Norman M. Morris Corporation v. Weinstein, 71-2922.

Citation466 F.2d 137
Decision Date14 August 1972
Docket NumberNo. 71-2922.,71-2922.
PartiesNORMAN M. MORRIS CORPORATION, Plaintiff-Appellee, v. Hyman WEINSTEIN, d/b/a Bright Star Enterprise, Defendant-Appellant.
CourtUnited States Courts of Appeals. United States Court of Appeals (5th Circuit)

Aaron A. Foosaner, North Miami Beach, Fla., A. Albert Sugar, David L. Nelson, Detroit, Mich., for defendant-appellant.

Kenneth L. Ryskamp, Miami, Fla., for plaintiff-appellee.

Before PHILLIPS,* THORNBERRY and RONEY, Circuit Judges.

ORIE L. PHILLIPS, Circuit Judge:

Norman M. Morris Corporation,1 brought this action against Hyman Weinstein, doing business as Bright Star Enterprises,2 seeking a temporary and permanent injunction against Weinstein from doing certain acts which Morris Corporation alleged constituted unfair competition as against it.

After the complaint and answer had been filed and certain preliminary motions disposed of, Morris Corporation filed a motion for summary judgment. After discovery proceedings had been completed, depositions of Milton H. Davis and Weinstein had been taken and filed, an affidavit of Maurice Burns had been filed, a pretrial conference had been held, and a pretrial stipulation had been entered into and filed, the court considered a written memorandum filed by Morris Corporation and a written memorandum filed by counsel for Weinstein and granted a permanent injunction.

The trial court's findings and conclusions of law are set out in note 3 hereto.3

There is no substantial dispute as to the facts, which are these:

Morris Corporation is incorporated under the laws of New York. Its principal office is located in the Omega Building in New York City.

The Omega Watch Company of Switzerland for more than 40 years has been manufacturing watches bearing its trademark, "Omega." Its trademark, "Omega," is registered in the United States.

For many years the general public has believed that a watch bearing such trademark is a watch manufactured, sold, and guaranteed by the Omega Watch Company, and sold by authorized retail dealers who fully service such watches. For more than 40 years, under a written agreement entered into by the Omega Watch Company and Morris Corporation, the latter had the exclusive right in what are now the 50 states of the United States and Puerto Rico to sell Omega watches, purchased from the Omega Watch Company. The agreement specifically authorized the Morris Corporation to affix the Omega trademark on faces and cases manufactured by or for it, provided that such faces and cases were of the usual Omega quality and were to be used with Omega movements.

Morris Corporation has no warehouse facilities, no wholesalers, and no jobbers in Florida or elsewhere in the exclusive territory granted to it. It contracts with a Florida repair service to repair Omega watches sold by it in Florida. It owns no interest in such repair service. It sells only to authorized retail dealers.

Its sole employee in Florida is Milton H. Davis. He is a salesman and takes orders from retail purchasers in Florida and Puerto Rico who handle Omega watches purchased from Morris Corporation. He sends such orders by mail to Morris Corporation in New York City and it sends to retail dealers the watch or watches ordered by them by interstate transportation.

In his deposition taken by the Morris Corporation, Weinstein testified to the following facts:

Weinstein carried on his business under the name "Bright Star Enterprise" for about two and one-half years prior to the day he gave his deposition, which was December 9, 1970. His place of business was Oak Park, Michigan.

During the two-and-one-half-year period, Weinstein made trips to Europe from time to time and purchased watches bearing the name "Omega," the trademark of the Omega Watch Company, from six different retail dealers in Austria, Germany, and Italy. He refused to identify any of the retail dealers from whom he purchased such watches, giving as a reason that if he did so, he would no longer be able to purchase such watches from them. He personally brought the watches so purchased back to the United States, passed them through the United States customs, and paid the import duties thereon. He resold such watches to retail dealers in all of the states of the United States. He used the mails to solicit orders for such watches from retail dealers in other states than Michigan, received orders from such retail dealers in other states than Michigan, and filled such orders by sending the watches from Michigan through the United States mails to retail dealers in other states who had ordered them. He also made some sales in Florida and possibly in other states by personal solicitation.

During the two-and-one-half-year period, he sold about 3,000 of such watches to retail dealers in the United States. He admitted that such watches bore no identifying serial numbers.

The evidence fully established that the watches which Weinstein sold to retail dealers in Florida and other states had imprinted thereon the word "Omega," the trademark of the Omega Watch Company, and that the boxes or containers in which such watches were sold had printed thereon what purported to be the guarantee of the Omega Watch Company, but which in fact was not the genuine guarantee of such company.

The watches were sold by Weinstein in Florida and other states as new Omega watches, when in fact the digits in the serial numbers on the movements of such watches, with which they could be identified as watches made by the Omega Watch Company and tied to a guarantee by the Omega Company, had been drilled out.

Weinstein testified that after the Morris Corporation refused to honor the guarantees on the boxes or containers of the watches so sold by him, he prepared a guarantee which read:

"GUARANTEE
"This Omega watch has been electronically tested and checked when it entered our stock. __________ guarantees the movement against defective parts and workmanship for one year from date of purchase, and will repair or replace any movement which fails to perform properly because of such defects during the life of the guarantee. With proper care, your watch will give you long, dependable service. Date _______ Model _______ Authorized _______"

It will be noted that such guarantee prepared by Weinstein purported to be a guarantee of an Omega watch. It recites, "This Omega watch * * *." The customer who purchased such a watch from a retail dealer to whom Weinstein had sold it would believe it to be an Omega Watch Company guarantee.

Weinstein testified that the retailer or his clerk, whoever sold a Weinstein watch to a customer, was to sign his name in the blank in the guarantee form following the word "Authorized." The evidence does not disclose what was to be filled in the blank following the word "stock." If it were to be "Weinstein" or "Bright Star Enterprise" it is reasonable to assume it would have been so printed on the form.

It is well settled that one of the purposes which the law intends to subserve when it gives a right to an injured person to protection from unfair competition and provides a remedy to bring about such protection, is to afford protection also to the general public.4

Weinstein also admitted that the watches which he sold bore no identifying serial numbers.

In his deposition, Milton H. Davis testified that he was a state representative of the Morris Corporation; that what purported to be Omega watches had been purchased from Weinstein by L. Reed and Company in South Miami and Royal Distributors in Daytona Beach, Florida; that such watches had their identifying serial numbers drilled out; that two authorized Omega jewelers told him that they would cease purchasing Omega watches from Morris Corporation until the situation created by the defendant was straightened out; and that both of such dealers told Davis that there was a noticeable difference in their sales, which they attributed to the sales made by Weinstein.

In his affidavit, Maurice Burns averred that he was engaged in the jewelry business in Miami, Florida; that during the early part of 1970, Weinstein personally visited with him in Miami, Florida, and at that time sold to him a "certain quantity" of "Omega" watches; that Weinstein held himself out to be doing business under the name of Bright Star Enterprise, 24631 Church Street, Oak Park, Michigan; that at the time said watches were sold by Weinstein to Burns, it was not disclosed that said "Omega" watches were watches from which the identifying serial numbers on the movements of the watches had been in any way erased, altered, or removed; that subsequently Burns had occasion to carefully inspect the watches purchased from Weinstein, and found that the serial numbers on the movements had been drilled out to the extent that the last six digits were erased.

The deposition of Norman M. Morris, President of Morris Corporation, was taken on June 22, 1971. It was filed in the instant case in the District Court on July 22, 1971. On July 23, 1971, Weinstein filed a petition for reconsideration, in which he urged the court to give consideration to such deposition. The court entertained such petition and filed a memorandum in which it stated it had considered such petition and found it to be without merit. In its memorandum, the court said:

"It became apparent at the pre-trial conference that the only disputed issue of material fact was whether plaintiff in fact had a contract giving it the exclusive right to sell watches bearing the Omega trademark in the United States. Defendant\'s contention was that plaintiff had never produced the contract. Subsequent to the pre-trial conference, and upon direction of the court, plaintiff `served upon the court\' a copy of the contract which defendant did not dispute. The court then entered its order granting judgment * * *.
"The court has complied with defendant\'s request that it examine the deposition of Mr. Norman M. Morris, * * * and having read the deposition, the court finds that it
...

To continue reading

Request your trial
43 cases
  • American Heritage Life Ins. Co. v. Heritage Life Ins. Co., 73-1106.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (5th Circuit)
    • May 13, 1974
    ...in commerce. Alum-A-Fold Shutter Corporation v. Folding Shutter Corp., 5th Cir. 1971, 441 F.2d 556, 557; Norman M. Morris Corp. v. Weinstein, 5th Cir. 1972, 466 F.2d 137, 141. But AHLIC offered no evidence to show that HLIC made false representations with respect to its advertising and sale......
  • Waples-Platter Companies v. Gen. Foods Corp., Civ. A. No. CA 4-75-112
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Northern District of Texas
    • October 19, 1977
    ...law or under the Act, as amended, 15 U.S.C. § 1125(a). American Heritage Life Ins., supra, 494 F.2d at 14; Norman M. Morris Co. v. Weinstein, 466 F.2d 137, 141 (5th Cir. 1972). D. Trade Name Similarly, trade name infringement is simply another specific instance of the general tort of unfair......
  • Rare Earth, Inc. v. Hoorelbeke, 74 Civ. 3402 (JMC).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • July 15, 1975
    ...of the mark." D. M. & Antique Import Corp. v. Royal Saxe Corp., 311 F.Supp. 1261, 1268 (S.D.N.Y.1970). Cf., Norman M. Morris Corp. v. Weinstein, 466 F.2d 137, 142 (5 Cir. 1972). Thus, as Callmann observes, the "dispositive question should be whether a litigant has a reasonable interest to b......
  • Arthur v. JP Morgan Chase Bank, 12-12317
    • United States
    • United States Courts of Appeals. United States Court of Appeals (11th Circuit)
    • June 13, 2014
    ...12(b)(6), they do not necessarily have any bearing on the power of the federal courts to hear this case. See Norman M. Morris Corp. v. Weinstein, 466 F.2d 137, 142 (5th Cir. 1972) (stating that a Florida statute limiting recovery of a foreign corporation that fails to register does not rais......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT