William Gluckin & Co. v. International Playtex Corp.

• Decision Date: 02 July 1968
• Docket Number: No. 68 CIV. 2189.,68 CIV. 2189.
• Citation: 294 F. Supp. 876
• Parties: WILLIAM GLUCKIN & CO., Inc., Plaintiff, v. INTERNATIONAL PLAYTEX CORPORATION, Defendant.
• Court: U.S. District Court — Southern District of New York

294 F. Supp. 876

WILLIAM GLUCKIN & CO., Inc., Plaintiff, v. INTERNATIONAL PLAYTEX CORPORATION, Defendant.

No. 68 CIV. 2189.

United States District Court S. D. New York.

July 2, 1968.

Kenyon & Kenyon, by Theodore S. Kenyon, Hugh A. Chapin, Paul Lempel, New York City, for plaintiff.

Kane, Dalsimer, Kane, Sullivan & Smith, New York City, for defendant.

Memorandum Decision and Order on Motion for Preliminary Injunction

MOTLEY, District Judge.

This is an action for a declaratory judgment, and other relief, declaring invalid and not infringed by plaintiff, William Gluckin & Co., Inc., (Gluckin) a patent for brassieres owned by defendant. Plaintiff filed its complaint on May 28, 1968. Thereafter, on May 31, 1968, plaintiff moved for a preliminary injunction restraining defendant, pending the final adjudication of this action, from further prosecuting or bringing or threatening to bring any action against any customers, sellers or users of plaintiff's brassieres for alleged infringement of defendant's patent rights. More specifically, plaintiff seeks to restrain defendant from further prosecuting Civil Action No. 1220 pending in the United States District Court, Northern District of Georgia, Gainesville Division, in which the defendant, International Playtex Corporation (Playtex) is plaintiff and the F. W. Woolworth Company (Woolworth) a customer of plaintiff is the defendant. Plaintiff further seeks an order restraining defendant from charging or asserting that the manufacture, use or sale of brassieres manufactured and/or sold by plaintiff is in violation of or infringes upon defendant's patent.

The suit which plaintiff seeks to have this court enjoin was commenced on April 25, 1968, prior to the filing of the instant action. In that action against Woolworth defendant charges that Woolworth is infringing its patent by selling a certain style brassiere manufactured by Gluckin. Woolworth is represented in the Georgia suit by its general counsel who is located in New York City and who is in control of the Georgia action. Woolworth is a New York corporation with its principal place of business in New York. It has a chain of retail stores throughout the United States. The brassiere in question is manufactured by Gluckin and supplied to Woolworth by Gluckin. Woolworth sells the article under its private brand name and mark "Primestyle". The package in which the article is sold is designed and made by Gluckin. The promotional materials used by Woolworth are prepared and supplied to it by Gluckin. Arrangements for the purchase of the article were made in New York City by a representative of Gluckin and one of the buyers of Woolworth who has his office in New York City. All of the terms of sale of the article were negotiated in New York City and then made the subject of a "listing" prepared by Woolworth and sent to its stores as the basis for ordering the article from Gluckin. Only Woolworth has been made a defendant in the Georgia action. Woolworth has advised the court that it will accept service of a summons and complaint in this District involving the same issues of patent infringement as are present in the Georgia action and consents to being joined in this District as a party with Gluckin in any action by or against Gluckin involving the same issues as the Georgia action. F. W. Woolworth Co. further states that it will admit that it sells a brassiere identified by defendants as "Primestyle Style No. F-7211" which it purchases for resale from Gluckin and that Woolworth used the packages, labels and promotional materials supplied by Gluckin. Woolworth has answered the Georgia action but the Georgia court has stayed the discovery in that case pending the further order of that court. The article which is the subject of the patent in suit is sold by Woolworth stores throughout the United States. The person connected with Woolworth who would have the most knowledge concerning the article in question would be the buyer for Woolworth in New York City. In addition, any other factual material which Woolworth has would have to be obtained in its New York office. No one connected with Woolworth's in Gainesville has any knowledge concerning the patent in suit. The manager of Woolworth's in its store in Gainesville, Georgia where the alleged infringement took place has no knowledge except that which is already admitted, i. e. that he sells the brassiere style cited above. In short, Woolworth is simply a customer of Gluckin who would have to rely upon Gluckin for evidence relating to the manufacture, packaging and promotion of the article involved in this suit.

Plaintiff is a New York corporation with its main office and principal place of business in New York City. Gluckin has no salesmen, offices, warehouses, bank accounts, stocks of goods or display rooms in Georgia and is not licensed to do business there. Gluckin's manufacturing plants are located in Pittston and Glen Lyon, Pennsylvania. Its design facility is located in New York City. Gluckin sells and distributes its products, including brassieres, principally to customers for ultimate sale to the public throughout the United States. Gluckin's documentary evidence relevant to this case is located in New York City and Pittston, Pennsylvania.

On or about April 19, 1966, Gluckin received at its New York City office a written notice of infringement from defendant. Woolworth received a similar notice at its New York City office about the same time. At a subsequent meeting between Gluckin's attorneys and those for defendant Gluckin denied infringement. Defendant subsequently brought suit against Woolworth in Georgia. Defendant is represented in Georgia by the same New York attorneys which represent it in this action.

Defendant Playtex is a Delaware corporation having a main office and principal place of business in New York City. Its marketing and purchasing activities are located in New...