Drittel v. Friedman

• Decision Date: 11 May 1945
• Citation: 60 F. Supp. 999
• Parties: DRITTEL v. FRIEDMAN et al.
• Court: U.S. District Court — Southern District of New York

60 F. Supp. 999

DRITTEL v. FRIEDMAN et al.

District Court, S. D. New York.

May 11, 1945.

Morris Kirschstein, of New York City, for plaintiff.

I. Gainsburg, of New York City (Joseph P. Segal, of New York City, of counsel), for defendants.

CONGER, District Judge.

Action by plaintiff against defendants for alleged infringement of a trade mark. The trade mark "Juliana" was registered by plaintiff's predecessor in the United States Patent Office on March 4, 1941. Plaintiff is in the business of manufacturing and selling housecoats and uses the said trade mark by applying it to the housecoats by a label bearing the said trade mark.

Defendants are in the business of manufacturing and selling lingerie, consisting of ladies' night gowns, slips and ensembles.

Although plaintiff alleges that he is a citizen of New Jersey and does business in that state, it does appear from the papers that both parties herein have business places and do business in the City of New York and in interstate commerce.

The defendants have answered herein and generally deny plaintiff's right to use the name "Juliana" as a trade mark and assert that they have the right to so do as against plaintiff. The answer of defendants also contains certain special defenses.

Plaintiff in his complaint asks for an injunction against the defendants and an accounting for profits and damages.

Defendants ask that plaintiff be enjoined from using the trade mark and for damages and an accounting and that the registration by plaintiff of his trade mark be declared invalid.

The issue is over the right to use the name "Juliana". Plaintiff has a registered trade mark and defendants claim to have an unregistered trade mark.

There are two motions here:

(a) Plaintiff has moved to strike the Fifth defense and for summary judgment dismissing the counter claim set forth in Paragraphs 14 to 26 of the Answer, designated "For a Fifth Defense and for a Counter claim."

(b) Defendants have moved for summary judgment dismissing the plaintiff's complaint, and for judgment for the defendants on the defenses and counterclaim in the defendants' answer.

On these motions, there is before me the complaint, answer and reply to defendants' counterclaim. In addition there has also been filed with me by each party affidavits and exhibits. I have also the stenographic minutes of the examination before trial of the plaintiff.

I shall take up first the motion made by the plaintiff since it was first in point of time. On this motion I have also before me the judgment roll of a previous action in the Supreme Court of New York County. This consists of the complaint, answer, testimony, certain exhibits, decision of the trial judge, findings of fact and conclusions of law and judgment.

The point is this: With reference to the fifth special defense and counterclaim, plaintiff in his reply thereto sets up the defense of res judicata. He bases his defense on the following: That in March 1942 defendants' predecessor, Juliana Underwear, Inc., brought suit in the Supreme Court in New York County against plaintiff's predecessor, Julius Drittel, Inc.;¹ that the case was tried and judgment rendered therein on the merits by said Court on or about June 10, 1942, dismissing the complaint; that all the issues presented by defendants' counterclaim and plaintiff's reply have been or could have been determined in said suit and that by reason thereof defendants are barred and estopped from asserting said counterclaim.

It should be noted here that whatever right either of these parties has to the use of this name or trade mark comes through their predecessors.

It might be pertinent here to note that Anna Friedman was one of the organizers of this underwear business since its inception in 1920 and down through the years has been the owner or one of the owners thereof.

It appears from the papers that the judgment in question has not been vacated, set aside or modified in any manner and is still in full force and effect.

I realize that summary judgment should only be granted in very clear cases. I have been chary about granting them in the past.

Feeling this way I have gone over this motion as one might say with a fine tooth comb. I can't find any genuine issue of fact raised by the counterclaim which was not passed on by the Supreme Court of New York County.

The judgment in the Supreme Court of New York still stands. It is a judgment against defendants' predecessor and binds them until it is vacated or set aside. It may not be attacked collaterally.

The State Court had jurisdiction of the parties and the subject matter of the action.

The rule is well settled that a former judgment of a court of competent jurisdiction is final and conclusive between the parties, not only as to the matters actually determined, but as to every other matter which the parties might have litigated and have decided as incidental to or essentially connected with the subject matter of the litigation within the purview of the original action, either as a matter of claim or defense. Griffin v. Long Island R. R. Co. 102 N.Y. 449, 7 N.E. 735.

As I read it the cause of action alleged in the counterclaim is essentially the same as that set forth in the complaint in the State Court. In the last analysis in each, the Juliana Underwear concern is claiming the right as against Drittel or his predecessor to use the name "Juliana" in connection with merchandizing goods.

In each the relief asked for is the same, the enjoining of Drittel and/or his predecessor from using the name. The right to use the name is the sole issue in each. The State Court decided against the underwear concern and in favor of Drittel. I think the chapter is closed on that issue.

I quote from the complaint in the State Court action to indicate just what defendants' predecessor was litigating:

"Sixth:—That by reason of the great care exercised by plaintiff and its predecessors in the manufacturing of ladies' silk and rayon underwear, plaintiff has developed a very substantial good will, and that the name of `Juliana' as applied to Ladies' silk and rayon underwear is associated in the minds of the purchasing public with its business."

"Eighth: * * * and that the defendant, in violation of the exclusive right of plaintiff to use the name `Juliana' and for the purpose of injuring plaintiff herein, and to deceive, mislead and impose upon the public in general, used the name `Juliana' as a name, trade mark and marker."

and

"Ninth: That the said use of `Juliana' by the defendant as a name, as an alleged trade mark, as an alleged trade name and in its business, is not only an infringement of the plaintiff's lawful trade name but will cause irreparable loss and injury to plaintiff."

I now quote Paragraphs 24 and 26 of defendants' counterclaim in this action:

"24. That upon information and belief the plaintiff and plaintiff's predecessor, with knowledge of defendants' rights and intending to secure to the plaintiff and plaintiff's predecessor the benefits and advantages of the business and good will which the defendant and defendants' predecessors have created, and to induce the purchasing public to believe that the ladies' garments sold by the plaintiff were of defendants' origin, the plaintiff and plaintiff's predecessor without the knowledge or consent of the defendants used the said name and trade mark `Juliana' and plaintiff continues such use to the injury of the defendants' good will, name and credit, and also thereby preventing and interfering with the essential and necessary expansion of the defendants' said business and trade."

"26. That by reason of the premises the plaintiff has infringed and continues to infringe on the defendants' rights, their name and trade mark aforesaid and is engaged in unfair competition with the defendants herein, for which the defendants have no adequate remedy at law."

While the verbiage varies a bit, these charging paragraphs in each are essentially alike.

At the trial in the State Court, Anna Friedman for the plaintiff gave testimony that since January 1920 she had been in business either as an individual or with a corporation whose name was Juliana Underwear Co. or Juliana Underwear Co., Inc.; that from that time until the date of the trial the business was that of manufacturing ladies' underwear and that the name "Juliana" was always used in connection with the business and that the business was known to the trade as "Juliana."

The plaintiff in the State Court action introduced testimony of buyers who had dealt with it for many years. They testified that they always knew the plaintiff as "Juliana" and that when they saw the name "Juliana" used in connection with ladies' underwear they always associated it with the plaintiff and plaintiff's goods.

The defendant in the State Court action in its defense introduced testimony of its use of the name "Juliana", which it claimed to have used in connection with its business of manufacturing and selling housecoats since 1939, as a trade mark; that subsequently and in or about September 1940 it applied to the U. S. Patent Office for a registered trade mark of the name "Julia...