SAUL ZAENTZ COMPANY v. Wozniak Travel, Inc.

MEMORANDUM & ORDER

Defendant Wozniak Travel, Inc. (“Wozniak Travel”) has operated, since 1976, a Minnesota-based travel agency named “Hobbit Travel.” Plaintiff, Saul Zaentz Company d/b/a Tolkien Enterprises (“Tolkien Enterprises”), owns the right to use and license others to use marks related to novelist J.R.R. Tolkien’s books The Hobbit, first published in the United States in 1938, and its sequel The Lord of the Rings trilogy, first published in the United States in 1954, 1955, and 1956. The term “Hobbit” refers not only to the title of J.R.R. Tolkien’s first novel, but also refers to the race of small, human-like creatures who inhabit the mythical world of Middle Earth in which Tolkien’s novels are set. Plaintiff alleges that Wozniak has used and continues to use the “Hobbit” mark unlawfully. Tolkien asserts various federal and state causes of action for trademark infringement, trademark dilution, and unfair competition, and seeks both monetary and injunctive relief.

Now before the court are the parties’ cross-motions for summary judgment on whether the affirmative defense of laches bars plaintiffs claims. Having considered the arguments of the parties and the papers…