Vacuum Oil Co. v. Eagle Oil Co. of New York

• Decision Date: 18 June 1907
• Parties: VACUUM OIL CO. v. EAGLE OIL CO. OF NEW YORK et al.
• Court: U.S. District Court — District of New Jersey

154 F. 867

VACUUM OIL CO. v. EAGLE OIL CO. OF NEW YORK et al.

United States Circuit Court, D. New Jersey.

June 18, 1907

Osgood & Davis (Edmund Wetmore and C. Schuyler Davis, of counsel) for complainant.

Eugene Mackey and Cornelius G. Scully (F. W. Hastings, of counsel) for defendant.

CROSS District Judge.

The pleadings in this case are voluminous, but, as we shall see subsequently, the issue is very narrow. Stated in the briefest terms, the bill of complaint alleges the adoption use, and registration by the complainant in the United States, of several words as trade-marks, for instance 'Vacuum,' 'Arctic,' 'Etna,' 'Viscolite,' and 'Electra'; that, even if these are not good trade-marks, they have become nevertheless, by extensive use and advertisement, known to consumers as trade-names; that complainant sells its products directly to consumers in several foreign countries, naming them, under said trade-marks or trade-names; that said words have become generally known and recognized in other countries as indicating products of the complainant. The bill of complaint charges the defendants with fraudulently, and for the purpose of deception, using said words for goods sold in the United States, with placing said brands in the United States upon goods intended to be transported and sold in foreign countries, with causing to be transported to foreign countries for sale therein packages of oil bearing said brands, with causing oils to be transported to foreign countries from the United States, for the purpose and with the intent of branding them in such foreign countries with said brands, with placing such brands upon packages of oils in said countries, and with selling oils in said countries in packages having upon them said brands. In addition to the allegations that the words above used are registered trade-marks or trade-names, in this and some other countries, the bill contains all of the allegations necessary to charge, and does charge, the defendants with unfair competition in trade. Jurisdiction has been obtained over the defendants, Eagle Oil Company of New York, F. W. Hastings, Jr., and George F. Von Krogh. The persons named are made parties defendant individually, as well as in the capacity of officers and directors of the defendant corporation. The defendants Eagle Oil Company of New York, and F. W. Hastings, Jr., as Secretary and Treasurer of said corporation, and as an individual, have filed a joint plea and answer herein, and the defendant George F. Von Krogh, as director and individually, has filed a separate plea and answer. The pleas and answers are the same. The insufficiency of the pleas was alleged by the complainant, and that question was set down for argument before the late Judge Kirkpatrick, by whom the objection was overruled and the pleas sustained. Subsequently the answers were excepted to for insufficiency, but the exceptions were also, for the most part, overruled, whereupon replications were filed joining issue upon the matters set forth in the pleas and answers. Testimony has been taken as to the truth or falsity of the pleas, and that question is now before the court. The substantial parts of the pleas are as follows:

'That such acts or deeds, if performed or done at all, and not admitting hereby that such acts and deeds were done or performed by it, were wholly done or performed without the borders and boundaries of these United States, and wholly within the borders and boundaries of some foreign country or nation, and that of such acts and deeds only the courts of such foreign country or nation, and not this court, or any court within these United States, has jurisdiction. And, further, that this plaintiff has heretofore instituted legal proceedings in a court of competent jurisdiction in the German Empire, to restrain the respondent Eagle Oil Company of New York from the commission of the very acts and deeds done and performed in the German Empire, with regard to the use of the word 'Vacuum,' which the plaintiff now asks relief against and discovery of in this suit, true translations of the plaintiff's bill, defendant's answer, and the decree of the court in such proceedings are hereto attached, marked, respectively, 'Exhibit A,' 'Exhibit B,' and 'Exhibit C,' and made part hereof, and that, notwithstanding such decree, the complainant has appealed therefrom to a higher court, where the same is now pending. And, further, that this plaintiff has also instituted legal proceedings in a court of competent jurisdiction in the Kingdom of Denmark to restrain in that country the use of the word 'Vacuum' on petroleum oils and products, sold for a purpose similar to that for which plaintiff sells its oils and products, and in advertisements, statements, publications, and writings, relating and referring to such oils and products.'

Upon the argument as to the validity of the plea, one of the objections was multifariousness; but it was held that the facts pleaded tended to but the one conclusion, which was that the court had no jurisdiction over the subject-matter of the suit. In the course of his opinion, Judge Kirkpatrick says:

'The bill charges infringement of the complainant's trade-marks and unfair competition in trade by their use. As to the former, the complainant concedes that neither its 'trade-marks registered in the United States nor its common-law trade-marks afford protection against acts committed wholly in foreign countries.' This must be so, for to hold that the branding of goods in a foreign country with a trade-mark registered in the United States constitutes unfair competition in trade would be but another way of extending the trade-mark rights of a citizen of the United States beyond the borders of the country.'

Of course, the judge, as the question was then presented, had nothing to do with the truth or falsity of the pleas, and, if the pleas have been shown to be true, I shall acquiesce in and be governed by the law as he has laid it down. Referring back to the pleas, however, it should be kept in mind that they aver that the acts and deeds which were set forth in the bill of complaint were wholly done or performed without the borders and boundaries of the United States, and wholly within the borders and boundaries of some foreign country, and that consequently this court has no jurisdiction. The case, as already intimated, now comes before the court on the truth or falsity of the pleas, and the only question for solution is: Were the acts complained of wholly done or performed without the United States?

At the hearing upon a plea in equity and a general replication, no fact is in issue, but the truth of the matter pleaded. Farley v. Kittson, 120 U.S. 303, 7 Sup.Ct. 534, 30 L.Ed. 684; Dalzell v. Dueber Mfg. Co., 149 U.S. 315, 326, 13 Sup.Ct. 886, 37 L.Ed. 749; United States v. Land Co., 148 U.S. 31, 13 Sup.Ct. 458, 37 L.Ed. 354.

The complainant insists that the pleas are affirmative, and that therefore the burden of proof rests upon the defendant. An affirmative plea is one that sets up some matter dehors the bill. A negative plea denies some material allegation in the bill. In the former case the burden of proof rests upon the defendant; in the latter upon the complainant. Although the plea under consideration is in form an affirmative plea, it is at least doubtful whether it is such in fact. The bill of complaint has set out facts tending to show that the acts complained of were done both in this country and in foreign countries. It seems to me, therefore, that a plea which set up that the acts were wholly done within the borders and boundaries of some foreign country or nation does not set up new matter. It merely denies a part of the allegations made in the bill. The bill says the acts were done here and elsewhere. The plea says they were not done here, but were done elsewhere. The plea amounts to a denial, in other words, of facts which the complainant has set up, but which, if no plea has been interposed, it would have been compelled to prove in order to obtain the desired relief. The complainant further contends that, in any event, the pleas must be taken as admitting that the acts complained of were in fact committed by the defendants in foreign countries; but it is unnecessary to pass upon this question, since I have reached the conclusion that the evidence shows that the acts complained of, and for which relief is sought, were not wholly done outside of the United States and in foreign countries as the pleas allege. The pleas must stand or fall upon the truth or falsity of that allegation.

The acts complained of are charged to be fraudulent. If the evidence shows that essential parts of these fraudulent acts were committed within the United States, the pleas must be overruled. The complainant's contention is that the fraudulent acts were not only conceived, but material parts thereof were consummated in the United States, and that, but for the acts done here, the acts performed in the foreign countries would have been impossible. It claims that the facts present a situation not unlike that of a man who, after procuring and loading a firearm, aims it across the boundary line between the state in which he is and another state in which his victim is, and then, firing the gun, kills him. So much of the evidence offered to show the falsity of the plea is of a documentary character that it is well nigh impossible, within the limits of this opinion, to refer to it in detail. Consequently, I will be compelled to give my conclusions thereon, rather than establish them by any complete reference to the testimony.

The defendant Von Krogh, in 1899, was a resident of Germany, and engaged in buying and selling petroleum oils at Hamburg under the name of the 'Eagle Oil...