John Roberts Mfg. Co. v. University of Notre Dame Du Lac

• Citation: 258 F.2d 256
• Decision Date: 15 August 1958
• Docket Number: No. 12157.,12157.
• Parties: JOHN ROBERTS MANUFACTURING COMPANY, Plaintiff-Appellant, v. UNIVERSITY OF NOTRE DAME DU LAC, Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

258 F.2d 256 (1958)

JOHN ROBERTS MANUFACTURING COMPANY, Plaintiff-Appellant, v. UNIVERSITY OF NOTRE DAME DU LAC, Defendant-Appellee.

No. 12157.

United States Court of Appeals Seventh Circuit.

August 15, 1958.

Gerald A. Kamm, South Bend, Ind., W. Houston Kenyon, Jr., New York City (Kenyon & Kenyon, New York City, Doran, Manion, Boynton & Kamm, South Bend, Ind., of counsel), for appellant.

Louis C. Chapleau, Eugene C. Knoblock, South Bend, Ind., for appellee.

Before DUFFY, Chief Judge, and MAJOR and HASTINGS, Circuit Judges.

MAJOR, Circuit Judge.

Plaintiff by this action, predicated upon the Declaratory Judgment Act (Title 28 U.S.C.A. Sec. 2201), sought a judgment declaring that the sale of its "Notre Dame Class Rings" did not constitute unfair competition with or invade any property right of defendant. Defendant answered the complaint and interposed four counterclaims. Counts 1 and 2 alleged unfair competition on the part of plaintiff; count 3, application of a false description of goods in violation of Sec. 43 (a) of the Lanham Act (Title 15 U.S. C.A. Sec. 1125(a)), and count 4, infringement by plaintiff of three trademark registrations granted to defendant under The Indiana Trade-Mark Act (Acts of 1955, Ch. 174). Plaintiff by its answer denied the material averments of the counterclaims.

The case was tried by Honorable W. Lynn Parkinson, then a District Judge, who filed an opinion, together with findings of fact and conclusions of law. John Roberts Mfg. Co. v. University of Notre Dame Du Lac, D.C., 152 F.Supp. 269. Based upon its opinion, findings and conclusions, the trial Court, on June 27, 1957, entered its judgment and decree, holding in favor of defendant on the issue of unfair competition. The Court made no decision on the issues raised by counts 3 and 4 of defendant's counterclaims. The judgment and decree provided in material part:

"That the Plaintiff be, and it is hereby perpetually enjoined from using the words `University of Notre Dame\' and the official seal and identifying symbols of the defendant in connection therewith, on any ring manufactured by the plaintiff and from the sale and disposition thereof."

It is from this judgment and decree that plaintiff appeals.

Reference to the opinion, findings and conclusions of the District Court obviates the necessity here for a detailed statement of the facts. Of the thirty-three findings entered by the District Court, plaintiff challenges only 15, 21, 26, 27, 28, 29, 30 and 31. The conclusion which we have reached as to the proper disposal of this appeal renders plaintiff's challenge to the findings above enumerated of minor importance. In other words, our conclusion may well rest upon the undisputed facts of the case.

Plaintiff is a Delaware corporation, engaged in the manufacture of jewelry, with its office and principal place of business in Norman, Oklahoma. Defendant is a non-profit charitable, religious and educational institution, organized in 1844 by a special Act of the Indiana legislature, with power to award degrees in arts, sciences, law and medicine, and do all acts necessary for the promotion of the arts and sciences and the prosperity of the University (Acts of 1937, Ch. 227, p. 1109). It has a student enrollment of some six thousand, with a faculty of six hundred and forty. Its alumni number between twenty-five and thirty thousand. The University is dependent upon Foundations and major industries for financial help, and also upon income from athletics, the book store and stadium concessions, as the student fees represent only about 70% of its operational cost. For more than a century it has been recognized as one of the outstanding universities of this country, and perhaps of the world. By much effort and large expenditures it has attained great prestige.

The "Dome," a part of the main building of the University campus, is gilded with gold leaf and is well known throughout the United States as a symbol of the University. In 1930, the University adopted a seal which is used extensively on its publications, diplomas and in connection with many other of its activities. The seal is well known and symbolic of defendant. For more than fifty years, the University has used as a symbol a monogram consisting of the letters "N" and "D" in a superimposed position. In 1930, the University caused to be designed an official Notre Dame ring, which was approved for manufacture and sale on behalf of the University. It bore defendant's name, "University of Notre Dame," a representation of the seal, a view of the "Dome," and the Notre Dame monogram in a definite collocation. Defendant was the sole and exclusive source of supply of the Notre Dame ring until plaintiff commenced the manufacture and sale of a ring which is almost an exact duplicate. It has been the policy of the University for many years to limit the sale of the official Notre Dame ring to juniors, seniors and alumni of the University. To persons thus qualified it has sold in excess of one thousand rings per year. Defendant has expended large sums of money in popularizing its official ring.

In the fall of 1955, Robert Waugh, an officer of the plaintiff corporation, wrote two letters to the University for the purpose of purchasing an official ring. The letters were written on plain white stationery and signed "Bob Waugh," with only a post office box number as return address. The letters were false and deceitful in that they misrepresented the real purchaser and indicated that Waugh intended to give the ordered ring as a gift, which false representations were made to induce the sale. After plaintiff obtained such official ring it made an impression of its design and used such impression in the design of the ring which it thereafter manufactured and sold. Manufacture and sale of plaintiff's ring was commenced by it in January, 1956. Its ring bore the name, "University of Notre Dame," a representation of the seal, a view of the "Dome," and the monogram of the University in the same collocation as the official Notre Dame ring.

Shortly thereafter, plaintiff appointed a partnership, Royal Hawaiian Jewelers, as its exclusive sales agent in South Bend, Indiana, one of the partners of which was Raymond L. Roy, a graduate of the University and a former employee of the University book store where the official Notre Dame ring was sold. Through this partnership plaintiff sold, up to February 1957, 479 of its rings and, since then, approximately 200 more. Plaintiff in its sales literature recognized the University's policy of limiting sales of the official Notre Dame ring to juniors, seniors and alumni, but violated the policy by selling a majority of its rings to sophomores.

Thus, we have a situation where plaintiff in the manufacture and sale of a competing commercial product used not only the principal part of defendant's corporate name but also its seal, view of the "Dome" and monogram, all employed in a collocation which made plaintiff's ring an almost exact duplicate of defendant's.

The trial Court in its opinion announced a proposition of law which constituted the main premise for its decision and which, if sound, is dispositive of the issues argued on this appeal. The Court stated (152 F.Supp. 269, 271):

"The effect of assuming a name by a corporation under the law of its creation is to exclusively appropriate it as an element of the corporation\'s existence and the use of the name of a corporation on merchandise manufactured by another for sale in competition with the same type of merchandise of the corporation would not only be actual deception and create actual confusion but would of itself constitute a passing or palming off of its merchandise for that of the corporation, the name of which it is wrongfully using, and would be a most flagrant violation of the law of unfair competition."

In our judgment, the statement embodies a correct principle of law and, notwithstanding plaintiff's argument to the contrary, is supported by authority. Certainly it is supported by logic and common sense. Plaintiff, in our judgment, had no more legal right to appropriate defendant's corporate name and use it in connection with the manufacture and sale of rings than it had to purloin cash from defendant's safety box. As the Court stated in Brown Chemical Co. v. Meyer, 139 U.S. 540, 11 S.Ct. 625, 627, 35 L.Ed. 247:

"A man\'s name is his own property, and he has the same right to its use and enjoyment as he has to that of any other species of property."

We shall first cite and discuss some of the cases which support the pronouncement of the trial Court. American Steel Foundries v. Robertson, 269 U.S. 372, 46 S.Ct. 160, 70 L.Ed. 317, is much to the point. While in that case the action was against the Commissioner of Patents to enforce registration of a trade-mark, the reasoning of the Court cannot be distinguished on that basis because it (269 U. S. at page 379, 46 S.Ct. at page 162) approached the problem "by first considering certain principles of the substantive law of trade-marks and unfair competition * * *." In this connection the Court stated (269 U.S. at page 380, 46 S.Ct. at page 162):

"The effect of assuming a corporate name by a corporation under the law of its creation is to exclusively appropriate that name. It is an element of the corporation\'s existence."

On the following page the Court stated:

"The general doctrine is that equity not only will enjoin the appropriation and use of a trade-mark or trade-name, where it is completely identical with the name of the corporation, but will enjoin such appropriation and use where the resemblance is so close as to be likely to produce confusion as to such identity, to the injury of the corporation to which the name belongs. Citing cases."

In Stork Restaurant, Inc., v. Sahati, 9 Cir., 166 F.2d 348, 353, the Court stated:

"The property right in a trade name will be recognized perhaps even more readily when, as here, it embodies the

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