Clean Crawl, Inc. v. Crawl Space Cleaning Pros, Inc.

Opinion

1 2

5 UNITED STATES DISTRICT COURT AT TACOMA 7 CLEAN CRAWL, INC., CASE NO. C17-1340 BHS 8 Plaintiff, ORDER DENYING 9 v. DEFENDANT’S SECOND MOTION FOR PARTIAL INC., GRANTING PLAINTIFF’S 11 MOTION FOR LEAVE TO FILE Defendant. DECLARATION 12

13 This matter comes before the Court on Defendant Crawl Space Cleaning Pros’ 14 (CSCP) second motion for partial summary judgment, Dkt. 120, and Plaintiff Clean 15 Crawl, Inc’s (“CCI”) motion for leave to file declaration of Charles E. Henrichsen 16 (“Second Henrichsen Decl.”), Dkt. 129. The Court has considered the pleadings filed in 17 support of and in opposition to the motions and the remainder of the file and hereby 18 denies the motion for summary judgment and grants the motion for leave to file 19 declaration for the reasons stated herein. 20 21 22 2 This suit arises from copyright and trademark disputes between CCI and CSCP,

3 two businesses which clean attic and crawl spaces and provide pest exclusion services for 4 homes in the Western Washington area. 5 CCI began doing business in its current iteration in 2001 when its president, 6 Charles Henrichsen (“Henrichsen”), transferred his Bio Bug Pest Management, Inc. 7 business to CCI, Dkt. 48 at 6, and began using the trade name Clean Crawls, Dkt. 49, 8 Declaration of Charles Henrichsen (“Henrichsen Decl.”) at 3. CCI is headquartered in

9 Marysville, Washington. Dkt. 1, ⁋ 2. CSCP began operations on January 9, 2013, under 10 founder and owner Richard Herron (“Herron”). Dkt. 39 (citing Dkt. 40, Declaration of 11 Richard Herron (“Herron Decl.”), at 1). Henrichsen and Herron had met each other in 12 2008, and Henrichsen declares that he mentored Herron in starting a business, 13 Sustainable Building and Insulation (“SBI”). Henrichsen Decl. at 3–4. Henrichsen

14 declares that he made SBI a CCI subcontractor, and one of his employees, CCI sales 15 representative Jared Pullen (“Pullen”), referred “many jobs” to SBI. Id. at 4. Henrichsen 16 declares that these referrals allowed Pullen and Herron to be “heavily exposed” to CCI’s 17 “family of trademarks and copyrights” between 2010 and 2013. Id. Henrichsen also 18 declares that all of CCI’s copyrighted materials at issue “were substantially completed in

19 the form registered in the 2008-2009 time frame.” Id. at 5. 20 Henrichsen specifically declares that by 2012, Herron and Pullen “knew and had 21 used repeatedly in association with [CCI] its family of trademarks,” including the 22 CLEAN CRAWLS trade name, WE GO WHERE YOU DON’T WANT TO (“Slogan 1 One”), and WE DO THE WORK YOU DON’T WANT TO (“Slogan Two”) (collectively 2 “the family of marks”). Henrichsen Decl. at 4. Henrichsen declares that CCI has used the

3 Clean Crawls trade name, Slogan One, and Slogan Two “and similar slogan variations 4 with customers on a daily basis, and have for more than 15 years throughout the Pacific 5 Northwest,” but typically has not used its slogans in printed advertising or on company 6 vehicles or other items, “instead using them primarily on the Internet and verbally with 7 customers, associates, and the public.” Id. 2–3, 6, 7. Henrichsen and others at CCI declare 8 that CCI has used the Slogans extensively dating back to at least 2010. See, e.g.

9 Henrichsen Decl. at 4; Dkt. 50 Declaration of Vice President of CCI Dale Gjerness 10 (“Gjerness Decl.”) at 4–5; Dkt. 52, Declaration of Patrick J. Smith (“Smith Decl.”), at 1. 11 A. 2013 12 Herron testified as CSCP’s corporate representative that CSCP acquired the 13 CrawlPros.com domain name “either in the end of 2012 or the beginning of 2013.” Dkt.

14 121, Ex. 2 at 211. CSCP began operations at a single location in Tacoma in early 2013. 15 Herron declares that it used Slogan One extensively to brand its business. See Herron 16 Decl. at 6–41; Dkt. 120 at 2. Herron testified as CSCP’s corporate representative that an 17 employee named Paul came up with Slogan One in “April, May, around that time frame, 18 in 2013” as Paul was finishing out his time with CSCP before moving to Australia. Dkt.

19 121 at 79–80. 20 CCI Vice President Dale Gjerness testified that he became aware of CSCP’s 21 existence by “2014, 2013, somewhere in there.” Dkt. 123, Ex. 1 at 49. CCI General 22 Manager Andrew Gjerness testified as CCI’s corporate representative that CCI first 1 became aware that CSCP used the name Crawl Space Cleaning Pros “sometime in mid- 2 2013, around the summer,” because salesmen “down in that area” including Pullen and

3 Henrichsen heard that Herron had started a new company and was operating under that 4 name. Dkt. 121, Ex. 2 at 11. 5 In 2013, CSCP placed Slogan One in advertising including an Angie’s list ad, on 6 company cars and trucks, and on its company headquarters. Herron Decl. at 6–24. CSCP 7 opened its second location in Everett, Washington sometime between 2013 and 2016. 8 Dkt. 120 at 2 & n.6 (citing Dkt. 119, Ex. A at 131).1 Between 2013 and 2019, Herron

9 testified, CCI and CSCP would have both been required to have industry representatives 10 present at annual meetings for three utility companies—Tacoma Power, Puget Sound 11 Energy, and Snohomish County Public Utility District. Dkt. 121, Ex. 5 at 64. Henrichsen 12 testified that he saw Herron at Tacoma Power and Puget Sound Energy meetings. Dkt. 13 121, Ex. 4 at 86. Herron also testified that during that span “[t]here could be times at the

14 Seattle Home Show where [CCI does] show up and have a booth that [CSCP] would have 15 a booth too.” Id. Henrichsen testified that the Seattle Home Show occurs twice a year but 16 17

18 1 Dkt. 119 is filed under seal. Ex. A contains the material referenced in Dkt. 121, Ex. 1, and Ex. B contains the material referenced in Dkt. 121, Ex. 8. CSCP’s motion states that CSCP opened its second location in Everett, Washington in 2013. Dkt. 120 at 2. The underlying 19 citation, filed under seal, shows that when Herron as CSCP’s corporate representative was asked at deposition in 2019 when CSCP moved to Everett, he replied “[t]hat would have been two and 20 a half years ago.” Dkt. 119, Ex. A at 131. CCI also argues that CSCP expanded to Everett in 2016. Dkt. 122 at 5. The Court also notes that though the referenced portion of Herron’s 30(b)(6) 21 deposition was submitted under seal, the Court finds no reason to redact this information in this order. If a party disagrees with this conclusion, it may file a motion to seal this portion of this 22 order. 1 CCI “didn’t always do it twice a year. Most of the time we did it, but not always.” Dkt. 2 121, Ex. 4 at 76.

3 B. 2014 4 Herron testified as CCI’s corporate representative that in Spring 2014, he was at 5 the Seattle Home Show at CSCP’s booth, and Henrichsen came by the booth. Dkt. 121, 6 Ex. 2 at 64. Herron testified that Henrichsen looked at a banner on the booth which 7 featured Slogan One, read Slogan One out loud to Herron, and told Herron “[t]hat’s a 8 great slogan, Richard.” Id. Herron testified that the spring Home Show was usually held

9 in March or April. Id. at 65. Henrichsen testified that his guess was the first time he saw 10 CSCP at the show was in 2013 or 2014, “[s]omewhere around the time” that CSCP 11 started and testified that he would see CSCP’s banners. Dkt. 121, Ex. 4 at 76–77. When 12 asked in deposition if he ever complimented Herron on his booth, Henrichsen replied 13 “Maybe.” Dkt. 121, Ex. 4 at 78. Henrichsen declared that he never saw Slogan One at the

14 Home Show and declared that if he had, he would have complained about it. Dkt. 122 at 15 5 (citing Second Henrichsen Decl., ⁋ 3). Henrichsen also declared that he never 16 complimented Herron on CSCP’s use of Slogan One. Id. (citing Second Henrichsen 17 Decl., ⁋ 4). 18 In 2014, according to Herron’s testimony, he was approached by Pullen at an

19 industry show. Dkt. 121, Ex. 5 at 55–56.2 Pullen told Herron he had planned to leave CCI 20 to start his own business but that plan had failed and CCI had reassigned his territory, so 21 2 In response to interrogatory, CCI stated that Pullen and the other employees left in 22 2013. Dkt. 121, Ex. 9 at 7. 1 he was interested in a position with CSCP. Id. Herron conducted two interviews with 2 Pullen “probably in February or March of 2014” and then hired him as CSCP’s sales

3 manager “in 2014.” Id. at 56. Pullen worked for CSCP “for approximately six months 4 before [CCI] hired him back.” Id. at 56–57. Herron testified that at an unspecified point, 5 Henrichsen told him he “could use [CCI’s Project Graph] to create my own graph as long 6 as [Herron] changed it up some.” Dkt. 127 at 88–89.3 Herron as CSCP’s corporate 7 representative testified that Pullen created CSCP’s venting calculator. Dkt. 119 at 184– 8 85.4

9 Henrichsen testified that approximately fifteen employees left CCI around the time 10 Pullen left and when they came back some three weeks later, told him they had been 11 working at CSCP. Dkt. 121, Ex. 4 at 71. He declared that this episode constituted “a 12 major disruption to our business in the southern branch.” Henrichsen Decl. at 5. Herron 13 testified as CSCP’s corporate representative that “somewhere around March, April” of

14 2014, fifteen CCI employees came to CSCP seeking employment because CCI reduced 15 their commissions and he hired three of them. Dkt. 119 at 168–69.5 Herron also testified 16 17 18

3 Dkt. 127 contains additional pages of Herron’s deposition inadvertently omitted from 19 Dkt. 121, Ex. 5. The Court’s pincites for Dkt. 127 are to the page numbers of Herron’s deposition transcript. 20 4 Although this information was submitted under seal, the Court finds no reason to redact 21 this information in this order. If a party disagrees with this conclusion, it may file a motion to seal this portion of this order. 22 5 See footnote 4. 1 that during a conversation after a Tacoma Power annual meeting, Henrichsen told him 2 that most of these employees returned to CCI. Dkt. 119 at 169.6

3 Henrichsen testified that when Pullen returned to CCI as an employee, he told 4 Henrichsen that CSCP had copied CCI’s “project worksheet, bid sheet, the venting 5 calculator and the project graph.” Dkt. 121, Ex. 4 at 114. Henrichsen testified that other 6 salesmen had also told him about the copying, but he did not know if it was before or 7 after Pullen returned as an employee. Id. at 114–15. Henrichsen testified that a particular 8 salesman, Jeff Young, told him “[a] couple of years ago, maybe” that CSCP copied CCI’s

9 project worksheet. Id. at 116. In response to a series of questions about which salesmen 10 had notified him about copying of particular documents, Henrichsen confirmed these 11 conversations had all occurred a couple of years ago. Id. at 117. Henrichsen testified that 12 he did not discuss this copying with Herron when he learned of it because he prefers to 13 “just focus on my own business and move ahead, that’s why. I try to ignore the

14 competition and do what I need to do to take care of my employees and my customers.” 15 Id. 16 C. 2014–2016 17 Herron, as CCI’s corporate representative, testified that between 2014 and 2015 18 Henrichsen was president of the Washington Weatherization Association (“WWA”). Dkt.

19 121, Ex. 5 at 64.7 Henrichsen testified this was “an association of your insulation 20 6 See footnote 4. 21 7 CSCP submits a printout of an internet search for Henrichsen’s LinkedIn profile, which lists under “Organizations” that Henrichsen was president of the Washington Weatherization 22 Association starting in March 2014. Dkt. 121, Ex. 10. 1 contractors” which he joined “because every business owner wants to be able to share 2 and try to help each other out to grow a business.” Dkt. 121, Ex. 4 at 36. When asked if

3 he had conversations with Herron about CSCP after CSCP began operations, Henrichsen 4 testified “we would run into each other when I was on the way out from the 5 Weatherization Association.” Dkt. 121, Ex. 4 at 85. 6 Andrew Gjerness as CCI’s corporate representative testified that CCI first “heard 7 stuff” in 2015 or 2016 on the topic of CSCP’s using CCI’s Project Graph. Dkt. 123, Ex. 3 8 at 42. He testified that Henrichsen “might have heard a rumor or two, but he thought

9 nothing of it, that they were using our stuff.” Id. 10 Between 2014 and 2017, CSCP expanded its use of Slogan One to include 11 business cards, customer giveaways, a domain name, advertising, its payment 12 authorization form, and company jackets. Herron Decl. at 25–41. In late 2016, CSCP 13 opened a third location in Marysville, Washington. Dkt. 120 at 2.

14 When asked if he had ever seen CSCP’s advertising prior to March 2017, Dale 15 Gjerness testified “I may have seen a truck going down the freeway or so, but not looking 16 at the website, nothing.” Dkt. 121, Ex. 6 at 76. He also testified that at a meeting at some 17 point prior to March 2017 he saw a CSCP employee wearing “either a green jacket or a 18 green shirt - - and it said Crawl Pros - - it must have been Crawl Space Cleaning Pros.”

19 Id. at 77. 20 D. 2017 21 On March 20, 2017, CSCP applied to register Slogan One in Washington as a 22 trademark in class 37, registering it for use with “[c]leanup of crawl spaces and attics and 1 insulation installation services.” Dkt. 41, Declaration of Emilia L. Sweeney (“Sweeney 2 Decl.”) at 5–14. Also in March 2017, Herron declares that CSCP “learned that CCI had

3 begun using [Slogan One] on CCI’s website,” and so asked CCI to cease and desist. 4 Herron Decl. at 3–4. Herron declares that CSCP received a favorable response but later 5 found that CCI “had added a TM to the end of [Slogan One] and was also using the 6 confusingly similar [Slogan Two] on its website.” Id. Andrew Gjerness as CCI’s 7 corporate representative testified that CCI first became aware CSCP had used Slogan One 8 when CCI received the cease and desist letter from CSCP sometime in March or April of

9 2017. Dkt. 123, Ex. 3 at 12–13. Andrew Gjerness also testified that in May, June, or July 10 of 2017, a new sales manager at CCI, Mike Tutsie, “got competitive bids from quite a 11 few of our competitors to kind of understand how the process was” which was the first 12 time CCI “actually saw” that CSCP was using CCI’s documents, specifically the Project 13 Graph and Project Bid Sheet. Dkt. 123, Ex. 3 at 20, 42, 53, 56.

14 On July 6, 2017, CCI submitted an application for protection of Slogan One with 15 the United State Patent and Trademark Office (“USPTO”). Dkt. 57-1 at 51. CSCP also 16 filed for protection of Slogan One with the USPTO, which issued a Notice of Publication 17 on July 12, 2017, announcing its intent to register Slogan One to CSCP. Sweeney Decl. at 18 15–24. Andrew Gjerness as CCI’s corporate representative testified that in June or July

19 2017, CCI became aware through checking social media to compare competitor’s 20 advertisements that CSCP was changing their name to Crawl Pros. Dkt. 121, Ex. 3 at 12. 21 Herron testified as CSCP’s corporate representative that CSCP changed its name because 22 it was entering the Portland, Oregon market in August of 2017 and because it owned the 1 CrawlPros.com domain name. Dkt. 121, Ex. 2, at 211. Herron also testified as CSCP 2 President that CSCP’s goal was to entirely switch the name under which CSCP does

3 business from Crawl Space Cleaning Pros to Crawl Pros by the end of 2019. Dkt. 123, 4 Ex. 4 at 31. 5 On August 14, 2017, CSCP filed a complaint against CCI in the Pierce County 6 Superior Court for the State of Washington for violation of Washington’s Trademark 7 Registration Act, RCW Chapter 19.77 et seq., common law trademark infringement, and 8 violation of Washington’s Consumer Protection Act (“CPA”), RCW Chapter 19.86. Dkt.

9 39 at 5. On September 6, 2017, CCI filed this lawsuit against CSCP, alleging copyright 10 infringement, trademark infringement, false designation of origin and unfair competition 11 in violation of the CPA, and seeking a permanent injunction against infringement of the 12 copyrighted materials and the trademarked materials, destruction of all infringing 13 materials, damages, and other relief. Dkt. 1. On October 10, 2017, CCI registered Slogan

14 Two as a service mark with the USPTO. Dkt. 57-1 at 53. On November 28, 2017, CCI 15 filed a Notice of Opposition to CSCP’s application for protection of Slogan One with the 16 federal Trademark Trial and Appeal Board, Sweeney Decl. at 26–31, citing CCI’s July 6 17 application for protection of Slogan One, see Dkt. 57-1 at 51.8 18 On March 19, 2018, CSCP filed an amended answer in the instant case, asserting

19 counterclaims and affirmative defenses including laches. Dkt. 32. On September 6, 2018, 20 CSCP filed a motion for summary judgment. Dkt. 39. On January 29, 2019, the Court 21 8 CSCP informed the Court that this proceeding is suspended pending the outcome of the 22 instant suit. Dkt. 39 at 4. 1 granted the motion as to CCI’s copyright claims for two of the five copyrighted 2 documents at issue. Dkt. 75 at 40. The Court denied summary judgement as to CCI’s

3 trademark claims, and reserved ruling and requested supplemental briefing as to CCI’s 4 copyright claims for the remaining three documents, a Project Graph, a Project Bid Sheet, 5 and a Venting Calculator. Id. On March 1, 2019, in response to CSCP’s request for a 6 continuance, Dkt. 86, and CCI’s notice of non-opposition, Dkt. 101, the Court granted the 7 motion for a continuance and struck the scheduling order based on the then-existing trial 8 date. Dkt. 105. On May 31, 2019, the Court ruled on the remaining questions from

9 CSCP’s motion for summary judgment and granted summary judgment only as to the 10 second page of the Venting Calculator document and denied summary judgment as to the 11 remainder of the motion. Dkt. 112. 12 On July 11, 2019, CSCP filed its second motion for partial summary judgment. 13 Dkt. 120. On July 29, 2019, CCI responded. Dkt. 122. On August 2, 2019, CSCP replied.

14 Dkt. 126. 15 On August 6, 2019, CCI filed a motion for leave to file Dkt. 128, Second 16 Henrichsen Declaration. Dkt. 129. CSCP did not respond. 17 On September 25, 2019, in response to the parties’ joint status reports, the Court 18 set a new trial date and new pretrial deadlines including a new dispositive motions

19 deadline of October 16, 2019. Dkt. 136. 20 21 22 2 A. Summary Judgment Standard

3 Summary judgment is proper only if the pleadings, the discovery and disclosure 4 materials on file, and any affidavits show that there is no genuine issue as to any material 5 fact and that the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). 6 The moving party is entitled to judgment as a matter of law when the nonmoving party 7 fails to make a sufficient showing on an essential element of a claim in the case on which 8 the nonmoving party has the burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 323

9 (1986). There is no genuine issue of fact for trial where the record, taken as a whole, 10 could not lead a rational trier of fact to find for the nonmoving party. Matsushita Elec. 11 Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986) (nonmoving party must 12 present specific, significant probative evidence, not simply “some metaphysical doubt”). 13 See also Fed. R. Civ. P. 56(e). Conversely, a genuine dispute over a material fact exists if

14 there is sufficient evidence supporting the claimed factual dispute, requiring a judge or 15 jury to resolve the differing versions of the truth. Anderson v. Liberty Lobby, Inc., 477 16 U.S. 242, 253 (1986); T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass’n, 809 F.2d 17 626, 630 (9th Cir. 1987). 18 The determination of the existence of a material fact is often a close question. The

19 Court must consider the substantive evidentiary burden that the nonmoving party must 20 meet at trial—e.g., a preponderance of the evidence in most civil cases. Anderson, 477 21 U.S. at 254; T.W. Elec. Serv., Inc., 809 F.2d at 630. The Court must resolve any factual 22 issues of controversy in favor of the nonmoving party only when the facts specifically 1 attested by that party contradict facts specifically attested by the moving party. The 2 nonmoving party may not merely state that it will discredit the moving party’s evidence

3 at trial, in the hopes that evidence can be developed at trial to support the claim. T.W. 4 Elec. Serv., Inc., 809 F.2d at 630 (relying on Anderson, 477 U.S. at 255). Conclusory, 5 nonspecific statements in affidavits are not sufficient, and missing facts will not be 6 presumed. Lujan v. Nat’l Wildlife Fed’n, 497 U.S. 871, 888–89 (1990). 7 B. Motion for Leave to File the Second Henrichsen Declaration 8 In its motion, CCI explains that though the substance of the Second Henrichsen

9 Declaration was extensively cited in its opposition papers, Dkt. 122, CCI’s counsel 10 inadvertently did not include the declaration in its supporting exhibits. Dkt. 129 at 1. CCI 11 asks the Court for leave to file the declaration. Id. CSCP did not respond to the motion. 12 CCI explains that on August 5, 2019 when it discovered the error, it notified CSCP and 13 served the declaration immediately, though this occurred after CSCP’s reply was due and

14 filed. Id. at 2. CCI argues and provides a supporting declaration that CSCP’s counsel 15 confirmed by phone it would not be prejudiced by the error. Id.; Dkt. 130, ⁋ 5. 16 Federal Rule of Civil Procedure 6(b)(1)(B) provides that when an act must be 17 performed within a specified time, a court may for good cause extend the time “on 18 motion made after the time has expired if the party failed to act because of excusable

19 neglect.” Neglect includes negligence and inadvertence. Briones v. Riviera Hotel & 20 Casino, 116 F.3d 379, 381 (9th Cir. 1997) (citing Pioneer Inv. Servs. Co. v. Brunswick 21 Assocs. Ltd. P’ship, 507 U.S. 380, 391 (1993)). Whether neglect is “excusable” in 22 motions under Rule 6(b) should be determined by (1) the danger of prejudice to the 1 opposing party, (2) the length of the delay and its impact on the proceedings, (3) the 2 reason for the delay, and (4) whether the movant acted in good faith. Id. (citing Comm.

3 for Idaho’s High Desert, Inc. v. Yost, 92 F.3d 814 (9th Cir. 1996)). Here, the Court finds 4 no evidence of prejudice, a lack of identifiable impact on the proceedings (as it appears 5 the substance of the declaration was clear from CCI’s motion), and no indication of bad 6 faith. To avoid potential prejudice to CSCP, the Court will rely on the substance of the 7 declaration as represented in CCI’s motion—the substance that was available to CSCP in 8 crafting its reply. Therefore, the Court grants CCI’s motion for leave to file the Second

9 Henrichsen Declaration, Dkt. 129. 10 C. Merits 11 CSCP asks the Court to grant summary judgment on all of CCI’s remaining 12 trademark claims and on all equitable relief sought for CCI’s remaining copyright claims 13 based on CSCP’s affirmative laches defense.

14 1. Trademark Claims 15 In its complaint, CCI makes three primary trademark allegations: (1) that CSCP’s 16 trade name Crawl Space Cleaning Pros creates a strong likelihood of consumer confusion 17 with CCI’s trade name Clean Crawls, (2) that CCI has the rights to Slogan One and 18 CSCP’s use of Slogan One directly infringes on those rights, and (3) that CSCP’s use of

19 Slogan One creates a likelihood of confusion with and thus infringes CCI’s rights in 20 Slogan Two. Dkt. 1, ⁋⁋ 15–20, 24–27. 21 In its previous motion for partial summary judgment, CSCP argued that all of 22 CCI’s trademark claims were barred by laches based on the Henrichsen Declaration and 1 the Declaration of Dale Gjerness, Dkt. 50. See Dkt. 75 at 27. The Court found that neither 2 declaration clearly established CSCP’s contention that CCI knew of CSCP’s alleged

3 trademark infringement since 2012. Id. CSCP moves again for summary judgment on 4 laches arguing that additional discovery bolsters its case, including deposition testimony 5 from CCI’s corporate representative Andrew Gjerness and from Henrichsen, CCI’s 6 President. Dkt. 120 at 1. 7 The parties now also raise the issue that any CCI allegations about CSCP’s shift to 8 the trade name Crawl Pros are not addressed in CCI’s complaint. While CCI argues that

9 these allegations are already contemplated as part of this case, it requests leave to 10 supplement its pleadings pursuant to Fed. R. Civ. P. 15(d) should the Court find it 11 necessary. Dkt. 122 at 24. CSCP argues, and the Court agrees, that plaintiffs may not 12 supplement their complaints to avoid summary judgment. Dkt. 126 at 11–12. See, e.g. 13 Glesenkamp v. Nationwide Mut. Ins. Co., 71 F.R.D. 1 (N.D. Cal. 1974), aff’d per curiam,

14 540 F.2d 458 (1976) (“The liberal amendment policy of the Federal Rules was not 15 intended to allow a party to circumvent the effects of summary judgment by amending 16 the complaint every time a termination of the action threatens.”). However, this Order 17 does not terminate the action, and CCI may file a motion to amend or supplement as it 18 finds appropriate. The Court will assess the equities of amendment if CCI files such a

19 motion. The Court will not analyze CCI’s claims regarding CSCP’s use of the trade name 20 Crawl Pros because it is now clear that those claims are outside the pleadings and thus 21 not properly before the Court. 22 1 a. Knowledge and the Presumption of Laches 2 “To establish that laches bars a claim, a defendant must ‘prove both an

3 unreasonable delay by the plaintiff and prejudice to itself.’” Eat Right Foods Ltd v. Whole 4 Foods Market, Inc., 880 F.3d 1109, 1116 (9th Cir. 2018) (“Eat Right”) (quoting 5 Evergreen Safety Council v. RSA Network Inc., 697 F.3d 1221, 1226 (9th Cir. 2012)). 6 “Determining whether a delay was unreasonable requires answering two questions: how 7 long was the delay, and what was the reason for it?” Id. (citing Jarrow Formulas, Inc. v. 8 Nutrition Now, Inc., 304 F.3d 829, 838 (9th Cir. 2002)). “To measure the length of a

9 delay, we start the clock ‘when the plaintiff knew (or should have known) of the 10 allegedly infringing conduct,’ and we stop it when ‘the lawsuit in which the defendant 11 seeks to invoke the laches defense’ is initiated.” Id. (quoting Evergreen Safety Council, 12 697 F.3d at 1226). “If the most analogous state statute of limitations expired before the 13 suit was filed, there is a strong presumption in favor of laches.” Pinkette Clothing, Inc. v.

14 Cosmetic Warriors Limited, 894 F.3d 1015, 1025 (9th Cir. 2018). Conversely, “[i]f the 15 plaintiff filed suit within the analogous limitations period, the strong presumption is that 16 laches is inapplicable.” Jarrow, 304 F.3d at 835–36 (citation omitted). 17 The parties do not dispute and the Court agrees that the most analogous state 18 statute of limitations for the trademark infringement claims is Washington’s three-year

19 statute of limitations on claims for trade name infringement. See Dkt. 120 at 10; Dkt. 122 20 at 11 (“CSCP must show that CCI ‘knew or should have known’ it had a cause of action 21 against CCP for trademark infringement . . . sometime before September 6, 2014.”); see 22 also Eat Right, 880 F.3d at 1115 (parties agreed Washington’s three-year statute of 1 limitations for trade name infringement was analogous for Lanham Act trade name 2 claims). CCI filed suit on September 6, 2017. Dkt. 1. Thus if CCI knew or should have

3 known of CSCP’s alleged infringement prior to September 6, 2014, the presumption is 4 that laches applies. 5 “The essence of [a trademark infringement claim] centers on the likelihood of 6 confusion between two marks or products.” Internet Specialties W., Inc. v. Milon- 7 DiGiorgio Enters., Inc., 559 F.3d 985, 990 (9th Cir. 2009) (citing GoTo.com, Inc. v. Walt 8 Disney Co., 202 F.3d 1199, 1205 (9th Cir. 2000); Brookfield Comms., Inc. v. W. Coast

9 Entm’t Corp., 174 F.3d 1036, 1053 (9th Cir. 1999)). “Thus, the question is whether [the 10 plaintiff] knew or should have known about the likelihood of confusion between its mark 11 and [the defendant’s] mark.” Id. Actual knowledge of infringement is not required; the 12 Ninth Circuit explained “[o]n multiple occasions, we have held that laches barred an 13 otherwise meritorious trademark or copyright claim because the plaintiff had constructive

14 knowledge of potentially infringing activity outside the limitations period.” Id. (citing 15 Evergreen Safety Council, 697 F.3d at 1227; Miller v. Glenn Miller Prod., Inc., 454 F.3d 16 975, 999 (9th Cir. 2006); E-Systems, Inc. v. Monitek, Inc., 720 F.2d 605, 607 (9th Cir. 17 1983) (“E-Systems”)). 18 While CSCP argues that the Court may proceed to a laches analysis even if a

19 dispute of material fact exists about when CCI knew or had reason to know about 20 potentially infringing activity, Dkt. 126 at 4, the Court must not resolve a dispute of 21 material fact in favor of the moving party at summary judgment. See, e.g., Jarrow, 304 22 F.3d at 833–34 (“we review de novo whether the district court inappropriately resolved 1 any disputed material facts in reaching its decision.”). However, the Court may exercise 2 discretion in applying the laches doctrine to the facts. Eat Right, 880 F.3d at 1115.

3 The parties dispute whether and when CCI knew or had reason to know of CSCP’s 4 infringement and also dispute whether the laches period should be established separately 5 for each mark at issue. Neither party cites authority on the issue of separate analyses. 6 CSCP appears to argue that laches should be decided jointly as to all of CCI’s trademark 7 infringement claims. See Dkt. 126 at 3 (“CCI further asserts that CSCP must satisfy the 8 Ninth Circuit’s laches analysis for each and every concomitant use of the three marks or

9 trade names at issue.”) (footnote omitted). Because each trademark represents a property 10 right, the Court will analyze each mark separately. See New Kids on the Block v. News 11 Am. Pub., Inc., 971 F.3d 302, 306 (9th Cir. 1992) (“A trademark is a limited property 12 right in a particular word, phrase, or symbol.”). 13 The parties’ dispute about whether constructive knowledge should be imputed to

14 CCI includes an apparent disagreement about what standard the Court should use to 15 makes its determination. In discussing constructive knowledge, CSCP emphasizes CCI’s 16 lack of reasonable diligence and failure to police its marks, arguing that “a reasonably 17 prudent business person seeking to police its marks in Henrichsen’s position” would have 18 recognized the likelihood of confusion as early as mid-2013 when he became aware of

19 CSCP’s operations and should have taken steps to enforce CCI’s rights. Dkt. 120 at 13– 20 14. CCI counters that “given that CSCP’s admitted significant expansion and growth did 21 not occur until 2016, the evidence—viewed it [sic] the light most favorable to CCI— 22 1 confirms that a possible knowledge . . . whether actual or constructive, would not have 2 occurred prior to 2016 at the earliest.” Dkt. 122 at 12.

3 Though the concept of what a plaintiff “should have known” could on its terms 4 include what a reasonable person should have done to investigate possible infringement, 5 the Court finds that courts conduct this analysis in the context of the E-Systems factors 6 courts use to assess the equity of a laches defense. See, e.g. Pinkette Clothing, 894 F.3d at 7 1027 (In finding plaintiff was not diligent, the Ninth Circuit reasoned “[e]ven though 8 [plaintiff’s] outside counsel received notice of [defendant’s] registration application, and

9 even though [plaintiff] otherwise strictly polices its mark, [plaintiff] waited . . . to file its 10 petition for cancellation.”). 11 The Court finds that Ninth Circuit analysis of constructive knowledge to start the 12 laches clock considers actions a plaintiff took or information they were exposed to based 13 on the plaintiff’s actions during the period of infringement, not actions a plaintiff should

14 have taken to gather knowledge but did not. In Eat Right, the Circuit found constructive 15 knowledge when the plaintiff had an ongoing business relationship with the defendant, 16 the defendant publicized the program incorporating the allegedly infringing mark on its 17 website, the plaintiff’s managing director visited one of the defendant’s stores when the 18 mark was displayed, referenced a campaign with the mark in e-mails to defendant’s staff,

19 and knew an entity affiliated with the defendant had attempted to register the mark. 880 20 F.3d at 1116–17. In Internet Specialties, the Circuit found a plaintiff should have 21 recognized the likelihood of confusion between company names and thus possessed 22 constructive knowledge when, though their service lines did not entirely overlap, the 1 companies offered many of the same services “in the same geographic area under 2 remarkably similar names.” 559 F.3d at 990. In Tillamook Country Smoker, Inc. v.

3 Tillamook Cty. Creamery Ass’n, 465 F.3d 1102, 1109 (9th Cir. 2006), defendant sold 4 plaintiff’s complimentary products through its “catalog, factory store, and website” for 5 more than twenty years. The Ninth Circuit rejected the argument that laches should be 6 delayed until the products shared the same primary channel of distribution, finding actual 7 knowledge was present, and likelihood of confusion was or should have been recognized 8 when “the two companies were using similar marks on complimentary products in the

9 same geographical area, creating the prospect of confusion.” Id. In Miller, where 10 plaintiffs the Millers alleged defendant Glenn Miller Productions (“GMP”) was 11 improperly sub-licensing plaintiffs’ intellectual property without permission, the Ninth 12 Circuit found that: 13 [T]he Millers’ status as GMP shareholders, their involvement in GMP matters since 1979, Steven Miller’s attendance at six Glenn Miller 14 Orchestra performance since the early 1990s at which merchandise was advertised and sold in prominent locations, Steven Miller’s admitted 15 knowledge that GMP sold CDs at one such concert, and GMP’s open and notorious sale of merchandise on its website were more than sufficient to 16 give Plaintiffs constructive knowledge that during the 1980s and 1990s (and in any case, long before January 1999), GMP was selling merchandise 17 bearing the Glenn Miller Orchestra mark.

18 Miller, 454 F.3d at 999. In E-Systems, the Circuit found that “[b]ecause plaintiff and 19 defendant advertised in the same magazines and exhibited at the same trade fairs, plaintiff 20 had ample opportunity to discover defendant’s activities [using a confusingly similar 21 trade name] before defendant developed a substantial business.” 720 F.3d at 607. 22 1 Regarding what occurred to expose CCI to CSCP’s actions, CSCP argues that CCI 2 had actual knowledge of infringement of CCI’s trade name and of Slogan One as early as

3 mid-2013 and certainly by Spring 2014. Dkt. 120 at 12. CSCP emphasizes three points: 4 (1) CCI’s corporate representative testified that CCI was aware in mid-2013 that CSCP 5 was doing business, (2) Henrichsen testified that he attended the Seattle Home Show 6 sometime in 2013 or 2014 and saw CSCP’s booth and the banners on its booth, and (3) 7 Herron testified that when he was working at CSCP’s Seattle Home Show booth in 8 Spring 2014, Henrichsen came by the booth, read Slogan One out loud from a banner on

9 the booth, and told Herron it was a great slogan. Id. 10 While CSCP relies on its allegation that CCI had actual knowledge of CSCP’s 11 trade name by mid-2013 and Henrichsen had actual knowledge of CSCP’s use of Slogan 12 One by the spring of 2014 (as analyzed below), it raises five additional points in support 13 of its argument that the Court should at least find CCI had constructive knowledge of the

14 alleged infringement prior to September 6, 2014. These points are: (1) that Henrichsen 15 served as president of the WWA in 2014 and should be presumed aware of the WWA’s 16 members, (2) that employees transferred between CCI and CSCP in 2014, (3) that the 17 companies had “various interactions at trade and industry meetings,” (4) that Dale 18 Gjerness of CCI testified that he observed CSCP trucks and uniforms, and (5) that

19 Henrichsen testified that he learned of CSCP’s infringement “a couple of years ago.” Dkt. 20 120 at 14 (citing Dkt. 40, ⁋ 22; Dkt. 121, Ex. 4 at 36, 85, 86, 116, Ex. 5 at 56–57, 63, 64, 21 Ex. 6 at 76–77; Dkt. 119, Ex. A at 168–69). The Court summarizes CCI’s 22 counterarguments as follows: (1) Henrichsen’s knowledge of CSCP’s membership in the 1 WWA did not necessarily expose him to CSCP’s use of marks in commerce as required 2 for a trademark claim, (2) employees who went to CSCP and later returned to CCI may

3 have returned after September 6, 2014; in any event, this employee crossover did not 4 necessarily expose CCI to CSCP’s use of marks, (3) attendance at industry meetings does 5 not clearly entail exposure to CSCP’s use of marks, (4) Dale Gjerness testified that he 6 may have seen a CSCP truck at some point prior to March 2017 and that at some point he 7 saw a CSCP employee in a jacket or a shirt at a meeting that said Crawl Space Cleaning 8 Pros, none of which establish exposure before September 6, 2014, and (5) Henrichsen’s

9 testimony was in 2019, so testimony that he learned of infringement “a couple of years 10 ago” did not reference a date prior to September 6, 2014. See Dkt. 122 at 12–13. The 11 Court considers these facts in the context of CCI’s argument that it “did not know, and 12 did not have reason to know, that CSCP was using its company name in its branding as a 13 trademark until years later.” Dkt. 122 at 11–12 (emphasis added). Though it is somewhat

14 of a close question, the Court finds that none of these facts clearly establish CCI was 15 exposed to CSCP’s use of marks between CSCP’s inception in mid-2013 and the 16 operative date of September 6, 2014. 17 The Court turns next to the interaction between Herron and Henrichsen at the 18 Seattle Home Show. CCI “hotly dispute[s]” Herron’s account of his interaction with

19 Henrichsen at the Seattle Home Show. Dkt. 122 at 4. The Court finds the facts regarding 20 the Seattle Home Show interaction are as follows. Herron testified that Henrichsen read 21 Slogan One off the banner. Dkt. 121, Ex. 2 at 64. Henrichsen declared that he did not do 22 so. Dkt. 122 at 5 (citing Second Henrichsen Decl., ⁋ 3). While Henrichsen denies having 1 seen Slogan One, Herron’s testimony is some evidence that the Slogan was displayed on 2 a banner at the Home Show.9 While Henrichsen’s declaration creates a question of fact

3 about whether Henrichsen saw Slogan One, Henrichsen testifies (and does not dispute in 4 declaration) that he the first time he saw CSCP at the Seattle Home Show would have 5 been at some point in 2013 or 2014. Compare Dkt. 123, Ex. 2 at 77 with Dkt. 122 at 5 6 (citing Second Henrichsen Decl., ⁋ 3). Construing all facts in favor of CCI, because the 7 Seattle Home Show occurs twice a year, this interaction could have occurred in the fall of 8 2014. Dkt. 122 at 4. Because neither party provides the date of the Seattle Home show in

9 the fall of 2014, this interaction could have occurred sometime later than September 6, 10 2014. 11 From these facts, the Court makes the following determinations. CSCP has put 12 forward evidence that Slogan One was displayed on a banner at CSCP’s booth at the 13 Home Show, sometime during 2013 or 2014 when Henrichsen was there and aware of

14 CSCP’s presence. While CCI’s evidence creates a question of material fact about whether 15 Henrichsen actually observed Slogan One, it does not contradict CSCP’s evidence about 16 whether Slogan One was displayed in Henrichsen’s presence. However, CCI’s evidence 17 also creates a question of fact about whether Slogan One was displayed in Henrichsen’s 18 presence prior to September 6, 2014. Because this exposure could have occurred outside

19 the limitations period, and because the other interactions do not conclusively establish 20 9 Herron’s declaration in support of CSCP’s first motion for summary judgment explains 21 that CSCP purchased a 2’ x 8’ banner with Slogan One at the top prior to the June 2013 Mother Earth News Festival and includes a photograph of the booth displaying the banner and a receipt 22 for the banner dated May 23, 2013. Dkt. 40, ⁋ 6 (citing Ex. B). 1 CCI’s exposure to CSCP’s use of Slogan One, the Court finds that constructive 2 knowledge of CSCP’s use of Slogan One may not be clearly imputed to CCI before

3 September 6, 2014.10 4 Though CCI appears to dispute its knowledge of the extent of CSCP’s operations, 5 it does not dispute its leadership knew Herron had started a business with the name Crawl 6 Space Cleaning Pros by the middle of 2013. Herron and Henrichsen were known to each 7 other, and it appears undisputed that the businesses offered substantially the same 8 services from CSCP’s inception. The precise geographic outlines of each company’s

9 service area between mid-2013 and September 6, 2014 are not clear from the record, but 10 both companies appear to have operated at that time in Northwestern Washington. CCI 11 argues that actual customer confusion did not occur “until years later, after CSCP had 12 grown, at which point a claim for trademark infringement accrued . . . .” Dkt. 122 at 12. 13 However, actual customer confusion is only one of the eight factors which a court

14 considers in a claim of trademark infringement, and a plaintiff can prove a claim without 15 actual evidence of customer confusion. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348– 16 49 (9th Cir. 1979). 17 Thus, the question is whether CCI should have known in the relatively brief period 18 between mid-2013 and September 6, 2014 that there was a likelihood of confusion

19 between two companies with similar names offering the same services in much the same 20

21 10 CCI certainly had actual knowledge of CSCP’s use of Slogan One by the spring of 2017 when CCI received CSCP’s cease-and-desist letter, Dkt. 123, Ex. 3 at 12–13, but this point 22 is well past the limitations period. 1 locations without any definitively established instances where CCI’s leadership was 2 exposed to CSCP’s use of its name as a trade name. The answer requires determining

3 whether CCI should have heard CSCP’s name, undertaken an investigation (however 4 minor) to determine how CSCP was using its name in commerce, and with that 5 information, evaluated its potential cause of action. Jarrow, 304 F.3d at 838. Though it is 6 again a close question, the Court concludes that particularly with the uncertainty of the 7 date of the trade show as discussed (where Henrichsen would have been exposed to 8 CSCP’s use of its name in commerce) there is not a date prior to September 6, 2014 at

9 which it may clearly assign constructive knowledge of CSCP’s use of the Crawl Space 10 Cleaning Pros trade name in commerce to CCI. 11 Because other claims are going to the jury, the Court finds it is also appropriate to 12 let the jury consider the factual questions at issue regarding knowledge. Though the Court 13 finds constructive knowledge of both CSCP’s trade name and Slogan One could be

14 assigned to CCI at least by the end of 2014, that date could easily fall after September 6, 15 2014. Therefore, the presumption is that laches does not apply to CCI’s claim regarding 16 CSCP’s trade name or to CCI’s claim regarding CSCP’s use of Slogan One. 17 b. Equity of A Laches Defense 18 The presumption that laches applies may be rebutted if the plaintiff can show its

19 delay was reasonable. Eat Right, 880 F.3d at 1117. While CSCP does not cite to authority 20 so establishing, it appears that the presumption laches does not apply is also rebuttable in 21 rare circumstances. See Jarrow, 304 F.3d at 835–36 (quoting Shouse v. Pierce Cty., 669 22 F.2d 1142, 1147 (9th Cir. 1997) (“It is extremely rare for laches to be effectively invoked 1 when a plaintiff has filed his action before limitations in an analogous action at law has 2 run.”)).

3 District courts balance six factors to determine if the trademark owner’s delay in 4 filing suit was unreasonable and thus barred: 5 (1) strength and value of the trademark rights asserted; (2) plaintiff’s diligence in enforcing mark; (3) harm to senior user if relief is denied; (4) 6 good faith ignorance by junior user; (5) competition between senior and junior users; and (6) extent of harm suffered by the junior user because of 7 senior user's delay.

8 Tillamook, 465 F.3d at 1108 (quoting E-Systems, 720 F.2d at 607). The Court is doubtful 9 that this case presents the rare circumstance where laches is appropriate when questions 10 of fact preclude a conclusion that CCI filed outside the statute of limitations. However, 11 because constructive knowledge could be attributed just outside the statute of limitations, 12 the Court will briefly address the E-Systems factors. 13 Regarding the first factor, strength and value of the rights asserted, CSCP 14 concedes that in light of the Court’s previous finding that a question of fact exists as to 15 whether CCI’s mark is suggestive and that CCI put forward evidence of substantial 16 advertising and sales, this factor does not weigh in CSCP’s favor. Dkt. 120 at 15 (citing 17 Dkt. 75 at 9–15). 18 Regarding the second factor, diligence in enforcement, “[r]easonable justifications 19 for a delay include exhausting remedies through administrative processes, evaluating and 20 preparing complicated claims, and determining ‘whether the scope of proposed 21 infringement will justify the cost of litigation.’” Jarrow, 304 F.3d at 835–36 (quoting 22 Evergreen Safety Council, 697 F.3d at 1227). Courts have also recognized that plaintiffs 1 may legitimately put off filing suit when pursuing settlement negotiations with the 2 alleged infringer. Eat Right, 880 F.3d at 1119. CCI does not put forward any reason

3 courts have recognized as a legitimate excuse for its delay in filing suit. 4 CCI argues that it did not have reason to know about CSCP’s marketing efforts 5 because “CSCP admittedly did not expand into CCI’s home territory until 2016, and did 6 not experience significant company growth until 2017.” Dkt. 122 at 12. CCI argues that 7 its delay was not unreasonable “considering all the activities that go into starting a 8 business and the uncertainty as to how that business would perform.” Id. at 16. However,

9 CCI does not argue that its leadership in fact delayed because they expected CSCP would 10 fail, or believed that the scope of infringement would not justify the cost of litigation. 11 Jarrow, F.3d at 835–36.11 12 CCI argues that it delayed in filing suit because it “had no reason to recognize its 13 potential cause of action until it experienced actual confusion” and “promptly filed the

14 present lawsuit against CSCP’s infringement in 2017 within months after its efforts at 15 amicable settlement with CSCP broke down.” Id. at 17. However, actual confusion is not 16 required to recognize a potential cause of action, and it is difficult to distinguish CCI’s 17 own characterization of its conduct from what the Ninth Circuit has warned is 18 impermissible—waiting “‘to see how successful the defendant’s business will be and

19 then ask for an injunction to take away good will developed by defendant in the 20 11 In the copyright section of its motion, CCI explains that the Supreme Court in Petrella 21 v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014) (“Petrella”) acknowledged that companies may wait to see whether the scope of infringement justifies the cost of litigation but does not 22 explicitly argue that CCI actually delayed for this reason. 1 interim.’” Grupo Gigante SA De CV v. Dallo & Co., 391 F.3d 1088, 1102–03 (9th Cir. 2 2004) (quoting 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair

3 Competition, § 31:14 (4th ed. 2002)). 4 Courts may also excuse delay in the face of progressive encroachment, when a 5 senior owner waits until “‘the junior user of a mark moves into direct competition . . . 6 selling the same ‘product’ through the same channels and causing actual market 7 confusion.” Tillamook, 465 F.3d at 1110 (quoting Prudential Ins. Co. of Am. v. Gibraltar 8 Fin. Corp. of Cal., 694 F.3d 1150, 1154 (9th Cir. 1982)). “Common methods of

9 encroachment are the junior user’s expansion of its business into different regions or into 10 different markets.” Id. (citing Grupo Gigante, 391 F.3d at 1103). Conversely, “[a] junior 11 user’s growth of its existing business and the concomitant increase in its use of the mark 12 do not constitute progressive encroachment.” Id. (citing Prudential Ins., 694 F.3d at 13 1154). However, when potential conflict is anticipated, choosing to wait until conflict is

14 actual rather than potential is “not an excuse and did not constitute progressive 15 encroachment.” Internet Specialties, 559 F.3d at 991 (citing Grupo Gigante, 391 F.3d at 16 1103). Here, where the two companies’ service lines were substantially similar from the 17 start and CSCP operations were at least geographically contiguous to CCI’s from the 18 start, normal business growth would very likely, and would reasonably be anticipated to

19 more directly overlap with CCI’s most central service area. On the facts presented, 20 progressive encroachment does not excuse CCI’s delay. Because CCI has failed to make 21 a case that its delay was reasonable, this factor weighs substantially in favor of applying 22 laches. 1 Regarding the third factor, harm to the senior user if relief is denied, the Court 2 previously found that CCI put forward what appeared to be strong evidence of customer

3 confusion, which negatively impacted customer perception of CCI’s reliability. Dkt. 75 at 4 18. CSCP argues that “delay weakens a claim of a likelihood of confusion, because the 5 public may learn to distinguish between similar marks over time . . . .” Dkt. 120 at 16 6 (citing Grupo Gigante, 391 F.3d at 1103–04). CCI’s evidence of confusion, cited in the 7 Court’s prior order, could support an inference that the public was not making this 8 adjustment. Dkt. 75 at 18–19. Therefore, this factor weighs against applying laches.

9 Regarding the fourth factor, good faith ignorance by the junior user, CSCP argues 10 that it used both its trade name and Slogan One widely in advertising throughout the 11 Puget Sound, supporting an inference that it claimed its marks in good faith. Dkt. 120 at 12 17. CCI counters that CSCP was aware CCI was using its trade name and Slogan One 13 when CSCP adopted them. Dkt. 122 at 17. The Court previously found regarding the

14 similar “defendant’s intent” factor that a reasonable juror could draw conflicting 15 inferences on intent, making this factor neutral as to both the trade name and Slogan One. 16 Dkt. 75 at 17–18. Moreover, the disputes of fact about priority of usage for Slogan One 17 prevent clear resolution of knowledge and intent here—if a jury concludes CCI had 18 priority in usage, this factor would weigh against laches.

19 Regarding the fifth factor, competition between senior and junior users, CSCP 20 concedes that as it competes with CCI, this factor weighs against applying laches. Dkt. 21 120 at 6. 22 1 Regarding the sixth factor, harm suffered by the junior user because of the senior 2 user’s delay, courts consider that “[e]ven where a defendant establishes that a plaintiff

3 delayed unreasonably in filing suit, laches will not bar a claim unless that delay 4 prejudiced the defendant.” Eat Right, 880 F.3d at 1117 (citing Grand Canyon Trust v. 5 Tucson Elec. Power Co., 391 F.3d 979, 988 (9th Cir. 2004)). While prejudice is part of 6 the six-factor equitable analysis, a defendant must satisfy this factor to prevail and it 7 weighs heavily in the analysis. See id. at 1119 (citing Grand Canyon Trust, 391 F.3d at 8 988) (“Even where a defendant establishes that a plaintiff delayed unreasonably in filing

9 suit, laches will not bar a claim unless that delay prejudiced the defendant.”)). 10 In Internet Specialties, the Ninth Circuit explained that prejudice must stem from 11 investing in the mark “as the identity of the business in the minds of the public,” and 12 considered whether the defendant would have to “undertake significant advertising 13 expenditures to change its name.” Internet Specialties, 559 F.3d at 992 (citing Jarrow,

14 304 F.3d at 835–36). Later cases have considered a slightly broader concept of 15 investment in the mark, to include investment in infrastructure and employment as 16 examples of building a business around a trademark. Pinkette Clothing, 894 F.3d at 1028 17 (citing Grupo Gigante, 391 F.3d at 1105; Whittaker Corp v. Execuair Corp., 736 F.3d 18 1341, 1347 (9th Cir. 1984)). “Establishing undue prejudice requires that the defendant

19 show ‘at least some reliance on the absence of a lawsuit.’” Eat Right, 880 F.3d at 1119 20 (quoting Seller Agency Council, Inc. v. Kennedy Ctr. for Real Estate Educ., Inc., 621 21 F.3d 981, 989 (9th Cir. 2010)). 22 1 CSCP argues that it was prejudiced by the delay through its “expenditures in 2 building its business around its marks from mid-2013 through the date of CCI’s filing suit

3 – September 6, 2017.” Dkt. 120 at 19. CSCP argues that it was prejudiced by the absence 4 of a lawsuit because during this period it added to its liability by, without knowledge of 5 the alleged infringement, continuing the practices CCI alleges were infringing. Dkt. 120 6 at 19 n.98 (citing Whitaker, 736 F.2d at 1347). CSCP also argues that like the defendant 7 in Jarrow, if it had known of the alleged infringement, it could have focused on 8 characterizing its product differently to the public. Id. (citing Jarrow, 304 F.3d at 839).

9 CCI argues that any expectations-based prejudice CSCP has sustained is negated by its 10 “re-branding” to the trade name Crawl Pros. Dkt. 122 at 3. The Court finds that the 11 evidence put forward by CSCP shows substantial expenditures on marketing through 12 various mediums each year between mid-2013 and September 2017 and substantial 13 revenue growth during that period, which could support a finding of substantial prejudice.

14 Dkt. 120 at 6–8, 19. These expenditures indicate CSCP invested heavily in marketing 15 using its trade name and Slogan One essentially from the inception of its business such 16 that it could reasonably say it built its business around the marks during the period CCI 17 delayed. Rebranding to Crawl Pros would not impact investment around Slogan One, and 18 it is unclear that the change in trade name would entirely obviate previous investment in a

19 similar trade name. 20 The Court finds that the first, third, and fifth factors weigh against applying laches, 21 and the fourth factor is neutral. Even though the important second and sixth factors weigh 22 in favor, the Court concludes that this mixed equitable analysis is not sufficient to 1 overcome the strong presumption against laches for CCI’s Lanham Act claims 2 established by the lack of conclusive evidence that the laches period started prior to the

3 statute of limitations. The Court’s evaluation may be different following factual findings 4 by a jury. 5 2. CPA Claims 6 CSCP argues that CCI’s claims for damages under the CPA are barred by the four- 7 year CPA statute of limitations, because CCI’s CPA claim accrued in mid-2013, more 8 than four years before CCI filed suit on September 6, 2017. Dkt. 120 at 20 (citing RCW

9 19.86.120). Guided by its determination that neither actual nor constructive knowledge 10 may be conclusively attributed to CCI prior to September 6, 2014, the Court denies 11 CSCP’s motion for summary judgment as to CCI’s claims for damages under the CPA. 12 CSCP also argues that any CCI claims for equitable relief under the CPA for the 13 purposes of a laches analysis would be guided by the three-year statute of limitation

14 applied in laches to CCI’s Lanham Act claims, Dkt. 120 at 10 & 10 n.72. Said another 15 way, CSCP argues that equitable relief for trade name infringement that also violates the 16 CPA would be governed for the purposes of a laches analysis by the three-year statute of 17 limitations that applies to trade name infringement, RCW 4.16.080(2), not the four-year 18 statute of limitations for claims for damages brought under the CPA, RCW 19.86.120.

19 CSCP is correct that this Court has found that “the analysis of an unfair 20 competition claim under Washington’s Consumer Protection Act will generally follow 21 that of the trademark infringement claim . . . .” Safeworks, LLC v. Spydercrane.com, 22 LLC, No. 08-cv-0922-JPD, 2009 WL 3169151, at *8 (W.D. Wash, Sept. 29, 2009). 1 However, that analysis decided whether to apply the likelihood of consumer confusion 2 test, not what statute of limitations should guide a laches analysis for equitable relief

3 under the CPA. CSCP argues that CCI’s CPA claim accrued contemporaneously with 4 CCI’s Latham Act claims. Dkt. 120 at 20. CCI counters that CSCP cannot prove CCI 5 suffered injury sufficient for its claim to fully accrue prior to September 6, 2013 6 following a four-year statute of limitations. Dkt. 122 at 21. 7 The Court finds that though Lanham Act claims and trademark-based unfair 8 competition claims are subject to congruous substantive analysis, the CPA’s own statute

9 of limitations is the most appropriate statute of limitations to guide a laches analysis for 10 equitable relief under the CPA. Therefore, the Court denies CSCP’s motion as to 11 equitable relief under the CPA for the same reasons it denied CSCP’s motion as to CCI’s 12 Lanham Act claims. 13 3. Copyright Claims

14 In copyright, laches is not available as a defense to suits for damages brought 15 within the three-year statute of limitations. Petrella, 572 U.S. at 677. Laches is available 16 in extraordinary circumstances to limit equitable relief in copyright actions brought 17 within the three-year statute of limitations. Id. at 685 (“In extraordinary circumstances, 18 however, the consequences of a delay in commencing suit may be of sufficient magnitude

19 to warrant, at the very outset of the litigation, curtailment of the relief equitably 20 awardable.”). As examples of extraordinary circumstances which might warrant 21 curtailment of equitable relief at summary judgment, the Supreme Court cited Chirco v. 22 Crosswinds Communities, Inc., 474 F.3d 227 (6th Cir. 2007), where the requested 1 injunctive relief was destroying a housing project which would harm innocent third 2 parties, and New Era Publications Int’l v. Henry Holt & Co., 873 F.2d 576, 584–85 (2d

3 Cir. 1989), where the requested injunctive relief was total destruction of a book allegedly 4 containing infringing material that due to delay had already been printed, packed, and 5 shipped. Id. at 685–86. In more ordinary circumstances, if the plaintiff ultimately prevails 6 on the merits, the court may then consider the delay in commencing suit in fashioning 7 appropriate injunctive relief. Id. at 687. 8 “[W]hile the statute of limitations [for copyright infringement] is triggered only by

9 violations—i.e., actual infringements—the laches period may be triggered when a 10 plaintiff knows or has reason to know about an impending infringement.” Kling v. 11 Hallmark Cards Inc., 225 F.3d 1030, 1038 (9th Cir. 2000) (emphasis in original). The 12 Supreme Court also noted that nine Courts of Appeals follow a “‘discovery rule,’ which 13 starts the limitations period when ‘the plaintiff discovers, or with due diligence should

14 have discovered, the injury that forms the basis for the claim.’” Petrella, 574 U.S. at 670 15 n.4 (quoting William A. Graham Co. v. Haughey, 568 F.3d 425, 433 (3d Cir. 2009)). 16 CCI initially brought copyright claims regarding five documents: (1) Project 17 Graph, (2) Project Bid Sheet, (3) Project Worksheet, (4) Clean Crawls Standards, and (5) 18 Venting Calculator. Dkt. 1, ⁋ 12. The Court granted summary judgment for CSCP as to

19 the Project Worksheet and Standards documents, Dkt. 75 at 40, and as to the second page 20 of the Venting Calculator, Dkt. 112 at 16–17. 21 CSCP argues CCI’s copyright infringement claims seeking injunctive relief 22 including an order to destroy the infringing material “should be barred by the doctrine of 1 laches notwithstanding the fact that CCI may have initiated its claims under 17 U.S.C. §§ 2 502 and 503 within the applicable three-year statute of limitations.” Dkt. 120 at 21 (citing

3 17 U.S.C. § 507(b)). CSCP argues that Henrichsen’s deposition testimony states CCI 4 “acquired knowledge of CSCP’s alleged copyright infringement as early as September to 5 October of 2014.” Dkt. 120 at 22 (citing Dkt. 121, Ex. 4 at 68, 71, 74, 114, 115, 116, 6 117). CSCP also argues that because Pullen was employed at CSCP from Spring 2014 7 through Fall 2014, CCI “should have investigated a direct competitor’s hiring of a 8 salesman with four-years [sic] of experience at CCI handling CCI’s alleged copyrighted

9 material.” Dkt. 120 at 22. 10 a. Delay 11 CSCP argues that CCI unequivocally knew or should have known CSCP was 12 using its documents by 2014. CCI counters that it did not know until 2017. Because the 13 Court finds as detailed below that CSCP does not show the kind of prejudice that would

14 warrant a finding of laches at summary judgment, the Court does not decide at this point 15 whether CCI unreasonably delayed. 16 b. Prejudice 17 CSCP argues that it “likely would not have produced and re-produced the alleged 18 infringing documents, much less continue to build and develop its businesses’ sales

19 practices around them, had CCI initiated its alleged infringement action in 2014,” Dkt. 20 120 at 23, and analogizes an injunction to destroy the allegedly infringing materials to the 21 destruction of work described in Petrella, Dkt. 126 at 11 (citing Petrella, 572 U.S. at 22 686). CCI counters that “the only prejudice CSCP could show is that a finding of 1 copyright infringement earlier would have cause it to re-tool three of its documents 2 earlier.” Dkt. 122 at 23.12 The Court finds that even if CSCP was required to redesign

3 three of its project assessment and tracking documents, the impacted interests are 4 substantially less than those involved in destroying units of housing or a completed and 5 shipped literary work. Therefore, as the Supreme Court suggested, if CCI ultimately 6 prevails on the merits, the Court may consider a delay in commencing suit (if established) 7 in fashioning appropriate injunctive relief and need not find at this juncture that laches 8 entirely bars CCI’s copyright claims. See Petrella, 574 U.S. at 687.

10 Therefore, it is hereby ORDERED that CSCP’s motion for partial summary 11 judgment, Dkt. 120, is DENIED and CCI’s motion for leave to file declaration, Dkt. 129, 12 is GRANTED. 13 Dated this 5th day of November, 2019. A 14 15 BENJAMIN H. SETTLE 16 United States District Judge

17 18 19

20 12 The Court notes that CCI argues that according to Petrella, it would have been reasonable for it to delay while it assessed whether the infringing use was sufficiently harmful to 21 justify the cost of litigation. Dkt. 122 at 23 (citing Petrella, 574 U.S. at 683). However, CCI does not argue that it was attempting to assess the cost of litigation, so it is unclear what relevance this 22 argument has to the facts at bar.