526 F.2d 1115 | 2d Cir. | 1975
Lee Pharmaceuticals petitions for a writ of mandamus to set aside an order of the Eastern District, Mishler, Chief Judge, dated October 20, 1975, granting plaintiff Ceramco’s motion to strike defendant Lee’s timely jury demand. For the reasons hereinafter stated, we grant the petition.
In the underlying action, Ceramco, a manufacturer of dental products and a wholly-owned subsidiary of Johnson & Johnson, seeks to enjoin the defendant from continuing to market in interstate
In its answer, Lee asserted that there could be no possible infringement since its product and that of the plaintiff are not in direct competition, that plaintiff’s attempted assumption of an exclusive right to use the name GENIE represents unfair competition and further, that Johnson & Johnson’s general activities in the dental field, including the institution of the present lawsuit, represent an attempt to monopolize in violation of the antitrust laws, 15 U.S.C. §§ 1, 2, 14, 15 and 18. By way of counterclaim, Lee seeks a permanent injunction forbidding the plaintiff from “indirectly infringing Lee’s trademark GENIE,” and such damages as may be determined at trial to have flowed from its unfair competition. Moreover, defendant demanded a jury trial “on all issues raised by the complaint, answer and counterclaim.”
On July 15, 1974, Ceramco moved to strike certain paragraphs from Lee’s counterclaim, including the demand for a jury. In an affidavit submitted in support of its motion, plaintiff’s counsel stated:
“Ceramco seeks equitable injunctive relief solely. In order to avoid any confusion on this issue, I am authorized to state that any prayer for money damages contained in this complaint is hereby withdrawn. Lee’s demand for a jury trial, therefore, does not entitle it to have the trademark action for injunctive relief tried to a jury
After Judge Mishler granted plaintiff’s motion to strike defendant’s jury demand on October 20, 1975, Lee petitioned the court for a writ of mandamus on November 28, 1975, to which Ceramco responded at our request.
The issue, simply stated, is whether a claim for damages in an action for common law trademark infringement and unfair competition gives rise to a jury trial right under the Seventh Amendment. The fact that the demand for money damages is contained in Lee’s counterclaim is of no import in consideration of the jury trial question.
All parties agree that the Supreme Court’s opinion in Dairy Queen v. Wood, 369 U.S. 469, 82 S.Ct. 894, 8 L.Ed.2d 44 (1962), is the lodestar which must guide our analysis. Respondents would distinguish Dairy Queen, which also dealt with trademark infringement, on the ground that plaintiff and defendant in that case had entered into a contractual agreement governing their respective rights to use of the disputed trade name. No such contract is present in this case. Justice Black’s majority opinion indicates, however, that the right to a jury trial did not hinge upon the presence or absence of a contract: “[A]s an action for damages based upon a charge of
While we recognize that there has been some disagreement as to whether Dairy Queen is controlling in a ease such as the one presently before us,
The petition was also addressed to several rulings of the district court with regard to various pretrial discovery motions. We have considered these additional points and find them to be without merit.
Petition granted with respect to Lee’s demand for a jury trial.
. Since trial is scheduled to begin in the district court on December 15, Lee’s petition was submitted on expedited appeal.
. Given our disposition of this case, it is unnecessary for us to resolve whether Ceramco effectively withdrew from the complaint its claim for money damages. Nor need we decide whether Judge Mishler was correct in concluding that Lee had failed properly to frame its antitrust counterclaim against Johnson & Johnson, as to which it concededly would have been entitled to a jury trial.
. Compare Holiday Inns of America v. Lussi, 42 F.R.D. 27 (N.D.N.Y.1967) (granting a jury trial) with Coca-Cola Company v. Cahill, 330 F.Supp. 354 (W.D.Okl.1961), aff’d, 480 F.2d 153 (10th Cir. 1973) (denying a jury trial),