Bullock v. SEARS, ROEBUCK AND CO., Civ. No. 5232.

• Decision Date: 05 July 1956
• Docket Number: Civ. No. 5232.
• Citation: 142 F. Supp. 646
• Parties: Giles E. BULLOCK and The E. C. Brown Co., Plaintiffs, v. SEARS, ROEBUCK AND CO., Defendant.
• Court: U.S. District Court — Northern District of New York

142 F. Supp. 646

Giles E. BULLOCK and The E. C. Brown Co., Plaintiffs, v. SEARS, ROEBUCK AND CO., Defendant.

Civ. No. 5232.

United States District Court N. D. New York.

May 18, 1956.

Rehearing Denied July 5, 1956.

F. P. Keiper, Syracuse, N. Y., for plaintiffs.

Hancock, Dorr, Ryan & Shove, Syracuse, N. Y., Frank H. Marks, Chicago, Ill., of counsel, for defendant.

BRENNAN, Chief Judge.

The Court's jurisdiction to entertain a cause of action for unfair competition, joined in the same complaint with an action for patent infringement, is challenged by this motion.

This is a civil action and the jurisdiction of the Court is based upon the patent laws of the United States and the provisions of Title 28 U.S.C.A. § 1338, pars. (a) and (b).

The complaint is in a single count but states two separate but co-mingled claims. (a) A claim against the defendant for the infringement of four patents. (b) A claim against the defendant for unfair competition. Preliminary and final injunctions against continued infringement and unfair competition and an accounting for profits and damages are substantially the items of relief demanded. A brief résumé of the facts appearing before the Court on this motion is made below.

The structures involved in this litigation may be termed "hand sprayers" consisting of a tank designed to hold a liquid which is expelled under pressure through a hose and nozzle and is ordinarily used for the protection of fruit trees, shrubs or flowering plants. The item is in common use, especially in the care of fruit trees. The details of the four patents, which plaintiffs claim have been infringed, do not appear at this time but a recitation thereof indicates that they are fundamentally what may be termed "mechanical patents". They are described in the complaint as follows:

"* * * United States Letters Patents No. 2,105,451, for Pressure Tank; 2,196,054, for Funnel Head with Closure Member for Sprayer Tanks; 2,210,277, for Method of Making Pressure Tanks; and 2,285,010, for Lever Valve * * *."

From the above description and from my understanding of the statements of counsel, the patents involved have to do with the mechanical features of the plaintiffs' sprayer as distinguished from a design patent.

It appears that for a period of years, the defendant, which is a large mercantile establishment, purchased a large number of sprayers manufactured by the plaintiff and sold same through their retail outlets throughout a large area. For the past two years, the defendant has purchased its supply of sprayers from another or different manufacturing source. It is alleged that they are so manufactured as to infringe the four patents above mentioned and are so constructed, labelled, advertised and marked as to simulate the appearance and marking of the plaintiffs' sprayers, thereby resulting in confusion to the prospective purchaser and constituting unfair competition to the plaintiffs' damage.

The parties agree that this Court has jurisdiction of the cause of action for patent infringement and the motion is directed solely to the claim of unfair competition. The burden of the defendant's motion to dismiss is based upon the contention that the claim of unfair competition is unrelated to the patent infringement action.

The dispute here arises by reason of the plaintiffs' contention that the provisions of Title 28 U.S.C.A. § 1338, par. (b) require the denial of the motion. The above section provides that this Court shall have original jurisdiction of a civil action asserting a claim of unfair competition when joined with a substantial and related claim under the patent law. It follows that if this Court has jurisdiction, the patent infringement action must be both substantial and related under the above provisions of the statute.

At this point in the course of the litigation, it would be rather difficult to ascertain whether or not the infringement claim is substantial as the word is used in the statute. The motion is not based upon such a deficiency. No discussion of the requirement is necessary. The problem here is to determine whether or not the claim of unfair competition is so related to the patent infringement claim as to afford this Court jurisdiction under the statute, above referred to.

The district court, having no common law jurisdiction, must find its authority to adjudicate in the statute. It appears to be the general rule that when the jurisdiction of a federal district court over the subject matter is attacked, the burden of showing jurisdiction is upon the party who alleges it. Haymes v. Columbia Pictures Corp., D.C., 16 F.R.D. 118 and cases cited. Pure Oil Co. v. Puritan Oil Co., 2 Cir., 127 F. 2d 6 at page 8. Ridder Bros. v. Blethen, 9 Cir., 142 F.2d 395 at page 398. If the unfair competition cause of action may be entertained, the relationship, above referred to, must appear or be established. Most of the reported cases dealing with this subject indicate that the question most often arises after the receipt of evidence or upon the conclusion of the case. This is not the situation here and the plaintiffs appear to be content to rest their contention upon the proceedings had to date.

It is settled beyond dispute that a related claim as used in the statute refers to one which may be proved by substantially the same facts. This test was stated in so many words in Armstrong Paint & Varnish Co. v. NuEnamel Corp., 305 U.S. 315, 59 S.Ct. 191, 83 L.Ed. 195, which followed the decision of Hurn v. Oursler, 289 U.S. 238, 53 S.Ct. 586, 77 L.Ed. 1148. Section 1338(b) gives statutory authority to the rule. (See reviser's note). Cases decided thereafter impose the same test. Kaplan v. Helenhart Novelty Corp., 2 Cir., 182 F.2d 311 at page 312, Strey v. Devine's, Inc., 7 Cir., 217 F.2d 187. Rockwell Mfg. Co. v. Evans Enterprises, D.C., 95 F.Supp. 431. As I construe the cases, this does not mean that the evidence in both claims must be identical and in the application of the statute the fact, that some of the evidence offered in support of one claim is not necessary to the establishment of the other, is not fatal to the Court's jurisdiction. Jurisdiction exists if the unfair competition claim would require a duplication of a substantial and essential part of the evidence necessarily offered in the patent infringement case. Conversely, there is no jurisdiction where the plaintiffs' right to recover rests "upon the different facts essential to their establishment". Kaplan v. Helenhart Novelty Corp., supra.

Lengthy briefs have been filed by the parties upon this motion and it is unnecessary to discuss the numerous cases cited therein. By reason of the test imposed by the decisions, above referred to, it is evidence that the jurisdiction of the Court must depend upon the facts in each case.

The cases involving the question of jurisdiction where an unfair competition claim is joined with that of trademark infringement are hardly authorities here. Our own Court of Appeals has stated that trademark infringement is in itself a form of unfair competition. American Auto Ass'n v. Spiegel, 2 Cir., 205...