Stiller v. Hardman, 53

• Decision Date: 20 November 1963
• Docket Number: No. 53,Dockets 27976 and 27931.,54,53
• Parties: Benjamin STILLER et al., Appellants-Appellees, v. John P. HARDMAN and John P. Hardman, Inc., Appellees-Appellants. Benjamin STILLER et al., Appellants-Appellees, v. Nathan SILVERMAN and Flex-A-Purse Corporation, Appellees-Appellants.
• Court: U.S. Court of Appeals — Second Circuit

324 F.2d 626 (1963)

Benjamin STILLER et al., Appellants-Appellees, v. John P. HARDMAN and John P. Hardman, Inc., Appellees-Appellants.

Benjamin STILLER et al., Appellants-Appellees, v. Nathan SILVERMAN and Flex-A-Purse Corporation, Appellees-Appellants.

Nos. 53, 54, Dockets 27976 and 27931.

United States Court of Appeals Second Circuit.

Argued October 15, 1963.

Decided November 20, 1963.

J. William Freeman, Akron, Ohio (Floyd H. Crews of Darby & Darby, New York City, on the brief), for plaintiffs-appellants-appellees.

David B. Kirschstein of Kirschstein, Kirschstein & Ottinger, New York City, for defendants-appellees-appellants.

Before WATERMAN, HAYS and MARSHALL, Circuit Judges.

HAYS, Circuit Judge.

Stiller sought to register¹ in the Southern and Eastern districts of New York a judgment recovered against Squeez-A-Purse Corporation in a patent infringement suit in the Northern District of Ohio. The judgment sought to be registered and enforced in these proceedings held Stiller's patent valid and infringed and awarded him damages in the amount of $47,000 and an injunction enjoining Squeez-A-Purse Corporation, its officers, agents and privies from further infringement.² The New York district courts permitted registration of the entire judgment but refused enforcement of the injunctive portion thereof. The parties cross appealed from the orders entered by the district courts. By stipulation the two cases were consolidated on appeal. We affirm the orders from which the parties have appealed.

Stiller moved in the Ohio district court to hold in contempt certain alleged privies of Squeez-A-Purse, to wit, Nathan Silverman, principal stockholder of Squeez-A-Purse, John P. Hardman and John P. Hardman, Inc., sole suppliers of Squeez-A-Purse, and Flex-A-Purse Corporation, a newly organized corporation controlled by Silverman. The Ohio district court held that it was without jurisdiction over the alleged privies.

The registration statute, 28 U.S.C. § 1963 (1958), authorizes the registration only of "a judgment in an action for the recovery of money or property." The insertion of the critical phrase "for the recovery of money or property" was explained in the Reviser's Note as intended "to exclude judgments in divorce actions, and any other actions, the registration of which would serve no useful purpose." Note on Legislative History following 28 U.S.C. § 1963 (1958).

Defendants urge that the judgment should have been denied registration. They argue that Section 1963 authorizes registration only if the original proceeding was an action for money or property. Since the Ohio action was one for a declaratory judgment of noninfringement, the argument continues, registration of the judgment awarded the patentee on his counterclaim should have been refused. Compare Gitlin v. Gitlin, 15 F.R.D. 485 (E.D.N.Y.1954) (registration of alimony decree entered in divorce action denied), with Gullet v. Gullet, 188 F.2d 719 (5th Cir. 1951) (registration of maintenance decree entered in suit for separate maintenance upheld). The fault of the argument lies in a devotion to too literal a reading of the statute, a reading which ignores the purpose of the legislation. We have no doubt that the term "action" in Section 1963 is meant to embrace legal proceedings instituted by way of counterclaim as well as through the filing of a complaint. To hold otherwise would be to attribute to Congress the adoption of a distinction which is wholly without justification. And we cannot read the statute to make registration under Section 1963 depend upon the form in which the action is brought rather than upon the nature of the judgment. See S.Rep.No. 1917, 83 Cong., 2d Sess. (1954), in 2 U.S.Code Cong. & Ad.News, pp. 3142, 3143 (1954).

The patentee, Stiller, argues that, in spite of the limited language of Section 1963, a judgment for an injunction can be registered and, after registration, can be enforced. He takes the further position that even if an injunction alone cannot be registered, a judgment which includes not only an injunction but an award for the recovery of money or property, is registrable and such a judgment is enforceable in its entirety. This interpretation is clearly contrary to the intent of the draftsmen since it would practically eliminate the exclusionary effect of the limiting phrase — permitting, for example, the registration of a divorce decree that also provided for alimony. See Gitlin v. Gitlin, supra. Stiller also contends that the injunction is a decree for the recovery of property — the exclusive use of his patent. To adopt this point of view would completely emasculate the limiting provision and would not accord with the ordinary meaning of the phrase "recovery of property." See Note, Registration of Federal Judgments, 42 Iowa L.Rev. 285, 290 (1957).

Aside from the limiting language of the statute itself, a consideration of the...