Dickinson v. O. & W. THUM CO.

• Decision Date: 09 October 1925
• Docket Number: 4126.,4114,No. 4113,4113
• Citation: 8 F.2d 570
• Parties: DICKINSON v. O. & W. THUM CO. O. & W. THUM CO. v. DICKINSON, A. K. ACKERMAN CO. v. O. & W. THUM CO.
• Court: U.S. Court of Appeals — Sixth Circuit

8 F.2d 570 (1925)

DICKINSON v. O. & W. THUM CO.

O. & W. THUM CO. v. DICKINSON, A. K. ACKERMAN CO. v. O. & W. THUM CO.

Nos. 4113, 4114, 4126.

Circuit Court of Appeals, Sixth Circuit.

October 9, 1925.

In No. 4113:

Willard F. Keeney, of Grand Rapids, Mich. (Roger C. Butterfield and Julius H. Amberg, both of Grand Rapids, Mich., on the brief), for appellant.

Fred L. Chappell, of Kalamazoo, Mich. (Chappell & Earl, of Kalamazoo, Mich., on the brief), for appellee.

In No. 4114:

Fred L. Chappell, of Kalamazoo, Mich. (Chappell & Earl, of Kalamazoo, Mich., on the brief), for cross-appellant.

Willard F. Keeney, of Grand Rapids, Mich. (Roger C. Butterfield and Julius H. Amberg, both of Grand Rapids, Mich., on the brief), for cross-appellee.

In No. 4126:

Willard F. Keeney, of Grand Rapids, Mich. (Roger C. Butterfield and Julius H. Amberg, both of Grand Rapids, Mich., on the brief), for appellant.

Fred L. Chappell, of Kalamazoo, Mich. (Chappell & Earl, of Kalamazoo, Mich., on the brief), for appellee.

Before DONAHUE and MOORMAN, Circuit Judges, and WESTENHAVER, District Judge.

WESTENHAVER, District Judge.

The prior history of this litigation is in part disclosed in former opinions. See, 245 F. 609, 158 C. C. A. 37; (D. C.) 254 F. 219; 257 F. 394, 168 C. C. A. 434. The controversy involves an infringement by Dickinson of a trade-mark of the Thum Company applied to sticky fly paper, and also unfair trade and competition by Dickinson in marketing his competitive product. The Thum fly paper is designated in the record as "Tanglefoot," and Dickinson's as "Sticky Fly Paper," and sometimes merely as "Sticky." The Thum Company will be referred to herein as the plaintiff, and Dickinson and Ackerman will be referred to as the defendant, such being their respective relations to the original lawsuits.

After decision of this court (245 F. 609, 158 C. C. A. 37), finding plaintiff's trade-mark valid and infringed, and defendants guilty of unfair trade and competition, decrees were entered, appointing a master to state an account of profits and damages. In the Ackerman Case no evidence of profits and damages was introduced. Upon the filing of the master's report so finding, a final decree was entered that plaintiff should recover nothing. From this decree the defendant Ackerman has appealed.

In the Dickinson Case, much evidence was offered as to profits and damages. The master has returned an elaborate report covering fifty-seven pages of the printed record and dealing fully and in detail with the contentions of both parties. To this report, the defendant took twenty exceptions and the plaintiff twenty-five. All exceptions were overruled by the District Judge, and a decree entered in plaintiff's favor for such profits as were found to have been realized by defendant from his infringement, with interest from the filing date of the report. Defendant has appealed from this decree, assigning thirty-two errors. The plaintiff has taken a cross-appeal, assigning thirty-three errors. Both parties apparently continue in the same dissatisfied mental state on which this court commented in its opinion in 257 F. 394, 395, 168 C. C. A. 434. Defendant calls in question, as manifestly erroneous, every finding of fact and conclusion of law adverse to him, and reassigns as well the merits arising on the issues of trade-mark validity and infringement and unfair competition, despite the previous decision of this court. The plaintiff, however, does not urge in argument most of its exceptions or assignments of error, but limits the discussion to one item only in the master's finding of profits and to certain adverse findings of the master respecting its several claims for damages. The scope of these respective contentions and the earnestness with which they have been argued has compelled an examination of the entire record.

Defendant's assignments of error, challenging this court's previous decision as to the validity of plaintiff's trade-mark and its infringement and as to unfair competition, are made, we assume, only in order that the questions involved may be properly preserved for presentation by certiorari to the Supreme Court. Our former decision will be followed as the law of the case. This is the well-settled rule. As was said in Supervisors v. Kennicott, 94 U. S. 498, 499 (24 L. Ed. 260): "These questions are, therefore, no longer open; for it is settled in this court, that, whatever has been decided here upon one appeal, cannot be re-examined in a subsequent appeal of the same suit. Such subsequent appeal brings up for consideration only the proceedings of the Circuit Court, after the mandate of this court." See, to the same effect, Himely v. Rose, 5 Cranch. 314, 3 L. Ed. 111; Roberts v. Cooper, 20 How. 467, 15 L. Ed. 969; Clark v. Keith, 106 U. S. 464, 1 S. Ct. 568, 27 L. Ed. 302; Chaffin v. Taylor, 116 U. S. 567, 6 S. Ct. 518, 29 L. Ed. 727; In re Potts, 166 U. S. 263, 17 S. Ct. 520, 41 L. Ed. 994; Thompson v. Maxwell Land Grant Co., 168 U. S. 451, 456, 18 S. Ct. 121, 42 L. Ed. 539. Even if, as was said in Messinger v. Anderson, 225 U. S. 436, 32 S. Ct. 739, 56 L. Ed. 1152; and C. & O. Ry. v. McKell (C. C. A. 6) 209 F. 514, 126 C. C. A. 336, this is a rule of practice and not a limitation upon the court to re-examine on a later appeal questions decided on a former appeal, still no special facts are present in this case which were there said to justify a departure from the general rule. It follows that the decree in No. 4126 will be affirmed, and that all assignments of error raising the same questions in 4113 should be disregarded.

Since both parties' exceptions to the master's report are directed mainly to his findings of fact, it is well to recall the rules of law in accordance with which such findings are to be reviewed. This case is not one in which the reference was by consent of parties, with power in the master to hear the evidence and determine the issues, like Kimberly v. Arms, 129 U. S. 512, 9 S. Ct. 355, 32 L. Ed. 764, and Davis v. Schwartz, 155 U. S. 631, 636, 15 S. Ct. 237, 39 L. Ed. 289. It is an accounting case, properly referable under equity rule 59 (198 F. xxxv), and is controlled by the principles stated in Tilghman v. Proctor, 125 U. S. 136, 139, 8 S. Ct. 894, 31 L. Ed. 664; Callaghan v. Myers, 128 U. S. 618, 666, 9 S. Ct. 177, 32 L. Ed. 547; Boesch v. Graff, 133 U. S. 697, 705, 10 S. Ct. 378, 33 L. Ed. 787; Crawford v. Neal, 144 U. S. 585, 596, 12 S. Ct. 759, 36 L. Ed. 552; Camden v. Stuart, 144 U. S. 104, 118, 12 S. Ct. 585, 36 L. Ed. 363; Warren v. Keep, 155 U. S. 265, 267, 15 S. Ct. 83, 39 L. Ed. 144. It is not one in which the master's findings of fact have been disapproved by the District Court, but one in which, after mature consideration, the findings have been concurred in. Under these circumstances, while conclusions of law are always open to re-examination on appeal, the master's findings of fact, approved by the District Judge, will not be disturbed on anything less than a demonstration of plain mistake. See Ohio Valley Bank v. Mack (6 C. C. A.) 163 F. 155; Deupree v. Watson (6 C. C. A.) 216 F. 483, 485, 32 C. C. A. 543; Firestone Tire & Rubber Co. v. Riverside Bridge Co. (6 C. C. A.) 247 F. 625, 628, 160 C. C. A. 35; Tennessee Finance Co. v. Thompson (6 C. C. A.) 278 F. 597; Grossberger v. B. F. Goodrich Co. (6 C. C. A.) 8 F.(2d) 964, decided November 10, 1925.

This court (245 F. 609, 628, 158 C. C. A. 37) ordered an accounting of profits and damages subsequent to April 27, 1914, the date plaintiff first notified defendant that he was infringing, and denied, on the ground of laches, an accounting during any earlier period. It also authorized the defendant to market and sell as marked and dressed, such finished stock as it had on hand at the date of its decision, August 1, 1917, whether that stock was at its factory or in the hands of brokers and agents elsewhere. The master divided the accounting as to profits into two periods; one for the period prior to this court's decision, and the other for the made-up stock on hand. For convenience, and because both plaintiff and defendant kept their accounts and closed their books in yearly periods ending October 1, the accounting for the first period was stated to October 1, 1917, instead of merely to August 1. No complaint is made by either party on this ground.

Only two complaints are made respecting the accounting of profits for the first period, of which notice need be taken. The master deducted certain sales made prior to April 27, 1914, but billed or invoiced as of May 1, 1914. His finding is that these sales were in fact made prior to April 27, but that the billing of a later date was merely an incident fixing the time when the accounts would become due. His conclusion therefrom was that these sales were excluded from the accounting period by the terms of the order and the opinion of this court. Our view is in accord with that of the master. The goods had been sold, shipped, and delivered. They were not, on April 27, in the possession, under the control, or subject to the order of the defendant. If defendant, on receiving notice on this date from plaintiff that its trade-mark was infringed, had desired to comply therewith, it was not within its legal right to retake these goods. According to the law of sales, the title had already passed. The fact that they were billed as of May 1, pursuant to a practice long followed by both parties, of making this the due date, does not control the situation nor require a different conclusion. It was merely a means of extending credit to customers in order that they might have the chance to resell seasonable goods before being obliged to pay the purchase price.

Defendant's main complaint is that the master charged him with the entire profits accruing from the sale of any infringing goods during this period. It is insisted that the burden was on plaintiff to prove that defendant had made profits attributable...