Thomas French & Sons v. International Braid Co.

• Decision Date: 02 January 1945
• Docket Number: No. 4027.,4027.
• Citation: 146 F.2d 735
• Parties: THOMAS FRENCH & SONS, Limited, et al. v. INTERNATIONAL BRAID CO.
• Court: U.S. Court of Appeals — First Circuit

146 F.2d 735 (1945)

THOMAS FRENCH & SONS, Limited, et al. v. INTERNATIONAL BRAID CO.

No. 4027.

Circuit Court of Appeals, First Circuit.

January 2, 1945.

Harry C. Bierman, of New York City, for appellants.

Herbert B. Barlow, of Providence, R. I., for appellee.

Before MAHONEY and WOODBURY, Circuit Judges, and SWEENEY, District Judge.

MAHONEY, Circuit Judge.

The circumstances out of which the present controversy arose are not in dispute.

The International Braid Company has instituted in the United States Patent Office a proceeding for the cancellation of a registered trade-mark owned by Thomas French & Sons, Ltd. The trade-mark in question is for ladder web for Venetian blinds and consists of a pair of blue threads in each of the successive cross straps or cross tapes of the ladder web. In connection with the taking of testimony by deposition to be used in that proceeding, International petitioned the District Court, pursuant to 35 U.S.C.A. §§ 54-56, for a subpeona duces tecum to compel the appellant, Harris, an officer of French, to testify and produce certain designated records.¹

The petition was granted, the subpoena was issued, and Harris was properly served on March 29, 1944. He appeared before the Notary Public as directed on April 6 but refused to answer certain questions and to produce certain records. International thereupon moved to compel obedience to the subpoena duces tecum. The cause was heard on April 24, and an order was issued by the court instructing Harris to produce the records designated in the subpoena and to answer questions relating thereto. He complied to the extent of appearing on May 10 as directed and produced certain of the documents, but he refused to permit them to be placed in evidence or to allow copies to be made for the use of opposing counsel. International thereupon filed a motion to compel the production of such evidence. Counsel for Harris filed a memorandum in opposition to that motion but did not appear at the hearing although notified. He informed the deputy clerk by letter "that he could not arrange to come from New York to Boston for the hearing, `because of the difficulty of travel and the impossibility of obtaining suitable railroad accommodations.'" From the order² of the District Court on May 22 instructing Harris to produce certain documents and leave them in the custody of the notary subject to inspection and copying, and to answer certain questions, French and Harris have taken this appeal.

The appellee has moved to dismiss on the ground that this court has no jurisdiction to entertain this appeal. Section 128³ of the Judicial Code limits our appellate jurisdiction to "final decisions"⁴ with certain exceptions not here relevant. If the order in question is not final we have no jurisdiction.

The proceedings out of which the present dispute arose were instituted by the appellee to obtain testimony for use in the contested case pending in the Patent Office. They are merely a step in the disposition of that cause, and in effect the appellee is relying upon 35 U.S.C.A. §§ 54 and 56⁵ to compel the production of evidence in ancillary proceedings for use in the trial of the original suit in another jurisdiction. "Neither a party nor a non-party witness will be allowed to take to the upper court a ruling where the result will be `to halt in the orderly progress of a cause and consider incidentally a question which has happened to cross the path of such litigation * * *.' Mr. Chief Justice Taft in Segurola v. United States, 275 U.S. 106, 112, 48 S.Ct. 77, 79, 72 L.Ed. 186." Cobbledick v. United States, 1940, 309 U.S. 323, 326, 60 S.Ct. 540, 541, 84 L.Ed. 783. It is our opinion that the order appealed from is not a final decision within the meaning of the statute so far as the parties to the principal suit are concerned. National Nut Co. of California v. Kelling Nut Co., 7 Cir., 1943, 134 F.2d 532.

It is well settled that an order granting or denying a subpoena duces tecum for records and documents of a party bearing upon issues relevant in a pending action is not appealable. Alexander v. United States, 201 U.S. 117, 26 S.Ct. 356, 50 L.Ed. 686, approved in Cobbledick v. United States, supra; Goodyear Tire & Rubber Co., Inc. v. Jamaica Truck Tire Service Co. et al., 7 Cir., 1933, 66 F.2d 91, certiorari denied 290 U.S. 700, 54 S.Ct. 209, 78 L.Ed. 601; Tucker v. Peiler, 2 Cir., 297 F. 570. In the Alexander case the court said: "In a certain sense finality can be asserted of the orders under review; so, in a certain sense, finality can be asserted of any order of a court. And such an order may coerce a witness, leaving to him no alternative but to obey or be punished. It may have the effect and the same characteristic of finality as the orders under review, but from such a ruling it will not be contended that there is an appeal. Let the court go farther, and punish the witness for contempt of its order, — then arrives a right of review; and this is adequate for his protection without unduly impeding the progress of the case." 201 U.S. 117, 26 S.Ct. 358.

In the present case where the witness refuses to testify the court may "enforce obedience to the process, or punish the disobedience, as in other like cases * * *." 35 U.S.C.A. § 56. "This power to punish being exercised, the matter becomes personal to the witness and a judgment as to him. Prior to that the proceedings are interlocutory in the original suit." Alexander v. United States, supra; National Nut Co. v. Kelling Nut Co., supra.

The order in question is directive only and not punitive. It was issued in aid of the subpoena for the purpose of making it effective. As such it is an interlocutory order in the original suit.

The motion to dismiss is sustained and the appeal is dismissed with costs to the appellee.

1 The trade-mark application is dated May 12, 1938 and states that "the trademark has been continuously used and applied to said goods in...