                                                                           FILED
                           NOT FOR PUBLICATION                              AUG 05 2010

                                                                       MOLLY C. DWYER, CLERK
                    UNITED STATES COURT OF APPEALS                       U .S. C O U R T OF APPE ALS




                            FOR THE NINTH CIRCUIT



DEREK AND CONSTANCE LEE                          Nos. 08-56440, 08-56513, & 08-
CORPORATION, a California                        56687
corporation, DBA Great River Food,
                                                 D.C. No. 2:05-cv-03635-GPS-JTL
              Plaintiff - Appellee,

  v.                                             MEMORANDUM *

KIM SENG COMPANY,

              Defendant - Appellant.



                   Appeals from the United States District Court
                       for the Central District of California
                   George P. Schiavelli, District Judge, Presiding

                       Argued and Submitted July 13, 2010
                              Pasadena, California

Before: FARRIS and SILVERMAN, Circuit Judges, and CAMP, Senior District
Judge.**




        *
             This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.


        **
            The Honorable Jack J. Camp, Senior United States District Judge for
the Northern District of Georgia, sitting by designation.
      Kim Seng appeals from the district court’s entry of an injunction and award

of costs to Great River based on Kim Seng’s trademark infringement. Great River

cross appeals the district court’s denial of its motions for profits and attorney fees.

We have jurisdiction pursuant to 28 U.S.C. § 1291, and we affirm.

      Kim Seng first argues that the equitable doctrine of laches should bar

injunctive relief for Great River. We review for an abuse of discretion the district

court’s application of factors for determining whether laches should apply.

Internet Specialties West, Inc. v. Milon-Digiorgio Enters., Inc., 559 F.3d 985, 991

(9th Cir. 2009). There is a presumption that laches applies in cases where suit is

brought outside the statute of limitations. Jarrow Formulas, Inc. v. Nutrition Now,

Inc., 304 F.3d 829, 837 (9th Cir. 2002). Great River’s suit, after a delay of five

years, falls outside the applicable statute of limitations.1

      We must then decide, in light of the presumption, whether Great River’s

delay in bringing suit was unreasonable and whether Kim Seng was prejudiced by

the delay. See Internet Specialties, 559 F.3d at 991. Great River’s delay was


      1
       We have considered both the three-year limitations period for fraud as
provided in California Civil Procedure Code § 338(d), see Jarrow, 304 F.3d at 838,
and the four-year limitations period for California trademark infringement as
provided in California Business and Professions Code § 17208, see Internet
Specialties, 559 F.3d at 990 n.2, to be analogous limitations periods for Lanham
Act claims. Under either section, Great River’s delay of five years falls beyond the
applicable statute of limitations.

                                           -2-
unreasonable. It knew of Kim Seng’s use of the mark for five years and did

nothing despite the fact that Kim Seng’s sales of Que Huong products expanded

significantly.

      Nevertheless, Kim Seng must still demonstrate that it was prejudiced by this

delay. There are two commonly recognized forms of prejudice in the laches

context — evidentiary prejudice and expectations-based prejudice. Danjaq LLC v.

Sony Corp., 263 F.3d 942, 955 (9th Cir. 2001). Kim Seng has not cited any losses

of witnesses or evidence that would constitute evidentiary prejudice. Cf. Danjaq,

263 F.3d at 955–56 (9th Cir. 2001) (citing deaths of multiple key witnesses and

loss of key documents as constituting evidentiary prejudice). Kim Seng has also

failed to show that it suffered expectations-based prejudice. Kim Seng offered no

evidence that it invested money in advertising its Que Huong mark and it offered

very little evidence that there was any public association between its company and

the Que Huong brand. The mere fact that Kim Seng’s business grew based on the

success of the Que Huong brand is insufficient to establish prejudice in the laches

context. Internet Specialties, 559 F.3d at 991–93. The district court’s conclusion

that laches did not apply was not an abuse of discretion.

      The scope of the district court’s injunction is also reviewed for an abuse of

discretion. Internet Specialties, 559 F.3d at 993. The jury found a likelihood of


                                         -3-
confusion regarding the Que Huong mark but no such likelihood regarding the

Oldman Que Huong mark. The district court prohibited Kim Seng’s use of the

Que Huong mark other than in conjunction with the Oldman Que Huong mark.

The district court appropriately fashioned the injunction to address the likelihood

of confusion in one instance and the lack thereof in the other. The court did not

need to permit Kim Seng’s use of the Que Huong mark with other modifiers.

      Finally, the district judge was within his discretion in granting Great River

its costs as it was the prevailing party. The district judge was equally within his

discretion in denying Great River profits and attorney fees, as this case did not

involve willful or malicious infringement. See Earthquake Sound Corp. v. Bumper

Indus., 352 F.3d 1210, 1216 (9th Cir. 2003) and Lindy Pen Co., Inc. v. Bic Pen

Corp., 982 F.2d 1400, 1405–06 (9th Cir. 1993).

      AFFIRMED.




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