Warehouse Restaurant, Inc. v. Customs House Restaurant, Inc., s. 82-4636

• Decision Date: 31 January 1984
• Docket Number: Nos. 82-4636,82-4663,s. 82-4636
• Citation: 726 F.2d 480
• Parties: The WAREHOUSE RESTAURANT, INC., and Burt H. Hixson, Plaintiffs-Appellees, v. The CUSTOMS HOUSE RESTAURANT, INC., and Edward Engoron, Defendants-Appellants. The WAREHOUSE RESTAURANT, INC., a Calif. Corp., and Burt H. Hixson, an individual, Plaintiffs-Appellants, v. The CUSTOMS HOUSE RESTAURANT, INC., a Calif. Corp.; The Theodore Roosevelt Restaurant Corp., a Calif. Corp.; and Edward D. Engoron, an individual, Defendants-Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 480

726 F.2d 480

The WAREHOUSE RESTAURANT, INC., and Burt H. Hixson, Plaintiffs-Appellees, v. The CUSTOMS HOUSE RESTAURANT, INC., and Edward Engoron,

Defendants-Appellants.

The WAREHOUSE RESTAURANT, INC., a Calif. Corp., and Burt H.

Hixson, an individual, Plaintiffs-Appellants, v. The CUSTOMS HOUSE RESTAURANT, INC., a Calif. Corp.; The

Theodore Roosevelt Restaurant Corp., a Calif.

Corp.; and Edward D. Engoron, an

individual, Defendants-Appellees.

Nos. 82-4636, 82-4663.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted Oct. 13, 1983.

Decided Jan. 31, 1984.

Milton Schlemmer, Nancy Martin, Flehr, Hohbach, Test, Albritton & Herbert, San Francisco, Cal., Thomas Small, Robert Schroeder, Fulwilder, Patton, Rieber, Lee & Utecht, Los Angeles, Cal., for plaintiffs-appellees.

Laurence P. Wilson, Philip L. Pillsbury, Jr., Pillsbury & Wilson, San Francisco, Cal., for defendants-appellants.

Appeal from the United States District Court for the Northern District of California.

Before WALLACE, ALARCON and BOOCHEVER, Circuit Judges.

WALLACE, Circuit Judge:

Customs House Restaurant and Edward Engoron (Customs House) appeal from a Lanham Act and service mark infringement judgment granted to Warehouse Restaurant and Burt Hixson (Warehouse). The district court found that Customs House's logo colorably imitated Warehouse's registered service mark in violation of 15 U.S.C. Sec. 1114(1) and that its use of dining booths encased in packing crates was a false designation of origin under 15 U.S.C. Sec. 1125(a). Warehouse cross-appealed because the district court deferred injunctive relief and failed to award further relief against copying with respect to other features of the restaurant's name and decor. Customs House also appealed the award of attorneys' fees under 15 U.S.C. Sec. 1117.

We dismiss for lack of jurisdiction because the district court's deferral of the dining booth injunction makes its judgment non-final and thus not within this court's purely statutory jurisdiction. 28 U.S.C Secs. 1291, 1292. We may only review a final judgment, that is "one which ends the litigation ... and leaves nothing for the court to do but execute the judgment." Catlin v. United States, 324 U.S. 229, 65 S.Ct. 631, 89 L.Ed. 911 (1945).

The district court did not finally decide all issues involved in this case and leave nothing but mere execution. The district court stated as to one issue:

IT IS FURTHER ORDERED that defendants and their officers, agents, servants, employees and assigns and all persons in active concert or participation with them are permanently enjoined from using in connection with the present Customs House Restaurant in Foster City, or in connection with any other restaurant now or to be owned, controlled, licensed or franchised by the defendants in the future, the particular item of interior decor heretofore described as the feature of dining booths actually encased in packing crates; provided, however, that defendants may continue to use that interior feature until plaintiffs' and defendants' restaurants, or their licensees or franchisees, come into direct competition, or are imminently about to come into direct competition, within the same regional restaurant service area. In such event, either party may upon ten (10) days' notice, move to reopen this case for further hearing upon the issue of likelihood of confusion as to the origin of the restaurant services based on such new circumstances.

District Court Op. at 19-20 (footnote omitted). Thus, liability for an injunction was found but no injunction was granted--the matter was held in abeyance, awaiting future events after which either party may move to reopen the proceedings. This is not a final determination.

In an analogous situation, we held that "the determination of liability, alone, is not a final judgment." Hain Pure Food Co., Inc. v. Sona Food Products Co., 618 F.2d 521, 522 (9th Cir.1980). Hain involved a summary judgment determination of only the trademark infringement liability issue. We held that the district court thereby bifurcated the trial into separate issues. Id. at 522. The only difference here is that the injunctive relief, rather than damages, was not yet granted. See also Liberty Mutual Insurance Co. v. Wetzel, 424 U.S. 737, 96 S.Ct. 1202, 47 L.Ed.2d 435 (1976) (partial summary judgment on liability for plaintiffs but injunction withheld; order not appealable as final); Beare v. Briscoe, 498 F.2d 244 (5th Cir.1974) (injunction withheld so that legislature could enact substitute of voting registration system found unconstitutional; order not appealable as final).

The order here does not come within one of the generally recognized exceptions to the rule. See 9 Moore's Federal Practice p 110.08 (2d ed. 1980).

Although we could construe this judgment as a denial by the district court of an injunction and thus subject to an interlocutory appeal, cf. Liberty Mutual Insurance Co. v. Wetzel, 424 U.S. at 744-45, 96 S.Ct. at 1206-07, no interlocutory appeal was taken. The lack of finality with respect to this one major issue affects the whole order's finality. That this latter issue is subject to an interlocutory appeal does not make that issue final, nor make the judgment in its entirety final.

The district court may take such necessary steps as will make the judgment final or enter an order pursuant to Federal Rule of Civil Procedure rule 54. If thereafter a party appeals, the record, briefs, and all papers filed in this appeal will be transferred to the new appeal and the case will be assigned to this panel.

APPEAL DISMISSED.

BOOCHEVER, Judge, dissenting.

The majority concludes that the district court's order is not final and therefore not appealable under 28 U.S.C. Sec. 1291. Inconsistently, it also concludes that the appeal is not from an interlocutory order appealable under 28 U.S.C. Sec. 1292(a)(1). I dissent because I believe it is appealable as a final order, but, if it is considered to be interlocutory it is nevertheless appealable to the extent that it denies injunctive relief.

The district court's decision and order appears to be final. It left nothing further to be done barring certain...