Emerson Electric Mfg. Co. v. Emerson Radio & P. Corp.

• Decision Date: 04 May 1956
• Docket Number: Civ. A. No. 747-53.
• Citation: 140 F. Supp. 588,109 USPQ 310
• Parties: The EMERSON ELECTRIC MANUFACTURING COMPANY, a corporation, Plaintiff, v. EMERSON RADIO AND PHONOGRAPH CORPORATION, a corporation, Defendant.
• Court: U.S. District Court — District of New Jersey

140 F. Supp. 588

109 USPQ 310

The EMERSON ELECTRIC MANUFACTURING COMPANY, a corporation, Plaintiff, v. EMERSON RADIO AND PHONOGRAPH CORPORATION, a corporation, Defendant.

Civ. A. No. 747-53.

United States District Court D. New Jersey.

May 4, 1956.

Harry B. Rook, Newark, N. J., Kingsland, Rogers & Ezell, St. Louis, Mo., by Edmund C. Rogers, St. Louis, Mo., of counsel, for plaintiff.

Harkavy & Lieb, by Abraham I. Harkavy, Newark, N. J., Paul, Weiss, Rifkind, Wharton & Garrison, by Edward N. Costikyan, New York City, of counsel, for defendant.

HARTSHORNE, District Judge.

This case raises a problem of judicial administration — where the proper zeal of counsel for their clients has engaged several Federal Courts in the consideration of the same, and closely similar, issues between the same, and closely similar, parties. Since Federal litigation is increasing much faster than is the number of Federal Judges, these Courts, in fairness to litigants generally, can not permit their time to be monopolized unnecessarily by a single set of litigants. In short, the Courts themselves should prevent unnecessary litigation, according to the criterion of, not the mere "rule of thumb" priority in time, but of where the relief sought can be "`more expeditiously and effectively afforded'" under the facts. Kerotest Mfg. Co. v. C-O-Two Fire Equipment Co., 3 Cir., 1951, 189 F.2d 31, 35, affirmed 1952, 342 U.S. 180, 72 S.Ct. 219, 96 L.Ed. 200.

We turn to the facts, which are found to be as follows:

In September 1953 plaintiff Emerson Electric Manufacturing Company of St. Louis — Emerson St. Louis — brought suit in the District of New Jersey against defendant Emerson Radio and Phonograph Company of New York — Emerson New York — charging trade-mark infringement and unfair competition, in Emerson New York's use of the name "Emerson" in connection with the sale of unit air conditioners and otherwise. About a year and a half later, in March 1955, Emerson St. Louis commenced suit in the United States District Court for the Eastern District of Missouri, Eastern Division, against Emerson New York and Broadwell & Company, the distributor of Emerson New York in that area, charging them both with similar trade-mark infringement and unfair competition. Within a month Emerson New York, in the Missouri suit, successfully moved to quash service against it, and Broadwell's motion to have the action against it transferred to New Jersey was denied. Thereafter, in the New Jersey suit various proceedings were taken, such as the filing of an amended complaint by Emerson St. Louis, of a counterclaim shortly thereafter by Emerson New York, the taking of certain depositions, the pre-trial of the cause, and otherwise. On March 22, 1956, the Missouri Court set June 18th for trial. The very next day, on the call of a lengthy trial calendar, the New Jersey Court, over the objection of Emerson New York, set the trial for the coming fall. (The temporary stay against Emerson St. Louis, granted in new Jersey, would seem immaterial, since it was promptly dissolved without argument.)

Emerson St. Louis asserts that the issues in the two suits differ, particularly that as to unfair competition. Emerson New York asserts the contrary. These are, however, mere assertions, with no factual showing either way, save that, as one element of unfair competition, Emerson New York has initiated a nation-wide advertising campaign, claiming its right to the use of the disputed word "Emerson", while Broadwell has initiated a similar campaign in Missouri, for which Emerson New York may be partially responsible. So much for the material facts.

It will aid in solving this problem of judicial administration if we bear in mind the general principles already laid down by the courts in that regard:

(1) Duplicate litigation should be avoided for the benefit, not so much of the courts, as of litigants generally. Crosley Corp. v. Hazeltine Corp., 3 Cir., 1941, 122 F.2d 925, certiorari denied 315 U.S. 813, 62 S.Ct. 798, 86 L.Ed. 1211; Kerotest, supra.

(2) As between coordinate courts of the same sovereignty, involved in duplicate litigation, that prior in time should have precedence, assuming that other factors, such as convenience of the parties, expedition and effectiveness of judgment, do not countervail. Crosley, supra; Kerotest, supra. However, due to statutory restraint, or that by comity, courts of different sovereignties are not controlled by the above rules, discretionary though they be. Crosley, supra.

(3) But where either the parties are different, or the issues are different, the litigation is then not duplicate, so that the above principles, while to be borne in mind, are not controlling. Triangle Conduit & Cable Co., Inc., v. National Electric Products Corp., 3 Cir., 1943, 138 F.2d 46.

Applying the above principles to the above facts, we note at once that the parties to the two suits now being considered differ. Emerson New York is the sole defendant in the prior...