The opinion of the court was delivered by: Facciola, United States Magistrate Judge.
This matter has been referred for discovery by Judge Kollar-Kotelly.
Before me are defendants' motion to compel and plaintiffs two motions for
In 1933, George Preston Marshall purchased a National Football League
("NFL") franchise located in Boston and moved it to Washington, D.C.,
whereupon he renamed the team the "Redskins." The franchise registered
the first of a series of "Redskins" marks with the United States
Trademark Office in 1967. In 1992, a group of seven Native Americans
("Native Americans") from an array of different tribes and nations
petitioned the United States Patent and Trademark Office's Trademark Trial
and Appeal Board ("TTAB") for cancellation of Pro-Football's federal
trademark registrations involving the term "Redskin(s)." Seven years
later, in April 1999, the TTAB ruled in favor of the Native Americans
under Section 2(a) of the Lanham Act, 15 U.S.C.A. § 1052(a)
(1997), finding that the term "Redskins" "may be disparaging of Native
Americans to a substantial composite of this group of people" and "may
bring Native Americans into contempt or disrepute." Harjo v.
Pro-Football, Inc., 1999 WL 375907, 50 U.S.P.Q.2d 1705, 1748 (1999)
("Harjo II "). Pro-Football subsequently filed the present action for de
novo review under § 1071(b) of the Lanham Act, seeking to overturn
the TTAB's ruling.
At the same time the TTAB handed down its decision, the Estate of Jack
Kent Cooke (a long-time owner) Was in the process of selling the
franchise. One purchase bid in January 1999 for a reported $800 million
was rejected by the NFL, which held a veto over any proposed sale. In May
1999, one month after the TTAB ruling, a bid by the Daniel M. Snyder
Ownership Group, also estimated at $800 million, was approved by the
NFL, and the purchase closed in July 1999.
The Native Americans' Motion to Compel
In order to counter Pro-Football's laches defense, the Native Americans
seek information relating to the worth of the Redskins marks. The laches
defense originally was rejected on equitability grounds by the TTAB in a
pretrial ruling. Harjo v. Pro-Football, Inc., 1994 WL 262249, 30
U.S.P.Q.2d 1828 (1994) ("Harjo I "). When Pro-Football once again pleaded
laches in its 1999 complaint, the Native Americans sought to strike the
defense in a motion for judgment on the pleadings. Judge Kollar-Kotelly
ruled that the defense survived the motion for judgment on the
pleadings. Reading Pro-Football's allegations as true, the judge concluded
that plaintiff had satisfied the three common
law requirements of such a plea: "(1) the Native Americans delayed
substantially before commencing their challenge to the `Redskins'
trademarks; (2) the Native Americans were aware of the trademarks during
the period of delay; and (3) Pro-Football's ongoing development of
goodwill during this period of delay engendered a reliance interest in
the preservation of the trademarks." Pro-Football, Inc. v. Harjo, 2000 WL
1923326, *5-6 (D.D.C. Dec. 11, 2000) ("Mem.Op."). However, Judge
Kollar-Kotelly deferred ultimate resolution of the laches issue to a
later time, once the record was expanded beyond those facts alleged in
the pleadings. Id. at *6-7.
Pro-Football takes a strange approach to discovery. First, it dismisses
out of hand any obligation to produce evidence that the Redskins marks
have a distinct or specific monetary value. In the same breath, however,
it advises the Native Americans that:
To the extent the Redskins intend to introduce general
evidence to buttress its laches claim such as expert
testimony on the value of the brand or witness
testimony confirming the continuous use and promotion
of the Redskins Marks throughout the period of
delay-Defendants can seek appropriate depositions,
without the wholesale financial discovery sought
Plaintiff's Memorandum of Points and Authorities in Opposition to
Defendant's Motion to Compel Discovery ("P.Mem.") at 7. See id. at 10
("The Redskins will present general evidence of the development and
promotion of the Redskins Marks, will produce any such documents to
Defendants, and will provide Defendants with ample opportunity to depose
any such witnesses.").
While Pro-Football may try to dictate the pace of a football game, it
cannot control the scope of discovery by limiting its opponents to
rebutting only what Pro-Football chooses to prove concerning what it
calls the "value of the brand." The very purpose of discovery is to force
a litigant to disclose relevant material in its files so that its
opponent can press a case, using whatever legal or factual theory the
opponent sees fit to use. It borders on the fatuous to suggest, for
example, that documents bearing on how the holder of a mark values that
mark are not discoverable in litigation devoted to ascertaining how the
holder will be prejudiced by the cancellation of the mark. Pro-Football
would be delighted to present evidence that they have persistently
carried the value of the mark on their books as a million dollars. This
information is no less discoverable if they have instead carried that
value as $1 but have no intention of presenting that evidence.
The Native Americans assert that, because a laches argument requires a
showing of economic prejudice, they are entitled to broad discovery of
Pro-Football's financial records. Pro-Football responds that specific
evidence of such prejudice is not required to prevail on the laches
claim, and therefore its financial records are irrelevant and
A laches defense requires the party asserting the claim to show that
its interests have been prejudiced by plaintiffs delay in asserting its
rights. Bridgestone/Firestone Research, Inc. v. Automobile Club De
L'Ouest De La France, 245 F.3d 1359, 1361 (Fed.Cir. 2001); N.A.A.C.P. v.
N.A.A.C.P. Legal Defense and Educational Fund, Inc., 753 F.2d 131, 137
(D.C.Cir. 1985); Gull Airborne Instruments, Inc. v. Weinberger,
694 F.2d 838, 843 (D.C.Cir. 1982). Prejudice may be against a party's
economic interests or trial interests. Bridgestone, 245 F.3d at 1362.*fn2
The crux of the present dispute is whether the showing of economic
prejudice must consist of specific, quantitative evidence. Plaintiff
submits that general evidence showing the franchise's continuous use of
the mark, along with portions of its complaint avowing the "millions of
dollars" in and "tremendous value" of the marks, satisfies the economic
prejudice requirement.*fn3 Defendants contend that plaintiffs use of the
mark is but the departure point for a detailed inquiry into the precise
value of the marks.
In Bridgestone, the Federal Circuit followed its earlier opinion in A.
C. Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020 (Fed.Cir.
1992). Aukerman distinguished laches from equitable estoppel on the
grounds, inter alia, of the necessity of establishing reliance. Equitable
estoppel cannot be invoked unless there has been a shift of position in
reliance upon the conduct of the party to be estopped. Id. at 1041. On
the other hand, laches can exist even though the party asserting it did
not change its position in reliance on the other party's delay. It
suffices to show prejudice in the form of loss of money that would not
have been invested had the other party not delayed in asserting its
rights. This is economic prejudice, which the party invoking the laches
defense must show. Id. at 1032.
In Bridgestone, what the Federal Circuit called "the Automobile Club"
sought to cancel the use of the Le Mans mark for tires that Bridgestone
sold because the mark suggested an association between the tires and the
famous road race the Automobile Club sponsored. The TTAB granted the
application and, in a footnote of its opinion, stated:
Bridgestone provided absolutely no specific
information regarding its alleged reliance on the
Automobile Club's alleged silence. While it is clear
that there has been a delay in seeking cancellation of
Bridgestone's registration, Bridgestone has not proven
the elements of the affirmative defenses of laches and
estoppel by laches.
Bridgestone, 245 F.3d at 1361.
Noting that it was "undisputed that Bridgestone invested in and
promoted the LEMANS brand tires over this lengthy period, during which the
Automobile Club was silent," the Federal Circuit chastised the TTAB for
confusing the reliance element of laches with the reliance element of
The Board's requirement of "specific" evidence of
"reliance" on the Automobile Club's silence could
relate to proof of estoppel, but it does not apply to
laches. When there has been an unreasonable period of
delay by a plaintiff, economic prejudice to the
defendant may ensue whether or not the plaintiff
overtly lulled the defendant into believing that the
plaintiff would not act, or whether or not the
defendant believed that the plaintiff would have
grounds for action. See A.C. Aukerman Co., 960 F.2d at
1042, 22 USPQ2d at 1336 ("reliance is not a
requirement of laches but is essential to equitable
estoppel"). Economic prejudice arises from investment
in and development of the trademark, and the continued
commercial use and economic promotion of a mark over a
prolonged period adds weight to the evidence of
prejudice. See Hot Wax, Inc. v. Turtle Wax, Inc.,
191 F.3d 813, 821, 52 USPQ2d 1065, 1072 (7th Cir.
1999) (the longer the use and the lengthier the period
of delay, the lighter the burden of showing economic
prejudice in support of the defense of laches).
Bridgestone's evidence of undue delay and prejudice
was uncontroverted by the Automobile Club. The Board's
ruling rested on an erroneous interpretation of the
law of laches, leading to an unreasonable exercise of
judgment. Thus the Board's rejection of the defense of
laches was an abuse of discretion. That ruling is
Id. at 1362 (emphasis added).
As is obvious when one views the entire quotation, the Federal Circuit
was criticizing the TTAB for using the reliance factor as it is defined
for the purposes of estoppel — a change of position in reliance on
the other party's conduct — and concluding that that showing was
also necessary to the defense of laches. It is this narrow sense of the
term "reliance" that Bridgestone and Aukerman employed in holding that
reliance was not a requirement of laches. It hardly follows that a
specific showing of how the loss of the mark will harm its holder is
irrelevant when the holder claims laches.
Indeed, rather than disavowing the need for specific evidence of
prejudice, Aukerman affirms its importance in overcoming a presumption of
laches. Id. at 1034-1039. Other cases also affirm the operation of this
presumption, but do not treat it as irrebuttable. See, e.g., N.A.A.C.P.;
Hot Wax; University of Pittsburgh v. Champion Prods., Inc., 686 F.2d 1040
(3rd Cir. 1982). In addition, cases that discuss economic prejudice
sometimes detail the magnitude of plaintiffs interest with specific
dollar figures. See, e.g., Chubb Integrated Systems, Inc. v. National
Bank of Washington, 658 F. Supp. 1043, 1049 (D.D.C. 1987).
Furthermore, if a showing of economic harm is appropriate to advance a
laches defense, then it must follow that a showing of a lack of economic
harm may defeat that defense. It then follows that the Native Americans
in this case have to the right to see what value is given the mark in
Pro-Football's books and records to defeat the claim of economic
prejudice. Pro-Football cannot simply "presume" away the Native Americans'
right to assert that there will be no real economic prejudice if the use
of the mark is barred. That there is a self-evident association in the
public mind between the popular football team and the mark does not in
itself preclude the Native Americans from ...