Royal Lace Paper Works v. Pest-Guard Products
Decision Date | 09 January 1957 |
Docket Number | No. 16195.,16195. |
Citation | 240 F.2d 814 |
Parties | ROYAL LACE PAPER WORKS, Inc. and E. B. Mott Company, Appellants, v. PEST-GUARD PRODUCTS, Inc., Appellee. |
Court | U.S. Court of Appeals — Fifth Circuit |
Pinkney Grissom, Dallas, Tex., Chester Rohrlich, New York City, Morris Harrell, David M. Kendall, Jr., Dallas, Tex., Thompson, Knight, Wright & Simmons, Dallas, Tex., Lehman, Goldmark & Rohrlich, New York City, of counsel, for appellants.
Henry Klepak, Dallas, Tex., for appellee.
Before HUTCHESON, Chief Judge, and JONES and BROWN, Circuit Judges.
This is an appeal from a judgment on the merits permanently enjoining defendants, Royal Lace Paper Works, Inc., hereafter called "Royal", a New York corporation, and E. B. Mott Co., hereafter called "Mott", a Texas corporation, from using the trade name "Bug Ban" or any colorable imitation of plaintiff's product trade name, "Bug Proof", in the manufacture, sale, or distribution of insecticide shelf or lining paper and related products.
While the appellants do attack the findings on which the judgment was based as clearly erroneous and the conclusions of law as unwarranted, their fundamental, their basic attack upon the judgment is that the court was without jurisdiction, of the subject matter because neither the requisite diversity, the plaintiff as well as Mott being a citizen of Texas, nor the existence of a federal question was alleged or shown, and of the person of the defendant Royal, a New York corporation, for want of due service of process upon it.
In addition, they urge upon us that, entered as it was not after due service of process had been had, answers had been filed, and the cause had been heard on the merits, but at the conclusion of a hearing on an application for a temporary injunction, its entry was a denial of due process.
Because of these fundamental attacks on the judgment which we believe to be well taken, a chronological statement1 of the pleadings filed and the actions taken in the cause is in order.
It is perfectly clear, we think, that the court acted without any authority of law when, without affording the defendants an opportunity to make answers to, and prepare themselves for trial on, the merits, it summarily entered a final judgment on the merits at the conclusion of the preliminary injunction hearing, and that the judgment may not stand.
Because this is so, appellants' attacks upon the judgment on its merits present nothing for our consideration and, but for their claims that the court was without jurisdiction of the subject matter of the suit and the persons of the defendants, we should, vacating the judgment, reverse and remand the cause with directions to afford plaintiff an opportunity to obtain service on the defendants and the defendants an opportunity to answer and prepare for trial on the merits.
The first of these claims, that the court erred in overruling the motion of appellant, Royal, to dismiss for want of jurisdiction over its person, or, in lieu, quash the service upon it, is so obviously well taken as to require no comment other than to point to a record which fails to show that appellant was served with process according to law. Indeed the record affirmatively shows that Royal has not been served with process of any kind except a notice to appear at a hearing on a motion for preliminary injunction, and it is settled law2 that, without personal service of process in accordance with a statute of the United States or the law of the state in which the suit is filed, the court was without jurisdiction to render a personal judgment against it.
This brings us to the contention of appellants, that, plaintiff and Mott being citizens of the same state, the diversity of citizenship requisite for jurisdiction upon that ground is lacking and the judgment of reversal should direct the dismissal of the cause for want of federal jurisdiction, and to appellee's counter contention which, though apparently not made below, is now put forward strongly in its brief and argument, that, under the Lanham Act, 15 U.S.C.A. §§ 1051 to 1127, particularly Sections 1121 and 1126, and Sections 1337 and 1338(a) of Title 28, jurisdiction of a naked claim for unfair competition exists independently both of diversity, and "of joinder with a substantial and related claim" under the rule announced in Hurn v. Oursler, 289 U.S. 238, 53 S.Ct. 586, 77 L.Ed. 1148, and codified in Section 1338(b) 28 U.S.C.3
Urging upon us, as correctly decided cases from the Ninth Circuit, Stauffer v. Exley, 184 F.2d 962, Pagliero v. Wallace China Co., 198 F.2d 339, and Ross Whitney Corp. v. Smith Kline, 207 F.2d 193, so holding and approved obiter in In re Lyndale Farm, 186 F.2d 723, at page 726, 38 C.C.Pa., Patents, 825, appellee strongly argues that we should follow their teachings and hold that, under the pleadings in this case, the court had jurisdiction of the subject matter of the suit.
Appellants, in their turn, rejecting these decisions as unsound guides and putting their trust in American Auto Association v. Spiegel, 2 Cir., 205 F.2d 771, L'Aiglon v. Lana Lobell, Inc., 3 Cir., 214 F.2d 649, and the numerous other cases they cite,4 vigorously insist that the court was without jurisdiction.
It is appellee's claim, as stated above, that the Lanham Act, supra, created an independent federal cause of action for unfair competition and for infringement of unregistered trade marks. As we understand it, it bases this view on the provision in Sec. 1121 of the Act, that the district courts shall have original, and the appellate courts appellate "jurisdiction, of all actions arising under this chapter, without regard to the amount in controversy or to diversity or lack of diversity of the citizenship of the parties", and on the provision of Sec. 1126 "International conventions — Register of marks communicated by international bureaus", and particularly subdivisions (b), (h) and (i) thereof.
It is appellants' contention: that Section 32 of the Act, 15 U.S.C. § 11145, the general statutory provision with reference to remedies for trade mark infringement, limits such remedies to the infringement in commerce of registered marks, which plaintiff's mark is not; that no cause of action is provided in this section for unfair competition as such; and that, contrary to appellee's contention, no other section of the Lanham Act makes any such provision.
Arguing that the Ninth Circuit cases, relied on by appellee, appear to constitute an illogical, unnecessary, and strained construction of the provisions of the Lanham Act, since Sec. 44 of the Act, 15 U.S.C.A. § 1126, on which they rely, relates specifically to international conventions and to trade entitled to protection under treaties to which the United States is a party, appellants urge upon us that had Congress intended to create an independent federal cause of action for unfair competition, it would not have done so by such a devious route, but would have directly said, as it did with reference to the infringement of a registered trade mark, that remedies were available for unfair competition. Quoting with approval from Ross Products v. Newman, D.C., 94 F.Supp. 5666, in which the court, declining to follow the lead of the Stauffer case, cites 28 U.S. C.A. § 1338(b), note 3, supra, as requiring a contrary conclusion, appellants insist that this view is clearly right, the opposite view as clearly wrong.
For the reasons hereafter briefly stated, we find ourselves in agreement with appellants' view that the Lanham Act does not support plaintiff's claim to jurisdiction, rather than with the view of appellee that it does.
Looked at independently of the decision cited and relied on by the parties and construed, as such a statute ought to be, as a consistent whole, we find no language in it in terms conferring jurisdiction as to claims dealing with unregistered trade marks or with unfair competition. Specifically concerned, as it is, with registered trade marks, it would, we think, be to rewrite instead of to construe the statute if we should read it as including within its scope unregistered trade marks or unfair competition generally.
Looking at the statute in the light of the history of federal jurisdiction over trade marks and unfair competition, culminating in the Oursler case and Sec. 1338(b), we think it would require much stronger and more definite assertion of jurisdiction than appears in it to construe it as throwing the doors of the federal courts wide open to any litigation over unregistered trade marks and unfair competition upon the mere claim that the claimed wrongs affect interstate commerce.
Turning to the decisions and comparing the views of the Court of Appeals for the Ninth Circuit with those of substantially all of the other courts that have written on the subject, we think that in the present state of the law it must be held that the Lanham Act was not intended to, it does not create an independent ground of federal jurisdiction of an action for unfair competition, and that, unless joined with a substantial related claim under Sec. 1338(b), federal jurisdiction over such an action does not exist.
The Stauffer opinion recognizes what is generally held elsewhere, that the Hurn case and, therefore, Sec. 1338(b), are concerned with the conditions under which federal courts may, in the absence of diversity of citizenship, adjudicate claims of unfair competition arising under state law, and that the purpose of Sec. 1338(b) is to extend federal jurisdiction by means of the rule that where jurisdiction is established on a federal ground, the court may dispose of the entire case before it, including the adjudication of any substantial related non federal grounds invoked for relief. Its whole thrust is directed toward the establishment of the proposition it stands for, that Congress, in the exercise of its power to repress unfair competition which affects interstate commerce, has,...
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