National Research Bureau, Inc. v. Bartholomew, 72-1640 and 72-1641.
| Decision Date | 30 July 1973 |
| Docket Number | No. 72-1640 and 72-1641.,72-1640 and 72-1641. |
| Citation | 482 F.2d 386 |
| Parties | The NATIONAL RESEARCH BUREAU, INC., Appellee, v. Forrest L. BARTHOLOMEW, Appellant in No. 72-1640. The NATIONAL RESEARCH BUREAU, INC., Appellant in No. 72-1641, v. Forrest L. BARTHOLOMEW, Appellee. |
| Court | U.S. Court of Appeals — Third Circuit |
Walter J. Blenko, Jr., Pittsburgh, Pa., for appellant in No. 72-1640 and appellee in No. 72-1641.
Robert E. Wagner, Walsh, Case & Coale, Chicago, Ill., for appellee in No. 72-1640 and appellant in No. 72-1641.
Before JAMES HUNTER, III, and WEIS, Circuit Judges, and NEWCOMER, District Judge.
This case is before the Court on appeal by plaintiff, National Research Bureau, Inc., and cross-appeal by defendant, Forrest L. Bartholomew. The case was originally brought in the United States District Court for the Western District of Pennsylvania by National Research Bureau, plaintiff, against Forrest Bartholomew, defendant, alleging that the defendant, an ex-employee, was violating plaintiff's trademark, using certain customer lists which constituted trade secrets, and engaging in conduct which constituted unfair competition under both state and federal law. Defendant counterclaimed, alleging anti-trust violations and also a claim of unfair competition based on state law, for which independent jurisdictional grounds were pleaded.
Plaintiff moved to strike defendant's anti-trust counterclaim for failure to state a cause of action, which motion was granted D.C., 331 F.Supp. 1003. No one has attacked the propriety of this action. Defendant then moved for summary judgment, and during the pendency of that motion sought to amend his anti-trust counterclaim to cure its previous defects.
Defendant's motion for summary judgment was granted as to all of plaintiff's claims. At the same time, the District Court refused to allow the amended anti-trust counterclaim, and further dismissed defendant's unfair competition counterclaim, on the ground that it was a compulsory counterclaim, and that the District Court has discretion to dismiss a compulsory counterclaim when the main claim is disposed of, to avoid "the tail wagging the dog."
National Research Bureau, as appellant, argues that the District Court erred on three grounds in granting the motion for summary judgment against it.
First, it contends that the District Court erred in holding, as a matter of law, that defendant's use of plaintiff's customer lists and information did not constitute a breach of confidence and unfair competition under Pennsylvania law.
Second, it contends that the District Court erred in the tests it used to conclude that defendant's magazine title "Humor" did not infringe plaintiff's registered trademark "Smiles."
Third, it contends that the District Court erred in failing to find that defendant had used some, if not all, of the distinguishing characteristics of plaintiff's publication, thereby causing confusion as to origin, and in so doing the District Court misapplied the Pennsylvania cases on unfair competition, and the test for determination of false designation under 15 U.S.C. § 1125(a).
After carefully considering the briefs, oral argument, and the opinion of the District Court, we conclude that the District Court correctly granted summary judgment for defendant Bartholomew, and that the claims of error urged by National Research Bureau are without merit. Accordingly the judgment of the District Court will be affirmed on those questions.
Forrest Bartholomew, as cross appellant, urges that the District Court erred first in dismissing his unfair competition counterclaim for which independent jurisdictional grounds had been pleaded, and second in refusing to accept the amended anti-trust counterclaim.
We must agree with the first of these propositions. The plaintiff sued the defendant on both federal and diversity grounds and in so doing, of course, submitted itself to the personal jurisdiction of the Court. The defendant pleaded and served upon the plaintiff the unfair competition counterclaim which was, because of its intimate connection with the incidents which first gave rise to this lawsuit, a compulsory counterclaim under F.R.Civ.P. 13(d). It is of course true that no independent jurisdictional grounds are necessary for such a counterclaim, nor need independent grounds be pleaded even if they exist,...
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