Chappell v. Goltsman

• Decision Date: 24 July 1952
• Docket Number: No. 14040.,14040.
• Citation: 197 F.2d 837
• Parties: CHAPPELL et al. v. GOLTSMAN et al. GOLTSMAN et al. v. CHAPPELL et al.
• Court: U.S. Court of Appeals — Fifth Circuit

197 F.2d 837 (1952)

CHAPPELL et al. v. GOLTSMAN et al. GOLTSMAN et al. v. CHAPPELL et al.

No. 14040.

United States Court of Appeals Fifth Circuit.

June 30, 1952.

Rehearing Denied July 24, 1952.

Henry L. Jennings, Francis H. Hare, Birmingham, Ala., James J. Carter, Montgomery, Ala., for appellants.

John C. Godbold, Truman Hobbs, Montgomery, Ala., Beekman Aitken, New York City, for appellees.

Before HUTCHESON, Chief Judge, and RUSSELL and STRUM, Circuit Judges.

HUTCHESON, Chief Judge.

Alleging that the use by defendants of the name "Bama" in connection with a blackberry wine bottled and sold by them infringed plaintiffs' trade-mark, "Bama" which they had registered in 1926, and had used for more than 20 years, as their trade-mark for products, blackberry jams and jellies, plaintiffs, on October 17, 1949, brought this suit for an injunction, for damages, and for an accounting of profits.

As appellants state it in their brief: "The gist of the complaint is that defendants, who began the bottling and sale of blackberry wine in the Fall of 1948, chose as their trade-mark the word Bama which word plaintiffs had employed to designate their blackberry jams, jellies and preserves since 1924, thereby leading purchasers of plaintiffs' products to think that plaintiffs had gone in the wine business or that defendants' business was in some way connected with or sponsored by plaintiffs, thereby damaging plaintiffs' business and reputation and in violation of the principle that a name like a reputation and a face is the symbol of its owner and another can only wear it as a mask."

Though the answer went into greater detail,¹ its gist was a denial of all of plaintiffs' charges of unfair competition and of confusion of product and source, and the affirmative defenses that "Bama", a contraction of Alabama was a geographic name and not subject to exclusive appropriation as a trade-mark and that being at best a weak mark, plaintiffs are entitled to protection of it only for the goods they sell.

There was a counter claim² for cancellation of plaintiffs' registration because invalid as the nickname for Alabama, and for damages against plaintiffs for damage caused to defendants by plaintiffs' claim to exclusive use of the word "Bama".

The suit dismissed by the district judge³ on February 1, 1950, on motion of defendants without any hearing on the merits, and the cause appealed to this court, the judgment of dismissal was reversed and the cause remanded for a trial on the merits. This court, pointing out in its opinion⁴ that the case was essentially a fact case and that it could not be properly determined without a full hearing on the issues tendered by the complaint and answer, sent the case back specifically for such a hearing.

Tried again, this time on the facts, each side being afforded full opportunity to offer, and offering, many witnesses and much documentary evidence, there was again a judgment for defendants based on a careful opinion,⁵ followed by full and complete findings of fact and conclusions of law. These fully exonerated defendants of the charges of deliberate and intentional pirating of plaintiffs' trade-mark, and of unfair competition of any kind. They also found that there was no basis in the evidence for the claim that substantial⁶ confusion or damage had resulted, or would result, from the complained of use by defendants of the name Bama in the sale of their wine, and that no case for equitable relief had been made out. From the judgment denying plaintiffs the relief prayed for by them, plaintiffs have appealed, while defendants have appealed from so much of it as denied their counter claim.

Here each side presenting its argument in a fashion calculated to generate more heat than light, sounds its trumpet furiously on both fact and law, and, like a very Orlando Furioso advances to the fray as though the very thought that it might be wrong, the other side right, was a betrayal of right reason.

This is an unreasonable view. The law is not in confusion. The many cases each side puts forward can in the main be reconciled. In addition, the law of this case was settled on the first appeal, and we have no disposition to depart from or question the holding there made, that the case was not one to be determined on summary judgment and as matter of law, but to be heard as a fact case and determined by the trier upon and after hearing the facts. The law for this case having been thus settled by and in this court, it will serve no useful purpose for us to discuss and analyze the cited cases⁷ or to enter upon a general disquisition as to the applicable law, especially since we find ourselves in general agreement with the statement of it made by the district judge in his opinion. Now that, under the law of the case as laid down in this court on the former appeal, the case has been tried by the district judge and he has made findings, our function, and our sole function, is to carefully examine the record, the findings, and the attacks made upon them, and, in the light of that examination, determine whether, as claimed by appellants, the findings are, or as claimed by appellees, they are not, clearly erroneous.

We have made such a study of the findings and record, and, as a result thereof, we are of the clear opinion that the findings may not be set aside as clearly erroneous. Indeed, we are in no doubt that while there is evidence which would support findings to the contrary of those made, the record furnishes ample support for the findings and conclusions on which the judgment is based. We are of the opinion, though, that, in the interest of making assurance doubly sure that no confusion resulting in injury to plaintiffs will occur from the use of the name "Bama", the judgment should be modified by adding a requirement that defendants strike from their labels, wherever it appears, and cease and desist from the use of, the word "Brand". As so modified, the judgment will be affirmed.

Modified and affirmed.

STRUM, Circuit Judge (dissenting).

While I agree that appellees should be required to strike the word "Brand" from their labels, I am also of the opinion that this relief is not broad enough.

It is clear to me that in the coloring, lettering and general format of their label, appellees deliberately contrived to simulate the general appearance of appellants' label and thus subtly create the impression upon the ordinary, casual shopper that their blackberry wine is produced by the same firm which produces "Bama" blackberry jam, jelly, and other products marketed in glass jars by appellants.

The label used by appellees is calculated to, and has, misled substantial numbers of shoppers, of which there is convincing proof. A visual comparison of the two labels confirms their tendency to confuse. The ordinary shopper identifies a product by the color and general...