Hook v. Hook & Ackerman, Inc.

• Decision Date: 12 May 1954
• Docket Number: No. 11237.,11237.
• Citation: 213 F.2d 122
• Parties: HOOK et al. v. HOOK & ACKERMAN, Inc.
• Court: U.S. Court of Appeals — Third Circuit

213 F.2d 122 (1954)

HOOK et al. v. HOOK & ACKERMAN, Inc.

No. 11237.

United States Court of Appeals Third Circuit.

Argued March 16, 1954.

Decided May 12, 1954.

Harry Price, New York City (Charles L. Cunningham, Pittsburgh, Pa., Matthew Sidney Biron, Philadelphia, Pa., on the brief), for appellants.

William B. Jaspert, Pittsburgh, Pa., for appellees.

Before BIGGS, Chief Judge, and KALODNER and STALEY, Circuit Judges.

BIGGS, Chief Judge.

The litigation dealt with in this opinion began with a complaint filed on July 19, 1949 in the court below.¹ The plaintiffs, C. Howard Hook and W. W. Miller, individually and doing business as a partnership under the name and style of Hook & Miller, hereinafter referred to as "Hook & Miller", sued the defendant, Hook & Ackerman, Inc., hereinafter referred to as "Hook & Ackerman", seeking a judgment declaring that the Hook & Miller boiler embodied none of the inventions covered by Hook & Ackerman's United States Patent No. 2,247,796 and that therefore the claims of the patent were not infringed by Hook & Miller. Hook & Ackerman filed a counter-claim seeking damages for patent infringement and unfair competition and seeking other relief on equitable grounds. The court below, treating the issue of infringement as "the primary one", tried that issue separately. On August 21, 1952 the court held that the scope of the patent had to be restricted to certain novel features described and claimed therein and hence was not infringed.² An appropriate order adjudging that Hook & Miller were not infringing patent No. 2,247,796, was entered on the same day.³ An appeal was taken to this court and was dismissed on January 26, 1953 for want of timely prosecution.

Prior to the time of the determination of the infringement issue, viz., on April 2, 1952, the court below entered an order restraining Hook & Ackerman and its agents from prosecuting the cross-claims filed by it against Hook & Miller in three certain actions in United States district courts. The litigations referred to were suits brought by Hook & Ackerman against customer-dealers of Hook & Miller charging patent infringement. Hook & Ackerman made Hook & Miller involuntary plaintiffs in these suits and then cross-claimed against them for breach of contract and unfair competition. The court also ordered that Hook & Ackerman be restrained from instituting any other suit against Hook & Miller which involved the same issues as those involved in the pending suit in the court below. On May 1, 1952 Hook & Ackerman appealed from this order to this court.⁴ But before any decision was rendered in this court, the court below handed down its opinion and entered the order referred to in the first paragraph of this opinion, declaring the patent not to be infringed.

On December 23, 1952, Hook & Ackerman filed a suit in the Supreme Court of the State of New York against Metropolitan Sales Company, a customer-dealer of Hook & Miller, charging Metropolitan with unfairly competing against Hook & Ackerman. Hook & Miller were not parties to this suit. On January 6, 1953 the court below entered an order temporarily restraining Hook & Ackerman from directly or indirectly prosecuting this suit. The restraining order accompanied a rule to show cause why Hook & Ackerman should not be adjudged to be in contempt of the order of April 2, 1953, viz., the order referred to in the second paragraph of this opinion. The rule came on for hearing on January 16, 1953. The court below held that the status of Metropolitan in relation to Hook & Miller, as a customer-dealer of Hook & Miller, was the same as that of the defendants in the three suits referred to in the preceding paragraph of this opinion, and that Hook & Ackerman had not violated the order of April 2, 1952 which had enjoined the institution of any further suits against Hook & Miller only. The court thereupon dissolved the restraining order granted on January 6, 1953.

On January 16, 1953 Hook & Miller filed a petition for further relief under Section 2202, Title 28 U.S.C. which permits a plaintiff who has won a declaratory judgment action to obtain certain "further relief." The relief sought was purportedly based on the decision of the United States District Court for the District of Delaware in National Hairdressers and Cosmetologists Ass'n v. Philad Co., D.C., 41 F.Supp. 701, affirmed 3 Cir., 1942, 129 F.2d 1020. The petition filed by Hook & Miller sought to restrain Hook & Ackerman from prosecuting any suits, including the New York suit, involving "the same issues triable" in the case at bar against either Hook & Miller or Hook & Miller's agents or customers. In short, it was a proceeding instituted to restrain Hook & Ackerman from instituting a multiplicity of suits against Hook & Miller's customers. On the same day the court below entered an order setting the petition for further relief down for hearing on January 26, 1953. Hook & Ackerman filed a counter-petition as well as a motion for the dissolution and vacating of the injunction of April 2, 1952, or in the alternative for an appropriate modification of that injunction.

On March 20, 1953, after hearing, the court below entered an order on the petition and counter-petition. The court below stated that it had refused to enjoin prosecution or institution of suits by Hook & Ackerman against Hook & Miller's "customers" because it believed that it lacked power to do so under the decisions of this court but that it had enjoined any further suits against Hook & Miller by Hook & Ackerman. The court below apparently was relying on the decision of this court in Triangle Conduit & Cable Co., Inc. v. National Electric Products Corp., 3 Cir., 1943, 138 F.2d 46. In this decision we held that pending final determination of an action for a declaratory judgment, suits in other jurisdictions should not be enjoined unless they dealt with the same subject matter and were between the same parties. The court below went on to say that the only issue remaining in the case was one of unfair competition. The court below reached the conclusion that it did not have the power to enjoin suits brought by Hook & Ackerman against Hook & Miller's customers prior to a determination of the issue of unfair competition and that it could perceive no grounds for an injunction since counsel for both parties represented to the court that they "now desire to have this issue litigated only once." It is not clear what the court below meant when it referred to "this issue" but it refused to set aside the injunction granted April 2, 1952 as requested by Hook & Ackerman and also refused to grant the further relief sought by Hook & Miller.⁵ An appropriate decree was entered by the court below which was not appealed from.

The New York suit was proceeded with by Hook & Ackerman against Metropolitan and the New York Supreme Court rendered a judgment therein in favor of Hook & Ackerman on May 29, 1953. By its judgment the Supreme Court of New York permanently enjoined Metropolitan or its agents from using the word or name "Hook" in advertising or selling gas-fired cast iron boilers of midget size or from selling, displaying or advertising midget boilers in casings similar to those of Hook & Ackerman. The judgment was not appealed from. It appears from an affidavit filed in the court below that the New York suit was defended by William B. Jaspert, Esquire, attorney of record for Hook & Miller in the action pending in the court below and on the various appeals to this court.

But, a few days prior to the handing down of the judgment by the Supreme Court of New York, viz., on May 19, 1953⁶ Hook & Miller had moved to enjoin Hook & Ackerman from suing Hook & Miller or Hook & Miller's customers for patent infringement in any other court. The motion was based on the court's adjudication that the Hook & Miller boiler did not infringe United States Patent No. 2,247,796. Hook & Miller recited as one of their reasons for the motion that a suit alleging patent infringement had been brought by Hook & Ackerman against a customer of Hook & Miller's in the United States District Court for the Northern District of Alabama.⁷ The relief thus sought was narrower than that which Hook & Miller had asked for earlier in their petition under Section 2202 and which was denied by the order of the court below of March 20, 1953. Now Hook & Miller moved to enjoin suits against its customers only when the suits alleged patent infringement. The earlier petition had referred to "the same issues triable" in the present case, viz., both patent infringement and unfair competition. On October 9, 1953 Hook & Ackerman moved for partial summary judgment adjudging that Hook & Miller were unfairly competing with Hook & Ackerman and for a judgment permanently enjoining Hook & Miller from continuing such unfair competition and for other relief. The ground for this motion as stated in an accompanying affidavit, was that the decision of the New York Supreme Court that Metropolitan Sales had unfairly competed with Hook & Ackerman was binding upon Hook & Miller, because Hook & Miller's attorney had tried the New York case.⁸ On October 14, 1953 Hook & Ackerman filed a supplemental motion which sought a declaration that certain boilers designated as "MG" and "PH" boilers did not infringe United States Patent No. 2,247,796 and that the patent itself was the property of Hook & Ackerman rather than of Hook & Miller because the inventor, Harold S. Ackerman, made the invention while in the employ of Hook & Ackerman, and to compel an assignment by Hook "or his administratrix" of the subject matter of the patent and for other relief. The moving papers do not state to whom Hook & Ackerman desire the patent to be assigned. There were requests for admissions and responses⁹ thereto and affidavits were filed. In one of its responses Hook & Miller stated that they were no longer in business. A hearing was had.

On November 4, 1953 the court below...