Lane Bryant, Inc. v. Maternity Lane

• Decision Date: 11 March 1949
• Docket Number: No. 11940.,11940.
• Parties: LANE BRYANT, Inc. v. MATERNITY LANE, LIMITED, OF CALIFORNIA et al.
• Court: U.S. Court of Appeals — Ninth Circuit

173 F.2d 559 (1949)

LANE BRYANT, Inc. v. MATERNITY LANE, LIMITED, OF CALIFORNIA et al.

No. 11940.

United States Court of Appeals Ninth Circuit.

March 11, 1949.

Harold A. Black, Philip K. Verleger and McCutchen, Thomas, Matthews, Griffiths & Greene, all of Los Angeles, Cal., for appellant.

H. Miles Raskoff and Gendel & Chichester, all of Los Angeles, Cal., for appellees.

Before STEPHENS, HEALY, and ORR, Circuit Judges.

STEPHENS, Circuit Judge.

Lane Bryant, Inc., a Delaware corporation, filed an action in the district court against Maternity Lane Ltd., of California, a California corporation, and Jack, junior, Jane and Lucille Lane, and John Doe One and Two alleging acts by them to the injury of plaintiff as summed up in a paragraph of the complaint which we quote:

"The acts of defendants which are complained of herein were done in violation of plaintiff's exclusive right to its trademark `Lane Bryant' used in connection with plaintiff's sale of maternity apparel, and with a fraudulent and unlawful intent and design to appropriate the plaintiff's good will by simulating its corporate name and trademark by imitating plaintiff's distinctive advertising and slogans, all for the purpose of thereby unlawfully diverting plaintiff's customers and business to the corporate defendant."

With the complaint plaintiff filed a "Notice of Motion for Preliminary Injunction" supported by affidavits.

The defendants appeared through a "Notice of Motion to Dismiss" "* * * pursuant to rule 12(b) of the Federal Rules of Civil Procedure 28 U.S.C.A., on the ground that the complaint filed herein fails to state a claim against defendants upon which relief can be granted."

Coincident with the filing of the Notice, defendants filed affidavits entitled "Affidavit of (name of affiant) in support of Defendants' Motion to Dismiss and in Opposition to Plaintiff's Motion for Preliminary Injunction." Counter affidavits were filed by plaintiff directed by their titles solely to the motion for a preliminary injunction.

Thereafter, on January 12, 1948, the court made and caused to be entered as a minute order the following:

"From the complaint and affidavits on file, I cannot see the slightest possibility of a misleading or deceptive statement, insofar as the plaintiff's name or business is concerned, in either the name of the defendants, or the use by the defendants in their business of the words `maternity', `mother', `mother-to-be', `motherhood', or the picture of a `stork', or the picture of a clothed pregnant woman. Both the words and the ideas back of them have been so long in the public domain, as well as the use of special clothing during pregnancy, as to preclude relief under the plaintiff's complaint, or the motion for temporary restraining order and the affidavits filed. Nor does the use of the word `Lane' by the defendant indicate any basis for relief under plaintiff's complaint and affidavits.

"The Motion for Injunction is denied.

"The Motion to Dismiss is granted.

"Defendant will prepare the appropriate Findings and Order * * * on the denial of Injunction and the appropriate Judgment of Dismissal."

Proposed Findings of Facts and Conclusions of Law were filed, on their face applying only to the ruling on the motion for a preliminary injunction. No other Findings of Fact and Conclusions of Law were filed in the case. In its Conclusions of Law the court found inter alia: That the public is not likely to be confused by similarity of names of the parties; That the words and phrases "maternity", "mother-to-be", "mothers-to-be", the picture of a stork, the picture of a clothed pregnant woman are descriptive in character and cannot be appropriated and they have not acquired a secondary meaning associated with plaintiff; That plaintiff has been guilty of laches in seeking to enjoin the use of the name "Maternity Lane"; That plaintiff is not entitled to a preliminary injunction.

A formal order denying a preliminary injunction was filed and a Judgment of Dismissal in the following language was made on the 3rd day of February, 1948, and duly entered:

"The cause came on regularly to be heard upon defendants' motion that the same be dismissed on the ground that the complaint filed herein failed to state a claim against defendants upon which relief can be granted. The Court, having duly heard and considered the affidavits, proofs, papers and arguments of the parties respectively, granted the motion.

"Wherefore, It Is Ordered, Adjudged and Decreed, that the action be and the same is hereby dismissed on the merits, and that defendant recover of the plaintiff its costs."

The appeal herein is from the order denying the preliminary injunction and from the judgment of dismissal.

It is at once apparent that the court arrived at its conclusion, that the complaint does not state a cause of action, from a consideration of the complaint together with the affidavits filed in connection with the motion for a preliminary injunction and to dismiss the complaint.

In a note to Land etc. v. Dollar et al., 330 U.S. 731, 735, (note 4), 67 S.Ct. 1009, 1011, 91 L.Ed. 1209, it is said: "In passing on a motion to dismiss because the complaint fails to state a cause of action, the facts set forth in the complaint are assumed to be true and affidavits and other evidence produced on application for a preliminary injunction may not be considered." Citing Polk Co. v. Glover, 305 U.S. 5, 9, 59 S.Ct. 15, 83 L.Ed. 6; Gibbs v. Buck, 307 U.S. 66, 76, 59 S.Ct. 725, 83 L.Ed. 1111. (The court may, however, test its jurisdiction by aid of affidavits.) There is, of course, nothing new in the quotation and it only serves here to point up the inescapable conclusion that the trial court has erred unless there is more. And there is more, for in 1946 an addition was made to Rule 12(b), Federal Rules of Civil Procedure, which is as follows:

"If, on a motion asserting the defense numbered (6) to dismiss for failure of the pleading to state a claim upon which relief can be granted, matters outside the pleading are presented to and not excluded by the court, the motion shall be treated as one for summary judgment and disposed of as provided in Rule 56, and all parties shall be given reasonable opportunity to present all material made pertinent to such a motion by Rule 56."

"Matters outside the pleading" were presented in the affidavits and therefore it was within the court's power to consider the motion to dismiss as one for a summary judgment to be "disposed of as provided in Rule 56," with "all parties * * * given reasonable opportunity to present all material made pertinent to such a motion by Rule 56." Pertinent parts of Rule 56 are as follows:

"(b) For Defending Party. A party against whom a claim, counterclaim, or cross-claim is asserted or a declaratory judgment is sought may, at any time, move with or without supporting affidavits for a summary judgment in his favor as to all or any part thereof.

"(c) Motion and Proceedings Thereon. The motion shall be served at least 10 days before the time specified for the hearing. The adverse party prior to the day of hearing may serve opposing affidavits. The judgment sought shall be rendered forthwith if the pleadings, depositions, and admissions on file, together with the affidavits, if any, show that, except as to the amount of damages, there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Our emphasis.

It is stated in Central Mexico Light & Power Co. et al. v. Munch et al., 2 Cir., 116 F.2d 85, 87, that it is not important whether the motion is called one to dismiss or one for summary judgment. "In any event, the affidavits presented are available on either motion." Citing Federal Rules of Civil Procedure, Rules 6(d), 12(b), 56(e); Palmer v. Palmer et al., D. C.Conn., 31 F.Supp. 861; 1 Moore's Federal Practice 645-647.¹ Since the motion is made under rules authorizing a judgment on summary proceeding, and since the judgment recites that it rests upon the merits as well as upon failure of the complainant to allege a cause of action, it may be that the court so considered it and that the Findings of Fact and Conclusions of Law were intended to apply as well to the judgment as to the order denying the preliminary injunction. Rule 52.

It is, of course, apparent that there is an inconsistency in a given judgment being based upon a summary proceeding and as well upon a ruling that the complaint does not state a cause of action. The former contemplates a decision upon "issues" while the latter contemplates that there are no "issues". With the apparent uncertainties in mind, we shall analyze the status of the judgment from the view point of its having resulted from a summary proceeding and also as having resulted from a finding that the complaint does not state a cause of action.

Firstly, we turn our attention to the latter problem. It is alleged in the complaint which, for the present purpose, we must assume to be true, that plaintiff-appellant acquired the good will, business, and trademarks of a New York corporation in 1920 which had been established by Lane Bryant, an individual, in 1900. The enterprise from its inception specialized in sale of maternity and stout women's apparel under the name of "Lane Bryant" through its retail stores and by an extensive mail order business in the United States and Canada. It operates seven stores and, by subsidiary organizations, operates a number of additional stores but none west of the state of Iowa. Commencing in 1911, "Lane Bryant" was used as a common law trademark and upon application October 20, 1927, trademark thereof was issued by United States Patent Office as of February 14, 1928. Large sums have been expended in advertising and more than 50,000 mail order catalogues were mailed to plaintiff's...