Opinion
Civil No. 5-96-173 (JRT/RLE).
November 19, 2001
John D. Kelly and Mark D. Pilon, HANFT FRIDE O'BRIEN, HARRIES, SWELBAR BURNS, Duluth, Minnesota, for plaintiffs.
Ethan Horwitz, Kandis M. Kahn, and Elliot R. Basner, DARBY DARBY P.C., New York, N Y and Joseph J. Roby, Jr., JOHNSON, KILLEN SEILER, P.A., Duluth, MN, for defendants.
MEMORANDUM OPINION AND ORDER ON MOTION TO STRIKE JURY DEMAND
This matter is before the Court on the motion of Bumble Bee Seafoods Inc. ("Bumble Bee") pursuant to Rule 39(a)(2) of the Federal Rules of Civil Procedure to strike the jury demand in this case. For the reasons that follow, the Court grants Bumble Bee's motion.
BACKGROUND
Plaintiffs/counterclaim-defendants (collectively referred to as "Kemp") filed this lawsuit after defendants objected to their use of the LOUIS KEMP mark in connection with the sale, marketing and distribution of wild rice products. In their complaint, plaintiffs sought an action for declaratory judgment, tortious interference with contract and unfair competition. Defendants/counterclaim-plaintiffs answered and counterclaimed, alleging statutory and common law claims for trademark infringement, false designation of origin, unfair competition, trademark dilution, deceptive trade practices, and refusal of trademark applications.
By order dated March 31, 2001, the Court dismissed with prejudice Kemp's tortious interference and unfair competition claims. On May 21, 2001 the parties entered into a consent decree that dismissed with prejudice Kemp's declaratory judgment claim asserted in Count I of the complaint as well as all of Kemp's other claims asserted in response to defendants' amended answer and counterclaim. In light of these two orders, each of the affirmative claims raised by Kemp have been dismissed from this action. The only issues which remain in this action are Bumble Bee's counterclaims against Kemp for trademark infringement, dilution and unfair competition arising out of Kemp's use of the LOUIS KEMP mark in its sale and marketing of wild rice products. In addition, Bumble Bee seeks an order from the Court that directs the U.S. Patent Trademark Office to refuse Kemp's pending applications to register marks incorporating the term LOUIS KEMP. Originally, Bumble Bee sought compensatory and punitive damages in addition to injunctive relief in connection with its trademark and unfair competition-related claims. However, at a pre-trial settlement conference held on June 13-14, 2001, Bumble withdrew its request for compensatory and punitive damages. Having withdrawn all claims for damages, Bumble Bee has moved to strike Kemp's jury demand on the basis that only equitable claims remain.
Although courts have considered a defendant's oral notice withdrawing its request for damages to be sufficient, Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., 195 U.S.P.Q. 633, 633 (N.D.Cal. 1976), for the sake of clarity in the record, the Court prefers that Bumble Bee also amend its complaint to delete the request for compensatory and punitive damages.
ANALYSIS
The Seventh Amendment guarantees the right to trial by jury "[i]n Suits at common law, where the value in controversy shall exceed twenty dollars." U.S. Const. amend. VII. The Supreme Court has construed this language to require a jury trial on the merits in those actions that are analogous to "suits at common law," which were customarily tried before a jury in the English law courts predating the Constitution. Tull v. United States, 481 U.S. 412, 417 (1987).
To determine whether a particular action will resolve legal rights, a court should "examine both the nature of the issues involved and the remedy sought." Chauffers, Teamsters and Helpers, Local No. 391 v. Terry, 494 U.S. 558, 565 (1990). The first step is to examine the nature of the action and compare it to 18th Century actions brought in the courts of England before the merger of law and equity. Id. The second step is to "examine the remedy sought and determine whether it is legal or equitable in nature." Id. The Supreme Court has instructed that the second step is "the more important." Id.; Daisy Group Ltd. v. Newport News Inc., 999 F. Supp. 548 (S.D.N.Y. 1998); Tull, 481 U.S. at 421.
Bumble Bee argues that the jury demand in this case must be stricken because the claims it asserts historically have been considered equitable and it has now withdrawn all of its request for damages. Kemp contends that Bumble Bee focuses too heavily on the type of remedy Bumble Bee seeks and argues that the contract issues that remain unresolved after the Court's March 31, 2001 Order are unquestionably legal and are sufficient to preserve a jury trial.
Upon review of the relevant caselaw, the Court concludes that the nature of Bumble Bee's claims and withdrawal of its damage claims leaves this action with only equitable claims and requires that the jury demand in this case be stricken. Numerous courts have reached the same conclusion under similar circumstances. Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., 195 U.S.P.Q. 633, 633-34 (N.D.Cal. 1976); Francis v. Dietrick, 682 F.2d 485 (4th Cir. 1982); Partecipazioni Bulagri Spa v. Meige, 7 U.S.P.Q.2d 1815, 1816 (S.D.Fla. 1988). The facts and holding in Anti-Monopoly are particularly instructive. There, the district court denied a plaintiff's demand for a jury trial after the defendant withdrew its claim for damages on a trademark infringement counterclaim. Id. at 634. In reaching this decision, the court first noted that "this case presents a question of trademark infringement which is traditionally an equitable action." Id. at 633. The court then noted that the defendant's withdrawal of its claim for damages on its counterclaim distinguished the case from Dairy Queen v. Wood, 369 U.S. 469 (1962), and no longer gave plaintiff right to a jury trial:
Defendant's claim for injunctive relief and destruction of materials is equitable. Since their claim for damages has been withdrawn, plaintiff's reliance upon Dairy Queen v. Wood as requiring a jury in trademark actions is misplaced. Therefore, plaintiff's demand for a jury trial is denied.
Id. at 634.
Similarly, in Francis, the Fourth Circuit affirmed the district court's denial of the county's request for a jury trial after plaintiff amended his complaint to withdraw his request for damages on his wrongful discharge claim. Id. at 487. Specifically, the court stated:
[Plaintiff's] amendment altered the nature of the action. Withdrawal of the claim for damages left only equitable issues. Francis's amended complaint brought the action within the purview of rule 39(a)(2), which, as we have mentioned, authorizes the court to proceed without a jury when it finds that the right to a trial by jury does not exist for the issues presented by the pleadings.
Id. See also Meige, 7 U.S.P.Q.2d at 1817 (stating that "a plaintiff may amend his complaint and withdraw his claim for damages, and where the remaining issues are only equitable in nature there is no right to trial by jury").
Additionally, the existence of factual questions concerning one of Bumble Bee's theories in support of its trademark-related claims does not necessarily establish that a claim is legal. Anti-Monopoly, 195 U.S.P.Q. at 633 ("The existence of the factual question of the validity of the trademark MONOPOLY does not necessarily mandate a jury trial."); Shubin v. United States District Court, 313 F.2d 250, 251 (9th Cir. 1963) ("An equitable claim may involve a legal issue of fact, or may turn on a question of fact. The existence of an issue of fact does not per se create a `legal claim.'").
The cases relied on by Kemp are distinguishable from the instant case in that they all involved both equitable and legal claims. It is well-established that a right to a jury trial is preserved where legal claims, no matter how small, are involved in the case. Beacon Theaters v. Westover, 359 U.S. 500 (1958), Dairy Queen, Inc. v. Wood, 369 U.S. 469 (1962); Alcan Int'l Ltd. v. S.A. Day Mfg. Co., 179 F.R.D. 398 (W.D.N.Y. 1998); Daisy Group Ltd. v. Newport News Inc., 999 F. Supp. 548 (S.D.N.Y. 1998). Dairy Queen is particularly instructive. The Supreme Court's decision in Dairy Queen turned on the fact that plaintiff had requested as part of its relief "an accounting to determine the exact amount of money owing by petitioner and a judgment for that amount." 369 U.S. at 475. The Court determined that "we think it plain that [plaintiff's] claim for a money judgment is a claim wholly legal in its nature however the complaint is construed." Id. at 477. Here, by contrast, the only relief now sought by Bumble Bee is purely equitable.
On these facts, the Court finds this case governed by the decisions in Anti-Monopoly, Francis and Meige. Accordingly, the Court grants Bumble Bee's motion to strike the jury demand.
ORDER
Based upon all of the files, records, and proceedings herein, IT IS HEREBY ORDERED that the motion by defendant Bumble Bee Seafoods Inc. to strike the jury demand [Docket No. 118] is GRANTED.