Gardner v. Clark Oil & Refining Corporation

• Decision Date: 25 October 1974
• Docket Number: Civ. A. No. 74-C-452.
• Citation: 383 F. Supp. 151
• Parties: Peter H. GARDNER, Petitioner Defendant, v. CLARK OIL & REFINING CORPORATION, a Wisconsin corporation, Respondent-Plaintiff.
• Court: U.S. District Court — Eastern District of Wisconsin

383 F. Supp. 151

Peter H. GARDNER, Petitioner Defendant, v. CLARK OIL & REFINING CORPORATION, a Wisconsin corporation, Respondent-Plaintiff.

Civ. A. No. 74-C-452.

United States District Court, E. D. Wisconsin.

October 25, 1974.

William E. Glassner, Jr., Milwaukee, Wis., for petitioner-defendant.

Robert V. Abendroth, Milwaukee, Wis., for respondent-plaintiff.

DECISION AND ORDER

REYNOLDS, Chief Judge.

On October 3, 1974, Clark Oil & Refining Corporation commenced this action in the Circuit Court of Waukesha County, Wisconsin, to enjoin Peter H. Gardner, a Clark dealer, from continued alleged infringement of Clark's state trademarks in violation of Section 132.02 (3), Wisconsin Statutes. On October 4, 1974, petitioner Gardner removed the action to this court. The matter presently before this court is Clark's motion to remand the action to the Circuit Court of Waukesha County. This court concludes that Clark's motion to remand must be granted.

Section 1441(b) of Title 28 of United States Code provides that an action "arising under the Constitution, treaties or laws of the United States" may be removed regardless of the citizenship or residence of the parties. When removal jurisdiction is claimed over such an action, the "right or immunity created by the Constitution or laws of the United States must be an element, and an essential one, of the plaintiff's cause of action." Gully v. First National Bank in Meridan, 299 U.S. 109, 57 S.Ct. 96, 81 L.Ed. 70 (1936). The presence of the federal question must be found in the state complaint unaided by the petition for removal. Columbia Pictures Corp. v. Towne Theatre Corp., 282 F.Supp. 467 (E.D. Wis.1968); Mercury Record Productions, Inc. v. Economic Consultants, Inc., 360 F.Supp. 129 (E.D.Wis.1973); 1A Moore's Federal Practice, ¶ 0.160 at p. 182. Clark's state court complaint alleges a single cause of action for infringement of a trademark created by state law, § 132.02(3) of the Wisconsin Statutes, and seeks the injunctive remedy expressly provided by § 132.02(3)¹. No federal claim appears on its face. Thus the action is not removable under the standard laid down in Gully, supra.

An exception to the requirement that the federal question appear on the face of the complaint is found where the state law giving rise to the action has been preempted by federal law. Fischer v. Holiday Inn of Rhinelander, Inc., 375 F.Supp. 1351 (W.D. Wis. 1973); Fay v. American Cystoscope Makers, 98 F.Supp. 278 (S.D.N.Y. 1951); 1A Moore's Federal Practice, ¶ 0.160 at p. 189. Gardner contends that in light of the federal registration of Clark's trademarks pursuant to the Lanham Act, 15 U.S.C. § 1051 et seq., the state action necessarily gives rise to a federal question over which federal courts have original jurisdiction under 28 U.S.C. § 1338.² Essentially petitioner attempts to bring himself within the preemption exception by contending that the federal law governing trademarks is at the heart of the controversy and preempts the state statutes governing trademarks. However the Lanham Act, 15 U.S.C. § 1051 et seq., does not preempt reliance on state trademark laws. M & D Simon Co. v. R. H. Macy & Co., 152 F.Supp. 212 (S.D.N.Y.1957); Application of State of New York, 362 F.Supp. 922 (S.D.N.Y.1973). In Fischer v. Holiday Inn of Rhinelander, Inc., 375 F.Supp. 1351 (W.D.Wis.1973), plaintiffs brought and action in the Wisconsin Circuit Court seeking injunctive relief under the Wisconsin trademark statutes and defendant removed the action to federal court. In remanding the action to state court, Judge Doyle specifically held that the Lanham Act did not preempt Wisconsin law of trademark infringement:

"§ 43(a) of the Lanham Trademark Act, 15 U.S.C. § 1125(a), created a federal tort of unfair competition. The Court of Appeals for this circuit has held that § 1125(a) does not pre-empt the state law of unfair competition and trademark infringement. City Messenger of Hollywood v. City Bonded Mess. Serv., 254 F.2d 531, 533-534 (7th Cir. 1958); Radio Shack Corporation v. Radio Shack, 180 F.2d 200, 202 (7th Cir. 1950). Therefore, I conclude that this action cannot be removed under the preemption exception * * *." 375 F. Supp. at 1353.

Therefore petitioner cannot rely on the preemption exception and must establish a federal question within the unaided allegations of the state complaint, which, as noted above, he has not done.

This court also finds irrelevant the fact that the allegations of Clark's complaint would in all probability give rise to a cause of action under the Lanham Act. Where plaintiff's claim gives rise to a cause of action under both a federal ground and a state ground, "plaintiff is entitled to ignore the federal question and pitch his claim on the state ground." 1A Moore's Federal Practice, ¶ 0.160 at p. 185; Peterson v. Brotherhood of Local Firemen & Eng., 272 F.2d 115 (7th Cir. 1959). Plaintiff is master of his claim and his choice of state, as opposed to federal law as the basis of his claim is to be respected. It has been so held in numerous cases dealing with the precise issues involved in this case. J. H. Smith Co. v. Jordan Marsh Co., 161 F.Supp. 659 (D.Mass.1958); M & D Simon Co., v. R. H. Macy Co., 152 F.Supp. 212 (S.D. N.Y.1957); Cue Publishing Co. v. Colgate-Palmolive Co., 233 F.Supp. 443 (S.D.N.Y.1964); Fischer v. Holiday Inn of Rhinelander, Inc., supra; Fluidless Non-Tact Lenses v. Klear Vision Con. Lens. Sp., 158 F.Supp. 145 (S.D.N.Y. 1958). As succinctly stated in J. H. Smith Co. v. Jordan Marsh Co., 161 F. Supp. 659, 660 (D.Mass.1958).

"* * * Assuming, however, that the facts set forth would constitute a cause of action under 43(a), the fact remains that plaintiff clearly has elected not to assert any rights it may have under the Lanham Act, but expressly relies only on its rights under common law and the Massachusetts statutes. A case to be removable must set forth a claim arising under the Federal law. It is not enough that plaintiff might on the facts have asserted a Federal claim when he clearly has chosen not to do so."

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