# Opposition Brief — Jarrow Formulas, Inc. v. Nutrition Now, Inc.

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 2002
- **Citation:** 537 U.S. 1047

## Text

‘ourt, US,
. Ct. 70, 139 L. BG. 24 51 CESGE) . cess 22

Chapin-Sacks MFG. Co. v. Hendler Creamery Co.,
Bae F, Fae CR BPO bn See i hoes 16

Chattanoga Manufacturing, Inc. v. Nike, Inc., 301
ee fe, Lee, re 4, 12, 16, 18

City of Wyandotte v. Consolidated Rail Corp.,
2k F.9e SO) COGS BOGE) occ cc ccesivencnes 22

Conopco, Inc. v. Campbell Soup Co., 95 F.3d 187
eo re er ees 3, 15-16, 24

Vv

Cited Authorities
Page
Continental Coatings Corporation v. Metco, Inc.,
464 F.2d 1375 (7th Cir. 1972) ...........505- 18
Cuban Cigar Brands N.V. v. Upmann International,
Inc., 457 F. Supp 1090 (S.D.N.Y. 1978), aff'd, 607
F.2d 995 (2d Cig. 1979) 0... cccsevscvencsss 12

Danjagq v. Sony Corp., 263 F.3d 942 (9th Cir. 2001)
5 aU Salk Mente RRS ee eee eek oeuE es 2, 18, 19, 20, 23

Dial A Car, Inc. v. Transportation, Inc., 82 F.3d 484
(D.C. Cie. 106) once cue nececcncveveseces 27

Eli Lilly & Co. v. Roussel-Uclaf Holdings Corp., 23
F. Supp. 2d 460 (D.N.J. 1998) ...........-45. 27

Eppendorf Netheler Hinz GMBH v. National
Scientific Supply Co., 14 Fed. Appx. 102 (2d Cir.

| ererTs eee rr rer ee re eet 22
E-Systems, Inc. v. Monitek, Inc., 720 F.2d 604 (9th

Cie: TOD 0 ics beeweneneeeheeeneereaveates 18
Foy v. Klapmeier, 992 F.2d 774 (8th Cir. 1993) ... 23

Fruit Industries v. Bisceglia Bros. Corporation, 101
F.2d 752 (3d Cir. 1939), cert. denied, 307 U.S.
646, 59 S. Ct. 1043, 83 L. Ed. 1526 (1939) .... 15-16

Godfrey v. BellSouth Telecommunications, Inc.,
89 F.3d 755 (11th Cir. 1996) ............-4-. 23

vi

Cited Authorities |
Page
Hanover Star Milling Company v. D.D. Metcalf, 240
U.S. 403, 36 S. Ct. 357, 60 L. Ed. 713 (1916) .. 3, 13

Holmes v. Pension Plan of Bethlehem Steel Corp.,
213 F.96 126 COG CR, BOWE) svescvescccececes 22

Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813 (7th
Cae, SReee cnwsisciusveevi 4, 6-7, 16, 18, 22, 24, 25

James Burrough Ltd. v. Sign of Beefeater, Inc., 572
Fee Se Cre Gat RPT V62 00 i Setsaceesdees 18

Kellog Company v. Exxon Corporation, 209 F.3d 562
(6th Cir. 2000), cert. denied, 531 U.S. 944, 121
S. Ct. 340, 148 L. Ed. 2d 273 (2000) ..... 4, 17, 20, 21

Kennedy v. Electricians Pension Plan, IBEW No.
995, 954 F.2d 1116 (Sth Cir. 1992) ........... 22

La Republique Francaise v. Saratoga Vichy Spring
Company, 191 U.S. 427, 24S. Ct. 145, 48 L. Ed.
kt | eee re rere rrr rr Pe 14

Lyons Partnership, L.P. v. Morris Costumes, Inc., 243
FOG FOr COREE OOUEE 500s eebivterbeceanh 19, 20

Mylan Laboratories, Inc. v. Matkari, 7 F.3d 1130
C60 GAS, FEF OP oa 000t0c8essccoesbeveweewens 27

vil

Cited Authorities
Page

N.A.A.C.P. v. N.A.A.C.P. Legal Defense & Educational
Fund, Inc., 753 F.2d 131 (D.C. Cir. 1985), cert.
denied, 472 U.S. 1021, 105 S. Ct. 3489, 87 L. Ed.
fg. eres reese 16

Nartron Corporation v. Stmicroelectronics, Inc., 305
Pu Se CE Gee SEE cc acccesesseacess 12, 16, 17

Newman vy. Checkrite California, Inc., 912 F. Supp.
Rae Cd Salis SUED chee ees cae vocrseeweees 17

Polaroid Corporation v. Polarad Electronics
Corporation, 287 F.2d 492 (2d Cir. 1961), cert.
denied, 368 U.S. 820, 82 S. Ct. 36,7 L. Ed. 2d 25
SE oo 6 bb 60 nat en sated se beeceeeaeetes 7, &3

Prudential Insurance Company of America v.
Gibraltar Financial Corporation of California,
694 F.2d 1150 (9th Cir. 1982), cert. denied, 463
U.S. 1208, 103 S. Ct. 3538, 77 L. Ed. 2d 1389
CRE 66 ck kdentshacevenssades sews iesecens y

Roberts v. Colorado State Board of Agriculture, 998
F.2d 824 (10th Cir. 1993), cert. denied, 510 U.S.
1004, 114. S. Ct. 580, 126 L. Ed. 2d 478 (1993)... 23

Safeway Stores, Incorporated v. Safeway Quality
Foods, Inc., 433 F.2d 99 (7th Cir. 1970) ....... 16

San Francisco Arts & Athletics, Inc. v. United States
Olympic Committee, 483 U.S. 522, 107 S. Ct.
ras OF is es EE CRT be cab ccd viccues 14

vill

Cited Authorities
Page

Sara Lee Corporation v. Kayser-Roth Corporation,

81 F.3d 455 (4th Cir. 1996), cert. denied, 519 U.S.

976, 117 S. Ct. 412, 136 L. Ed. 2d 325 (1996) ..
Ee Eee pT regs” 3-4, 12, 16, 19

Saratoga Vichy Spring Co., Inc. v. Lehman, 625 F.2d
ge > 2 || Perri TT rrr Tee ee 15

Seven-Up Company v. O-So-Grape Co., 283 F.2d 103
(7th Cir. 1960), cert. denied, 365 U.S. 869, 81
Bh. CK, Bae So he Se Be Se CEES ov ccccewcecss 18

Skippy, Inc. v. CPC International, Inc., 674 F.2d 209
(4th Cir. 1982), cert. denied, 459 U.S. 969, 103
S. Ct. 298, 74 L. Ed. 2d 280 (1982) ......... 4, 16,17

Sobosle v. United States Steel Corp., 359 F.2d 7 (3d
oR Pr er re rer Pee 15

Tandy Corp. v. Malone & Hyde, Inc., 769 F.2d 362
(6th Cir. 1985) cert. denied, 476 U.S. 1158, 106
S. Ct. 2277, 90 L. Ed. 2d 719 (1986) .......... 4,17

Times Mirror Magazines, Inc. v. Field & Stream
Licenses Company, 294 F.3d 383 (2d Cir. 2002) .. 12

TWM Manufacturing Co., Inc. v. Dura Corp., 592
F.2d 346 (6th Cir. 1979), cert. denied, 479 U.S.
852, 39 S. Ct. 183, 93 L. Ed. 2d 117 (1986) .... =—:17

ix

Cited Authorities
Page
United Drug Co. v. Theodore Rectanus Co., 248 U.S.
90, 39 S. Ct. 48, 63 L. Ed. 141 (1918) ........ 12, 13
University of Pittsburgh v. Champion Products Inc.,
686 F.2d 1040 (3d Cir. 1982), cert. denied, 459
U.S. 1087, 103 S. Ct. 571, 74 L. Ed. 2d 933 (1982)
coed e ohare estes cece ed eee sand we buen 18-19, 24
Wanlass v. Fedders Corp., 145 F.3d 1461 (Fed. Cir.
Tee rT TTT Tre rr eee ree ee 23
White v. Daniel, 909 F.2d 99 (4th Cir. 1990), cert.
denied, 501 U.S. 1260, 111 S. Ct. 2916, 115
S Ff 8 oi. ere ee ree 22
Whitman v. Walt Disney Prod’s Inc., 263 F.2d 229
ts FS ae ere ere ree eee 18
Whittaker Corp. v. Execuair Corp., 736 F.2d 1341
ee BPO TTITeCTTET TTT LTT Tee 16

State Cases

Finnie v. Town of Tiburon, 199 Cal. App. 3d 1, 244
CUE, WUT SE CASED: dnc ccistcccecceseecees 17

x

Cited Authorities

Statutes

California Business & Professions Code
Se eR en Cire bade hee Shs ew Oe we

California Business and Professions Code
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Lanham Act
bogie ia Bh” ee rrr

Rules

of eR ek ee rer ee ree
Se es Oe EE bs bes Saw keewy eee be
oe 8S en rn ree
Federal Regulations

(ie) eg Ss Se ee ee eer TT oe
Se OU dks ches sheen es cae ewes

OPO OES iio

Page

es ey eS ee ee a ee ee oe eee >

Ten Ne ee ee OT, a eee

xi

Cited Authorities

Treatises

5 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition (4th ed. 2002)

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5 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition (4th ed. 2002)

“S - Aeapaer Dehse ie ae iatcens VAGHEU Nin eeienriad

5 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition (4th ed. 2002)

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5 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition (4th ed. 2002)

TS ee Are een one

5 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition (4th ed. 2002)

Dee pe aes ae

Page

24

21

16

1

The Petition for a Writ of Certiorari should be denied
because there is no compelling reason for this Court to
exercise its discretion to review the judgment of the United
States Court of Appeals for the Ninth Circuit (the “Ninth
Circuit”), issued on June 4, 2002, affirming the Judgment of
the United States District Court, Central District of California
(the “District Court”), entered on November 14, 2000.

There is no conflict between the Ninth Circuit’s ruling
and the decisions of other United States Court of Appeals,
nor does the Petition raise any important issue of law. Indeed,
on the record below, neither of the questions posed by
Petitioner, Jarrow Formulas, Inc. (“Jarrow”), presents any
genuine issue. Rather, what Jarrow advances is solely a matter
of private commercial interest. This is admitted not only by
Jarrow’s protracted delay in filing suit, but by its failure to
even attempt to involve any of the Federal regulatory agencies
charged with protecting the public interest. Both the District
Court and the Ninth Circuit considered Jarrow’s public
interest argument and correctly rejected it because no real
issue of public interest is implicated.

Regarding the applicability of laches, the case below
involved one basic question: Whether (i) Jarrow’s unreasonable
delay and (ii) resulting prejudice to Respondent Nutrition Now,
Inc. (“Nutrition Now”) bars prospective injunctive relief to
Jarrow in a false advertising action. The District Court,
citing extensive and controlling authority, so found; the Ninth
Circuit agreed. Both Courts’ rulings were consistent with
applicable authority in the other Circuits.

Jarrow has conjured a phantom split of authority between
the Third, Fourth, and Sixth Circuits, on the one hand, and
the Seventh and Ninth Circuits, on the other hand, regarding
whether a laches defense may bar injunctive relief. In fact,

2

there is no split of authority. All of the Circuits that have
considered the issue have acknowledged that a party’s laches
may bar injunctive relief in appropriate circumstances.
The most that can be said is that some Circuits allow the
laches defense sparingly and apply it more narrowly under
certain circumstances, while others recognize the defense
more widely, and apply it with less scrutiny.

SUMMARY OF REASONS FOR
DENYING THE PETITION

A. This Court Has Long Held That A Party’s Laches May
Bar Prospective Relief

Contrary to Jarrow’s assertion, in Danjaq v. Sony Corp.,
263 F.3d 942 (9th Cir. 2001), the Ninth Circuit did not depart
radically from prior precedent when it concluded that laches
could bar injunctive relief (Petition at p. 12). Decades before
its decision in Danjaq, citing controlling precedent from this
Court, in Prudential Insurance Company of America v. Gibraltar
Financial Corporation of California, 694 F.2d 1150, 1152
and n.1 (9th Cir. 1982), cert. denied, 463 U.S. 1208, 103 S. Ct.
3538, 77 L. Ed. 2d 1389 (1983), the Ninth Circuit expressly
endorsed an application of laches as a bar to injunctive relief.

In Prudential, citing numerous supporting cases from
the Second, Third, Fourth, Seventh and Tenth Circuits,
the Ninth Circuit noted that

[t]he Supreme Court explicitly made laches available
as an equitable defense barring injunctive relief
in United Drug Co. v. Rectanus Co., 248 U.S. 90,
102-103, 39 S. Ct. 48, 52-53, 63 L. Ed. 141 (1918);
and La Republique Francaise v. Saratoga Vichy
Spring Company, 191 U.S. 427, 436-437, 24 S. Ct.
145, 146-147, 48 L. Ed. 247 (1903).

Bot se ee ee

3

Id. at 1152. This Court also ruled to like effect in Hanover
Star Milling Company v. D.D. Metcalf, 240 U.S. 403, 36
S. Ct. 357, 60 L. Ed. 713 (1916) (preliminary injunction
denied and plaintiff estopped from asserting trademark
infringement because defendant had, in good faith; expended
money and efforts to build its trade).

Accordingly, the Ninth Circuit’s application of laches to
bar Jarrow’s claim for injunctive relief was supported by
Supreme Court precedent. As is discussed below, it was also
consistent with Circuit Court precedent.

B. There Is No “Split” Among The Circuit Courts On The
Availability Of Laches As A Bar To Prospective Relief

The availability of laches as a bar to prospective relief
is well accepted. See generally, 5 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, § 31.30
(4th ed. 2002) (hereinafter, “McCarthy Trademarks”).
The list of Circuit Court decisions approving the application
of a laches defense to bar prospective injunctive relief has
only grown in the twenty years since the Ninth Circuit
compiled its catalogue of such decisions in Prudential,
supra at n.1. Since that time', numerous Circuits, including
the Fourth and Sixth Circuits, have discussed or applied
laches in the context of an application for prospective relief.
See, e.g., Conopco, Inc. v. Campbell Soup Co., 95 F.3d 187,
192 (2d Cir. 1996) (dismissing on laches grounds claim
for permanent injunctive relief against alleged false
advertisement); Sara Lee Corporation v. Kayser-Roth

1. This discussion focuses only on cases decided after the Ninth
Circuit’s 1982 decision in Prudential, supra, because the Court in
that case created a virtual digest of the rulings among the Circuits at
the time. As is discussed more fully, infra, subsequent rulings among
the Circuits have remained consistent with Prudential.

4

Corporation, 81 F.3d 455, 461 (4th Cir. 1996), cert. denied,
519 US. 976, 117 S. Ct. 412, 136 L. Ed. 2d 325 (1996) (Courts
may sparingly apply estoppel by laches in trademark
infringement case to deny injunction to plaintiff who unreason-
ably delayed seeking redress to defendant’s detriment); Skippy,
Inc. v. CPC International, Inc., 674 F.2d 209, 212 (4th Cir. 1982),
cert. denied, 459 U.S. 969, 103 S. Ct. 298, 74 L. Ed. 2d 280
(1982) (availability of laches as a defense to claims for injunctive
relief for trademark infringement and unfair competition may
be limited when defendant is guilty of bad faith infringement);
Tandy Corp. v. Malone & Hyde, Inc., 769 F.2d 362, 366 n.2
(6th Cir. 1985), cert. denied, 476 U.S. 1158, 106 S. Ct. 2277,
90 L. Ed. 2d 719 (1986) (some affirmative conduct in the nature
of an estoppel, prejudice, or conduct amounting to “virtual
abandonment” is necessary to deny injunctive relief in trademark
infringement action); Kellog Company v. Exxon Corporation,
209 F.2d 562, 568 (6th Cir. 2000), cert. denied, 531 U.S. 944,
1218S. Ct. 340, 148 L. Ed. 2d 273 (2000) (defendant must prove
elements of estoppel to defeat injunctive relief in trademark
infringement action); Chattanooga Manufacturing, Inc. v. Nike,
Inc., 301 F.3d 789 (7th Cir. 2002) (injunctive relief denied where
trademark holder’s 14 year delay was unreasonable and
prejudicial); Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813
(7th Cir. 1999) (claim dismissed on laches because of plaintiff’s
delay of over 20 years in asserting false advertising claim).

Jarrow’s selective treatment of the case law (Petition
at pp. 10-21) ignores the wealth of authority which shows that,
rather than a “split” among the Circuits, there is virtual unanimity
on the availability of laches as a bar to prospective relief.
See also 5 McCarthy Trademarks, § 31.22 (4th ed. 2002).

Finally, Jarrow’s argument also hinges on a fabricated
public interest argument. On one level, Jarrow’s claim is an
attempt to enforce regulations that it has no standing to assert.

tL i OU atte 2 ta

5

On a more important level, Jarrow’s claim is premised on
assumptions that are either outside the record, or are contradicted
by the facts in it. Both the District Court and the Ninth Circuit
considered and appropriately rejected Jarrow’s public interest
argument.

COUNTER-STATEMENT OF THE CASE

Jarrow filed its Complaint on August 18, 2000, and its
First Amended Complaint on August 23, 2000. The First
Amended Complaint asserted claims of Unfair Competition,
Violation of the Lanham Act (15 U.S.C. § 1125(a)), Unfair
Trade Practices under California Law (California Business
& Professions Code §§ 17200, et seq.), and False Advertising
under California law (California Business and Professions
Code §§ 17500, et seq.) against Nutrition Now, all of which
were based upon Jarrow’s allegations that the label on
Nutrition Now’s probiotic product, “PB8,” contained false
and misleading statements. Jarrow sought damages and
injunctive relief.

Pursuant to Supreme Court Rules 15.3, 24.2 and 24.1(g),
Nutrition Now recites briefly the facts that are material to
the two issues presented to this Court.”

2. Jarrow’s Petition cites with alarming frequency to matters
outside the record in this action. The examples are too numerous to
list or to correct. However, some of the more egregious examples
include the following: (1) Jarrow fails to note that PB8 is a proprietary
blend and, therefore, not subject to the sections of the DSHEA that
Jarrow cites [Petition, p. 3, n.2]; (2) Jarrow ignores the fact that
Nutrition Now’s claims are made as of the date of manufacture and
erroneously compares this claim with the results of Jarrow’s purported
tests, the invalidity of which was demonstrated in the District Court
[Petition, pp. 3-6]; and (3) Jarrow claims an inability to test PB8,
which, in addition to being irrelevant, is belied by Rogovin’s claim
that he had tested PB8 in 1993 [Petition, pp. 4-5].

6
A. Nutrition Now’s Probiotic Supplement, PB8

Nutrition Now has made the same three basic claims for
its PB8 product since its introduction in 1985: (1) 14 billion
good bacteria at the time of manufacture; (2) 8 types of
beneficial bacteria; and (3) No refrigeration needed.

The cultures from which PB8 is manufactured are tested
by an independent laboratory, and the bacteria count for each
lot is verified, as of the time of manufacturing. Eight different
types of bacteria are used in the manufacture of the product
and the product may be stored at room temperature.

B. Consumer Satisfaction With PB8

Nutrition Now and Jarrow are direct competitors in the
natural probiotic market. Despite the highly competitive
nature of the probiotic business, the market for PB8 has
increased steadily due to customer satisfaction and increased
distribution. Nutrition Now is one of the industry’s leaders.
Its growth is due to both marketing support and customer
satisfaction, which was shown to the satisfaction of both the
District Court and the Ninth Circuit. (Pet. Appendix A,
pp. 16a-18a; Appendix C, pp. 57a-60a.) Nutrition Now is a
member of the National Nutritional Foods Association
(“NNFA”) and the American Herbal Products Association.
PB8 was named the nation’s number one probiotic product
by Vitamin Retailer Magazine, winning the Gold Medal
“Vity” Award for Nutrition Now the last three years prior to
the commencement of the action below.’ Nutrition Now has

3. Revealing its true motivation, Jarrow simply waited until
Nutrition Now was sufficiently successful so as to warrant filing an
action. As the Seventh Circuit observed in Hot Wax, Inc. v. Turtle

(Cont’d)

7

at all times complied with all applicable regulations
promulgated by the Federal Food and Drug Administration
concerning Probiotic products, and has never been cited for
any regulatory violation concerning probiotic products.

C. All Of Jarrow’s Claims Date Back To 1993

Nutrition Now’s president, Martin Rifkin (“Rifkin”),
was first confronted by Jarrow Rogovin (“Rogovin”),
Jarrow’s President, at a trade show in Seattle, Washington,
in mid-1993. At that time, Rogovin disparaged Nutrition
Now’s product and business practices, and accused it of false
labeling, false advertising, and fraudulent business practices
— the very same claims that Jarrow asserted seven years
later when it belatedly filed the underlying action.

The trade show encounter was but a precursor of Jarrow’s
1993 attack on Nutrition Now’s business. On September 22,
1993, Jarrow filed a letter of complaint with the NNFA,
again making the same claims asserted in this case. Jarrow
asserted that PB8’s labeling made the following “false,
unfair, misleading and illegal claims”: “1) That the product
contains ‘14 Billion Good Bacteria Per Capsule’; 2) That
each capsule contains ‘8 Strains of Viable Bacteria’; 3) That
‘No Refrigeration Needed.’ ” Jarrow also stated that Institut

(Cont'd)

Wax, Inc., 191 F.3d 813, 823 (7th Cir. 1999), not only should this
kind of conduct not be allowed, it underlies the purpose of the laches
defense: “[I]t cannot be equitable for a well-informed merchant with
knowledge of a claimed invasion of right to wait to see how successful
his competitor will be and then destroy with the aid of court decree
much that the competitor has striven for and accomplished.” (quoting
Polariod Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 498 (2d Cir.
1961)).

8

Rosell, its manufacturer, had tested PB8 and that, “Institut Rosell
has found virtually no live bacteria in this product.” In this letter
of complaint, Jarrow also complained of Nutrition Now’s
“protein matrix” coating*, which it rejected as being a “fraud,”
“illegal,” and “unfair,” and the order of the organisms listed on
bottles of PB8, which Jarrow attacked as “doubtful.”

In a separate letter to its customers, dated September 23,
1993, Jarrow assailed PB8 as being “worthless” and “sold under
false circumstances.” Nutrition Now responded that Jarrow’s
allegations were merit less and demanded that Jarrow cease and
desist its disparagement. Jarrow refused and responded on
September 24 with a lengthy and vitriolic personal attack on
Rifkin’s character and competence, and further accused Nutrition
Now of making false and unsubstantiated statements.

Rogovin continued his attack with yet another letter to
Rifkin, dated September 25, 1993. In that letter, Rogovin
asserted that he was pursuing a “counterassault” against PB8,
and acknowledged that the time for Jarrow to file an action
against Nutrition Now was running:

I want you to be aware of the fact that my
counterassault against your fraudulent marketing
of PB8 is relatively kind. I could be suing you for
unfair competition already. I could also have just
turned Nutrition Now in to the Federal Trade
Commission (FTC) for consumer fraud.

4. Conveniently, but not coincidentally, the “protein matrix,”
which Jarrow had dismissed as meaningless in 1993 was not an
impediment to testing PB8 until Jarrow had to try to fabricate
arguments against entry of summary judgment against it in the
underlying action. As noted by the District Court, the fallacy of this
argument was betrayed by Rogovin himself in 1993 when he asserted
that he had already had Institut Rosell test PB8 in 1993.

9

Acknowledging that the time-clock was ticking on his
claims, Rogovin stated:

If you knew what I knew about your product, what
would you do after all this time?

and attached a further “personal note” to his letter:

I have given you, sir, a lot of time to clean up
your act. Time’s up.

Although the Petition attempts to portray Rogovin as a
simple businessman who lacked legal acumen, he was no
stranger to litigation. On the contrary, in his 1993 letters Rogovin
bragged about having sued a mutual competitor, Nature’s Way,
for alleged Lanham Act violations, and claimed that he protected
“the entire legitimate probiotic industry.” He concluded:

Sir, you’re a morsel by comparison. Don’t try to bite
off something you can’t chew with me. There are
two con jobs doing the rounds in the west coast,
particularly the northwest: PB8 and Staff of Life.
I intend to deliver the coup de grace to both.*

5. Indeed, in an unsolicited letter to Nutrition Now’s counsel,
dated September 8, 2000, Rogovin detailed a history of strategic
litigation against Jarrow’s competitors commencing as early as 1989.
In that letter, Rogovin went on to State, “The current suit, you’re
quite correct, may have been a situation known to us ...” and
“I would have been justified in not only suing your client for unfair
competition but for libel based upon that horribly dishonest letter
your client sent to its customer base dated September 30, 1993.”
Thus Jarrow’s familiarity with the legal system and the extent of
Jarrow’s unreasonable delay in pursuing its claims are acknowledged
expressly by its principal officer.

10

Despite such sabre-rattling®, Jarrow waited seven years
before he sued Nutrition Now. Similarly, Jarrow never filed
any claim with the Federal Trade Commission, and, once
the true facts were disclosed, Jarrow’s complaint to the NNFA
resulted in no action. Rather than act then on whatever legal
rights it believed it had, Jarrow sat on them and attacked
Nutrition Now in the court of public opinion. Pressed on
this issue by both the District Court and the Ninth Circuit,
Jarrow was unable to articulate any coherent or reasonable
excuse for not having proceeded at that time, as he had so
loudly threatened to do.

D. Prejudice to Nutrition Now

Over the 15 years since PB8 was introduced in 1985,
Nutrition Now expended “significant” and “enormous”
resources in researching, developing, manufacturing, packaging,
labeling, distributing, mass-marketing, promoting and
advertising its product, while building a solid and satisfied
customer base. (Pet., Appendix A, pp. 16a-17a; Appendix C,
pp. 57a-58a). Nutrition Now has made heavy capital investments
and invested substantial labor, which built PB8’s good-will
and led to national customer satisfaction. In reliance on Jarrow’s
acquiescence by its virtual silence between the 1993 threats and
the 2000 lawsuit, in good faith Nutrition Now continued to invest
in its product and developed substantial business in the probiotic
field. Now, Jarrow attempts to gain through litigation the
competitive advantage it failed to secure on the merits in the
marketplace, which is the true proving ground for customer
satisfaction and the public interest.

6. Jarrow’s “public interest” argument is also suspect because
of the delay. Were the public interest truly at the bottom of this
litigation, why did Jarrow not act sooner? Instead, and again putting
the lie to Jarrow’s opportunistic accusations, the only competent
evidence in the record demonstrates consumer satisfaction with PB8.

11

E. Petitioner’s Erroneous “Unclean Hands” And Public
Interest Arguments

Both the District Court and the Ninth Circuit rejected
Jarrow’s contention that Nutrition Now had “unclean hands” in
developing the market for PB8. Each court rightly found that
the mere allegation that a party knew that its marketing
representations were false, which is simple and easy to claim,
could not defeat a valid laches defense. Otherwise, the
application of laches would be effectively precluded “whenever
a dispute of fact regarding the merits of a Lanham Act claim
existed.” (Pet., Appendix A, pp. 1 8a-19a; Appendix C, pp. 60a-6 1a).
Likewise, Jarrow’s irrelevant but oft-repeated and hotly disputed
allegation of Nutrition Now’s test result manipulation in 1993
(Pet., p. 7, n.5)’, even assuming its truth, was rejected by the
Ninth Circuit as insufficient. (Pet., Appendix C, pp. 61a-62a).

Jarrow also advanced the question of the public interest
as yet another reason for the courts below to ignore its
extensive delay. Both the District Court and the Ninth Circuit
noted that the record established little, if any, public interest
beyond Jarrow’s disputed false labeling allegations. In fact,
the record reflected potentially beneficial effects of and
consumer satisfaction with PB8. (Pet., Appendix A, pp. 19a-
20a; Appendix C., pp. 59a-60a). By contrast, there was “no
evidence that N/Now’s PB8 has had or is having a negative
impact on the public interest[.]” (Pet., Appendix A, p. 20a).
In sum, Jarrow did not present any cogent argument invoking
the public interest, only its own disputed labeling allegations.

7. Jarrow’s representation of the facts concerning Alpha
Omega’s testing was based on Rogovin’s hearsay statement, which
was wholly contradicted by Rifkin before the District Court. Nutrition
Now timely and properly objected, however, the claim had little
impression on that Court, which found no reason to discuss it in its
written opinion.

12

REASONS FOR DENYING THE PETITION

I. THIS COURT HAS HELD EXPLICITLY THAT
LACHES MAY BAR PROSPECTIVE INJUNCTIVE
RELIEF UNDER THE LANHAM ACT

This Court has repeatedly affirmed the rule that laches®,
equitable estoppel, acquiescence’, and estoppel may bar
injunctive relief where a defending party has, in good-faith,
marketed and expended money and effort to build up its trade
and reputation.

In United Drug Co. v. Theodore Rectanus Co., 248 U.S.
90, 39 S. Ct. 48, 63, L. Ed. 141 (1918), this Court held explicitly
that the laches defense is available against injunctive relief.
In Rectanus, a senior user traded medicines under the “Rex”
label, initially throughout Massachusetts; approximately six
years later, the junior user began marketing similar medicines
under the same label in Louisville, Kentucky. The dispute arose
when the senior user expanded into the junior user’s market.

8. Three elements are needed to prove a laches defense:
(1) plaintiff’s knowledge of defendant’s use of its mark; (2) plaintiff
inexcusably delayed in taking action; and (3) defendant will be
prejudiced if plaintiff were to be permitted to assert its right at this
time. Cuban Cigar Brands N.V. v. Upmann International, Inc.,
457 F. Supp. 1090, 1096 (S.D.N.Y. 1978), aff'd, 607 F.2d 995 (2d Cir.
1979); Sara Lee Corporation v. Kayser-Roth Corporation, 81 F.3d
455, 461 (4th Cir. 1996), cert. denied, 519 U.S. 976, 117 S. Ct. 412,
136 L. Ed. 2d 325 (1996); Nartron Corp. v. Stmicroelectronics, Inc.,
305 F.3d 397 (6th Cir. 2002); Chattanoga Manufacturing, Inc. v.
Nike, Inc., 301 F.3d 789, 792-793 (7th Cir. 2002).

9. “Acquiescence” has been held to encompass similar factors.
Times Mirror Magazines, Inc. v. Field & Stream Licenses Company,
294 F.3d 383, 395 (2d Cir. 2002).

13

Regarding the application of laches to a request for
injunctive relief, this Court in Rectanus held that equity will
bar prospective relief in cases of good-faith use of a trademark
and name. /d. at 103. The Court reasoned that a senior user
who has confined the use of the “Rex” mark to a limited
territory over a long period of time risks having an innocent
party apply the same mark to goods of similar character, and
expend money and effort in building up a trade under it. Since
Rectanus, in good faith and without prior notice, had selected
the “Rex” mark and succeeded in building up a local but
valuable trade under it by expending money and effort, the
petitioner was estopped from setting up the mark’s continued
use in that territory as an infringement of the trade-mark.

Previously, in Hanover Star Milling Company v. D. D.
Metcalf, 240 U.S. 403, 36 S. Ct. 357, 60 L. Ed. 713 (1916),
this Court also concluded that plaintiffs laches and acquiescence
barred injunctive relief for trademark infringement where the
defendant’s actions were not fraudulent, but made in good faith.
Id. at 419. In Hanover Star Milling, Allen & Wheeler Company
had first adopted and used the trade-mark “Tea Rose” on a type
of flour that it made and sold only in that part of the United
States that was North of the Ohio River. Hanover had also
adopted “Tea Rose” as its mark, but in the Southeast. Due to
Hanover’s efforts over many years, the mark had come to mean
Hanover’s flour in that territory.

On the issues of laches and acquiescence in trademark
infringement cases, this Court in Hanover Star Milling
concluded that, while injunctive relief would be proper if the
defendant had acted fraudulently or with knowledge of the
plaintiff’s rights, such relief was properly denied since Hanover
had not acted fraudulently, but in good-faith. Jd. at 419.

14

Even earlier, in La Republique Francaise v. Saratoga
Vichy Spring Company, 191 U.S. 427, 437, 24S. Ct. 145,
48 L. Ed. 247 (1903), this Court refused to enjoin the alleged
infringer from using the word “Vichy” because the original
user had delayed taking action for thirty years and because
the labels were dissimilar. The Court reasoned that “with the
yearly increasing sales and competition of the defendant
company, no move was made against them for twenty-five
years, and until 1898, when this bill was filed. A clearer case
of laches could hardly exist.” Jd.'°

II. THE CIRCUITS ARE NOT SPLIT — LACHES IS
AVAILABLE AS A DEFENSE TO CLAIMS FOR
PROSPECTIVE RELIEF UNDER THE LANHAM
ACT

A. Laches Is Universally Recognized As An Appropriate
Consideration Upon An Application For Prospective
Relief

As discussed below, the Second, Third, Fourth, Sixth,
Seventh, Ninth and the District of Columbia Circuits all
recognize a party’s laches as a defense against prospective
injunctive relief under the Lanham Act.

10. The availability of an equitable defense, including laches,
to bar an injunction was also recognized in San Francisco Arts &
Athletics, Inc. v. United States Olympic Committee, 483 U.S. 522,
531, 107 S. Ct. 2971, 97 L. Ed. 2d 427 (1987), although laches was
not applied on the facts of the case. In that case, the Unites States
Olympic Committee (“USOC”) had sued a California corporation
and various individuals under the Amateur Sports Acts to restrain
their use of the term “Olympics” to describe an athletic competition
they sponsored. This Court held that an unauthorized user of
“Olympic” words and symbols, although lacking normal statutory
defenses to trademark infringement, may raise traditional equitable
defense, such as laches. Jd.

- a

The Second Circuit has held that a defendant’s good
faith is a gateway key to claim the defense of laches as a bar
to an injunction. In those instances, the laches defense is not
only available to defeat equitable claims for an injunction in a
trademark suit, but also to defeat equitable claims for an
accounting. Saratoga Vichy Spring Co., Inc. v. Lehman, 625
F.2d 1037, 1041 (2d Cir. 1980) (federal trademark, unfair
competition, false designation of origin); Polaroid Corporation
v. Polarad Electronics Corporation, 287 F.2d 492 (2nd Cir.
1961), cert. denied, 368 U.S. 820, 82 S. Ct. 36,7 L. Ed. 2d 25
(1961) (plaintiffs 11-year delay, with knowledge of allegedly
infringing use barred injunctive relief); Conopco, Inc. vy.
Campbell Soup Co., 95 F.3d 187 (2d Cir. 1996) (claim for
permanent injunctive relief against alleged false advertisement
was dismissed on the grounds of laches.)

The Third and Fourth Circuits also apply laches to bar
injunctive relief, but with a sense of caution. Sobosle vy.
United States Steel Corp., 359 F.2d 7, 12 (3d Cir. 1966) (delay
or laches may operate as a defense to an injunction when,
in light of all the circumstances, a plaintiff has unreasonably
delayed seeking relief and the opposing party has been
prejudiced''); Fruit Industries v. Bisceglia Bros. Corporation,

11. While Jarrow notes that in its view there is a split in the
Circuits regarding whether economic injury to a defendant caused
by delay may properly constitute “prejudice” (Petition at p. 13 n.7),
in fact, virtually every Circuit court has recognized economic invest-
ment/economic injury to a defendant as a proper factor to be considered
in the assessment of whether laches may be asserted as a defense.
The Circuits unanimously recognize that economic investment and
“substantial activities” constitute prejudice in satisfaction of
the third element of laches, equitable laches, or estoppel as defenses
barring prospective injunctive relief. Polaroid Corporation v. Polarad
Electronics Corporation, 287 F.2d 492, 498 (2d Cir. 1961), cert. denied,
368 U.S. 820, 82 S. Ct. 36,7 L. Ed. 2d 25 (1961); Conopco, Inc. v.

(Cont’d)

16

101 F.2d 752 (3d Cir. 1939), cert. denied, 307 U.S. 646, 59
S. Ct. 1043, 83 L. Ed. 1526 (1939) (senior user’s three year
delays and acquiescence precluded from preventing junior
user from using trademark where junior user expended money
and effort in building up substantial business); See Sara Lee,
81 F.3d at 461 (1996) (estoppel by laches is sparingly applied
in trademark infringement actions where plaintiff seeks only
equitable relief). See also 5 McCarthy Trademarks, § 31.7.

Likewise, in Skippy, supra, the Fourth Circuit clarified
the limitations of applying the laches defense and held that

(Cont'd)

Campbell Soup Co., 95 F.3d 187, 192 (2d Cir. 1996); Anheuser-Busch,
Inc. v. Du Bois Brewing Co., 175 F.2d 370 (3d Cir. 1949), cert. denied,
339 U.S. 934, 70 S. Ct. 664, 94 L. Ed. 1353 (1950) (prejudice by
defendant’s advertising expenses and local good will); Chapin-Sacks
MFG. Co. v. Hendler Creamery Co., 254 F. 553, 557 (4th Cir. 1918)
(expenditure with knowledge of plaintiff of large sum by deliberate
infringer to develop good will in market outside plaintiffs’ territory;
injunction denied as to this outside territory); Nartron Corporation,
supra (any prejudice is sufficient); Chattanoga Manufacturing, Inc.
v. Nike, Inc., 301 F.3d 789, 795 (7th Cir. 2002) (if the delay is lengthy,
prejudice is more likely to have occurred, and less proof of prejudice
is required); Advanced Hydraulics, Inc. v. Otis Elevator Company,
525 F.2d 477, 481 (7th Cir. 1975), cert. denied, 423 U.S. 869, 96 S.
Ct. 132, 46 L. Ed. 2d 99 (1975); Safeway Stores, Incorporated v.
Safeway Quality Foods, Inc., 433 F.2d 99, 103 (7th Cir. 1970); Hot
Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813, 824 (7th Cir. 1999);
Whittaker Corp. v. Execuair Corp., 736 F.2d 1341, 1347 (9th Cir. 1984)
(detrimental reliance found in merely continuing a business,
“incurring additional potential liability” by reason of Plaintiff’s
delay); N.A.A.C.P. v. N.A.A.C.P. Legal Defense & Educational Fund,
Inc., 753 F.2d 131, 138 (D.C. Cir. 1985), cert. denied, 472 U.S. 1021,
105 S. Ct. 3489, 87 L. Ed. 2d 623 (1985) (injunctive relief may be
appropriately barred under doctrine of laches in a trademark
infringement suit when defendant invested substantial labor and
capital building trademark’s goodwill).

17

the availability of laches as a defense to claims for injunctive
relief for trademark infringement and unfair competition may
be limited when the defendant is guilty of bad faith infringe-
ment. Skippy, 674 F.2d at 212.

The Sixth Circuit’s application of laches in trade-
mark infringement cases is well recognized and in some cases
depends upon the facts and circumstances of each case. Estoppel
(delay, coupled with prejudice) forecloses a plaintiff from
obtaining injunctive relief in a trademark infringement action.
TWM Manufacturing Co., Inc. v. Dura Corp., 592 F.2d 346,
349-50 (6th Cir. 1979), cert. denied, 479 U.S. 852, 107 S. Ct.
183, 93 L. Ed. 2d 117 (1986) (delay of six years and two months);
Tandy Corp., 769 F.2d at 366 n.2 (to deny injunctive relief in a
trademark infringement action, some affirmative conduct in the
nature of an estoppel or conduct amounting to “virtual abandon-
ment” is necessary); Kellog Company v. Exxon Corporation,
209 F.3d 562, 568 (6th Cir. 2000), cert. denied, 531 U.S. 944,
121 S. Ct. 340, 148 L. Ed. 2d 273 (2000) (defendant must prove
elements of estoppel to defeat a suit for injunctive relief). Indeed,
in the recent case of Nartron Corporation, supra, the court held
that a trademark holder was not entitled to prospective relief
11 years after it had knowledge of the alleged infringing activity.
(305 F.3d 397, October 1, 2002).

There is no dispute as to the consensus within the Second,
Seventh and Ninth Circuits'?. Jarrow itself submits that the latter

12. Likewise, as noted by the Court below, under California
law, laches may properly be applied to defeat an application for
prospective relief. See Pet., Appendix C, pp. 62a-63a; Finnie v. Town
of Tiburon, 199 Cal. App. 3d 1, 244 Cal. Rptr. 581, 588 (1988), and
cases therein cited. See also Newman v. Checkrite California, Inc.,
912 F. Supp. 1354, 1376 (E.D. CA. 1995) (equitable defenses are
ordinarily appropriately raised against claims under California
Business and Professions Code).

18

Circuits permit a laches defense to claims for prospective relief
in trademark cases. See Chattanoga Manufacturing, Inc. v. Nike,
Inc., 301 F.3d 789 (7th Cir. 2002) (judgment for defendant in
trademark infringement action for damages and injunctive relief
where plaintiff’s laches was unreasonable and prejudicial since
competitor spent millions of dollars annually promoting its
products); Seven-Up Company v. O-So-Grape Co., 283 F.2d
103 (7th Cir. 1960), cert. denied, 365 U.S. 869, 81 S. Ct. 903,
5 L. Ed. 2d 859 (1961) (plaintiff's laches barred injunctive relief
to restrain Defendant from using trademark); Hot Wax, Inc. v.
Turtle Wax, Inc., 191 F.3d 813 (7th Cir. 1999) (twenty-year delay
constitutes laches which barred plaintiff’s false advertising
claim); James Burrough Ltd. v. Sign of Beefeater, Inc., 572 F.2d
574, 578-79 (7th Cir. 1978) (affirmative conduct in the nature
of estoppel is rieeded to deny injunctive relief in trademark
litigation); Continental Coatings Corporation v. Metco, Inc.,
464 F.2d 1375, 1378 (7th Cir. 1972) (plaintiff not entitled to
equitable relief for damages for future infringement where delay
was unreasonable and unexcused); Danjag v. Sony Corp., 263
F.3d 942 (9th Cir. 2001) (laches barred prospective injunctive
relief as well as retrospective relief in a counterclaim for
copyright infringement); Whitman v. Walt Disney Prod’ Inc.,
263 F.2d 229 (9th Cir. 1958) (laches barred action where passage
of time lulled defendant into a false sense of security, and
defendant acted in reliance); E-Systems, Inc. v. Monitek, Inc.,
720 F.2d 604, 607 (9th Cir. 1983) (for laches to constitute a
defense where injunctive relief is sought, passage of time must
be accompanied by circumstances which estop plaintiff from
obtaining injunctive relief; laches barred injunctive relief).

The cases cited by Jarrow do not support its argument
that a “split” exists in the Circuits. Jarrow cites to one case
from the Third Circuit in support of its position: University
of Pittsburgh v. Champion Products Inc., 686 F.2d 1040
(3d Cir. 1982), cert. denied, 459 U.S. 1087, 103 S. Ct. 571,

19

74 L. Ed. 2d 933 (1982)'3 However, this case is consistent
with and reinforces Nutrition Now’s arguments: actual laches
works as an equitable estoppel barring all relief and requires
a showing of both delay and prejudice. Jd. at 1044.
Accordingly, the reason why the Pittsburgh Court concluded
that the university’s delay did not bar its right to injunctive
relief was that the manufacturer had not been prejudiced by
it. The Court required a showing of delay, coupled with
prejudice, and rejected only Champion’s contention that delay
alone bars prospective relief. Jd. at 1946. The Court did not
reject the concept of economic prejudice as an element of a
laches defense. Rather, the Court found that Champion had
not demonstrated any such prejudice. In sum, Champion had
not satisfied the third element of laches: prejudice.

Jarrow relies upon Lyons Partnership, L.P. v. Morris
Costumes, Incorporated, 243 F.3d 789 (4th Cir. 2001) for the
proposition that, in the Fourth Circuit, “laches does not bar
claims for prospective relief under the Lanham Act at all.”
(Pet. p. 18). Jarrow overstates the holding in Lyons and other
Fourth Circuit authority is in accord with the general rule.
As the Fourth Circuit noted in Sara Lee Corp., supra, estoppel
by laches may bar relief where the plaintiff has unreasonably
delayed seeking redress, despite its knowledge of the defendant’s
infringing conduct, and the defendant has been prejudiced as a
result. The laches defense is limited, however, in situations,
unlike the one at bar, where there is no prejudice to the defendant,
or demonstrable confusion or other public interest evidenced.
Danjaq, 263 F.3d at 960. (See Pet., Appendix C, p. 58a.) Lyons
involved a dispute between the creator’s of Barney, a purple
dinosaur character, and costumers who were creating and renting
confusingly similar costumes. There was no evidence of any

13. Jarrow erroneously cites to this case as 686 F.3d 1040
(3d Cir. 1982).

20

prejudice to defendants as a result of plaintiff’s delay in asserting
its rights. On the contrary, the costumers had merely added the
infringing costumes as one more of the many that they offered
to the public. Both Danjag and the Ninth Circuit in the case
below noted this distinction. By contrast, the uncontradicted
evidence in the case below was that Nutrition Now had invested
heavily in developing PB8, to its prejudice, in reliance on
Jarrow’s acquiescence. Further, the Court in Lyons was
protecting both the owner’s property rights and the public’s
demonstrated interest in not being confused. Jarrow, by contrast,
has no property interest to protect, and, as held by each Court
having reviewed the facts of this case, there is no public interest
involved. As noted above, the only evidence in the record is of
consumer satisfaction with PB8.

Jarrow’s reliance on Kellogg Company v. Exxon
Corporation, 209 F.3d 562 (6th Cir. 2000), cert. denied, 531
U.S. 944, 121 S. Ct. 340, 148 L. Ed. 2d 273 (2000) is also
misplaced. In that case, the Court did not reject laches as a
defense to injunctive relief. Rather, it held that mere delay was
insufficient. The court ruled that to “defeat a suit for injunctive
relief, a defendant must also prove elements of estoppel which
requires more than a showing of mere silence on the part of the
plaintiff.” Jd. at 574. Defendant is also required to show that
it was misled by plaintiff through actual misrepresentations,
affirmative acts of misconduct, intentional misleading silence
or conduct amounting to virtual abandonment of the trademark.
Id. The Court did not find an estoppel since the record reflected
a genuine factual issue of whether plaintiff was put on notice
regarding defendant’s use of the trademark at issue. In fact,
when Plaintiff requested examples of defendant’s then-current
use of the trademark, defendant failed to include examples of
the trademark’s use in connection with the sale of food items,
which led plaintiff to believe that defendant’s use was limited

21

to the promotion of petroleum products. Jd. Thus, defendant
failed to establish the first element of laches: plaintiff’s
knowledge of defendants’ infringement.

B. Permutations In Terminology Between The
Circuits Do Not Undermine The Consensus That
Laches May, In Appropriate Circumstances,
Bar Prospective Injunctive Relief

What Petitioner calls a “split” of authority is nothing more
than the use of variant terminology by the Courts to describe
the same principles that they apply universally: the lapse of time,
coupled with prejudice to defendant or other affirmative
conduct on plaintiff’s part such as estoppel or acquiescence,
bars prospective injunctive relief in a trademark infringement
action. As J. Thomas McCarthy eloquently stated:

[a] good deal of confusion in the case opinions is
created by differing meanings attached to the word
“laches.” Some courts use the word to refer only
to plaintiff’s unreasonable delay in filing suit.
Other courts use the word to refer to the
conclusion that plaintiff is estopped by its delay
coupled with resulting prejudice to defendant . . .
most patent infringement cases appear to define
“laches” as that delay with resulting prejudice
which bars remedies for past infringement, while
“estoppel” is that degree of delay and prejudicial
reliance on the patgntee’s inaction which will bar
prospective relief as well. The semantic picture
is further clouded by confusing use in the
trademark cases of the term ‘acquiescence.’

5 McCarthy Trademarks, § 31.2 (4th ed. 2002).

22

Professor McCarthy went on to state:

The inter-relationship between delay, prejudice and
estoppel was explained by one court in these terms:
In order to find that a claimant’s ... interminable
inactivity or negligence has swollen to the level of
disabling laches or estoppel, his delay must be an
inexcusable one that has consequently prejudiced
an innocent user. . . By the mechanics of this precept,
equity comes to the aid of an innocent user and grants
him refuge from a claimant who has calmly folded
his hands and remained silent while the innocent
user has exploited and strengthened his mark. . . One
who is estopped may be merely the hapless victim
of his own lethargy. Estoppel, then is synonymous
with apparent or implied acquiescence. Jd.

Of course there will be variations in the application of
the laches doctrine based on factual permutations. This is
logical since all Circuits agree that the application of laches
is left to the sound discretion of the district court—to be
reviewed only for clear error of law or abuse of discretion’.

14. First Circuit: Ansin v. River Oaks Furniture, Inc., 105 F.3d

745 (1st Cir. 1997), cert. denied, 522 U.S. 818, 118 S. Ct. 70, 139
L. Ed. 2d 31 (1969) (laches ruling reviewed under abuse of discretion
standard). Second Circuit: Eppendorf Netheler Hinz GMBH vy.
National Scientific Supply Co., 14 Fed. Appx. 102 (2d Cir. 2001)
(same). Third Circuit: Holmes v. Pension Plan of Bethlehem Steel
Corp., 213 F.3d 124 (3d Cir. 2000) (same). Fourth Circuit: White v.
Daniel, 909 F.2d 99 (4th Cir. 1990), cert. denied 501 U.S. 1260, 111
S. Ct. 2916, 115 L. Ed. 2d 1079 (1991) (same). Fifth Circuit:
Kennedy v. Electricians Pension Plan, IBEW No. 995, 954 F.2d 1116
(Sth Cir. 1992) (same). Sixth Circuit: City of Wyandotte v.
Consolidated Rail Corp., 262 F.3d 581 (6th Cir. 2001) (same).
Seventh Circuit: Hot Wax v. Turtle Wax, 191 F.3d 813 (7th Cir. 1999)
(Cont'd)

23

These linguistic variations were discussed by the District
Court in Alfred Dunhill of London, Inc. v. Kasser Distillers
Products Corp. 350 F. Supp. 1341 (E.D. Pa. 1972), aff’d
mem., 480 F.2d 917 (3d Cir. 1973), where the Court stated:

The varying visage of the term “laches,” i.e., “laches
in the sense of mere delay,” “laches without more,”
“laches by estoppel,” has only muddled the concept
as it is used in trademark law, for restricting the
definition of laches only in terms of delay does not
comport with the classic definition. Jd. at 1364-1365.

The Dunhill Court concluded that while mere delay may
not bar relief, laches does. Jd. at 1365. Further, the Court
determined that laches and equitable estoppel are similar, so
it discussed them together, recognizing that “the defendant’s
intent is an equitable consideration under either.” Jd.
The Court also noted that principles of laches by estoppel or
equitable estoppel will bar all relief. To invoke equitable
estoppel, plaintiff must be charged with inexcusable delay
which prejudiced the innocent defendant. Jd. at 1364.

(Cont’d)

(same). Eighth Circuit: Foy v. Klapmeier, 992 F.2d 774 (8th Cir.
1993) (court’s ruling on equitable matters reviewed under abvse of
discretion standard). Ninth Circuit: Danjag v. Sony Corp., 203 F.3d
942 (9th Cir. 2001) (laches ruling reviewed under abuse of discretion
or clearly erroneous standard). Tenth Circuit: Roberts v. Colorado
State Board of Agriculture, 998 F.2d 824 (10th Cir. 1993), cert.
denied, 510 U.S. 1004, 114 S. Ct. 580, 126 L. Ed. 2d 478 (1993)
(court’s ruling on equitable matters reviewed under abuse of
discretion standard). Eleventh Circuit: Godfrey v. BellSouth
Telecommunications, Inc., 89 F.3d 755 (11th Cir. 1996). Federal
Circuit: Wanlass v. Fedders Corp., 145 F.3d 1461 (Fed. Cir. 1998)
(laches ruling reviewed under abuse of discretion standard).

24

The concept of evaluating the essence of the defense,
regardless of the variant nomenclature involved, was endorsed
by the Third Circuit in Anheuser-Busch, Inc. v. Du Bois Brewing
Co., 175 F.2d 370 (3d Cir. 1949), cert. denied, 339 U.S. 934, 70
S. Ct. 664, 94 L. Ed. 1353 (1950), a case relied on by the Third
Circuit in University of Pittsburgh v. Champion Products, Inc.,
supra. In that case, the Court held that after 31 years of delay,
the plaintiff was guilty of “inexcusable laches” and was “grossly
remiss.” Jd. at 374. The Court found that the long delay prior to
the filing of the complaint for injunctive relief amounted to at
least an acquiescence, if not an abandonment of the exclusive
right in use of the trademark. Accordingly, the Court ruled
that plaintiff was estopped from asserting its claim.

Ill. THE PUBLIC INTEREST IS ADEQUATELY
PROTECTED

In the absence of a threat to the public health, as here’®,
the public interest in false advertising cases is the same as it is
in trademark infringement cases. Accordingly, there is “no
distinction between trademark cases and misleading advertisement
cases for the purpose of laches. In both contexts, laches may
properly be applied so long as its application is equitable in
light of the public’s interest in being free from confusior. and
deception.” 5 McCarthy Trademarks, § 31.1 (4th ed. 2002)
citing Conopco, Inc. v. Campbell Soup Company, 95 F.3d 187,
193 (2d Cir. 1996) (estoppel by laches found and § 43(a) false
advertising charge dismissed), and Hot Wax, Inc. v. Turtle Wax,
Inc., 191 F.3d 813 (7th Cir. 1999) (twenty-year delay constituted
laches which barred plaintiff’s false advertising claim).

15. As noted by both the District Court and the Ninth Circuit,
the record is devoid of any evidence of a threat to the public health.
On the contrary, the only evidence presented establishes both a benefit
to the public health and consumer satisfaction with the PB8 product.
(Pet., Appendix A, pp. 19a-19b; Appendix C, p. 60a).

25

Case law developed in the context of trademark
infringement is applicable to the analysis required in this
case. Indeed, contrary to Jarrow’s assertion (Pet. at p. 22),
trademark infringement cases arguably present a more
compelling case for prospective relief than do false advertis-
ing cases. Typically, in trademark infringement cases,
the plaintiff is seeking prospective protection for its valuable
property interests. By contrast, false advertising claims
involve, at best, economic claims by a party whose interests
are market competitive. Such interests present a less forceful
case for equitable intervention by way of injunctive relief,
particularly preliminary injunctive relief, where the facts are
disputed, there is no bad faith, and where the only evidence
presented shows public satisfaction with the product that is
being attacked by the competitor.

Although the public’s interest in being free from
confusion with respect to products in the marketplace is
important, that interest alone cannot stand as a bar to the
application of laches in cases involving Lanham Act claims.
Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813, 826 (7th Cir.
1999). Jarrow’s argument disregards completely the fact that,
as in Hot Wax, supra, Nutrition Now has offered ample
evidence of consumer satisfaction with PB8 both by
testimonials and market approval. Moreover, Nutrition Now
has never been cited for any regulatory violation concerning
PB8. This evidence trumps Jarrow’s speculative argument
regarding harm to the public interest, which is founded solely
upon Jarrow’s extrapolation of its labeling dispute. Both the
District Court and the Ninth Circuit considered and properly
rejected Jarrow’s claim on this point.

26

The District Court and the Ninth Circuit expressly
weighed the public interests involved and found that, on the
facts presented, the only evidence in the record showed a
benefit to the public interest, rather than a detriment.
(Pet., Appendix A, pp. 19a-20a; Appendix C, p.60a). This,
coupled with the prejudice to Nutrition Now caused by
Jarrow’s extraordinary and unjustified delay, not only in
filing suit but also in failing to involve the regulatory agencies
actually given the charge of protecting the public interest,
renders the decisions of the Courts below correct on
these facts.

Jarrow has no evidence in support of its public interest
argument. In fact, Jarrow’s position “compares apples with
oranges.” As is noted clearly on Nutrition Now’s label,
all bacterial counts are made as of the time of manufacturing;
however, all of Jarrow’s “tests” occurred later and under
dubious conditions. Ironically, Jarrow itself markets a
competitive product for which it makes similar claims.
At best, there are disputed claims regarding the status of
certain ingredients. Considering there has been no showing
that PB8’s labeling is having a negative impact on the public
interest, and in the face of satisfaction with the product,
Jarrow’s self-serving consumer public interest argument
should not stand in the way of the application of the doctrine
of laches. In short, Jarrow’s public interest argument is
competitive warfare in disguise.

Importantly, the Food and Drug Administration (“FDA”)
and the Federal Trade Commission (“FTC”) have the
authority to and do supervise and regulate the field, using,
among other tools, the Dietary Supplement Health and
Education Act of 1994 (“DSHEA”’) together with federal and
state unfair business practice and false advertising laws.

27

21 C.F.R. §§ 101.13, 101.14 and 101.36 (2001). Those
agencies have “jurisdiction” to take action against nutritional
supplement companies. If Jarrow truly believed that PB8
presented a threat to the public interest, it would have sought
to involve those agencies. Inexplicably, however, in the face
of such an allegedly dire threat to the public, Jarrow never
tried to involve either agency. The reason for Jarrow’s
reticence is that Jarrow was likely more interested in the
potential for obtaining monetary relief, so it proceeded only
by the instant lawsuit.

Regardless of Jarrow’s motivation, it lacks standing to
pursue claims under DSHEA and cannot bootstrap Lanham
Act claims into an enforcement action. Individuals cannot
use the Lanham Act’s provisions against false, deceptive and
misleading advertising to enforce FDA regulations. Mylan
Laboratories, Inc. v. Matkari, 7 F.3d 1130, 1139 (4th Cir.
1993). Ingenious pleading to escape the principle that FDCA
does not create a private right of action by making it appear
that another law “not truly appropriate is applicable” is
contrary to the established case law. See Eli Lilly & Co. v.
Roussel-Uclaf Holdings Corp., 23 F. Supp. 2d 460 (D.N.J.
1998) (“every federal court that has addressed the issue has
held that the FDCA does not create a private right of
action to enforce or restrain violations of its provisions and
accompanying regulations”); and Dial A Car, Inc. v.
Transportation, Inc., 82 F.3d 484, 490 (D.C. Cir. 1996)
(rejecting the “back door method” of enforcing administrative
agency rules through the use of the Lanham Act).

The economic nature of Jarrow’s claims render its plea
for prospective injunctive relief suspect on at least two
fundamental grounds. First, Jarrow’s argument that it is truly
seeking to protect the public interest, as its claims are presented

28

before this Court, is belied by its extensive delay in asserting
those claims, despite particularized threats of action to be
taken both via litigation and by complaint before regulatory
agencies (i.e., the Federal Trade Commission and/or The Food
and Drug Administration). In short, Jarrow’s actions speak
louder than its words. Second, if Jarrow’s delay in asserting
its claims was prompted by the fact that only by the year
2000, after Nutrition Now had, via its marketing expenditures,
established a strong position in the market, did Jarrow believe
it worthwhile to pursue its alleged claims, it has thus shown
its true colors. Jarrow either lay in wait until the prospect of
economic damages was sufficiently lucrative to justify the
litigation effort, or until the market impact upon its business
was noticeable. Either way, Jarrow’s equitable position must
be balanced against the prejudice to Nutrition Now, both in
the form of evidentiary prejudice and in the form of economic
prejudice incurred by Nutrition Now in reliance on the hollow-
ness of Jarrow’s threat of suit.’®

On balance, as found by both the District Court and the
Ninth Circuit, Nutrition Now’s prejudice was substantial and
far outweighed any equitable claim presented by Jarrow.
On the facts presented, that determination should not be
disturbed by this Court.

16. See n.10, supra.

29 Je
CONCLUSION

For the foregoing reasons, Nutrition Now respectfully
requests that the Petition for Writ of Certiorari be denied.

Respectfully submitted,

JoHN A. LAWRENCE

RADCLIFF DONGELL LAWRENCE LLP
Attorneys for Respondent

707 Wilshire Boulevard

45th Floor

Los Angeles, CA 90017

(213) 614-1990

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386015_0485%3A2. Public record. Not legal advice.