Billy Goat IP LLC v. Billy Goat Chip Co., LLC, No. 17 C 9154, Slip Op. (N.D. Ill. Aug. 7, 2018) (Dow, J.).
Judge Dow denied defendant Billy Goat Chip’s (“BG Chip”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Billy Goat IP’s (“Billy Goat”) Lanham Act trademark infringement, unfair competition and related state law claims in this case involving the iconic Billy Goat marks in relation to food and beverage sales.
As an initial matter, because BG Chip filed an answer immediately before filing its motion to dismiss, presumably pursuant to the requirements of the Mandatory Initial Discovery Program, the Court treated BG Chip’s motion as a Fed. R. Civ. P. 12(c) motion for judgment on the pleadings. Additionally, the first pages of the opinion provide a succinct history of the Billy Goat Tavern and the Curse of the Billy Goat.
Because the Lanham Act does not have an explicit statute of limitations, in Illinois the Court’s look to the three year statute of limitations for the ICFA. Courts generally disfavor granting summary judgment on laches, let alone on a Rule 12 motion. And in this case, there were too many unknown and disputed facts to allow for judgment on the pleadings. While it appeared at this stage that Billy Goat had constructive notice of BG Chip’s marks in 2010 and actual notice in 2014, the Court could not determine from the pleadings whether Billy Goat’s alleged delay was inexcusable. Similarly, the Court could not determine from the pleadings whether BG Chip would be prejudiced by the alleged delay in filing suit.
Additionally, Billy Goat’s allegation that BG Chip had bad faith intent to cause consumer confusion and trade on Billy Goat’s good will might prevent BG Chip’s laches defense because unclean hands may bar laches.
State Law Claims
Billy Goat’s state law claims also have three year statutes of limitation. Based upon the pleadings, the complaint was filed more than three years after Billy Goat had actual notice in 2014. But BG Chip’s alleged wrongs are continuing acts. Statutes of limitation do not begin to run on continuing wrongs until the wrong is over. The ongoing nature of the alleged acts, therefore, prevent dismissal based upon laches.