Gun Maker & Toy Partner Shoot It Out in Court

LAS VEGAS (CN) - One of the world's largest gun makers and its toy gun partner partially prevailed in a trademark suit against a U.S. maker of Airsoft toy guns.

Gun maker FN Herstal of Belgium and Airsoft gun maker Cybergun of France won partial summary judgment against California-based Jag Precision.

Cybergun makes Airsoft guns that shoot air-propelled plastic BBs.

FN Herstal in 2010 licensed Cybergun to make and sell Airsoft guns that are copies of FN Herstal's firearms designs, U.S. District Judge Andrew P. Gordon wrote in his Dec. 19 ruling.

That same year, Cybergun acquired Spartan Imports, which also makes Airsoft guns. Cybergun claims Spartan Imports informed it that it had been selling copies of FN Herstal firearms to Jag Precision. Cybergun says that was the first time it knew Jag Precision existed.

Cybergun says that in August 2010 it demanded that Jag Precision stop infringing on FN Herstal's designs but a year later learned that Jag Precision was selling replicas of FN Herstal's SCAR special forces rifle.

Cybergun says it again demanded Jag Precision stop selling the replicas, and along with FN Herstal filed a federal complaint several months later.

Jag Precision claims that in 2006 FN Herstal had "constructive notice" of the replica toys it sold based on the firearms company's designs. Jag Precision claimed laches and statute-of-limitations defenses, saying the many-years delay by FN Herstal in challenging the toymaker's activity "was unreasonable and prejudicial."

FN Herstal asked for summary judgment, claiming it learned of Jag Precision's trademark infringement only four months before it filed suit filing 2012.

Judge Gordon said that a laches defense claims a plaintiff can't "'sit on the knowledge'" of a trademark infringement for an extended time and then seek to affirm its intellectual property rights. For its laches defense to succeed, Gordon said, Jag Precision must prove FN Herstal "unreasonably delayed filing suit" and that Jag Precision "was prejudiced" as a result.

"Even if I assume plaintiffs unreasonably delayed filing suit, Jag has failed to raise a genuine dispute about whether it was prejudiced," Gordon wrote.

To be prejudiced, Gordon said, Jag Precision would have had to invest heavily in the toy and continued the investment during the time FN Herstal delayed filing suit.

Jag Precision contends it would have invested its efforts in developing a different toy if FN Herstal had enforced its rights sooner, but Gordon said this "speculation does not create a factual dispute."

Gordon said there is no specific statute of limitations on trademark infringement claims, though all parties generally agree Nevada's unfair trade practices law establishes a four-year statute of limitations.

FN Herstal knew of the Airsoft gun market when it first negotiated licensing with Cybergun, and Jag Precision allegedly had been making replicas of its firearms since 2007, Gordon wrote.

"A plaintiff cannot credibly argue, on the one hand, it had a protectable trademark interest in a defendant's trading area during a certain period, while on the other, it was not obliged to protect that interest during that same period," Gordon said.

Gordon granted FN Herstal's motion for summary judgment regarding Jag Precision's laches defense but denied summary judgment regarding statute of limitations.

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