Marshak v. Tonetti, s. 86-1155

• Decision Date: 03 March 1987
• Docket Number: Nos. 86-1155,86-1156,s. 86-1155
• Citation: 813 F.2d 13
• Parties: Larry MARSHAK, Plaintiff, Appellant, v. Gino TONETTI, et al., Defendants, Appellees.
• Court: U.S. Court of Appeals — First Circuit

Page 13

813 F.2d 13

Larry MARSHAK, Plaintiff, Appellant, v. Gino TONETTI, et al., Defendants, Appellees.

Nos. 86-1155, 86-1156.

United States Court of Appeals First Circuit.

Submitted Oct. 10, 1986.

Decided March 3, 1987.

Clark A. Marcus and Marcus & Marcus, New York City, on brief, for plaintiff, appellant.

Barry J. Kusinitz and Temkin & Miller, Ltd., Providence, R.I., on brief, for defendants, appellees.

Before COFFIN, BOWNES and BREYER, Circuit Judges.

PER CURIAM.

Contending that he was improperly denied a jury trial and that the district court improperly entered judgment for defendants, awarded defendants attorneys' fees, and imposed sanctions on plaintiff's counsel, plaintiff has appealed from various orders.

We recount the lengthy and snarled procedural background in detail, as it is necessary to an evaluation of plaintiff's claims.

Plaintiff, initially pro se, filed an action in February 1985 alleging that he was the owner of the registered service mark "The Drifters" (denoting a singing group popular in the 1950's for hits such as "Under the Boardwalk") and that defendants had unlawfully used plaintiff's mark. Plaintiff sought a declaratory judgment, an injunction, and damages. The complaint, in its heading, demanded a jury trial. Plaintiff subsequently obtained New York counsel, Clark A. Marcus, and some discovery took place.

Notwithstanding plaintiff's request for a jury trial, by letter dated December 2, 1985, counsel was notified that plaintiff's case would be on the Friday, December 6, 1985 call of the non -jury trial calendar. That afternoon when plaintiff's case was reached, defendants announced they were ready to proceed, but plaintiff was not. Rather, plaintiff's counsel, Mr. Simms from Marcus' office, stated that there must have been some mistake as plaintiff had requested a jury trial, and he referred to several issues he felt should be decided by a jury. Simms said that upon receiving the December 2, 1985 letter he had called the clerk's office to point out the mistake. He had not, however, filed a formal motion to be removed from the non-jury list. Nor, apparently, had he claimed mistake at the call of the list that morning. The court pointed out that there were injunctive and declaratory prayers which the court would have to decide and asked Simms what he wanted to do. Simms' reply (which plaintiff's main brief neglected to mention) was, "I would request that you allow us to go ahead with the non-jury trial ..." (That Simms would ask to proceed non-jury when he had just finished referring to issues he felt were appropriate for a jury may be surprising. The explanation, as subsequent colloquy that day and later would reveal, is that neither Simms nor the court remembered the correct manner of proceeding when both equitable and damages relief are sought.) Simms indicated, however, that he was not ready that day to proceed with a non-jury trial because a crucial Florida witness, Mr. Furcht, had refused to be deposed and plaintiff's motion to compel the deposition was still pending in Florida.

Attempting to discern what issues were really in dispute and how important Furcht's testimony would be, the court asked Simms to explain the theory of plaintiff's case. Simms explained as follows. Plaintiff was the owner of the registered mark "The Drifters," but one Bill Pinkney had been authorized to use or advertise himself as "Bill Pinkney of the Original Drifters" or "Bill Pinkney and the Original Drifters." To plaintiff's dismay, however, Pinkney had been advertised as "The Drifters," and, as part of a consent decree growing out of earlier litigation between plaintiff and Pinkney, Pinkney had agreed to include in all contracts negotiated by or on his behalf a certain caveat concerning how Pinkney could and could not be advertised. Defendants, who were Pinkney's agent, plaintiff said, had been provided a copy of the consent decree, but had not had the caveat inserted into engagements defendants had booked for Pinkney, particularly one at the Eden Roc Hotel in Miami, Florida, as well as some at other Americana Hotels with the result that the Eden Roc and other hotels had advertised Pinkney and his group as "The Drifters." By failing to insert the advertising caveat in contracts defendants negotiated, defendants in effect had aided, abetted, contributed to, or participated in the hotels' subsequent infringing advertising of plaintiff's mark. Simms expected Furcht, general manager of the Eden Roc, to testify that he had no knowledge of restrictions on the way in which Pinkney could be advertised.

The following exchange then occurred:

THE COURT: You are not entitled to a jury on declaratory judgments ... or [an] action for an injunction, right?

MR. SIMMS: That's correct, your Honor.

THE COURT: The only question a jury would have here is fixing damages. I really don't even know whether they would have a question of whether there was an infringement or a violation. For instance, ... if the question of violation or infringement is a jury question on the damages issue, it is possible that a jury could come to a different conclusion [than] I came to; in which case, we would have, if I granted an injunction, an injunction and no damages or vice versa. I don't know under these circumstances you can get the jury on the damages issue. I don't know.

Unfortunately, Simms was not able to help the court with its quandary. The court said that it would postpone plaintiff's case on condition plaintiff reimburse defendants for any expenses defendants had incurred in appearing that day and that plaintiff's case would commence next after a case scheduled for Monday had concluded. The court did not expect the Monday case to take more than a few days and advised the parties to keep in touch with the clerk's office. Plaintiff did not then further object to this scheduling or repeat that he would be unable to get his evidence together by then.

Plaintiff's case was reached five days later, on December 11, 1985. Simms again said he was not ready and requested an extension for two reasons. First, he had not yet obtained the Furcht deposition. Second, he said he had been originally informed the case would be on the January 3rd jury calendar and in the short time since receiving the December 2, 1985 letter of assignment to the non-jury calendar, he had been unable to obtain lead trial counsel. Marcus was not currently available because his wife was expecting a child any day.

The court responded that plaintiff should be ready as plaintiff had had since February 1985 when his suit was filed to prepare for trial and, furthermore, a pretrial order had put plaintiff on notice that he could go to trial any time after November 15, 1985, whether jury or non-jury. We do not find in the record an order warning plaintiff of an imminent trial date. The court indicated it suspected plaintiff had no evidence and if plaintiff had filed suit without evidence, Rule 11 had been violated. Simms said he did have evidence, but not physically present with him. The court then stated, "I offer to permit you to put in any testimony that you have at this point in time." Simms asked if he later would be able to have a jury trial on damages, would he be proceeding on all aspects of the case or just the requests for declaratory and injunctive relief? The court responded that it would have to hear something on damages before plaintiff could get injunctive relief. Having effectively been denied a continuance, Simms said plaintiff would testify. The court warned that if the testimony were useless, plaintiff would "pay by the minute." As counsel was unprepared for trial, he lacked witnesses to authenticate documents, and the evidence that was presented--plaintiff's and defendant's testimony--was weak. After this testimony, plaintiff rested. Defendants moved for judgment in their favor and the imposition of sanctions, whereupon Simms reiterated his earlier request for a continuance in order to take Furcht's deposition. Simms said he expected Furcht to testify that Furcht was not aware of any advertising restrictions, that defendant had tacitly told Furcht it was permissible to advertise Bill Pinkney as "The Drifters," and that defendant had visited the Eden Roc, seen the misadvertising, and said nothing. The court asked when Furcht's deposition had been noticed, and plaintiff replied October 17, 1985.

The court, while recognizing that the Furcht deposition could be vital to plaintiff's case, concluded that plaintiff had delayed too long and hence any hardship in not having procured it was of plaintiff's own making. The court then denied plaintiff's request for declaratory and injunctive relief, concluding no liability had been shown. The court also ruled that sanctions would be imposed under Fed.R.Civ.P. 11:

"I am satisfied ... that it certainly cannot be found that this complaint was brought after reasonabl[e] inquiry into the facts, and that it is not warranted by existing law or good faith arguments with extension, modification. I am satisfied that it was brought against the agent simply for purposes of harassment, to cause unnecessar[y] delay or increased cost of litigation."

A week later (December 18, 1985) the court entered a judgment dismissing the prayers for equitable and declaratory relief and ordering plaintiff to pay attorney's fees defendant had incurred in defending the proceeding. No dollar amount has been set.

While there is more procedural history, we pause to address several matters. We turn first to the jury trial issue. It is not seriously disputed on appeal that, absent waiver, plaintiff was entitled to a jury trial. As the Supreme Court has stated, where, as here, legal and equitable issues are presented in a single case, absent extraordinary circumstances, the right to a jury trial cannot be lost through prior court determination of the equitable claims. Beacon Theatres, Inc. v. Westover, 359 U.S. 500, 79 S.Ct....