HOLLY HILL CITRUS GROWERS'ASS'N v. Holly Hill Fruit Prod.

• Decision Date: 30 January 1935
• Docket Number: No. 7367.,7367.
• Citation: 75 F.2d 13
• Parties: HOLLY HILL CITRUS GROWERS' ASS'N et al. v. HOLLY HILL FRUIT PRODUCTS, Inc.
• Court: U.S. Court of Appeals — Fifth Circuit

75 F.2d 13 (1935)

HOLLY HILL CITRUS GROWERS' ASS'N et al. v. HOLLY HILL FRUIT PRODUCTS, Inc.

No. 7367.

Circuit Court of Appeals, Fifth Circuit.

January 30, 1935.

Robert R. Milam, of Jacksonville, Fla., for appellants.

A. G. Turner and Harold C. Farnsworth, both of Tampa, Fla., for appellee.

Before BRYAN, SIBLEY, and HUTCHESON, Circuit Judges.

HUTCHESON, Circuit Judge.

Looked at as the parties seem to have looked at it, the suit out of which this appeal grows is seen as a bitter, personal contest, conducted acrimoniously and with resulting exacerbation. Looked at simply as a legal controversy, it is seen to be merely a suit over trade-marks and their unfair use. It was heard below on a record made up of testimony taken upon an agreed reference to a master pro hac vice to take testimony and proof without findings of fact and law. It resulted there in a decree fully sustaining plaintiff-appellee's claims, and enjoining appellants from further infringement. Full findings of fact and conclusions of law were made and filed by the District Judge.¹

Appellants vigorously challenge the finding that appellee purchased from Holly Hill Grove & Fruit Company, one of the appellants, its business as a citrus fruit marketing company, its good will as such company, its trade-marks "Holly Hill Groves" encircled by a wreath of holly leaves and berries, and "Holly Hill" printed in large square letters. It challenges, too, the finding that the appellee truly applied for and lawfully obtained registration of the trade-mark "Holly Hill Groves" with the knowledge of the president of appellant, and without objection from that company. Appellants insist that these findings are contrary to the overwhelming weight of the credible oral evidence. They insist, too, that they are so inconsistent with the corporate records of the two companies as to be in effect contradicted by them. It is in attack upon these findings that all of appellants' assignments and contentions have been made. Such marshaling of authorities as there is, such reliance on this and on that case, is in support of this attack on the fact findings. Appellants recognize, as appellee does, that the case at last is one purely of fact; that the principles of law which control its determination have long been clearly settled; and that cited cases are of importance only as guides to and checks upon a correct determination of facts. The determining principles are excellently stated in United States Ozone Co. v. United States Ozone Co. (C. C. A.) 62 F.(2d) 881; there is a good statement of them in Woodward v. White Satin Mills Corporation (C. C. A.) 42 F.(2d) 987, and in Pulitzer Pub. Co. v. Houston Printing Co. (D. C.) 4 F.(2d) 924. Briefly summed up as applied to this case, they are: The law of trade-marks is a part of the law of unfair competition; trade-marks follow; they are incidents and appurtenances to businesses and trades. They have no independent existence; they may not be sold in gross. They attach to and pass with the good will of a business, and, as appurtenant to it, they are freely and easily sold. No particular form of words is necessary to transfer them; they inhere in and pass with good will.

Appellee pitched its case below, it pitches it here, on these principles. It insists that not separate and independent from, but in connection with, and as a part of, the packing and marketing business and the good will which it acquired from appellant Holly Hill Grove & Fruit Company, it acquired the trade-marks in question. It insists that the Grove & Fruit Company may not now undo and unsay what it did and said when creating and launching the Fruit Products Company, that that company was "organized to take over and conduct the fruit marketing business which the Grove & Fruit Company had theretofore conducted under its distinguishing trademarks, `Holly Hill' and `Holly Hill Groves.'" It insists that the attacked findings are overwhelmingly sustained by the oral evidence in the case, given by those who were managing and conducting the business of the two companies when the Fruit Products Company was formed, and the sale of the fruit marketing business was effected. It insists, further, that all of this oral evidence aside, the undisputed facts, that the Holly Hill Grove & Fruit Company promoted, organized, and named the Fruit Products Company "Holly Hill," that it not only advertised that the Fruit Products Company would, and authorized it to, ship under "Holly Hill" brands, but it turned over to it its marketing business and good will, and all of the physical assets it had connected with it, furnish conclusive and irrebuttable proof that the Grove & Fruit Company intended to and did make Fruit Products Company successor to its business and good will, including its trademarks.

We agree with appellee that there is, there can be, no dispute in the purposes for which the appellee, Holly Hill Fruit Products, Inc., was brought into existence and named, by appellant Holly Hill Grove & Fruit Company. It was promoted and organized by that company, primarily an orchard development company, for the purpose of aiding in the development of its properties. It was a part, and an effective part, of its selling machinery. The purpose and scheme of organization was stated to be, it was, to have the Fruit Products Company ultimately owned by those who would buy and own the land, a kind of co-operative through which the products of the groves the fruit company was selling, could be marketed and sold by the owners, whom by this and other inducements they could get to buy. Mr. Wilson, the dominant figure in Holly Hill Grove & Fruit Company and in creating and using the Holly Hill trade-marks, was the dominant figure in promoting and organizing the Holly Hill Fruit Products Company. The managing officers of the two companies were, in the beginning, substantially the same. Advertisements, inspired editorials, circulars, sales literature, all emphasized one fact, that this company had been organized by the parent company to take over the marketing end of its business, and that it would handle and sell fruit from the orchards around Davenport under the Holly Hill labels and brands, not for one year or two years, not while the two companies were under the same management, but as a permanent business. This made good sales talk in handling the groves, and it cannot be doubted that by forming the corporation with the name "Holly Hill," a name having no connection whatever with the place where it was to do business, Davenport, it was intended to represent that it was formed to, and would, sell the product of the Davenport groves for the owners, who should buy them, under the Holly Hill brand. After its organization there was a directors' meeting, at which the investiture of the Holly Hill Fruit Products Company with, the divestiture of the Grove & Fruit Company of the properties and good will of, the fruit marketing business of the parent company, was completed. At that meeting the Fruit Products Company authorized the payment to the Grove & Fruit Company of a cash consideration for, and there was delivered to it as a part of the sale of the business, trade-marks, and good will, all of the labels, the die, and other physical properties the Grove & Fruit Company had been using in connection with the marketing end of its business. Since its organization, the Fruit Products Company, shipping its fruit under Holly Hill marks and brands, some of which it caused to be registered, has built up quite a business under that name. This went on without protest of any kind from appellants, until more than four years after the use had begun, and more than two years after appellant had stopped shipping fruit through appellee.

Appellant makes a good deal out of the fact that nothing is said in the minutes or in any writing about the sale of the trade-marks. We do not think this at all significant when the positive testimony of witnesses, who were in a position to know, that the whole business was taken over, is considered...