Pignons S.A. de Mecanique v. Polaroid Corp., 82-1527

• Decision Date: 28 February 1983
• Docket Number: No. 82-1527,82-1527
• Citation: 701 F.2d 1
• Parties: PIGNONS S.A. de MECANIQUE, et al., Plaintiffs, Appellants, v. POLAROID CORPORATION, Defendant, Appellee.
• Court: U.S. Court of Appeals — First Circuit

Page 1

701 F.2d 1

217 U.S.P.Q. 513

PIGNONS S.A. de MECANIQUE, et al., Plaintiffs, Appellants, v. POLAROID CORPORATION, Defendant, Appellee.

No. 82-1527.

United States Court of Appeals, First Circuit.

Argued Dec. 8, 1982.

Decided Feb. 28, 1983.

Richard J. Birch, Boston, Mass., with whom Thompson, Birch, Gauthier & Samuels, Boston, Mass., was on brief, for plaintiffs, appellants.

William J. Cheeseman, Boston, Mass., with whom Laurence S. Fordham, Stephen P. Burgay, Jeffrey B. Abramson, and Foley, Hoag & Eliot, Boston, Mass., were on brief, for defendant, appellee.

Before COFFIN, Chief Judge, BREYER, Circuit Judge, and SMITH, ^* Senior District Judge.

BREYER, Circuit Judge.

This matter is before us for the second time. The first suit, Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482 (1st Cir.1981) (Pignons I ), concerned a complaint Pignons filed against Polaroid in February 1977 and a supplemental complaint that Pignons filed in March 1980. In that case, we affirmed the district court's decision granting summary judgment for Polaroid on Pignons' various, factually complex, claims--claims that included allegations of trademark infringement, false advertising, and unfair competition. In November 1981, Pignons filed another complaint, which repeated the false advertising claims it made in 1980, but which was based in part upon advertisements Polaroid had placed after the filing of the 1980 amended complaint. The district court, finding that the facts involved were "not materially different," dismissed this new complaint on grounds of res judicata. Pignons appeals.

We approach this appeal with knowledge of the record in the prior case, with recognition that the parties are represented by competent counsel, and with an awareness arising from the record that it is undesirable, if not unfair, to prolong these proceedings any more than necessary. We therefore have sought expedition and brevity.

The doctrine of res judicata, involving "claim preclusion," is a concept which we hesitate to apply in this case because of the ambiguities surrounding its applicability to situations of ongoing wrongful conduct. Compare Lawlor v. National Screen Service Corp., 349 U.S. 322, 326-28, 75 S.Ct. 865, 867-68, 99 L.Ed. 1122 (1955) (res judicata does not bar suit based on acts occurring after previous suit for "essentially the same course of wrongful conduct") with Walsh v. International Longshoremen's Association, 630 F.2d 864, 873 (1st Cir.1980) (Lawlor limited to cases where "subsequent conduct was broader and more farreaching than the conduct which led to the original complaint"). Rather, we shall consider only whether "collateral estoppel," involving "issue preclusion," bars Pignons' new claim. Collateral estoppel may apply as validly to issues of fact as to issues of law. See, e.g., Becher v. Contoure Laboratories, Inc., 279 U.S. 388, 390-92, 49 S.Ct. 356, 357, 73 L.Ed. 752 (1929) (Holmes, J.); Lyons v. Westinghouse Electric Corp., 222 F.2d 184, 188 (2d Cir.1955) (L. Hand, J.). We conclude that, given the district court's finding that the new "facts are not materially different" from the old facts, Polaroid must prevail.

Pignons' basic claim rests upon Sec. 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a). That section makes it unlawful "falsely to describe or represent" goods in commerce, and gives a cause of action to "any person who believes that he is or is likely to be damaged by the use of any such false description or representation." In Pignons I we considered whether Pignons could show that it was an injured party entitled to sue under the statute. We held that "Pignons has not ... demonstrated that it can show any likelihood of damage from Polaroid's supposedly false claims concerning SX-70 film." Pignons I, 657 F.2d at 493. Moreover, we stated that there was "no evidence in the record" to suggest that Polaroid's color quality claims--even if false--could "cause a prospective purchaser" of Pignons' camera to switch to Polaroid. Id. at 493. Because of these factors, we affirmed the grant of summary judgment to Polaroid on the Lanham Act issue. Whether the holding was right or wrong, it definitely states that Pignons did not make out one essential element of its claim after a fair opportunity to do so. Accordingly, it stands as a bar to any effort by Pignons to relitigate the issue of whether similar advertising by Polaroid is likely to injure it.

Pignons has sought to circumvent this bar in two ways. First, it argues that its complaint concerns new, post-1980 advertisements and products. As a result, it claims, the factual issue of "likelihood of injury" is no longer the same issue. This argument, however, depends upon whether the new advertisements and products differ in any significant respect...