Monroe Auto Equip. Co. v. Heckethorn Mfg. & Supply Co.

Citation214 F. Supp. 704
Decision Date11 February 1963
Docket NumberCiv. No. 3791.
PartiesMONROE AUTO EQUIPMENT COMPANY, Plaintiff, v. HECKETHORN MANUFACTURING AND SUPPLY COMPANY, Defendant.
CourtUnited States District Courts. 6th Circuit. Western District of Tennessee

Don K. Harness, Detroit, Mich., Walter Armstrong, Jr., Memphis, Tenn., for plaintiff.

Robert F. Conrad, Washington, D. C., M. Watkins Ewell, Sr., Dyersburg, Tenn., for defendant.

BOYD, Chief Judge.

After trial to this court without the intervention of a jury, plaintiff's demand for a jury having been stricken on motion of the defendant, the court found that the plaintiff could not prevail in its action for infringement of claims under two patents dealing with shock absorbers, nor could it prevail in its claim of unfair competition. The court's disposition of this case is reported in 204 F.Supp. at page 249.

This court found that the claims in suit were invalid as lacking in invention and having been anticipated by an earlier device. These were Claims 2 and 3 of Patent No. 2,896,938, dealing with a shock absorber with rubber sleeve; and Claim 14 of Patent No. 2,912,235, dealing with the positioning of the shock absorbers in a "sea leg" mounting. Further, this court found that these claims were invalid because the particulars of the claims were not disclosed until added by amendment more than a year after the device embodying these particulars was placed on public sale by the plaintiff.

Again, the controversy is before this court, the Court of Appeals upon plaintiff's motion having vacated the aforesaid judgment rendered here remanding the cause for reconsideration in the light of Dairy Queen, Inc. v. Wood, 369 U.S. 469, 82 S.Ct. 894, 8 L.Ed.2d 44; and Shubin v. United States District Court, 369 U.S. 660, 82 S.Ct. 1035, 8 L.Ed.2d 273. This court's action in striking the plaintiff's demand for jury trial at the first hearing is that which must be reconsidered.

The Supreme Court delivered an opinion in Dairy Queen, supra, but disposed of the Shubin case per curiam, reversing therein the Court of Appeals vacating judgment and remanding that cause for consideration in the light of Dairy Queen.

In the Dairy Queen case owners of a trademark contracted with the petitioner, Dairy Queen, Inc., for the exclusive use of the trademark "Dairy Queen" in certain areas. The owners claimed that Dairy Queen had breached its contractual obligation to pay for the use of the trademark and instituted suit in the District Court, seeking (a) temporary injunction and permanent injunction to restrain use of the trademark; (b) an accounting to determine the exact amount owing to the owners and judgment for such amount; and (c) an injunction for prevention of Dairy Queen's collection of money from its stores pending the accounting. Dairy Queen in its answer raised the following defenses: (a) denial of its breach of contract, claiming a subsequent oral modification thereof; (b) laches and estoppel; and (c) alleged violations of anti-trust laws relating to the owners' dealing with the trademark. In its answer Dairy Queen demanded a jury trial. This demand was denied by the District Court. Dairy Queen then sought in the Court of Appeals to compel the District Court to vacate its order denying a jury trial. Mandamus was refused, whereupon the Supreme Court granted certiorari.

The Supreme Court in Dairy Queen cast aside the language of the plaintiff's prayer for relief insofar as the accounting was concerned, finding that the plaintiff was actually seeking damages, either for breach of contract, trademark infringement, or both. Thus the issues were found to be essentially legal. The court then concluded that inasmuch as this part of the controversy was legal in character, a jury was properly demanded and should have been impanelled for determination of the factual questions pertaining to the legal issues. The court re-emphasized its holding in Beacon Theatres, Inc. v. Westover1 that courts may not undercut the guarantee of right to jury trial by deciding equitable issues prior to trial of legal issues in cases where both legal and equitable issues are involved. It said that by doing so the courts decide the factual questions common to both the legal and equitable issues, violating the right to jury trial This cannot be done even though the court considers the controversy "essentially equitable" in nature. It must be borne in mind, however, that nowhere in this decision does the Supreme Court categorically require that jury trial of legal issues be granted on demand. The requirement is only that jury trial be had on factual questions involved in legal issues. The trial courts must yet distinguish between questions of fact and questions of law when trying...

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4 cases
  • Monroe Auto Equipment Co. v. Heckethorn Mfg. & Sup. Co.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (6th Circuit)
    • 14 mai 1964
    ...were invalid as a matter of law, and that therefore there was no prejudice to the plaintiff in striking the demand for a jury trial. 214 F. Supp. 704. Plaintiff appeals from this judgment. It also filed in this Court a motion seeking an order that the case be remanded with directions for tr......
  • Tights, Inc. v. Stanley, 71-1018.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (4th Circuit)
    • 12 avril 1971
    ...jury trial under Rule 39 (b), Federal Rules of Civil Procedure. See Swofford v. B & W, Inc., 34 F.R.D. 15 (S.D.Texas 1963). 5 In Monroe Auto the District Court denied plaintiff's motion to reinstate its demand for jury trial and adhered to its original judgment on the ground that "no factua......
  • Monroe Auto Equipment Company v. Superior Industries, Inc.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (9th Circuit)
    • 22 mai 1964
    ...Ex. 35). 8 The judgment in that case was vacated and remanded on other grounds, 305 F.2d 375, on remand was again found invalid, 214 F.Supp. 704; and such invalidity was affirmed on appeal. Monroe Auto Equipment Company v. Heckethorn Manufacturing and Supply Company, 6 Cir., 332 F.2d 406, d......
  • United States v. Sullivan
    • United States
    • United States District Courts. 3th Circuit. United States District Court (Eastern District of Pennsylvania)
    • 18 février 1963

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