Royal Intern. Optical Co. v. Texas State Optical Co.

• Decision Date: 12 September 1978
• Docket Number: No. 3112,3112
• Parties: , 203 U.S.P.Q. 1035 ROYAL INTERNATIONAL OPTICAL COMPANY, d/b/a Texas Optical, a Texas Corporation, Plaintiff-Appellee, v. TEXAS STATE OPTICAL COMPANY, a Texas Corporation, and Dr. N. J. Rogers, Individually and as a partner of Texas State Optical Company, a/k/a TSO, Defendants-Appellants.
• Court: Court of Appeals of New Mexico

Page 318

586 P.2d 318

92 N.M. 237, 203 U.S.P.Q. 1035

ROYAL INTERNATIONAL OPTICAL COMPANY, d/b/a Texas Optical, a Texas Corporation, Plaintiff-Appellee, v. TEXAS STATE OPTICAL COMPANY, a Texas Corporation, and Dr. N J. Rogers, Individually and as a partner of Texas State Optical Company, a/k/a TSO Defendants-Appellants.

No. 3112.

Court of Appeals of New Mexico.

Sept. 12, 1978.

Rehearing Denied Sept. 22, 1978.

Writ of Certiorari Denied Oct. 26, 1978.

William E. Snead, Ortega & Snead, Albuquerque, Sumner G. Buell, Jasper & Buell, Santa Fe, Robert Q. Keith, Mehaffy, Weber, Keith & Gonsoulin, Beaumont, Tex., for defendants-appellants

E. Douglas Latimer, E. Douglas Latimer, P. A., Charles C. Spann, Charles C. Spann, P. A., Albuquerque, for plaintiff-appellee.

OPINION

SUTIN, Judge.

This is the second appeal of the defendants. The first appeal arose from a judgment that restrained defendants from using the trade name "Texas State Optical" or any other name deceptively similar to plaintiff's trade name "Texas Optical." This judgment was affirmed by the Supreme Court in Royal Intern'l Optical Co. v. Texas State Optical Co., 90 N.M. 21, 559 P.2d 398 (1976). The second appeal arises out of a judgment that awarded plaintiff damages, and, by way of contempt proceedings, an attorney fee for defendants' use of the trade name "Texas State Opticians."

Because the Opinion of this Court in the first appeal was ordered by the Supreme Court not to be published, and the opinion of the Supreme Court was perfunctory, a resume of the history of this case follows:

In the original trial, the court found that plaintiff and defendants were doing business in Albuquerque, New Mexico. Plaintiff registered to do business in April, 1971, under the trade name of "Texas Optical," and opened for business at that time. It had done business continuously under its trade name in the Albuquerque and Santa Fe trade areas. In September, 1974, defendants opened for business in competition with plaintiff, under the trade name of "Texas State Optical." "Texas Optical" and "Texas State Optical" were confusingly similar to the public within the trade areas and by reason thereof, plaintiff would likely suffer dilution of its trade name and clientele and would suffer irreparable injury to its business, trade, and business reputation.

The trial court concluded that plaintiff had the prior right to the exclusive use of the trade name "Texas Optical" in the Albuquerque and Santa Fe trade areas.

On February 26, 1975, a Judgment and Restraining Order was entered. (1975 Judgment.) Defendants were "enjoined and restrained from advertising their product or in any manner whatsoever, using the trade name Texas State Optical, Or any other name deceptively similar to plaintiff's trade name Texas Optical . . . ." (Emphasis added.)

Defendants appealed the 1975 Judgment to this Court. The injunction was suspended during this appeal.

The unpublished majority opinion of this Court, Judge Sutin dissenting, reversed the judgment rendered in the trial court.

By way of certiorari, the Supreme Court in Royal, supra, reversed the opinion of this Court in the following language.

There being substantial evidence to support the judgment of the trial court, its decision is affirmed.

Thereafter, the trial court entered Judgment On Mandate. The 1975 Judgment was affirmed. The order suspending the injunction had expired and was no longer in force, and the court retained jurisdiction to determine the amount of damages sustained by plaintiff and to grant judgment accordingly.

Without seeking the guidance of the court, defendants began to use the trade name "Texas State Opticians" in place of "Texas State Optical," and a second action arose in the same court. Plaintiff moved the court to hold defendants in contempt for use of the trade name "Texas State Opticians" because it was deceptively similar to plaintiff's trade name and in violation of the 1975 Judgment. Three hearings were held on the issues of contempt and damages.

At the end of the last hearing held on March 31, 1977, the trial court orally ordered defendants to be in contempt. Defendants were fined $5,000.00, suspended if defendants would, within 30 days, stop the use of the trade name "Texas State Opticians." On April 13, 1977, defendant filed a Certificate of Compliance and changed its trade name to "TSO Opticians."

Thereafter, the trial court entered its findings that the trade name "Texas State Opticians" was deceptively similar to the name "Texas Optical"; that the defendants had been found in contempt of court for a willful violation of the plain wording of the Court Mandate and were fined $5,000.00; that the fine was suspended pending compliance with the court's Order; and that plaintiff suffered damages in the total sum of $4,175.00.

Judgment was entered accordingly, and, in addition thereto, plaintiff was awarded an attorney fee of $2,500.00 "incurred in bringing the proceedings to enforce the Court's Order."

Defendants appeal. We affirm.

Defendants raise three points on appeal:

(1) The injunction in the 1975 Judgment is vague, overbroad and not sufficiently definite to support a judgment of contempt for using a trade name said to be "deceptively similar" to the name "Texas Optical."

(2) The name "Texas State Opticians" is not deceptively similar to the name "Texas Optical" as a matter of law.

(3) Any damage award or award of attorney's fees is not supported by substantial evidence and was unlawful.

A. Defendants are barred from attacking the 1975 Judgment.

Plaintiff moved the court for an order requiring defendants to show cause why they should not be held in contempt of court for continued use of the trade name "Texas State Opticians," in violation of the 1975 Judgment, a name deceptively similar to plaintiff's trade name "Texas Optical."

By way of response, defendants attacked the validity of the following language in the 1975 Judgment:

". . . any other name deceptively similar to plaintiff's trade name Texas Optical."

The basis for the attack is the claim that the words "deceptively similar" are vague, over broad and ambiguous, insufficiently definite to support a judgment of contempt; that "there is no guidance anywhere in the trial court's judgment that would give TSO any notice as to what it is restrained from doing."

Defendants have not explained, nor given any reasons why they did not seek the guidance of the court before they adopted the use of the trade name "Texas State Opticians." Neither have the defendants explained nor given any reasons why they did not directly attack the 1975 Judgment by motion to vacate or set aside the Judgment because of the vagueness of the language.

Plaintiff claims that defendants made a collateral attack on the judgment and this they cannot do. We agree.

" The general rule is that a judgment is not subject to collateral attack where the court had jurisdiction of the subject matter and of the parties . . . ." 46 Am.Jur.2d Judgments, § 621 (1969). " . . . (It) is not open to contradiction or impeachment, in respect of its validity, verity, or binding effect, by parties or privies, in any collateral action or proceeding, except . . . for fraud in its procurement." 49 C.J.S. Judgments § 401 (1947).

However, where lack of jurisdiction affirmatively appears on the face of the judgment, the judgment is void and therefore open to collateral attack. St. Paul Fire and Marine Insurance Co. v. Rutledge, 68 N.M. 140, 359 P.2d 767 (1961). But where the lack of jurisdiction does not affirmatively appear on the face of the record, the judgment is not subject to collateral attack. McDonald v. Padilla, 53 N.M. 116, 202 P.2d 970 (1948); Arthur v. Garcia,78 N.M. 381, 431 P.2d 759 (1967).

If defendants wanted to challenge the validity of the 1975 Judgment, it had to be done by way of a direct attack, exampled by motion to vacate or set aside the Judgment. Barela v. Lopez, 76 N.M. 632, 417 P.2d 441 (1966).

Beginning almost 60 years ago, in Acequia Llano v. Acequia Las Joyas, 25 N.M. 134, 142, 179 P. 235, 237 (1919) the Supreme Court said:

. . . The universal rule adhered to by the courts is that the judgment or final order of a court having jurisdiction of the subject matter and the parties, However erroneous, irregular, or informal Such judgment or order may be, is valid until reversed or set aside. Black on Judgments, § 190. And the general rule is that an error of law does not furnish ground for collateral attack on a judgment. 15 R.C.L. 861. (Emphasis added.)

It was repeated in McDonald v. Padilla, supra; In re Field's Estate, 40 N.M. 423, 60 P.2d 945 (1936); and in State v. Patten, 41 N.M. 395, 69 P.2d 931 (1937).

State v. Patten, involved an injunction restraining an election. In subsequent contempt proceedings for violating the injunction, the court held that the judgment was conclusive against collateral attack. The court said:

. . . The appellees having disobeyed the injunction, cannot now claim that the injunction decree was erroneous. The judgment of a court having jurisdiction is to be obeyed, no matter how clearly it may be merely erroneous. The method of correcting error is by appeal, and not by disobedience. A party proceeded against for disobedience to an order or judgment is never allowed to allege as a defense for his misconduct that the court erred in its judgment. He must go further, and make out that in point of law there was no order and no disobedience by showing that the court had no right to judge between the parties upon the subject. (41 N.M. at 402, 69 P.2d at 935.) (Emphasis added.)

See, State ex rel. Mix v. Newland, 277 Or. 191, 560 P.2d 255 (1977).

Furthermore, the contempt proceeding was one undertaken to enforce the 1975 Judgment.

" A proceeding to enforce a judgment is collateral to the judgment, and therefore no inquiry into its regularity or validity can be permitted in such a proceeding." 49 C.J.S. Judgments § 409 (194...