Black Hills Jewelry Mfg. Co. v. Felco Jewel Industries, Inc., Nos. 14002 and 14019

CourtSupreme Court of South Dakota
Writing for the CourtHENDERSON; FOSHEIM; WOLLMAN; WOLLMAN
Citation336 N.W.2d 153
Parties1983-2 Trade Cases P 65,561 BLACK HILLS JEWELRY MANUFACTURING CO., a South Dakota corporation; F.L. Thorpe & Company, Inc., a South Dakota corporation; and Stamper Black Hills Gold Jewelry, Inc., a South Dakota corporation, Plaintiffs and Appellants, v. FELCO JEWEL INDUSTRIES, INC., a corporation; South Dakota Gold Company, Inc., a South Dakota corporation; and Johnson Matthey, an international jewelry conglomerate, Defendants and Appellees. BLACK HILLS JEWELRY MANUFACTURING CO., a South Dakota corporation; F.L. Thorpe & Company, Inc., a South Dakota corporation; and Stamper Black Hills Gold Jewelry, Inc., a South Dakota corporation, Plaintiffs and Appellants, v. GOLD RUSH, INC., a North Dakota corporation; GRMCO, Inc., a South Dakota corporation; and Confidential Casting Corp., a corporation, Defendants and Appellees.
Decision Date29 June 1983
Docket NumberNos. 14003 and 14020,Nos. 14002 and 14019

Page 153

336 N.W.2d 153
1983-2 Trade Cases P 65,561
BLACK HILLS JEWELRY MANUFACTURING CO., a South Dakota
corporation; F.L. Thorpe & Company, Inc., a South Dakota
corporation; and Stamper Black Hills Gold Jewelry, Inc., a
South Dakota corporation, Plaintiffs and Appellants,
v.
FELCO JEWEL INDUSTRIES, INC., a corporation; South Dakota
Gold Company, Inc., a South Dakota corporation;
and Johnson Matthey, an international
jewelry conglomerate,
Defendants and Appellees.
Nos. 14002 and 14019.
BLACK HILLS JEWELRY MANUFACTURING CO., a South Dakota
corporation; F.L. Thorpe & Company, Inc., a South Dakota
corporation; and Stamper Black Hills Gold Jewelry, Inc., a
South Dakota corporation, Plaintiffs and Appellants,
v.
GOLD RUSH, INC., a North Dakota corporation; GRMCO, Inc., a
South Dakota corporation; and Confidential
Casting Corp., a corporation, Defendants
and Appellees.
Nos. 14003 and 14020.
Supreme Court of South Dakota.
Argued April 18, 1983.
Decided June 29, 1983.

Page 155

George A. Bangs of Bangs, McCullen, Butler, Foye & Simmons, Rapid City, for plaintiffs and appellants.

Gene N. Lebrun of Lynn, Jackson, Shultz, & Lebrun, P.C., Rapid City, for defendants and appellees.

HENDERSON, Justice.

PROCEDURAL HISTORY

Considerable litigation underlies this action. At the outset, appellants Black Hills Jewelry Manufacturing Co., F.L. Thorpe & Company, Inc., and Stamper Black Hills Gold Jewelry (Black Hills Jewelry, Thorpe, and Stamper) brought suit in the United States District Court for the District of South Dakota, Western Division, seeking injunctive relief against appellees Gold Rush, Inc., and Felco Jewel Industries, Inc. (Gold Rush and Felco). This action culminated in a final judgment on May 1, 1980, granting a permanent injunction in favor of appellants. This judgment was affirmed upon appeal by the United States Court of Appeals for the Eighth Circuit. Black Hills Jewelry Mfg. Co. v. LaBelle's, 489 F.Supp. 754 (D.S.D.1980), aff'd, 633 F.2d 746 (8th Cir.1980). The effect of this judgment is under consideration here.

Next, appellee Felco and others brought suit against appellants in the United States District Court for the District of New Mexico. Appellants counterclaimed against Felco in the New Mexico action and instituted another action against Felco in the United States District Court, District of South Dakota, Western Division. These actions were dismissed with prejudice as per a stipulation between the parties.

Appellants then instituted two separate actions in our state courts seeking injunctions. One action was against appellees Felco, South Dakota Gold Company, Inc., and Johnson Matthey. In this action, appellee Felco filed a motion to dismiss. Additionally, appellee South Dakota Gold Company filed a motion for judgment on the pleadings, an answer, and a counterclaim for injunctive relief and damages. Johnson Matthey was not served with process. The other action was against appellees Gold Rush, GRMCO, Inc., and Confidential Casting Corp. In this action, appellee Gold Rush counterclaimed. Also, appellees Gold Rush, GRMCO, and Confidential Casting moved for dismissal and judgment on the pleadings. Confidential Casting Corp. filed a petition for relief in Bankruptcy requesting an automatic stay of proceedings.

On November 9, 1982, the trial court entered a memorandum decision and granted appellees' motions to dismiss in both actions. Appellants filed a notice of appeal in both actions on November 30, 1982. Appellees Gold Rush and Felco filed notices of review on their dismissed counterclaims on December 10, 1982. We consolidated all of the above state court actions on January 3, 1983. We affirm.

FACTS

In the Black Hills region of our state, appellants Black Hills Jewelry, Thorpe, and Stamper manufacture and sell distinctive, high quality, tri-color gold, grape and leaf designed jewelry. Appellants are separate, independent companies and have no contractual or licensing agreements between them. In 1978, appellee Felco, which is located in New Mexico, began manufacturing and marketing a tri-color gold, grape and leaf designed jewelry designated as "Black Hills Gold Jewelry." Appellee Gold Rush is located in Bismarck, North Dakota, and in 1978 also began marketing tri-color gold, grape and leaf designed jewelry

Page 156

known as "Black Hills Gold Jewelry" and "Black Hills Gold by Gold Rush."

Appellants brought an action in the federal court system under common law and federal law to enjoin appellees Felco and Gold Rush from distributing their products as Black Hills Gold. This action resulted in issuance of an order providing in part:

[I]t is hereby

ORDERED that the Defendants, their servants, agents and employees, and all persons acting by, through or under authority of any of the Defendants are permanently enjoined from advertising, promoting, selling or offering for sale as Black Hills Gold or Black Hills Gold Jewelry, any item which is not manufactured in the Black Hills of South Dakota.

Black Hills Jewelry Mfg. Co. v. LaBelle's, 489 F.Supp. at 763. Additional federal litigation ensued between appellants and appellee Felco which resulted in a stipulation dismissing the actions.

After the federal litigation, appellant Black Hills Jewelry, pursuant to SDCL 37-6-10, registered trademarks with the Secretary of State of South Dakota for "Landstrom's Original Black Hills Gold Creations" and "Original Black Hills Gold Creations by Landstrom's." Additionally, appellant Black Hills Jewelry is now the owner of United States trademark Reg. No. 1,156,298 for "Landstrom's Original Black Hills Gold Creations," with a geographic disclaimer of the words "Black Hills Gold Creations" apart from the trademark as registered. Appellant Thorpe has registered a South Dakota trademark as "Original Black Hills Gold Jewelry."

Appellants next filed separate actions in our state courts alleging: (1) appellee Gold Rush was marketing its products under the title "Gold Rush Gold"; (2) appellee GRMCO, a South Dakota corporation incorporated on July 31, 1981, was assembling in the Black Hills component gold jewelry parts obtained from appellee Confidential Casting Corp. of Rhode Island, and selling the jewelry to appellee Gold Rush for distribution; (3) appellee South Dakota Gold Company, a South Dakota corporation, intended to market jewelry manufactured in the Black Hills under the name "Black Hills Gold"; (4) appellee Felco intended to manufacture gold jewelry in the Black Hills; and (5) appellees' activities were designed to create confusion in the marketplace and reap the benefits of appellants' reputations and goodwill.

Appellants' petitions admit that tri-color gold, grape and leaf designed jewelry is in the public domain as it has been produced, offered for sale, and sold under names such as "Alaska Gold," "Autumn Hill," "Black Hills Gold," "California Gold," "Colorado Gold," "Cripple Creek Gold," "Dakota Gold," "49'er Gold," "Gold Rush Gold," "New Mexico Gold," "Prospector Gold," "Rocky Mountain Gold," and "Superstition Gold." Appellants' petitions also stated: "The words 'Black Hills' being geographical, are not subject to exclusive appropriation as a trademark or trade name under either State or Federal law." Appellee Felco secured a state trademark for "Authentic Black Hills Gold Jewelry." Appellee Stamper does not have a trademark but designates its jewelry as "Stamper's Genuine Black Hills Gold Jewelry."

Appellees Gold Rush and South Dakota Gold Company counterclaimed averring that appellants were monopolizing the trade or commerce of manufacturing and distribution of Black Hills Gold. Appellees also motioned to dismiss appellants'...

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69 practice notes
  • Coll v. First Am. Title Ins. Co., No. 08–2174.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (10th Circuit)
    • April 26, 2011
    ...Court has adopted the Noerr–Pennington test and has applied it to common law torts); Black Hills Jewelry Mfg. Co. v. Felco Jewel Indus., 336 N.W.2d 153, 159 (S.D.1983) (applying Noerr–Pennington to state antitrust claims, but holding it did not apply in the particular circumstances of this ......
  • Salem Grain Co. v. Grain, No. S-16-995.
    • United States
    • Supreme Court of Nebraska
    • September 8, 2017
    ...of Health, 174 N.C. App. 266, 620 S.E.2d 873 (2005) (state antitrust and tort claims); Black Hills Jewelry Mfg. Co. v. Felco Jewel Ind., 336 N.W.2d 153 (S.D. 1983) ; Anderson Development Co. v. Tobias, 116 P.3d 323 (Utah 2005) (state antitrust and tort claims). See, also, Astoria Entertainm......
  • Monat v. State Farm Ins. Co., Docket No. 121122, Calendar No. 1.
    • United States
    • Supreme Court of Michigan
    • April 22, 2004
    ...(1969); Posternack v. American Cas. Co., 421 Pa. 21, 218 A.2d 350 (1966); Black Hills Jewelry Mfg. Co. v. Felco Jewel Industries, Inc., 336 N.W.2d 153 (S.D., 1983); Crowall v. Heritage Mut. Ins. Co., 118 Wis.2d 120, 346 N.W.2d 327 (1984). See also anno.: Mutuality of estoppel as prerequisit......
  • Wheeldon v. Madison, Nos. 14387
    • United States
    • Supreme Court of South Dakota
    • September 6, 1985
    ...See, e.g., Arcon Const. Co. v. S.D. Dep't of Transportation, 365 N.W.2d 866 (S.D.1985); Black Hills Jewelry Mfg. v. Felco Jewel Ind., 336 N.W.2d 153 (S.D.1983); Gottschalk v. S.D. State Real Estate Comm'n, 264 N.W.2d 905 Only under exceptional circumstances that implicate the public interes......
  • Request a trial to view additional results
69 cases
  • Coll v. First Am. Title Ins. Co., No. 08–2174.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (10th Circuit)
    • April 26, 2011
    ...Court has adopted the Noerr–Pennington test and has applied it to common law torts); Black Hills Jewelry Mfg. Co. v. Felco Jewel Indus., 336 N.W.2d 153, 159 (S.D.1983) (applying Noerr–Pennington to state antitrust claims, but holding it did not apply in the particular circumstances of this ......
  • Salem Grain Co. v. Grain, No. S-16-995.
    • United States
    • Supreme Court of Nebraska
    • September 8, 2017
    ...of Health, 174 N.C. App. 266, 620 S.E.2d 873 (2005) (state antitrust and tort claims); Black Hills Jewelry Mfg. Co. v. Felco Jewel Ind., 336 N.W.2d 153 (S.D. 1983) ; Anderson Development Co. v. Tobias, 116 P.3d 323 (Utah 2005) (state antitrust and tort claims). See, also, Astoria Entertainm......
  • Monat v. State Farm Ins. Co., Docket No. 121122, Calendar No. 1.
    • United States
    • Supreme Court of Michigan
    • April 22, 2004
    ...(1969); Posternack v. American Cas. Co., 421 Pa. 21, 218 A.2d 350 (1966); Black Hills Jewelry Mfg. Co. v. Felco Jewel Industries, Inc., 336 N.W.2d 153 (S.D., 1983); Crowall v. Heritage Mut. Ins. Co., 118 Wis.2d 120, 346 N.W.2d 327 (1984). See also anno.: Mutuality of estoppel as prerequisit......
  • Wheeldon v. Madison, Nos. 14387
    • United States
    • Supreme Court of South Dakota
    • September 6, 1985
    ...See, e.g., Arcon Const. Co. v. S.D. Dep't of Transportation, 365 N.W.2d 866 (S.D.1985); Black Hills Jewelry Mfg. v. Felco Jewel Ind., 336 N.W.2d 153 (S.D.1983); Gottschalk v. S.D. State Real Estate Comm'n, 264 N.W.2d 905 Only under exceptional circumstances that implicate the public interes......
  • Request a trial to view additional results

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