Regis v. United Drug Co.

• Decision Date: 28 May 1910
• Docket Number: 695.
• Citation: 180 F. 201
• Parties: REGIS et al. v. UNITED DRUG CO. et al.
• Court: U.S. District Court — District of Massachusetts

180 F. 201

REGIS et al. v. UNITED DRUG CO. et al.

No. 695.

United States Circuit Court, D. Massachusetts.

May 28, 1910

Browne & Woodworth, for complainants.

Melvin M. Johnson and Johnson & North, for defendants.

LOWELL Circuit Judge.

This is a bill in equity filed in the Supreme Judicial Court of Massachusetts and brought by residents of Massachusetts against a corporation citizen of New Jersey and against Liggett, an individual resident of Massachusetts. The bill alleges the complainant's ownership of a registered trade-mark, 'Rex'; that Liggett 'is the president of said corporation and the general manager of its business and * * * has personally directed and procured to be carried on the wrongful acts of the respondent corporation hereinafter complained of'; that the defendant corporation has advertised and sold its goods marked 'Rexal'; that the Supreme Judicial Court, in a suit against the selling agents of the defendant corporation for the use of the Rexall mark, decreed that these agents be enjoined from continuing this infringement of the Rex trade-mark; that the defendants in the case at bar 'had direction and control of the defense of the suit or suits of these complainants against' the agents, 'and were the masters of said litigation and paid all the expenses thereof and therefore these complainants aver that the present respondents and each of them are bound by said rulings and findings of this court'; that the defendant corporation made a profit from the infringement. The bill prayed for an injunction against both defendants, for a conveyance by the defendant corporation of all rights 'secured by any registration of the said trade-mark,' and for an accounting of profits with the defendant corporation.

The defendant corporation in its petition for a removal of the case to this court made the usual allegations, and set out more particularly the citizenship in Massachusetts of the present complainants and of Liggett:

'That the controversy herein is wholly between citizens of different states. * * * That a complete determination of said controversy can be had as between your petitioner and the plaintiffs aforesaid, without the presence of the said defendant Louis K. Liggett. That this is a suit brought by the said plaintiffs to enjoin an alleged infringement of an alleged trade-mark, and for an accounting and damages against your petitioner, * * * and as a matter of fact the defendant Louis K. Liggett is merely an officer and employe of your petitioner, and would be bound by and subject to any and all decrees which may be entered in this suit against your petitioner. That the said Louis K. Liggett is neither an indispensable nor a necessary party to the complete determination of said controversy. That the action of the plaintiffs in making the said Louis K. Liggett a citizen of Massachusetts and an officer and employe of your petitioner, as aforesaid, a nominal party defendant, would not operate to prevent this removal, even if said action had been taken in good faith but your petitioner avers that said Louis K. Liggett was not so joined in good faith, but that such joinder of him was for the express and fraudulent purpose of defeating the jurisdiction of the courts of the United States. That your petitioner is the defendant actually interested in this controversy.'

The state court allowed the petition for removal. After the case was entered in this court the complainant filed a 'plea in abatement,' which set out that:

'(1) The controversy herein is not wholly between citizens of different states, inasmuch as the complainants at the time of the commencement of this suit were, have ever since been, and still are, citizens of the commonwealth of Massachusetts; the defendant Louis K. Liggett at the time of the commencement of this suit was, has ever since been, and still is, a citizen of the commonwealth of Massachusetts; and the defendant the United Drug Company is a citizen of the state of New Jersey.

'(2) The defendant Louis K. Liggett has personally directed and procured to be carried on the infringement complained of as set forth in paragraph 6 of the bill of complaint; and said infringement constitutes a joint and several tort, and therefore a single cause of action.

'(3) The said defendant Louis K. Liggett was joined in good faith, and the joinder of him was not for the express and fraudulent purpose of defeating the jurisdiction of the courts of the United States, as alleged in the petition for removal.'

The case was thereupon set down for hearing, and the plea in abatement, although it raised an issue of fact concerning the alleged fraudulent joinder of Liggett, was yet treated for the purposes of the argument as a motion to remand for want of jurisdiction apparent on the face of the proceedings.

Inasmuch as the defendant Liggett, like the plaintiffs, is a citizen of Massachusetts, this case is not removable from the state court to this court unless there is here 'a controversy which is wholly between citizens of different states and which can be fully determined as between them. ' Act March 3, 1875, c. 137, Sec. 2, 18 Stat. 470, as amended (U.S. Comp. St. 1901, p. 509). In other words, the court has here to determine if there exists a controversy between the Massachusetts plaintiffs and the New Jersey corporation which is 'separable' from that which exists and is here sued upon between the same plaintiffs and the Massachusetts defendant Liggett.

To define a 'separable controversy' as intended by the statute cited has not been found easy, though the Supreme Court has had to pass upon the question in some 50 cases in fewer years. It is true that in Fraser v. Jennison, 106 U.S. 191, 194, 1 Sup.Ct. 171, 174 (27 L.Ed. 131), it was said by the Supreme Court that, to authorize removal, 'the case must be one capable of separation into parts, so that, in one of the parts, a controversy will be presented with citizens of one or more states on one side, and citizens of other states on the other, which can be fully determined without the presence of any of the other parties to the suit as it has been begun. ' This case was approved and cited in Geer v. Mathieson Alkali Works, 190 U.S. 428, 432, 23 Sup.Ct. 807, 809 (47 L.Ed. 1122), where the Supreme Court added:

'And when two or more causes of action are united in one suit there can be a removal of the whole suit on the petition of one or more of the (defendants) interested in the controversy which, if it had been sued on alone, would be removable.'

But the language quoted, and other language which resembles it, is not to be taken as declaring that a controversy is separable merely because the given plaintiff could have prosecuted his cause of action against the defendant seeking to remove without the joinder of any other defendant. Thus in Alabama Great Southern Railway Co. v. Thompson, 200 U.S. 206, 26 Sup.Ct. 161, 50 L.Ed. 441, which is but one of many similar cases, an action at law was brought against two tort-feasors who were sued jointly. One of them was a citizen of the same state as the plaintiff; the other sought to remove, but the Supreme Court held that the controversy between the latter defendant and the plaintiff was inseparable from that between the plaintiff and the resident defendant. Yet it is undisputed that the plaintiff could have sued either defendant without joining the other, and that the cause of action thus sued upon separately is the same as that sued upon jointly. King v. Hoare, 13 Mees. & W. 494, 505. Like the Thompson Case, the present proceeding is based upon a tort alleged to have been committed jointly by the defendant corporation and by Liggett, and must have a like decision unless it can be distinguished as hereinafter suggested.

An attempt to distinguish has been made upon the ground that the present case is a suit in equity, while the Thompson Case and most other cases referred to therein were actions at law. Thus in Smith v. Rines, 2 Sumn. 338, Fed. Cas. No. 13,100, a case approved by the Supreme Court, Mr. Justice Story observed:

'And it is most material to remark that this case (Cameron v. McRoberts, 3 Wheat. 591 (4 L.Ed. 467)), and all the others, in which a separate and distinct interest, or a nominal interest, is spoken of, were bills in equity, capable in their own nature of separate and distinct interests, where there was, or might be, no community of interest, and where the general question was presented as to the proper parties necessary to be made in a suit in equity. Very different considerations do, or at least may, apply to suits at common law, where the nonjoinder or misjoinder of parties has a very different effect upon the character of the suit, and very different rules apply to it.'

But the Supreme Court has applied the rule of the Thompson Case to suits in equity as well as to actions at law. Thus in Plymouth Gold Mining Co. v. Amador & Sacramento Canal Co., 118 U.S. 264, 6 Sup.Ct. 1034, 30 L.Ed. 232, the proceeding sought to enjoin a corporation and certain of its officers from polluting the defendant's waters. It must, therefore, have been a suit in equity, at least in the federal court to which it was removed, whatever it may have been according to the Code of California. The Supreme Court refused to hold that the corporation's controversy with the complainant was separable from the controversy of its officers, and the case was remanded accordingly to the state court. In deciding the case the Supreme Court said:

'It is claimed, however, that, as the answers show that the Plymouth Company is the real defendant, and the petition alleges that the others are nominal parties only, and joined with that company as 'sham defendants' to prevent a removal, the suit must be

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