International Allied PT Ass'n v. Master P. Union

• Decision Date: 02 August 1940
• Docket Number: No. 162.,162.
• Parties: INTERNATIONAL ALLIED PRINTING TRADES ASS'N et al. v. MASTER PRINTERS UNION OF NEW JERSEY.
• Court: U.S. District Court — District of New Jersey

34 F. Supp. 178

INTERNATIONAL ALLIED PRINTING TRADES ASS'N et al. v. MASTER PRINTERS UNION OF NEW JERSEY.

No. 162.

District Court, D. New Jersey.

August 2, 1940.

Meyer M. Semel, of Newark, N. J., for complainants.

Morris G. Fredman, of Jersey City, N. J., for defendant.

WALKER, District Judge.

Findings of Fact

This matter comes before the Court, without a jury, and the following are the facts found specially:¹

1. International Allied Printing Trades Association (hereinafter called "Allied") is a voluntary unincorporated association or union of working men (printers), consisting of more than seven members, composed of the International Typographical Union of North America, the International Printing Pressmen and Assistants' Union, the International Brotherhood of Bookbinders, the International Stereotypers and Electrotypers' Union, and the International Photo-Engravers' Union, with headquarters and principal office in the City of Indianapolis, County of Marion and State of Indiana.

2. International Typographical Union (hereinafter called "Typographical") is a voluntary association and a trade union composed of working men (printers), commonly known as "Typographers", consisting of more than seven members, with its headquarters and principal office in the City of Indianapolis, County of Marion and State of Indiana.

3. Allied and Typographical state they bring this action by Printers League of New Jersey, also known as Union Printers League of New Jersey² (hereinafter called "Printers"), an unincorporated voluntary association or trade union made up of union working men (printers), residing in the State of New Jersey and State of New York, as attorney in fact; however, they are the real parties in interest and the action is for them and by them.

4. Allied is composed of a board of officers, consisting of a president, vice president, secretary, treasurer and an executive council, and all of said officers and members of the executive council are citizens and residents of states other than New Jersey.

5. Typographical is composed of a board of officers, consisting of a president, vice president, secretary, treasurer and an executive council, and all of said officers and members of the executive council are citizens and residents of states other than New Jersey.

6. Some of the members of Allied and Typographical are citizens of the State of New Jersey.

7. On September 26, 1939, the United States Patent Office registered Allied's label as a trade-mark under # 371428, for use on certain goods in Class 37 (paper and stationery).

7A. On January 16, 1914, Allied filed in the office of the Secretary of the State of New Jersey, its application for the registration of its label under the laws of New Jersey.

8. On September 26, 1939, the United States Patent Office registered Typographical's label as a trade-mark under # 371429, for use on certain goods in Class 37 (paper and stationery).

9. The defendant, Master Printers Union of New Jersey (hereinafter referred to as "Masters"), is a corporation incorporated in the State of New Jersey on May 5, 1936.

10. On May 2, 1936, the defendant, Masters, filed in the office of the Secretary of State of New Jersey, its statement for the registration of the trade-mark "Master Printers Union Label of New Jersey", under the laws of New Jersey.

11. Allied and Typographical by their amended complaint seek to restrain the alleged infringement of their respective trade-marks and to restrain the alleged unfair competition in the defendant's use of a label similar to plaintiffs' trade-marks, and such other relief as may be granted.

12. Plaintiffs have not established an actual or an immediately threatened use of the defendant's label in interstate commerce.

13. The plaintiffs have spent money and have done many things to advertise their respective trade-marks and enhance the value of their good will, all of which are here sought to be protected, and the value of each is in excess of $3,000.

14. Allied and Typographical permit printing establishments throughout the United States to place the Allied or Typographical trade-marks upon their products when same are done by their members, under their supervision and control. In order to regulate this, they have organized throughout the several states of the Union and the counties and municipalities thereof, branches commonly known and designated as "Locals", which are also authorized to permit such a use subject to the aforesaid supervision or control.

15. Hudson County Allied Printing Trades Council (hereinafter referred to as "Hudson Allied"), while not formally a party to this case, is a local organized by Allied, and the action it brought in the Court of Chancery of New Jersey involves a label substantially identical with the trade-mark of Allied herein. (It is to be noted that the trade-mark of Typographical herein was not the subject of the memorandum and final decree in the said suit in the Court of Chancery).

16. The defendant herein and its label involved herein are the same defendant and the same label involved in the said Chancery proceedings.

17. The question presented by Hudson Allied to and adjudicated by the Court of Chancery, namely, whether or not Masters had copied or imitated Hudson Allied's label or used said copy or imitation in business to the damage of Hudson Allied, is, in substance, the question Allied presents to this court for adjudication.

Discussion

The plaintiffs' pleadings, to say the least, are confusing and misleading. For example, paragraph 3 of the amended bill of complaint states, inter alia, that "the several causes of action of the complainants herein arise under the Patent Trademark and Patent Design Laws of the United States of America, * * *", neither the complaint nor the record discloses any patent or design patent pleaded or relied upon.

This action is brought in the common or recognized name of each plaintiff.

The amended bill of complaint is barren of any allegation that the defendant has used or threatened to use its trade-mark in interstate or foreign commerce. Proof of this fact is equally lacking. The record discloses that the only thing which can be said to remotely touch upon interstate transactions by defendant is Exhibit P-51, "The Rigo Record", for distribution on Long Island in the State of New York, but there is nothing to show it was an interstate sale by defendant, and the evidence at best is as consistent with intrastate as with interstate business.

The federal courts are specially given jurisdiction irrespective of diversity of citizenship or amount involved (15 U.S. C.A. § 97), of actions arising because of the unlawful use in interstate commerce of a trade-mark registered under the Acts of Congress (Kasch v. Cliett, 5 Cir., 297 F. 169; Youngs Rubber Corporation, Inc. v. C. I. Lee & Co., Inc., et al., 2 Cir., 45 F.2d 103, 15 U.S.C.A. § 96); but such is dependent on proof of an actual or immediately threatened use of the defendant's trade-mark in interstate commerce and this proof is lacking, therefore jurisdiction herein requires diversity of citizenship and a matter in dispute, the value of which is in excess of $3,000.

Allied and Typographical attempt to prove diversity by alleging and offering testimony to the effect that the officers and members of the executive council of each are not citizens of New Jersey. In order to pass upon whether or not such effectively accomplishes its intended purpose, it is necessary to consider the manner in which the action is brought, that is, in the common or registered names of the plaintiffs.

Rule 17(a) of the Federal Rules of Civil Procedure requires that every action be in the name of the real party in interest, and this the plaintiffs have complied with. They have executed powers of attorney to Printers, but the test, irrespective of said powers of attorney, is whether or not there is diversity between the real parties in interest and the opposing party or parties.

Rule 17(b) of the Federal Rules of Civil Procedure permits an unincorporated association of seven or more members to sue in its common name, if it has such capacity by the law of the state in which the district court is held.

In 1903, the Legislature of New Jersey passed what is commonly referred to as the "P...