Satan Wears Suspenders, Inc. v. Jaar

Background

Satan Wears Suspenders, Inc. described itself as a rock band and record label operating under the name “Darkside.” It alleged that it had performed and produced sound recordings as “Darkside” or “Darkside NYC” since at least August 1992. In 2014, it registered “Darkside NYC” with the United States Patent and Trademark Office for live musical performances, production of sound recordings, and music- or entertainment-related websites.

The plaintiff sued Nicolas Jaar and David Harrington, who operated a musical group called “Darkside,” and Matador Recordings, LLC, the record label that supported the group. The plaintiff alleged trademark infringement, unfair competition, false designation of origin, dilution, deceptive trade practices, and common-law unfair competition. It also brought contributory and vicarious claims against Matador.

The plaintiff alleged that Jaar and Harrington began operating as “Darkside” in 2011 and continued using the name for recordings, performances, websites, merchandise, publicity, and other media. It alleged that the bands targeted overlapping geographic audiences and that customers and fans became confused about the groups. The plaintiff said it first objected to the defendants’ use of the name through emails and letters in 2013 and 2014, but it did not file this action until February 1, 2021.

Motion and legal standard

The defendants moved under Federal Rule of Civil Procedure 12(b)(6), which allows dismissal when a complaint does not adequately state a legal claim. They sought dismissal of the First Amended Complaint in its entirety based on laches. Alternatively, they sought dismissal of the federal and New York dilution claims. The court stated that it would accept the complaint’s factual allegations as true for purposes of the motion, but would not accept conclusory statements without supporting facts.

Laches analysis

Laches is an equitable defense based on unreasonable, unjustified delay that prejudices the opposing party. The court identified three elements: the plaintiff knew about the defendants’ use of the marks, the plaintiff unreasonably delayed taking action, and the defendants would be prejudiced if the plaintiff were allowed to assert its rights after the delay.

The court held that laches was available in this trademark dispute, including against claims seeking money damages and injunctive relief. Because the plaintiff’s complaint showed that it knew about the defendants’ use as early as 2013, and the plaintiff did not sue until 2021, more than six years had passed. The court therefore applied a presumption of laches and placed on the plaintiff the burden of showing why laches should not apply.

The court rejected the plaintiff’s arguments that its delay was reasonable. The complaint did not allege continuing negotiations after 2014, so the court found that settlement discussions did not explain the lengthy delay. The court also rejected the argument that the defendants’ 2014 announcement that “darkside is coming to an end, for now” justified waiting. According to the court, the plaintiff knew or alleged that the defendants continued selling music and merchandise, publishing videos and other media, and maintaining music on Spotify during the relevant period.

The court also found that the plaintiff failed to overcome the presumption of prejudice. The complaint alleged that the defendants and Matador had invested substantially in promoting, distributing, touring, and developing the “Darkside” brand. The court reasoned that the defendants might have adopted a different name or marketing strategy had the plaintiff sued earlier, and that the plaintiff’s timing near the planned release of a new album made the prejudice stronger.

Finally, the court rejected the plaintiff’s argument that laches could apply only to older instances of alleged infringement. It held that, in this trademark dispute, the defendants’ continuing use of the name did not create a series of new claims that avoided laches. The court concluded that laches applied to all of the plaintiff’s claims.

Ruling and disposition

Judge Edgardo Ramos granted the defendants’ motion to dismiss the First Amended Complaint in its entirety. Because the court resolved the case under laches, it did not address the defendants’ separate argument concerning the federal and state dilution claims. The Clerk was directed to terminate the motion and close the case.