California Apparel Creators v. Wieder of California

• Decision Date: 16 May 1946
• Citation: 68 F. Supp. 499
• Parties: CALIFORNIA APPAREL CREATORS et al. v. WIEDER OF CALIFORNIA, Inc., et al.
• Court: U.S. District Court — Southern District of New York

68 F. Supp. 499

CALIFORNIA APPAREL CREATORS et al. v. WIEDER OF CALIFORNIA, Inc., et al.

District Court, S. D. New York.

May 16, 1946.

Max Feingold, of Los Angeles, Cal., and Ezra Grossman, of New York City, for plaintiffs.

Katz & Heimowitz, of New York City, for Wieder of California, Inc.

Henry Schuman, of New York City, for California Sportswear, Inc.

Lauterstein, Spiller, Bergerman & Dannett, of New York City (Leon Lauterstein, Lincoln W. Lauterstein, and Richard L. Freund, all of New York City, of counsel), for Cortley Shirt Co., Inc.

Robert W. Kenny, Atty. Gen., of California, and Hartwell H. Linney, Chief

Asst. Atty. Gen., amicus curiae in behalf of plaintiffs.

LEIBELL, District Judge.

This action for unfair competition was commenced December 4, 1945, by seventy-six named plaintiffs, manufacturers of various types of men's, women's and children's wearing apparel and accessories, and all having their place of business in the State of California, against three named defendants, viz., Wieder of California, Inc., California Sportswear, Inc., and the Cortley Shirt Company, Inc. (the last labeling some of its articles "Californian Sportswear"), manufacturers of wearing apparel and having their place of business in New York. The first named plaintiff appears to be a non-profit membership corporation, organized in California, of which seventeen associations of wearing apparel manufacturers and their respective members are alleged to be members. The complaint states:

"II. That the party-plaintiffs are manufacturers of various types of men's, women's and children's wearing apparel; that the plaintiffs all have their factories and places of business within the State of California; that in this action the party-plaintiffs are appearing and prosecuting this action not only for themselves but for all other manufacturers of men's, women's and children's wearing apparel, whose places of manufacture are located in the State of California, and who would be similarly affected as party-plaintiffs when, by the result of this action, and as to whom there is a common question of law and fact affecting their rights in the same manner as the rights of the party-plaintiffs, would be affected and for whom the party-plaintiffs seek the same common relief as the party-plaintiffs seek herein for themselves. Throughout this pleading and all subsequent pleadings in this action, wherever the word or phrase `plaintiffs' is used it is intended that such word or phrase shall indicate not only the names of party-plaintiffs herein, but all other manufacturers of men's, women's and children's wearing apparel who manufacture their products within the State of California."

"XII. Plaintiff, California Apparel Creators, is a non-profit corporation, duly organized under the laws of the State of California, and of which corporation seventeen associations of wearing apparel manufacturers and their respective members are members. The above associations are composed in the aggregate of hundreds of firms manufacturing wearing apparel within the metropolitan area of the County of Los Angeles, California; that the member firms sell wearing apparel throughout the entire United States, and indicate in their advertising, labels and by other means of publicity, that the origin of their products is the State of California; that California Apparel Creators has spent and is spending throughout the United States many thousands of dollars per year in magazine and trade advertising, store displays, and other media of communications, for the purpose of creating additional consumer demand for wearing apparel manufactured and styled in California by plaintiffs."

It is the contention of plaintiffs that this is a proper class action under Rule 23(a) (3), Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c. I doubt that it is even a spurious class action. Only some of the named plaintiffs are engaged in the business of manufacturing and distributing the same or similar types of styles of men's, women's and children's wearing apparel as are manufactured or sold by the defendants. The defendant, Wieder of California, Inc., manufactures ladies' coats and suits; California Sportswear, Inc., manufactures and sells women's sportswear and beachwear, consisting of skirts made out of rayon and woolen fabrics, and slacks, halters, midriffs and shorts made out of rayon and cotton fabrics; Cortley Shirt Company, Inc., manufactures men's and boy's wearing apparel, principally sportswear. This is an action for unfair competition.

In his affidavit of January 23, 1946, Samuel Wieder discusses the wide variety of articles manufactured or sold by the various plaintiffs. Wieder states:

"In truth, it can be said that many of the plaintiffs in this action are manufacturing and selling goods as different from defendant's as ski togs are from cotton skirts. I have been advised that to establish a case of unfair competition, there must be shown a wrongful, fraudulent and actual intention to deceive the public by causing it to believe that the goods of one party are the goods of another. While on this subject, let us look into the identity of the respective plaintiffs herein. Examination of this heterogeneous group will show that they have no community of interest herein, whatever. Many of the firms, forming the main plaintiffs are not even in the same trade with the defendant. Their enterprises range from corsets and brassieres, garter belts and girdles to neckwear, costume jewelry and millinery. It is only logical to conclude therefore, that a class action such as this is, cannot be maintained, if only for the reason, that the firms constituting said plaintiffs have a widely divergent business background, and not in any way identifiable with that of the defendant."

An examination of the 1946 booklet published by California Apparel Creators (a plaintiff) and Associated Apparel Manufacturers of Los Angeles confirms that statement.

There is a serious doubt as to the truth of the allegations concerning the similarity of the businesses conducted by many of the plaintiffs to that of the named defendants, but since I propose to base my decision of this case on certain broad fundamental legal principles I need not further consider the question of the propriety of a class action herein. It may be that at least some of the plaintiffs may join to bring this action under Rule 20(a), F.R.C.P., as was done before that Rule in Pillsbury-Washburn Flour-Mills Co. v. Eagle, 7 Cir., 86 F. 608, 41 L.R.A. 162, and Harvey v. American Coal Co., 7 Cir., 50 F.2d 832. For a discussion of Rule 23(a)(3) and Rule 20, see Oppenheimer v. F. J. Young & Co., 2 Cir., 144 F.2d 387 and Moore's Federal Practice.

The long list of plaintiffs reveals that in California, as elsewhere, no one company or corporation has any right to the exclusive use of the word "Sportswear" in its business name or title. Twelve of the plaintiffs have thus used the word "Sportswear." There does not seem to have been any limitation in California on the use of the adjective "California" in a business name; three of the plaintiffs so use it. The same is true as to the phrase "Of California"; nine of the plaintiffs use that phrase in their business name or title. The 1946 booklet of "California Spring Fashions," issued by California Apparel Creators (one of the plaintiffs) and Associated Apparel Manufacturers of Los Angeles, contains dozens of names of other business concerns using in some way or other the word "California" in their business title (Ex. H annexed to Samuel Wieder's affidavit of January 23, 1946). Apparently there is no complaint among the plaintiffs themselves over the use of the word "California" or the phrase "Of California" in their business names, but they do complain if any manufacturer of garments, wearing apparel or accessories located outside the boundaries of the State of California makes any such use.

The present suit is brought against the three named defendants, manufacturers located in New York City and against twenty "Doe" defendants listed as "One Doe," "Two Doe," etc., down to and inclusive of "Twenty Doe." No one of the "Does" was ever served either under the fictitious designation or under the true name of the prospective defendant. Two of the named defendants have the word "California" in their business name; the third, Cortley Shirt Company, Inc., uses the words "Californian Sportswear" on its garment label. As to the labels, none of the plaintiffs can claim any exclusive right to the use of a palm tree, the sun, a cactus plant, or a mission church either on a label or in its advertising. In the many California labels attached to Exhibit "C" annexed to the complaint ten show palm trees, three the cactus, two the sun, one a mission church. Of course, other states of the Union have palm trees; some have cactus plants; a few, mission churches; and on all of them the sun shines at some season of the year, with varying degrees of brilliancy and healthfulness. California has all of these, but that would not prevent manufacturers in other states from using some or all of them on a label (Wieder's label shows all) if no confusion resulted from a general similarity.

Wieder of California, Inc., has been incorporated since June 26, 1944; Cortley Shirt Company, Inc., was organized in May 1923 and has been using the brand or style name "Californian" since February 1938. California Sportswear, Inc., was organized as a corporation under the laws of New York, July 23, 1940.

The complaint prays for a preliminary and a permanent injunction against the defendants' use of the words "California" and "Californian" in their titles, labels, or advertising; for an accounting; and for damages in the sum of one million dollars.

The broad and basic question in this case, as Mr. Cole states in a reply affidavit for plaintiffs, rests on the use of the word "California." Do persons engaged in manufacturing...