International Silver Co. v. Oneida Community

• Decision Date: 29 January 1938
• Docket Number: No. 105.,105.
• Parties: INTERNATIONAL SILVER CO. v. ONEIDA COMMUNITY, LIMITED.
• Court: U.S. Court of Appeals — Second Circuit

93 F.2d 437 (1937)

INTERNATIONAL SILVER CO. v. ONEIDA COMMUNITY, LIMITED.

No. 105.

Circuit Court of Appeals, Second Circuit.

December 13, 1937.

Rehearing Denied January 29, 1938.

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Bartlett, Eyre, Scott & Keel, of New York City (Thomas D. Thacher, John P. Bartlett, and Richard Eyre, all of New York City, of counsel), for complainant-appellee and petitioner.

Nims & Verdi, of New York City (John W. Davis and Luke W. Finlay, both of New York City, of counsel), for defendant-appellant-respondent.

Before L. HAND, SWAN, and AUGUSTUS N. HAND, Circuit Judges.

AUGUSTUS N. HAND, Circuit Judge.

In a suit brought by the complainant against the defendant for unfair competition in the use of the name "Rogers" and of other related names and trade-marks, this court rendered an opinion (International Silver Co. v. Oneida Community, Limited, 73 F.2d 69) upon which a final decree on mandate was entered in the District Court on May 10, 1935, containing injunction provisions affecting both the complainant and the defendant. The injunction directed against the defendant, so far as pertinent here, restrained it:

"(a) From selling or offering for sale any flatware marked with marks containing the name `Rogers' or with the initial marks `(Maltese Cross) W. R. (Keystone),' `S. L. & G. H. R. Co.', or `R. S. Mfg. Co.,' or from representing that any such ware is Rogers ware, except when your own name, either as successor of Wm. A. Rogers, Ltd., or as successor of Simeon L. and George H. Rogers Company, or as manufacturer, appears in any and all advertising and upon all cartons or containers in which goods bearing these marks or bearing the name `Rogers' are supplied, and, if the ware be guaranteed, except as your name as successor or manufacturer shall appear upon the guaranty, your name in either instance to be displayed with sufficient proximity either to the name of such predecessor, or to said trade marks, or to the name `Rogers' in type of sufficient size to make it clearly apparent that such goods are your goods and of no one else and that you are the successor of such predecessor or the manufacturer of such goods, and except as sales to dealers or other parties disposing of such ware shall be accompanied by written notices in unmistakable terms that the ware must not be sold or represented as Rogers ware except as Rogers ware manufactured by you (using your corporate name), and from selling or offering for sale any ware with new marks containing the name `Rogers' except as you shall inscribe upon the plate your corporate name, either as successor or manufacturer."

The injunction against the complainant so far as pertinent here restrained the complainant:

"(a) From stating directly or indirectly to the trade or the public or in any manner advertising or claiming that you, International Silver Company, are the sole or only concern whose ware may be advertised or sold as Rogers, or from stating that it is unfair competition to advertise or sell as Rogers, the ware of Oneida Community, Limited, marked with any of its marks, or with the name `Rogers', provided, however, the cartons or containers bearing the same or the name `Rogers,' and the advertisements thereof, are marked with the corporate name of Oneida Community, Limited, as successor or manufacturer, and written notices are given to dealers and others, and plate bearing new trademarks containing the name `Rogers' is inscribed with the corporate name of Oneida Community, Limited, as successor or manufacturer; or from stating in advertising, or otherwise in trade directly or indirectly, that there are or ever were any injunctions or adjudications in force against such advertising or sale by Oneida Community, Limited, or its predecessors, or that anyone will be in contempt of court for thus advertising or selling the ware of Oneida Community, Limited".

The complainant filed a petition in the District Court to have the defendant adjudged in contempt and it was held in contempt for: (A) Furnishing counsel to one of its retail dealers, John G. Myers & Co., and agreeing to pay the expenses of the latter in defending a suit brought against Myers because of the latter's advertising of "Rogers," sold to it by the defendant, as "Rogers" simpliciter and not as Rogers Ware Manufactured by Oneida, Limited; (B) preparing and distributing to a dealer advertising literature such as Exhibit M — 1 containing a notice to the dealer that he might change the suggested advertising as he desired; (C) sending letters to dealers who advertised defendant's "Rogers" ware in a manner, which by the decree the defendant was enjoined from employing, to "urge" them to use defendant's name in their advertising.

The contempt order adjudged that the foregoing acts had resulted in damage to the complainant and directed a reference to ascertain the amount.

The defendant filed a petition in the District Court to have the complainant adjudged in contempt: (1) For instituting the suit against John G. Myers & Company in violation of the injunction issued against the complainant which we have set forth; (2) for issuing a press release regarding the suit against Myers; (3) for distributing italicized copies of the former opinion by the majority of this court.

The District Court held that the complainant had not violated the injunction against it by reason of any of the foregoing acts and dismissed defendant's petition to have complainant adjudged in contempt.

The defendant has appealed both from (a) the order adjudging it in contempt and from (b) the order dismissing its petition and declining to hold complainant in contempt.

The first question we must decide is whether an appeal lies from either of the foregoing orders. The argument cannot prevail that, if one is not appealable, the other cannot be, because they are interrelated, for each order is based upon an independent proceeding and defendant's petition was in no sense a counterclaim or counter petition that would give rise to any interdependence.

The order adjudging the defendant in contempt and ordering a reference was plainly interlocutory and not final. Accordingly it is not appealable. McGourkey v. Toledo & Ohio C. Ry. Co., 146 U.S. 536, 545, 13 S.Ct. 170, 36 L.Ed. 1079; Dainese v. Kendall, 119 U.S. 53, 54, 7 S. Ct. 65, 30 L.Ed. 305. It is no more appealable than an order adjudging a patent infringed and directing an accounting without granting an injunction would have been prior to the amendment of February 28, 1927, 44 Stat. 1261, 28 U.S.C.A. § 227a. The order here neither imposed a fine nor granted an attachment, nor directed the defendant to pay damages. While an order adjudging a party in contempt and directing an accounting was reviewed on appeal in American Foundry & Mfg. Co. v. Josam Mfg. Co., 79 F.2d 116 (C.C.A.8), and City of Campbell, Mo., v. Arkansas-Missouri Power Co., 65 F.2d 425 (C.C.A.8), the question whether the order was appealable was not discussed. The argument of appellant that the order was appealable because it modified an injunction cannot...