82 S. Ct. 993, 8 L. Ed. 2d 176 (1962)), the reasoning in which Metro Publishing would have the Court engage goes beyond reasonable inference.
h. Likelihood of Expansion
Metro Publishing has offered no evidence that the Mercury News plans to expand eye or change its format in a way that would likely confuse consumers regarding its use of the word "eye."
For the reasons stated above, there is no genuine issue of material fact as to the issue of consumer confusion. Accordingly, summary judgment is GRANTED in favor of the Mercury News on that issue.
3. Unclean Hands
In its July 12, 1993, Order Denying Plaintiff's Motion for Preliminary Injunction Upon Reconsideration, this Court found that Metro Publishing's decision to imitate the Mercury News' use of the word "eye," discussed in section 2(b) of this Order, "was a deliberate attempt to create confusion in the marketplace . . . . [which] may have created confusion where none would have existed [otherwise]," and, accordingly, that Metro Publishing was guilty of unclean hands. July 12, 1993, Order, at 13:2-5. Several courts have applied the equitable doctrine of unclean hands to bar actions for legal damages. See Supermarket of Homes v. San Fernando Valley Bd., 786 F.2d 1400, 1408 (9th Cir. 1986) (legal action for copyright infringement may be barred by unclean hands where copyright holder misuses copyright); Tempo Music, Inc. v. Myers, 407 F.2d 503, 507 & n.8 (4th Cir. 1969) (where alleged infringer sought copyright holder's assistance to avoid infringing copyright, holder's failure to assist barred legal recovery due to unclean hands); Buchanan Home & Auto Supply v. Firestone Tire, 544 F. Supp. 242, 245 (D.S.C. 1981) (footnotes omitted) ("Court opinions and commentaries since the procedural merger of law and equity in 1938 have expressed the view that the clean hands doctrine embodies a general principle equally applicable to damage actions, and that rights not suited for protection in equity should not be protected at law."); McCormick v. Cohn, 1992 U.S. Dist. LEXIS 21187 (S.D. Cal.) (action for damages due to copyright infringement, trademark infringement and unfair competition barred by unclean hands). Despite the fact that Pulcrano has subsequently testified that he did not have the specific intent to confuse the public, see Pulcrano Decl. P 2, Alioto Decl., Exh. 31, it is undisputable that as soon as he learned of the Mercury News' plan to name its tabloid eye, he attempted to create a link between "Public Eye" and eye and capitalize on it. The reference to "Public Eye" as the "Original eye" on the cover of the May 9, 1991, issue of Metro, with the word "eye" printed in large letters in the Mercury News' special typeface, is a prime example. To allow Metro Publishing to create and exploit this link and then subsequently allow it to sue the Mercury News for damages because of it is completely inconsistent with traditional notions of equity and fairness. Accordingly, summary judgment in favor of the Mercury News is warranted on this basis alone.
Each of the three grounds discussed above, standing alone, warrants summary judgment. Accordingly, the Court GRANTS the Mercury News' motion for summary judgment as to Metro Publishing's trademark infringement claim.
B. Trademark Dilution
In its Complaint, Metro Publishing alleges that the Mercury News' publication of eye diluted its alleged trademark in the words "Eye" and "Public Eye" in violation of California Business & Professions Code § 14330.
The Mercury News contends that it is entitled. to summary judgment on this claim because Metro Publishing's alleged mark is not distinctive or sufficiently well-known to qualify for protection under the antidilution statute. The only effort which Metro Publishing has expended in addressing the Mercury News' contention or sustaining its burden of showing that there are "specific facts showing that there is a genuine issue for trial," see Celotex Corp. v. Catrett, 477 U.S. 317, 322, 324, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986), is its closing remark that "the material facts underlying the determination of the other causes of action under which defendant moves overlap substantially, or are the same as, those for trademark infringement." (Corrected) Opp. at 28:9-11. Because there is little doubt that summary judgment in favor of the Mercury News on this claim is warranted given the undisputed facts, the Court need not spend much more effort on this matter the Metro Publishing has.
The Ninth Circuit has made it clear that the protection afforded by California's anti-dilution statute extends only to highly distinctive, well-known marks. See Accuride Intern., Inc. v. Accuride Corp., 871 F.2d 1531, 1539 (9th Cir. 1989); Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788, 793 (9th Cir. 1981); see also Sykes Laboratory, Inc. v. Kalvin, 610 F. Supp. 849, 858 (C.D. Cal. 1985) ("the dilution doctrine is only available to protect distinctive marks as exemplified by such famous names as 'Tiffany,' 'Polaroid,' 'Rolls Royce,' and 'Kodak.'"). Metro Publishing's alleged "eye" mark is by no means as distinctive as the words "Polaroid" or "Kodak." Even if Metro Publishing had chosen to directly address this claim, it strains the intellect to imagine how it might have convinced the Court otherwise. Furthermore, if Metro Publishing were to prevail on this claim, the use of the innocuous, everyday word "eye" by others would become forbidden. Such a result would make little sense. Accord Fruit of the Loom, Inc. v. Girouard, 994 F.2d 1359, 1365-66 (9th Cir. 1993) (holding that Fruit of the Loom, Inc.'s attempt to sue under the antidilution statute for use of the word "fruit" would cause "the humble, humdrum word FRUIT [to be] barred from use by the Fruit Basket, The Fruit Gallery, the Fruit King, to name only three businesses currently listed in the San Francisco telephone directory. [Plaintiff] would sweep clean the many business uses of this quotidian word.").
Accordingly, the Court GRANTS the Mercury News' motion for summary judgment on Metro Publishing's trademark dilution claim.
C. Unfair Competition as it Relates to Trademark Infringement and Dilution
Because the Court grants summary judgment in favor of the Mercury News on Metro Publishing's trademark infringement and dilution claims, it also GRANTS summary judgment in favor of the Mercury News on Metro Publishing's unfair competition claim under California Business & Professions Code § 17200, inasmuch as that claim is based on trademark infringement and dilution.
Having carefully considered the relevant facts and law, the materials submitted by the parties, and the arguments of counsel, the Court hereby GRANTS the Mercury News' motion for partial summary judgment and DENIES Metro Publishing's cross-motion for partial summary judgment. The parties shall attend a settlement conference before Magistrate Judge Edward A. Infante on March 28, 1994, at 2:30 p.m.
IT IS SO ORDERED.
UNITED STATES DISTRICT JUDGE