## Facts

- Republic Molding Corp. owned patents covering a plastic vegetable bin marketed under the “Polly-Flex” trademark.
- Republic filed three actions against B.W. Photo Utilities, Alladin Plastics, and Gotham Industries; the cases were consolidated for trial.
- Republic sought damages for patent infringement and unfair competition; the Alladin action also asserted copyright infringement for copying a copyrighted advertisement.
- The B.W. Photo action was filed before Republic’s patents issued and was limited to unfair competition.
- Republic advertised its product as “patent pending” at times when no patent application had been filed or when none was pending, intending to deter competitors.
- The district court held that this conduct violated 35 U.S.C. § 292 (false patent marking) and constituted unclean hands, barring relief in all three cases.
- The record included no finding or evidence that any competitor refrained from marketing similar products because of the “patent pending” advertising.

## Issues

1. Whether Republic’s false “patent pending” advertising in violation of 35 U.S.C. § 292 constituted unclean hands that barred all relief on Republic’s patent infringement, unfair competition, and copyright claims.
2. Whether unclean hands requires proof that the plaintiff’s misconduct had an immediate and necessary relation to the rights asserted and caused prejudice connected to the controversy.

## Decision

- The Ninth Circuit reversed the judgments barring relief and remanded for further proceedings.
- The court held that unclean hands is not a punitive bar for general misconduct; the misconduct must bear an immediate and necessary relation to the claim for which relief is sought.
- Although the advertising could violate § 292, the absence of evidence that it affected competition or the litigation meant it did not justify an across-the-board denial of relief.
- The court indicated that equitable remedies may be tailored if specific relief is tainted, rather than dismissing the entire action without the required nexus.

## Legal Principles

- Unclean hands is an equitable doctrine applied in the court’s discretion and is limited to misconduct that relates directly to the transaction or subject matter in suit.
- A defendant invoking unclean hands must show the plaintiff’s misconduct has an immediate and necessary relation to the equity sought and results in prejudice or “infection” of the controversy.
- Statutory wrongdoing (including false patent marking under 35 U.S.C. § 292) does not automatically bar enforcement of otherwise valid intellectual property and unfair-competition rights absent the required connection to the asserted claims.
- Equity may deny or limit particular relief connected to the misconduct, but should not impose a blanket forfeiture of claims for unrelated transgressions.

## Conclusion

The Ninth Circuit held that Republic’s false “patent pending” advertising, without proof of a direct relation to and prejudicial effect on the claims being litigated, did not support a complete unclean-hands bar to Republic’s patent, unfair-competition, and copyright causes of action, and it remanded for adjudication on the merits.


Republic Molding Corp. v. B.W. Photo Utils., 319 F.2d 347 (9th Cir. 1963)