Abercrombie & Fitch Co. v. Hunting World, Inc.

• Decision Date: 26 April 1972
• Docket Number: Docket 71-1806.,No. 493,493
• Citation: 461 F.2d 1040
• Parties: ABERCROMBIE & FITCH COMPANY, Plaintiff-Appellant, v. HUNTING WORLD, INCORPORATED, Defendant-Appellee.
• Court: U.S. Court of Appeals — Second Circuit

461 F.2d 1040 (1972)

ABERCROMBIE & FITCH COMPANY, Plaintiff-Appellant, v. HUNTING WORLD, INCORPORATED, Defendant-Appellee.

No. 493, Docket 71-1806.

United States Court of Appeals, Second Circuit.

Argued February 15, 1972.

Decided April 26, 1972.

Roy C. Hopgood, New York City (Sandoe, Hopgood & Calimafde, Paul H. Blaustein, New York City, and Richard H. G. Cunningham, Stamford, Conn., on the brief), for plaintiff-appellant.

Richard H. Wels, New York City (Sulzberger, Wels & Marcus, New York City, on the brief), for defendant-appellee.

Before FEINBERG and TIMBERS, Circuit Judges, and THOMSEN, District Judge.^*

THOMSEN, District Judge:

Abercrombie & Fitch Co. (plaintiff) sued Hunting World, Inc. (defendant) in the district court, seeking an injunction against defendant's uses of the word "Safari", which plaintiff had registered as a trademark for various classes of goods.¹ Defendant moved for summary judgment under Rule 56(b), F.R.Civ.P., on the ground that it had not infringed plaintiff's trademark rights in the word "Safari". After considering the pleadings, several affidavits and many exhibits filed by the respective parties, and after hearing argument, the district judge filed an opinion, 327 F.Supp. 657 (S.D.N.Y.1971), and entered an order which included the following provisions: (1) "that the defendant's motion for summary judgment is granted to the extent of holding that defendant's use of the word `Safari' to describe its safari hat, `Minisafari' to describe its smaller safari hat, and the further use by the defendant of the coined word `Safariland' to describe a part of its shop, as a corporate name, and as the name of a newsletter, do not infringe such rights as plaintiff may have in the use of the word `Safari', and to the further extent of holding that defendant is entitled to use the word `Safari' to describe those of its products which relate to the practice or cult of safari"; (2) "that summary judgment be awarded to each of the parties against the other in relation to the respective claims of misrepresentation made by each of them"; and (3) "that in all other respects" defendant's motion for summary judgment be denied.

Plaintiff sought and was denied a certification by the district court under 28 U.S.C. § 1292(b) and Rule 54(b), F.R. Civ.P. It then appealed to this court, relying on § 1292(a)(1), which reads in pertinent part:

"(a) The courts of appeals shall have jurisdiction of appeals from:

"(1) Interlocutory orders of the district courts of the United States * * granting, continuing, modifying, refusing or dissolving injunctions * *."

For the purposes of this appeal the facts are adequately stated in the opinion of the district court. 327 F.Supp. at 659 et seq.

I

In granting in part defendant's motion for summary judgment, the district court's order in effect constituted a final denial on the merits of the injunctive relief prayed for by plaintiff as to those uses by defendant of the word "safari" which the district court found not to violate any trademark rights plaintiff may have in the word "safari". In these respects the order is appealable as an interlocutory order refusing an injunction under § 1292(a)(1).

Defendant argues that the order is not appealable, relying on Switzerland Cheese Association, Inc. v. E. Horne's Market, Inc., 385 U.S. 23, 87 S.Ct. 193, 17 L.Ed. 2d 23 (1966), and Western Geophysical Co. of America v. Bolt Associates, Inc., 440 F.2d 765 (2 Cir. 1971). Those cases, however, are distinguishable.

In Switzerland Cheese the Court held that the denial of a plaintiff's motion for summary judgment seeking injunctive relief was not a denial or refusal of an injunction within § 1292(a)(1) because it did not "settle or even tentatively decide anything about the merits of the claim. It is strictly a pretrial order that decides only one thing — that the case should go to trial." 383 U.S. at 25, 87 S.Ct. at 195.² The present appeal deals with a grant in part of defendant's motion for summary judgment, which was, in effect, a final denial on the merits of plaintiff's request for an injunction as to certain uses of the word "safari" by defendant.

In Western Geophysical this court declined to take appellate jurisdiction under § 1292(a)(1) where the district court had granted in part motions by a plaintiff and a third-party defendant for summary judgment with respect to portions of several defenses and counterclaims raised by the defendant, which portions sought injunctive relief against the movants. The rationale of the decision was that no single counterclaim had been dismissed in its entirety and that the full extent of injunctive relief prayed for by the defendant could still be secured in each of its counterclaims. 440 F.2d at 771. In the present case, however, there are no remaining claims for injunctive relief which would encompass those uses of the word "safari" as to which the district court granted summary judgment in favor of defendant. Even if plaintiff should prevail on the remaining issues, the summary judgment in favor of defendant with respect to certain uses of the word "safari" by defendant would remain in effect.

Although a part of the district court's order is therefore appealable under § 1292(a)(1), the scope of appellate review is limited to that part of the order which resulted in a final denial of a major portion of plaintiff's requested injunction. The comments, findings and conclusions of the district court with respect to the issues on which an injunction was not refused are outside the scope of a § 1292(a)(1) appeal.

II

At the conclusion of his discussion of the issue — "May the word `Safari' alone be validly registered as a trademark?" — the district judge stated:

"Although `safari\' is a generic word, a genuine issue of fact exists as to whether the plaintiff has created a secondary meaning in its use of the word `identifying the source\' and showing that `purchasers are moved to buy it because of its source,\' Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 697 (2d Cir. 1961); see also American Lead Pencil Co. v. L. Gottlieb & Sons, 181 F. 178, 181 (2d Cir. 1910, Judge Learned Hand). Plaintiff is entitled to establish in the discovery process or on trial its contention that a secondary meaning has been created. Accordingly, summary judgment cannot be granted on this issue." 327 F.Supp. at 662.

Then, in proceeding to discuss the other issue — "May summary judgment be granted on any of defendant's uses of `Safari'?" — the judge continued:

"Even though plaintiff has registered `Safari\' as a mark for the products in issue here and the question of secondary meaning remains undecided, `the registering of a proper noun as a trademark does not withdraw it from the language, nor reduce it to the exclusive possession of the registrant which may be jealously guarding it against any and all use by others.\' Societe Comptoir De L\'Indus., etc. v. Alexander\'s Department Stores, Inc., 299 F.2d 33, 36 (2d Cir. 1962). * *" Id.

The judge then discussed several of defendant's uses of the word "Safari", alone or in compound words. He found that in certain instances defendant uses the word descriptively rather than as a trademark, despite evidence to the contrary, e. g., the letters "TM" after the words "Mini-safari" and "Safariland". He concluded that some of the uses of the word were not infringements, but that a genuine issue of fact exists as to whether plaintiff may be entitled to an injunction with respect to other items, specifically shoes, and granted defendant's motion for summary judgment only in part.

We intimate no opinion as to the ultimate merits of the case. But viewing the inferences to be drawn from the underlying facts in the light most favorable to the party opposing the motion for summary judgment,³ we conclude that genuine issues of fact exist which made it improper to enter a summary judgment finally denying even in part the injunctive relief sought by plaintiff.

Reversed and remanded.

TIMBERS, Circuit Judge (concurring):

I agree with the judgment of the Court reversing and remanding, and I concur in all respects in the able majority opinion of Judge Thomsen.

Since Judge Feinberg's perceptive dissenting opinion is addressed only to the issue of the appealability of the district court order, I wish to add the following brief observations on that issue, in addition to my complete concurrence in the majority opinion's treatment of that issue.

If the relief sought below by plaintiff had been cast in the form of a claim for preliminary injunction, rather than for summary judgment, then I take it that the court's interlocutory order refusing such injunction quite clearly would be appealable under § 1292(a)(1). That being so, it seems to me that the order here under review which finally dismissed certain of plaintiff's claims for injunctive relief with respect to the alleged infringement of plaintiff's trademark rights a fortiori is appealable under § 1292(a)(1). Although other claims for injunctive relief are still pending, the dismissed claims sought relief on a legal theory distinct from the retained claims. I find the instant case to be indistinguishable from Glenmore v. Ahern, 276 F.2d 525, 545 (2 Cir.), cert. denied sub nom. Tri-Continental Financial Corp. v. Glenmore, 362 U.S. 964 (1960), where our Court held appealable under § 1292(a)(1) an order of a district court which had dismissed one count of a multicount complaint, the dismissed count having sought the same injunctive relief as several other counts but on a distinct legal theory. 276 F.2d at 545-47. In Build of Buffalo, Inc. v. Sedita, 441 F.2d 284 (2 Cir. 1971), we held that "by granting the motion of three defendants to dismiss (footnote omitted), the district court effectively denied at the same time plaintiffs' motion for a preliminary injunction as against those defendants. (footnote omitted) The resultant denial of an injunction is appealable...