Morse-Starrett Products Co. v. Steccone

• Decision Date: 15 June 1953
• Docket Number: No. 13271.,13271.
• Parties: MORSE-STARRETT PRODUCTS CO. v. STECCONE. STECCONE v. MORSE-STARRETT PRODUCTS CO.
• Court: U.S. Court of Appeals — Ninth Circuit

205 F.2d 244 (1953)

MORSE-STARRETT PRODUCTS CO. v. STECCONE.

STECCONE v. MORSE-STARRETT PRODUCTS CO.

No. 13271.

United States Court of Appeals Ninth Circuit.

June 15, 1953.

Mellin, Hanscom & Hursh, Oscar A. Mellin, Leroy Hanscom and Jack E. Hursh, San Francisco, Cal., for Morse-Starrett Products Co.

Naylor & Lassagne and Jas. M. Naylor, San Francisco, Cal., for Steccone.

Before BONE, ORR and POPE, Circuit Judges.

ORR, Circuit Judge.

This case is a continuation of trade-mark and unfair competition litigation between Morse-Starrett Products Co., hereafter Morse-Starrett, and Ettore G. Steccone, hereafter Mr. Steccone, which has extended over a period of three and a half years.

The original suit, commenced by Morse-Starrett, culminated in a judgment being entered on January 11, 1950, wherein the District Court determined that, as between the parties, Morse-Starrett was entitled to the use of the mark "Steccone" as applied to squeegees and the handles thereof. Both parties manufacture a particular type of squeegee which is used for window cleaning. Although it was not determined whether the name "Steccone", as affixed to these products, was subject to protection as a trade-mark, the Court held that Morse-Starrett's use of the name was entitled to protection against unfair competition. The factual background of the controversy and the basis for the trial court's holding are set forth in detail in the District Court's opinion, Morse-Starrett Products Co. v. Steccone, N.D.Cal.1949, 86 F.Supp. 796. We deem it unnecessary to repeat them here. The decree of the District Court, inter alia, enjoined Mr. Steccone "from in any manner using the trade-name `Steccone' enclosed by an oval in connection with squeegees, or the handles thereof, and from so using the name `Steccone' that reasonably attentive purchasers cannot readily distinguish between the products of plaintiff and defendant, provided, however, that defendant may make, advertise and sell squeegees as the products of the Steccone Products Co., or as defendant's product, so long as the name `Steccone', used alone or in conjunction with other words or symbols, on the squeegees or in the written advertising thereof, is accompanied by sufficient explanatory material so as to clearly differentiate it from the product manufactured and sold by plaintiff." No appeal was taken from that judgment.

Subsequent to the judgment, Mr. Steccone continued in the business of manufacturing and selling squeegees. He continued, as before the judgment, to stamp on his squeegee handles "Steccone Products Co. Oakland, Calif. Master", without anything further to differentiate his product from that of Morse-Starrett, which also used the name "Steccone" upon its product. Moreover, he merely added his given name "Ettore" to the name "Steccone" which appeared on the squeegee rubbers. Mr. Steccone's advertising material also failed properly to distinguish the source of the product. This conduct resulted in Morse-Starrett petitioning for an order to show cause why Mr. Steccone should not be held in contempt. Such order issued and, after a hearing before the same District Court judge who had rendered the original judgment, Mr. Steccone was held in contempt on July 31, 1950. The District Court found that Mr. Steccone's advertising violated the earlier judgment and that he had not complied with the order requiring him to indicate on the squeegees and their handles that they were not the product of Morse-Starrett. It was ordered that Mr. Steccone cease and desist from the improper advertising and "forthwith cease and desist from manufacturing and selling any squeegees or handles thereof marked with the word `Steccone' used alone, or in conjunction with other words and symbols which do not clearly indicate that they are not the product of the Morse-Starrett Products Co." As in the case of the original suit for unfair competition, no appeal was taken from the judgment.¹

The present proceedings were instituted by Morse-Starrett. It alleges that Mr. Steccone is continuing to violate both the original injunction and the later contempt judgment. A second petition for an order to show cause for contempt was filed and the District Court judge who had presided during the two earlier proceedings issued a second order to show cause. Before a hearing could take place, the judge passed away. Later, after a hearing before another District Court judge, an order was entered discharging the second order to show cause for contempt. The District Court's order at the same time denied a motion which Mr. Steccone had made under the provisions of rule 60(b), Rules of Civil Procedure,² for relief from the original judgment of January 11, 1950, as construed by the Court's memorandum opinion of July 31, 1950. This motion requested permission to use the name "Ettore Steccone" on squeegees and parts thereof when type of uniform style and equal size is used, and also requested permission to use the names "Ettore Steccone" and "Steccone Products Co." without the necessity of accompanying explanatory phrases. Both Morse-Starrett and Mr. Steccone appeal from the adverse rulings.

During the hearing before the trial court, Morse-Starrett introduced the following evidence that Mr. Steccone was continuing to violate both the original decree and the subsequent contempt judgment: (1) affidavits of two of Morse-Starrett's officials averring that while on a tour of the B. F. Goodrich Company plant at Akron, Ohio they saw squeegee rubbers being manufactured for Mr. Steccone which bore only the legend "Ettore Steccone"; (2) affidavits of two investigators hired by Morse-Starrett averring that they had gone to Mr. Steccone's place of business and there purchased squeegee rubbers which bore only the legend "Ettore Steccone" and squeegee handles upon which was stamped only the legend "Steccone Products Co. Oakland, Calif. Master"; and (3) testimony of two witnesses that they had requested from a retail dealer "Steccone" squeegees and were sold squeegee handles and rubbers manufactured by Mr. Steccone and bearing only the legend "Ettore Steccone" on the rubbers and "Steccone Products Co., Oakland, Calif. Master" on the handles.

A reading of the record of the earlier proceedings discloses that the legend stamped upon the squeegee handles by Mr. Steccone has not been changed since the entry of the original judgment. The legend upon the rubbers has been changed only in that Mr. Steccone's full name "Ettore Steccone" rather than merely the legend "Steccone" is now included. Thus, to this extent, the situation is identical to that existing at the time of the first contempt proceeding, the change pertaining to the legend upon the rubbers having taken place prior to that time.³ Conduct of a similar nature was found by the District Court in the first contempt proceeding to constitute contempt of the original judgment.⁴ One who approaches the area of conduct prohibited by a court decree acts at his own peril.

Mr. Steccone introduced evidence indicating that subsequent to the first contempt order he had printed paper labels containing the following legend:

"Neither Ettore Steccone nor his company, Steccone Products Co., has any connection with Morse-Starrett Products Co."

These labels were said to have been wrapped around the squeegee handles and also affixed to the ends of the boxes in which Mr. Steccone shipped the squeegee rubbers to his retail dealers. He states that the fact that Morse-Starrett's witnesses testified that a dealer sold squeegees without the labels affixed is of no weight because the dealer might well have acquired these squeegees prior to the first contempt order, and Mr. Steccone was under no duty to go into the channels of the trade and retrieve articles already on the storekeeper's shelves.

The undisputed evidence shows that Mr. Steccone has not consistently used the paper labels, and therefore was guilty of contempt in the same manner as found in the first contempt proceeding. Moreover, even a consistent use of the paper labels would not be sufficient compliance with the spirit of the original judgment and the subsequent contempt order. First, as to the squeegee rubbers, it is apparent that since the labels are affixed only to the boxes in which the rubbers are shipped to retail dealers the ultimate consumer never receives the information contained upon the labels. The usual consumer, a window washer, would not ordinarily buy an entire box of rubbers, and for display purposes a dealer would reasonably be expected to take the rubbers out of the boxes in which they are shipped. Second, as to the squeegee handles, the paper labels are unsatisfactory in that the dealers are presented with a simple means of palming off the product as that of Morse-Starrett merely by soaking or tearing off the paper label. Since the squeegees must be immersed in liquid prior to use, such first use would typically result in the loss of the paper label. It is our view that in the circumstances of this case a more...