692 F. App'x 215
5th Cir.2017Background
- Demitri Brown and Donna Evans-Brown sued for state-law trademark infringement over the mark “Disturbing the Peace” (Disturb Mark); Christopher Bridges (stage name Ludacris) counterclaimed under the Lanham Act asserting rights in “Disturbing Tha Peace” (DTP Mark).
- Browns sought default judgment against Roberta Shields and Disturbing Tha Peace Entertainment Company (DTPEC); district court declined after finding service was not proper.
- Browns alleged Bridges committed fraud and intentionally failed to serve Brown at his prison address during USPTO cancellation proceedings that led to cancellation of Brown’s federal registration.
- District court held Browns’ state-law claims barred by laches because they waited over eight years after they knew or should have known of Bridges’s USPTO petition to sue.
- District court granted summary judgment for Bridges on his federal trademark claim, concluding he owned valid registrations and Browns’ fraud/invalidity allegations lacked evidentiary support.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Default judgment against Shields/DTPEC | Browns argued default was appropriate because defendants failed to defend | Bridges/others showed Shields/DTPEC were never properly served | No default; service was improper so refusal to enter default was correct |
| Laches bars state-law claims | Laches inapplicable because Browns lacked actual notice and Bridges had unclean hands via fraud | Bridges argued laches applies once plaintiffs knew or should have known of injurious conduct; no evidence of fraud or improper service | Laches applies; Browns unreasonably delayed and offered no evidence of Bridges’ fraud or improper service |
| Application of laches to injunctive relief | Injunctive relief should not be barred by laches | Laches can bar equitable relief where delay is unreasonable | Laches can bar injunctive relief; district court correctly applied it |
| Validity of Bridges’s federal trademark registrations | Browns contended registrations are void due to alleged fraud in USPTO cancellation | Bridges showed valid registrations and proper service during cancellation; Browns failed to produce evidence of fraud | Summary judgment for Bridges; registrations valid and enforceable |
Key Cases Cited
- Andrade v. Chojnacki, 338 F.3d 448 (5th Cir. 2013) (recusal motion not considered when not raised below)
- Lewis v. Lynn, 236 F.3d 766 (5th Cir. 2001) (default judgment standards)
- Rogers v. Hartford Life & Accident Ins. Co., 167 F.3d 933 (5th Cir. 1999) (service and default judgment principles)
- Yohey v. Collins, 985 F.2d 222 (5th Cir. 1993) (conclusory allegations insufficient to avoid summary judgment)
- Abraham v. Alpha Chi Omega, 708 F.3d 614 (5th Cir. 2013) (laches and equitable relief principles)
- Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998) (laches accrues when plaintiff knew or should have known of injury)
- Nola Spice Designs, L.L.C. v. Haydel Enters., Inc., 783 F.3d 527 (5th Cir. 2015) (elements for federal trademark infringement)
- Turner v. Baylor Richardson Med. Ctr., 476 F.3d 337 (5th Cir. 2007) (summary judgment standards)