American International Group, Inc. v. American International Bank

926 F.2d 829 17 U.S.P.Q.2d 1907 AMERICAN INTERNATIONAL GROUP, INC., Plaintiff-Appellant, v. AMERICAN INTERNATIONAL BANK, Defendant-Appellee. No. 88-5558. United States Court of Appeals, Ninth Circuit. Argued and Submitted Dec. 7, 1988. Decided Feb. 14, 1991. Stephen B. Judlowe, Hopgood, Calimafde, Kalil, Blaustein & Judlowe, New York City, for plaintiff-appellant. Joel Mark, Baker & McKenzie, Los Angeles, Cal., for defendant-appellee. Appeal from the United States District Court for the Central District of California. Before WALLACE, Chief Judge, POOLE and KOZINSKI, Circuit Judges. POOLE, Circuit Judge: I. Overview 1 Appellant, American International Group, Inc. ("the Group"), sued American International Bank ("the Bank") under the Lanham Trade Mark Act for federal trademark infringement, 15 U.S.C. Sec. 1114 (1) (1963), and false designation of origin, 15 U.S.C. Sec. 1125 (a) (1982), and, under California state law for trademark dilution, trademark infringement and unfair competition. California Business and Professional Code Secs. 14330, 14400 and 17200. Appellant sought to recover damages and injunctive relief. The district court granted summary judgment in favor of the…

I. Overview

Appellant, American International Group, Inc. (“the Group”), sued American International Bank (“the Bank”) under the Lanham Trade Mark Act for federal trademark infringement, 15 U.S.C. § 1114 (1) (1963), and false designation of origin, 15 U.S.C. § 1125 (a) (1982), and, under California state law for trademark dilution, trademark infringement and unfair competition. California Business and Professional Code §§ 14330, 14400 and 17200. Appellant sought to recover damages and injunctive relief. The district court granted summary judgment in favor of the Bank on the grounds that appellant’s claims were barred by laches. We reverse and remand. The Group has adduced evidence sufficient to raise factual disputes which were not amenable to summary judgment.

II. Factual and Procedural Background

The Group, a Delaware corporation with its principal place of business in New York, serves as a holding company for its more than 150 subsidiary corporations throughout the United States and in over 130 foreign nations. The Group is one of the largest underwriters of commercial and industrial insurance in the United States, with assets currently exceeding $21 billion and annual…

dissenting:

This much is clear: American International Group and its lawyers knew defendant was calling itself American International Bank and did nothing at all for better than two and a half years. AIG sat on its hands while the Bank — a small, struggling business — built up a clientele, opened a new branch and finally turned the corner on profitability. AIG offers no excuse for its inordinate delay; yet the majority allows it to proceed with its infringement action, imposing the daunting expense of a trial on a party who has been operating under the American International mark for twelve years. This is precisely the type of case laches is meant to bar.

The majority reaches the wrong result because it applies the wrong test. An issue of fact is not enough to defeat summary judgment; there must be a genuine issue of material fact, a dispute capable of affecting the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-50 , 106 S.Ct. 2505, 2510-11 , 91 L.Ed.2d 202 (1985). Here, AIG raises only quibbles; each and every E-Systems factor favors the Bank and will favor the Bank *834 regardless of AIG’s proof at trial. The learned district judge got it just…