183 F.Supp. 662 (S.D.Cal. 1960), 265-58, Shaffer v. Coty, Inc.

Docket Nº265-58.
Citation183 F.Supp. 662
Party Name125 U.S.P.Q. 386 Ann SHAFFER, Plaintiff, v. COTY, INC., a corporation, Defendant.
Case DateMay 03, 1960
CourtUnited States District Courts, 9th Circuit, Southern District of California

Page 662

183 F.Supp. 662 (S.D.Cal. 1960)

125 U.S.P.Q. 386

Ann SHAFFER, Plaintiff,

v.

COTY, INC., a corporation, Defendant.

No. 265-58.

United States District Court, S.D. California.

May 3, 1960

Page 663

[Copyrighted Material Omitted]

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Lyon & Lyon, Frederick W. Lyon, Los Angeles, Cal., for plaintiff.

Harris, Kiech, Foster & Harris, Warren L. Kern, Los Angeles, Cal., for defendant.

MATHES, District Judge.

This is an action for injunctive relief and damages grounded upon alleged infringement of an unregistered trademark, 'Fairy Princess', used in connection with plaintiff's product on certain unusual containers designed to hold bubble, bath, lotion, cologne, and the like.

Plaintiff's original complaint, invoking the jurisdiction of this Court under §§ 43(a) and 44(f) of the Lanham Act (15 U.S.C.A. §§ 1125(a) and 1126(f)), was dismissed for lack of jurisdiction over the subject matter, inasmuch as that Act does not confer upon the Federal courts jurisdiction over 'naked' claims for unfair competition, or over claims for infringement of unregistered marks. See: Royal Lace Paper Works, Inc. v. Pest-Guard Products, 5 Cir., 1957, 240 F.2d 814, 815-820; L'Aiglon Apparel, Inc. v. Lana Lobell, Inc., 3 Cir., 1954, 214 F.2d 649, 650-654; American Auto Ass'n v. Spiegel, 2 Cir., 1953, 205 F.2d 771, 773-775; Ramirez & Feraud Chili Co. v. Las Palmas Food Co., D.C.S.D.Cal.1956, 146 F.Supp. 594, 600, 603, affirmed 9 Cir., 1957,245 F.2d 874, certiorari denied 1958, 355 U.S. 927, 78 S.Ct. 384, 2 L.Ed.2d 357; Haeger Potteries v. Gilner Potteries, D.C.S.D.Cal.1954, 123 F.Supp. 261, 264-266; cf.: Pagliero v. Wallace China Co., 9 Cir., 1952, 198 F.2d 339, 340-341; Stauffer v. Exley, 9 Cir., 1950, 184 F.2d 962, 964-967; In re Lyndale Farm, 1951, 186 F.2d 723, 725-727, 38 CCPA 825, 829-832.

Plaintiff then filed by leave of court an amended complaint for injunctive relief and damages under State law, invoking the jurisdiction of this Court upon the basis of diversity of citizenship, and alleging that the 'matter in controversy exceeds the sum or value of $3,000 exclusive of interest and costs', the action having been commenced prior to the amendment of 28 U.S.C.§ 1332 by 72 Stat. 415 (July 25, 1958).

Defendant challenged the allegation that the requisite jurisdictional amount is in controversy, and moved to dismiss the action for lack of Federal jurisdiction over the subject matter. Fed.R.Civ.P. 12(b)(1), 28 U.S.C.

It is basic of course that Federal courts have only that jurisdiction which has been specifically conferred by the Congress. U.S.Const. art. III; Lockerty v. Phillips, 1943, 319 U.S. 182, 187, 63 S.Ct. 1019, 87 L.Ed. 1339; Sheldon v. Sill, 1850, 8 How. 441, 449, 49 U.S. 441, 449, 12 L.Ed. 1147. This principle is reflected in the requirement that a complaint 'contain * * * a short and plain statement of the grounds upon which the court's jurisdiction depends * * *.' Fed.R.Civ.P. 8(a)(1).

An uncontroverted allegation that the requisite jurisdictional amount is in controversy, unless contradicted by the complaint as a whole, is generally sufficient to comply with Rule 8(a)(1). (See 2 Moore, Federal Practice § 8.11 at 1638 (2d ed. 1948).) But where the allegation as to amount in controversy is challenged, the burden of establishing by a preponderance of evidence that the amount exceeds the minimum sum or value necessary to confer Federal jurisdiction rests upon the party so alleging. KVOS, Inc. v. Associated Press, 1936, 299 U.S. 269, 277-278, 57 S.Ct. 197, 81 L.Ed. 183; McNutt v. General Motors Acceptance Corp., 1936, 298 U.S. 178, 189-190, 56 S.Ct. 780, 80 L.Ed. 1135;

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City of Forsyth v. Mountain States Power Co., 9 Cir., 1942, 127 F.2d 583, 584-585.

Thus when the jurisdictional amount is challenged, as at bar, an issue is raised which must be adjudicated as one of jurisdictional fact. Indeed, even though no challenge is so much as intimated, jurisdiction is always the threshold question in every case brought to the Federal courts, and the Supreme Court has admonished from the beginning that: 'This question the court is bound to ask and answer for itself, even when not otherwise suggested * * *.' Mansfield, C. & L.M.R. Co. v. Swan, 1884, 111 U.S. 379, 382, 4 S.Ct. 510, 511, 28 L.Ed. 462; Capron v. Van Noorden, 1804, 2 Cranch 125, 126, 6 U.S. 126, 2 L.Ed. 229; see Fed.R.Civ.P. 12(h)(2).

It may be accepted as axiomatic then that in every case the court has power to determine whether the facts requisite to jurisdiction exist. Texas & Pac. Ry. Co. v. Gulf, Colorado & Santa Fe Ry. Co., 1926, 270 U.S. 266, 274, 46 S.Ct. 263, 70 L.Ed. 578. And it has been generally thought and held that issues as to jurisdictional fact are triable to the court. North Pac. S.S. Co. v. Soley, 1921, 257 U.S. 216, 221-223, 42 S.Ct. 87, 66 L.Ed. 203; Gilbert v. David, 1915, 235 U.S. 561, 568, 35 S.Ct. 164, 59 L.Ed. 360; Wetmore v. Rymer, 1898, 169 U.S. 115, 121-122, 18 S.Ct. 293, 42 L.Ed. 682; Taylor v. Hubbell, 9 Cir., 188 F.2d 106, 109, certiorari denied 1951, 342 U.S. 818, 72 S.Ct. 32, 96 L.Ed. 618.

Although neither the mode nor the method of determining such issues has ever been prescribed in detail (Gibbs v. Buck, 1939, 307 U.S. 66, 71-72, 59 S.Ct. 725, 83 L.Ed. 1111), the provisions of Rule 12(d) of the Federal Rules of Civil Procedure plainly contemplate a 'preliminary hearing' and adjudication of jurisdictional issues in advance of trial (see: Stauffer v. Exley, supra, 184 F.2d at page 967; 2 Moore, Federal Practice, supra, § 12.16 at 2274-2275). Additionally, the Supreme Court has declared that: 'As there is no statutory direction for procedure upon an issue of jurisdiction, the mode of its determination is left to the trial court.' Gibbs v. Buck, supra, 307 U.S. at pages 71-72, 59 S.Ct. at page 729; see Land v. Dollar, 1947, 330 U.S. 731, 735, 67 S.Ct. 1009, 91 L.Ed. 1209; see e.g. Gulbenkian v. Gulbenkian, D.C.S.D.N.Y.1940, 33 F.Supp. 19, 20.

Moreover it has been held that, in the exercise of this broad discretion, the District Court may hear testimony and other evidence (Gilbert v. David, supra, 235 U.S. at page 568, 35 S.Ct. at page 166), and may also receive and weigh affidavits as evidence (Land v. Dollar, supra, 330 U.S. at page 735, 67 S.Ct. at page 1010; KVOS, Inc. v. Associated Press, supra, 299 U.S. at pages 278-279, 57 S.Ct. at page 201; Wetmore v. Rymer, supra, 169 U.S. at page 119, 18 S.Ct. at page 295; see McNutt v. General Motors Acceptance Corp., supra, 298 U.S. at page 189, 56 S.Ct. at page 785; see also Fed.R.Civ.P. 43(a)(e), 52(a)), of the existence or non-existence of requisite jurisdictional facts. Of course the District Court's 'mode of determination' of jurisdictional issues must always be such as to permit a reviewing court to ascertain whether the evidence supports the trial court's finding. Wetmore v. Rymer, supra, 169 U.S. at page 121, 18 S.Ct. at page 295.

Subject to this limitation, my opinion has been that it rested entirely within the District Court's discretion to decide whether issues of jurisdictional fact should be tried summarily or plenarily, or by judge or jury. See: Ramirez & Feraud Chili Co. v. Las Palmas Food Co., supra, 146 F.Supp. at pages 597-598; Smith v. Sperling, D.C.S.D.Cal.1953, 117 F.Supp. 781, 786-788, affirmed 9 Cir., 1956, 237 F.2d 317, reversed on other grounds 1957, 354 U.S. 91, 77 S.Ct. 1112, 1 L.Ed.2d 1205; Williams v. Minnesota Mining & Manufacturing Co., D.C.S.D.Cal.1953, 14 F.R.D. 1, 4-6; see also: Fireman's Fund Ins. Co. v. Railway Express Agency, 6 Cir., 1958, 253 F.2d 780, 782-784; Taylor v. Hubbell, supra, 188 F.2d at page 109. Indeed, the Supreme

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Court itself has said that 'when a question of the District Court's jurisdiction is raised, either by a party or by the court on its own motion * * *, the court may inquire by affidavits or otherwise, into the facts as they exist.' Land v. Dollar, supra, 330 U.S. at page 735, 67 S.Ct. at page 1011, note 4.

However, recent decisions indicate that the allowable discretion of the District Court as to how issues of jurisdictional fact are to be adjudicated, and by whom, may be less broad than the earlier cases state. See: Beacon Theatres, Inc. v. Westover, 1959, 359 U.S. 500, 508-511, 79 S.Ct. 948, 3 L.Ed.2d 988; Magenau v. Aetna Freight Lines, 1959, 360 U.S. 273, 278, 79 S.Ct. 1184, 3 L.Ed.2d 1224; Byrd v. Blue Ridge Rural Electric Cooperative, 1958, 356 U.S. 525, 533-540, 78 S.Ct. 893, 2 L.Ed.2d 953; Marks Food Corp. v. Barbara Ann Baking Co., 9 Cir., 1959, 274 F.2d 934, 936; Bertha Building Corp. v. National Theatres Corp., 2 Cir., 1957, 248 F.2d 833, 835-836; see also Ring v. Spina, 2 Cir., 1948, 166 F.2d 546, 550; cf. Smith v. Sperling, supra, 354 U.S. at pages 96-98, 77 S.Ct. at pages 1115-1116.

In Byrd v. Blue Ridge Rural Electric Cooperative, supra, 356 U.S. at pages 533-540, 78 S.Ct. at pages 898-902, a diversity case, plenary trial by the court, instead of by the jury, of the jurisdictional issue as to whether or not the plaintiff was a 'statutory employee' and as such remitted to the exclusive remedy of benefits under the South Carolina Workmen's Compensation Act, Code 1952, § 72-1 et seq., was held to be error. The Court did not there treat the issue as jurisdictional, but appears to have rested decision upon what is said to be a broad 'federal policy favoring jury decisions of disputed fact questions * * *.' 356 U.S. at page 538, 78 S.Ct. at page 901.

Earlier, in Taylor v. Hubbell, supra, 188 F.2d at pages 108-109, the Court of Appeals for the Ninth Circuit had upheld plenary trial by the court, instead of by the jury, of the jurisdictional issue as to whether or not the plaintiff was in the 'same employ' as the defendant and hence remitted to the exclusive remedy of benefits under the Arizona Workmen's Compensation Law, A.R.S. § 23-901 et seq. Only recently, however, that Court held, in a private antitrust case, that plenary...

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