., Inc. v. Am. Approximately denied Home Mortgage Invest. Corp., 2005 6 months WL 1429271 (W.D. Okla. June 13, 2005) Simmons, Inc. v. Bombardier Inc., More than 4 denied 2002 WL 31956160 (D. Utah Sept. years 16, 2002), later proceeding, 73 Fed. Appx. 421 (Fed. Cir. 2003) Big O Tires, Inc. v. Bigfoot 4x4, Inc., more than 2 granted 167 F. Supp. 2d 1216 (D. Colo. years 2001) Packerware Corp. v. Corning 3-4 months denied Consumer Prods. Co., 895 F. Supp. 1438 (D. Kan. 1995) Studio 1712, Inc. v. Etna Prods. Co., 10 months: granted 777 F. Supp. 844, 22 U.S.P.Q.2d suit brought 1280 (D. Colo. 1991) after 4 months; motion filed 6 months later Universal Motor Oils Co. v. Amoco 3 months granted Oil Co., 15 U.S.P.Q.2d 1613 (D. Kan. 1990) Paramount Pictures Corp. v. Video 15 months denied Broad. Sys., 724 F. Supp. 808, 12 U.S.P.Q.2d 1862 (D. Kan. 1989) Cyclonaire Corp. v. U.S. Sys., Inc., 6 months granted 209 U.S.P.Q. 310 (D. Kan. 1980) Volkswagenwerk, G.m.b.H. v. 17 months granted Frank, 198 F. Supp. 916, 131 after lawsuit U.S.P.Q. 236 (D. Colo. 1961) ELEVENTH CIRCUIT AT & T Mobility LLC v. Nat’l Ass'n 2-3 months granted for Stock Car Auto Racing, Inc., 487 F. Supp. 2d 1370 (N.D. Ga. 2007), vacated and dismissed on other grounds, 494 F.3d 1356 (11th Cir. 2007) Hi-Tech Pharms., Inc. v. Herbal 7 months denied Health Prods., Inc., 311 F. Supp. 2d 1353 (N.D. Ga. 2004) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 135 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Seiko Kabushiki Kaisha v. Swiss 10 months denied Watch Int’l, Inc., 188 F. Supp. 2d 1350 (S.D. Fla. 2002) Bulova Corp. v. Bulova Do Brasil 4 1/2 years granted Com. Rep. Imp. & Exp. Ltda., 144 F. Supp. 2d 1329, 59 U.S.P.Q.2d 1077 (S.D. Fla. 2001) Golden Bear Int’l, Inc. v. Bear 8 months (first denied U.S.A., Inc., 969 F. Supp. 742, 42 use was more U.S.P.Q.2d 1283 (N.D. Ga. 1996) than a year prior to plaintiff’s first actual notice of use) Glen Raven Mills, Inc. v. Ramada 16 months denied, but Int’l, Inc., 1994 WL 230365 (M.D. from notice of court found Fla. 1994) intended use, that plaintiff including 11 had acted months after promptly notice of actual use Bellsouth Adver. & Publ’g Corp. v. 7-8 months granted Real Color Pages, Inc., 792 F. Supp. 775 (M.D. Fla. 1991) Original Appalachian Artworks, 5-10 months granted Inc. v. Topps Chewing Gum, Inc., 642 F. Supp. 1031, 231 U.S.P.Q. 850 (N.D. Ga. 1986) D.C. CIRCUIT Nat’l Rural Elec. Coop. Assoc. v. several weeks granted Nat’l Agric. Chem. Assoc., 26 after U.S.P.Q.2d 1294 (D.D.C. 1992) knowledge of increased scope of infringement Delmatoff, Gerow, Morris, 12 months denied Langhans, Inc. v. Children’s Hosp. Nat’l Med. Ctr., 12 U.S.P.Q.2d 1136 (D.D.C. 1989)