United States District Court, Northern District of Illinois, E.D
October 19, 1983
TECHNICAL PUBLISHING CO., ETC., PLAINTIFF,
LEBHAR-FRIEDMAN, INC., DEFENDANT.
The opinion of the court was delivered by: McMILLEN, District Judge.
Defendant has moved to strike plaintiff's demand for a jury trial,
arguing that the action is essentially equitable. In the alternative,
defendant requests a separate trial on the liability and the damages
questions. We severed the issue of liability from the
issue of damages in the event of trial by an order entered July 19,
1983. Thus defendant's present motion applies only to the trial on the
issue of liability, although the nature of the complete case controls the
outcome of the motion.
Plaintiff has been publishing a tabloid newspaper called "Software
News" since May, 1981 (Amended Complaint, ¶ 9). The complaint
alleges that the defendant will be or is publishing a tabloid entitled
"Computer Software News," (Am.Cplt., ¶ 12). Defendant's use of
this name forms the basis of plaintiff's infringement and unfair
competition claims. For relief the plaintiff seeks an injunction
preventing the defendant from using the name "Computer Software News" or
anything similar to the name of plaintiff's publication. Plaintiff also
seeks "not less than" $1,000,000 in money damages.
The right to a jury trial depends upon the presence in the suit of
legal, as opposed to equitable, issues. Complications arise, however,
when the plaintiff seeks both legal and equitable relief in the same
case, as plaintiff does here. Under Fed.R.Civ.P. 18 a party may join
legal and equitable claims in one law suit. However, Rule 38 specifically
The right of trial by jury as declared by the Seventh
Amendment to the Constitution or as given by a statute
of the United States shall be preserved to the parties
In Beacon Theatres, Inc. v. Westover, 359 U.S. 500, 79 S.Ct. 948, 3
L.Ed.2d 988 (1959) the Supreme Court held that a court's determination of
equitable issues may not be used to divest a party of his right to a jury
determination of legal issues. The Court said at 510-11, 79 S.Ct. at
. . only under the most imperative circumstances,
circumstances which in view of the flexible procedures
of the Federal Rules we cannot now anticipate, can the
right to a jury trial of legal issues be lost through
prior determination of equitable claims. [f.n. and
The Court expanded its doctrine in Dairy Queen, Inc. v. Wood,
369 U.S. 469, 82 S.Ct. 894, 8 L.Ed.2d 44 (1962), where the plaintiff
alleged that the defendant breached a franchise agreement and continued
to use the "Dairy Queen" trademark after the breach. The plaintiff
requested injunctive relief and an accounting. The court held that
"insofar as the complaint requests a money judgment it presents a claim
which is unquestionably legal." Id. at 476, 82 S.Ct. at 899. The Court
held that the defendant had a right to a jury trial, and that to the
extent there was an overlap between legal and equitable issues, the legal
claims must be decided first.
Defendant in the case at bar attempts to distinguish Dairy Queen by
arguing that the major issue in that case was breach of contract. The
Court specifically addressed this issue in Dairy Queen, however, when it
A jury, under proper instructions from the court,
could readily determine the recovery, if any, to be
had here, whether the theory finally settled upon is
that of breach of contract, that of trademark
infringement, or any combination of the two.
Id. at 479, 82 S.Ct. at 900.
Later decisions have determined that there is a right to a jury trial in
trademark infringement cases where there is no underlying breach of
contract claim. Lee Pharmaceuticals v. Mishler, 526 F.2d 1115 (2d Cir.
1975). Furthermore, the Seventh Circuit has held that legal claims which
could be considered "incidental" to requests for injunctive relief must
be tried by a jury if requested. Rogers v. Loether, 467 F.2d 1110 (7th
Cir. 1972), aff'd sub nom Curtis v. Loether, 415 U.S. 189, 94 S.Ct.
1005, 39 L.Ed.2d 260 (1974).
In our order of July 19, 1983 we denied defendant's motion for summary
judgment because we determined that there is a genuine issue of material
fact concerning whether the descriptive term in the plaintiff's trademark
has acquired a secondary meaning in the minds of the public. The Seventh
Circuit has held that
the likelihood of confusion caused by similar trademarks is a question of
fact. Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366 (7th Cir.
1976), cert. denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94 (1976).
Thus, at least part of the trademark infringement case must be determined
by a jury.
Consequently, the defendant's motion to strike plaintiff's jury demand
is denied. This case is set for a final pretrial conference on Friday,
October 28, 1983 at 9:30 o'clock a.m.
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