Dubil v. Rayford Camp & Co.

• Decision Date: 18 October 1950
• Docket Number: No. 12403.,12403.
• Parties: DUBIL et al. v. RAYFORD CAMP & CO. et al.
• Court: U.S. Court of Appeals — Ninth Circuit

184 F.2d 899 (1950)

DUBIL et al. v. RAYFORD CAMP & CO. et al.

No. 12403.

United States Court of Appeals Ninth Circuit.

October 18, 1950.

C. G. Stratton, Los Angeles, Cal., for appellants.

Harris, Kiech, Foster & Harris, Ford Harris Jr. and Warren L. Kern, all of Los Angeles, Cal. (George M. Breslin, Bodkin, Breslin & Luddy, all of Los Angeles, Cal., of counsel), for appellee.

Collins Mason, Mason & Graham, Philip Subkow, Fulwider & Mattingly, Hazard & Miller, C. Lauren Maltby, John Flam, Alan Franklin, Wm. R. Litzenberg and R. S. Berry, all of Los Angeles, Cal., amici curiæ.

Before BIGGS and STEPHENS, Circuit Judges, and DRIVER, District Judge.^*

BIGGS, Circuit Judge.

Dubil, Hubik and Shores, the appellants, brought suit in the court below under R. S. § 4921, as amended by the Act of August 1, 1946, § 1, 60 Stat. 778, 35 U.S.C.A. § 70, alleging the infringement by Rayford Camp¹ of Patent No. 2,052,221 for a "Method of Preparing Fresh Meat" issued to Dubil and Hubik. Shores was a licensee under the patent. As a second and further cause of action against Camp the appellants asserted that he was guilty of unfair competition in simulating a trademark label "Chip Steaks" and using it for the sale of steaks, that trade-mark having been registered by Hubik with the Secretary of State of California under Section 14230, California Business and Professions Code.

Rayford Camp filed an answer and a counterclaim. The counterclaim asserted that Hubik's trade-mark "Chip Steaks" had been illegally granted by the State of California and prayed for its cancellation. After extended hearings the court below held that the disclosures of the patent had been anticipated by the prior art² and that Hubik and Dubil had made representations to the Patent Office which were knowingly false and that the patent was invalid for this reason as well. The court concluded also that the charge of unfair competition had not been sustained, that Camp's counterclaim to cancel Hubik's state trade-mark should be dismissed and, finally that Camp should receive a sum of money³ "as attorney fees and costs" against the appellants. See D.C., 86 F.Supp. 570-573, Finding of Fact XXXII and Conclusion of Law XIV (originals). In the final decree it was ordered that Camp should recover from the appellants "jointly and severally" attorney fees in the amount of $15,000. Judgment was entered and Dubil, Hubik and Shores have appealed.

Though the appeal in form is from the judgment in its entirety the appellants have made it clear by their briefs and oral argument that the appeal is pressed in respect to two points only: (1) that the award of $15,000 was not authorized by law, and, in any event, was excessive; and (2) that the lower court lacked jurisdiction to try the claims of state trade-mark infringement and unfair competition.⁴ We consider the second point decisive in the instant appeal for reasons which will hereinafter appear.

The leading case on the subject of joinder of federal and non-federal causes of action is, of course, Hurn v. Oursler, 289 U. S. 238, at pages 245, 246, 53 S.Ct. 586 at page 589, 77 L.Ed. 1148. Mr. Justice Sutherland stated: "But the rule of joinder of causes of action does not go so far as to permit a federal court to assume jurisdiction of a separate and distinct nonfederal cause of action because it is joined in the same complaint with a federal cause of action. The distinction to be observed is between a case where two distinct grounds in support of a single cause of action are alleged, one only of which presents a federal question, and a case where two separate and distinct causes of action are alleged, one only of which is federal in character. In the former, where the federal question averred is not plainly wanting in substance, the federal court, even though the federal ground be not established, may nevertheless retain and dispose of the case upon the nonfederal ground; in the latter it may not do so upon the nonfederal cause of action."

The cause of action based on trade-mark infringement and unfair competition arises out of the law of California. This fact is indecisive. What is decisive is that there are two separate and distinct causes of action, one federal, one state, and the grounds, the operative facts, in support of each are not the same but are very different. The patent contains only "method" claims. The fact that Camp allegedly simulated Hubik's trade-mark to sell his, Camp's, steaks, bears no relation to the alleged patent infringement. The instant case therefore falls within the second category designated by Mr. Justice Sutherland in Hurn v. Oursler. In the case at bar the federal and non-federal causes of action may not be joined. We so interpret the law. The court below, therefore, was in error in entering judgment upon the non-federal cause of action, the cause of action based on trade-mark infringement and unfair competition, for it was without jurisdiction to do so.

Upon examination of the record⁵ it is apparent that in allowing attorney fees in the sum of $15,000 the court based its conclusions as to reasonableness of amount upon the time expended by Camp's counsel not only in connection with the patent infringement action but with the trade-mark and unfair competition action as well. The statute in pertinent part provides that "The court may in its discretion award reasonable attorney's fees to the prevailing party upon the entry of judgment on any patent case." 35 U.S.C.A. § 70. It is unnecessary to decide in the instant case whether an award of a reasonable attorney's fee made in a case in which an action on a patent has been properly joined with another cause of action (one for unfair competition, for example) must be based solely on the work done by the attorney in connection with the cause of action arising on the patent or whether the fee may be enlarged by virtue of the work done by the attorney in connection with the other cause of action. In this respect note the phrase of the statute "* * * upon the entry of judgment on any patent case." But it is clear, we think, that an award of an attorney fee may not be made in connection with a cause of action over which the court had no jurisdiction. It follows that that portion of the judgment awarding the fee must be set aside and the court below must redetermine what are reasonable attorney fees.

Other points remain for discussion. In its opinion in the instant case, 86 F. Supp. at page 573, referring to a previous suit, No. 274-B Civil, brought in the court below by Dubil and Hubik against other defendants, Landau and Levy, charging them with the infringement of Patent No. 2,052,221, the court was of the view that the case (No. 274-B Civil) had been disposed of by "a consent decree" and concluded that such a decree would not be controlling in determining the validity of the patent in the instant suit. No doctrine of res judicata or estoppel would be applicable in the instant case in any event but the trial court in determining whether or not the appellants had a "justifiable cause of filing or prosecuting this action", should consider the fact that the suit referred to was disposed of by a consent decree only as to Landau. See Findings of Fact XV and XXXII. As to Levy there seems to have been an actual adjudication of the suit on the merits. We do not, of course, deem this to be a controlling fact but it is one of the circumstances to be considered with all other pertinent data by the court below.

In Finding of Fact XXXII the court below found not only that the appellants did not have justifiable cause for prosecuting the action but also that the trial of the action was unreasonably prolonged by the appellants. "For all of which", said the court, Camp was entitled...