papers here with cases in which courts in this circuit have excused delays by other litigants.
In these circumstances, MJC bore the burden of coming forward with evidence to excuse its delay or, perhaps, establish irreparable injury independent of the presumption.
But plaintiff has not sustained that burden. Its reply affidavit does not even address the delay issue.
To be sure, MJC has made unsworn statements in its reply memorandum to the effect that it began investigating the infringement and engaged in correspondence with Zenray concerning MJC's copyright registrations after the October 1996 meeting, but that negotiations broke down in the fall of 1997.
But these assertions do not carry the day for either of two entirely independent reasons.
First, testimonial evidence submitted on motions must be in the form of affidavits or declarations.
Unsworn statements by counsel simply will not do. Indeed, plaintiff's awareness of this principle -- and the propriety of adhering to it strictly here -- are plain from plaintiff's own papers. On the page of plaintiff's reply brief that follows the unsworn statements addressing its own delay, plaintiff objects to the Court's consideration of an unsworn statement submitted by defendants, which MJC characterizes as "simply not evidence" and "nothing more than wasted paper." It then goes on to say that "a submission [of such unsworn material] could even be deemed laughable" "if this situation were not so serious."
It is not the holiday season alone that calls to mind images of goose and gander. Hence, the evidence before the Court compels the conclusion that plaintiff delayed unreasonably in seeking injunctive relief and therefore has failed to establish a threat of irreparable injury.
Second, plaintiff's unsworn response to Zenray's delay contention would fall considerably short of the mark even if it were in the form of an affidavit. Plaintiff was fully aware of Zenray's alleged infringement for thirteen months before seeking a preliminary injunction. The fact that there may have been discussions about a license and a debate about the validity of plaintiff's copyrights during part of the interval is insufficient to save plaintiff. Such vague suggestions are insufficient to explain the lengthy delay. Moreover, the evidence shows that Zenray at all times disputed the validity of plaintiff's copyrights. In consequence, plaintiff knew that it either had to license Zenray substantially on terms demanded by Zenray or litigate to vindicate its claimed rights. It did neither.
Hence, even if plaintiff's conclusory and unsworn explanation were considered, it would be insufficient.
Plaintiff is not aided by cases which have excused delays that were attributable to investigation of possible infringements, settlement discussions or failures to appreciate the seriousness of the infringing activity. In this case, there was no doubt whatever as to the existence of infringement -- according to the plaintiff, Zenray admitted that it was selling copies of MJC's products at the October 1996 meeting. Hills, Mercantile and Target promptly confirmed this and hence the seriousness of the allegedly infringing activity. And apart from the vaguest and most conclusory suggestions, there is no real evidence that there ever were any serious settlement discussions, much less that they were continuous through the eleven months between the October 1996 meeting and the commencement of litigation. In any case, plaintiff indisputably waited two months after filing the action to seek a preliminary injunction. This case therefore falls within Richard Feiner and Co.,22 in which the Court of Appeals reversed a district judge for overlooking delay in circumstances where, as here, the plaintiff was not obliged to wait in order to procure copies of the infringing material or to ascertain the extent of the alleged infringement.
As there is no persuasive evidence of irreparable injury apart from the presumption that arises from a prima facie case of infringement, and as the Court holds that plaintiffs unreasonable delay in seeking a preliminary injunction eliminates the presumption in this case, the Court finds that plaintiff is not threatened with the immediate and irreparable injury that is a prerequisite to the issuance of a preliminary injunction. Nevertheless, beating in mind that the Court retains the ability to "consider the full panoply of available remedies when it fashions permanent relief,"
the Court will require expedited pretrial proceedings and set the matter down for an early trial.
Defendant Vivit Lervisit moves to dismiss the action as to himself for lack of personal jurisdiction. His memorandum states that the motion is based in part on an affidavit, but no such affidavit has been filed. Moreover, Lervisit, who is represented by Texas counsel, has submitted a memorandum which bears all the earmarks of a markup of a memorandum in support of a motion to dismiss a claim brought in the Texas courts under a different long arm statute -- it cites almost exclusively Texas authorities. The Court thus has not been provided either with an evidentiary basis for the motion or with an analysis of the law pertinent to the New York, as distinguished from the Texas, long-arm statute. The Court declines to pass on the issue in this context.
Plaintiff's motion for a preliminary injunction is denied on the ground that plaintiff has failed to establish a threat of immediate and irreparable injury. The motion of defendant Lervisit to dismiss for lack of personal jurisdiction is denied without prejudice to renewal on proper papers.
The parties are directed to complete pretrial discovery no later than February 28, 1998. The joint pretrial order, any motions for summary judgment, and requests to charge (if either side demands a jury) shall be filed no later than March 15, 1998.
Dated: December 29, 1997
Lewis A. Kaplan
United States District Judge