distinguish the plaintiff's newspaper from the defendants' are not likely to realize that the origin of the two newspapers is different. Similarly, advertisers who seek to advertise in "Kurier" may well be unaware of the two wholly separate papers.
The defendants have raised numerous defenses to the plaintiff's claims, none of which are sufficient to negate the plaintiff's showing of a likelihood of success on its Lanham Act claim.
The defendants allege that the plaintiff copies and publishes works from other sources, often in violation of the law, and that it engages in illegal anti-competitive practices, and that therefore its unclean hands preclude preliminary injunctive relief. This Court has in fact entered a preliminary injunction prohibiting the plaintiff from copying from certain other Russian newspapers and a wire service. See Itar-Tass Russian News Agency v. Russian Kurier, Inc., 886 F. Supp. 1120 (S.D.N.Y. 1995). Nevertheless, these allegations are not sufficient to establish a defense of unclean hands. The equitable defense of unclean hands applies only when the inequitable conduct complained of by the defendant relates to the claim asserted against it. See Precision Instrument Mfg. Co. v. Automotive Maintenance Mach. Co., 324 U.S. 806, 814-15, 89 L. Ed. 1381, 65 S. Ct. 993 (1945) ("While equity does not demand that its suitors shall have led blameless lives, as to other matters, it does require that they shall have acted fairly and without fraud or deceit as to the controversy in issue." (citation omitted)); A.H. Emery Co. v. Marcan Prods. Corp., 389 F.2d 11, 17-18 (2d Cir.), cert. denied, 393 U.S. 835, 21 L. Ed. 2d 106, 89 S. Ct. 109 (1968). For example, the defense may be applied when the allegedly infringed trademark is deceptive in some manner. See Clinton E. Worden & Co. v. California Fig Syrup Co., 187 U.S. 516, 47 L. Ed. 282, 23 S. Ct. 161 (1903) (denying trademark protection to producer of product marked "Syrup of Figs" which contained no figs). Courts have generally refused, however, to allow the defense of unclean hands in instances in which the trademark was not itself deceptive, but was used in a deceptive manner, such as false advertisement. See, e.g., Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 847 (9th Cir. 1987); Maatschappij Tot Exploitatie Van Rademaker's Koninklijke Cacao & Chocoladefadrieken v. Kosloff, 45 F.2d 94, 96 (2d Cir. 1930). Similarly, when defendants have alleged that a plaintiff used a trademark to violate the antitrust laws, courts have generally required the defendant to prove that the trademark was "the basic and fundamental vehicle required and used to accomplish the violation." Carl Zeiss Stiftung v. V.E.B. Carl Zeiss, Jena, 298 F. Supp. 1309, 1315 (S.D.N.Y. 1969). Assuming that the plaintiff has illegally copied and published works originally published elsewhere, that conduct does not render it subject to the defense of unclean hands because it is collateral to the issue of trademark infringement that is here disputed.
The other defenses alleged by the defendants are equally meritless. The defendants cannot possibly establish a defense under the First Amendment because an injunction would not prevent them from publishing their newspaper; an injunction would only require them to change its infringing name. They cannot establish a defense of abandonment because there is no evidence that the plaintiff has ever abandoned its mark in any manner. There is no evidence that there has ever been any significant change in the plaintiff's trademark or its product. Neither has the plaintiff been lax in enforcing its rights. In the month after the defendants began publishing New York Kurier, the plaintiff expressed its dissatisfaction with use of the mark "Kurier," and within three months had instituted this lawsuit. Lastly, there is no evidence that the defendants are entitled to any defense of equitable estoppel. The defendants claim that they are entitled to this defense because they altered their masthead in response to the plaintiff's complaints, expecting that the plaintiff would refrain from taking any legal action. There is no evidence that the plaintiff represented that it would not file suit if the defendants' masthead was altered.
C. Irreparable Injury:
In a case brought under § 43(a) of the Lanham Act, a showing of likelihood of confusion is usually sufficient to establish irreparable injury. Such a showing demonstrates that the plaintiff's reputation is in the hands of the defendants pending trial and that the plaintiff's damages will be difficult to measure. In Omega Importing Corp. v. Petri-Kine Camera Co., 451 F.2d 1190 (2d Cir. 1971), the Court of Appeals concluded:
Where there is, then, such high probability of confusion, injury irreparable in the sense that it may not be fully compensable in damages almost inevitably follows. While an injured plaintiff would be entitled to recover the profits on the infringing items, this is often difficult to determine; moreover, a defendant may have failed to earn profits because of the poor quality of its product or its own inefficiency. Indeed, confusion may cause purchasers to refrain from buying either product and to turn to those of other competitors. Yet to prove the loss of sales due to infringement is also notoriously difficult. Furthermore, if an infringer's product is of poor quality, or simply not worth the price, a more lasting but not readily measurable injury may be inflicted on the plaintiff's reputation in the market.
Omega Importing, 451 F.2d at 1195 (citation omitted) (reversing order denying preliminary injunction).
The presumption of irreparable harm attaching to a showing of a likelihood of confusion is negated, however, if the plaintiff has not been diligent in seeking relief. See Tough Traveler, 60 F.3d at 968 ("Any such presumption of irreparable harm is inoperative if the plaintiff has delayed either in bringing suit or in moving for preliminary injunctive relief."). In this case, the plaintiff has been diligent both in demanding that the defendants cease and desist from using the mark and in bringing the present lawsuit when the defendants refused to stop.
D. Balance of the Hardships:
If the plaintiff had shown only the existence of sufficiently serious questions going to the merits, but not a likelihood of success, then it would be necessary for it to show a balance of hardships tipping decidedly in its favor in order to obtain preliminary injunctive relief. The plaintiff has in fact shown that the balance tips decidedly in its favor. The plaintiff has shown that it is subject to a threat of irreparable harm, having shown a strong likelihood that the public will be confused as to the origin of the defendants' newspaper and therefore that the plaintiff will lose both readers and advertisers. On the other side of the balance, the defendants will be prevented from using a particular name for their newspaper. Yet, it is a name they adopted long after the plaintiff started to use it. And, the defendants adopted it in an apparent effort to gain advantage in the marketplace, competing directly against the plaintiff which had a right to use that name. Therefore, the balance of hardships tips decidedly in the plaintiff's favor.
For the foregoing reasons, the defendants, their officers, agents, servants, employees, attorneys, and those persons acting in concert or participation with them who receive actual notice of this order, are enjoined during the pendency of this action from printing a newspaper with the Russian word "kurier" in its title.
This injunction shall take effect on September 22, 1995 provided that the plaintiff has posted a bond in the amount of $ 10,000, pursuant to Fed. R. Civ. P. 65(c), no later than 5:00 p.m. on September 20, 1995.
Dated: New York, New York
September 18, 1995
John G. Koeltl
United States District Judge