Zalkind v. Scheinman
Decision Date | 10 December 1943 |
Docket Number | No. 94.,94. |
Citation | 139 F.2d 895 |
Parties | ZALKIND v. SCHEINMAN et al. (SCHEINMAN et al., Third Party Plaintiffs; GUIDE SYSTEM & SUPPLY CO., Inc., Third Party Defendant). |
Court | U.S. Court of Appeals — Second Circuit |
COPYRIGHT MATERIAL OMITTED
Samuel Ostrolenk, of New York City (Morris Hirsch and Sidney G. Faber, both of New York City, of counsel), for appellant.
Lackenbach & Hirschman, of New York City (Joseph Hirschman and Armand E. Lackenbach, both of New York City, of counsel), for appellees.
Before L. HAND, CLARK, and FRANK, Circuit Judges.
1. Judge Bondy's order was interlocutory and not appealable since it permitted plaintiff to amend. By amending, plaintiff did not lose his right to an appeal (if such right otherwise exists) from Judge Caffey's subsequent order, of March 12, 1943, striking out a portion of the amended complaint. In considering that latter order, we shall deal with the amended complaint just as if it had been the original complaint. With respect to the appeal from that order, we face two questions which (as will appear from our discussion) are intertwined: a question of the jurisdiction of the federal courts with respect to such a claim, and a question as to whether the order striking out that portion of the amended complaint is final and appealable until there has been a final judgment on the remaining claim.
2. The amended complaint alleges infringement of plaintiff's patents. It also (in that portion thereof which Judge Caffey's order struck out) sets forth a second claim, viz., one for damages due to defendants' alleged misconduct in the Patent Office before the issuance of the patents. Plaintiff suggests two theories as to the nature of this latter claim: The first theory is that the second claim is for a common law tort; the second theory is that this claim is based upon the provisions of the Patent Law. We shall consider these theories in turn.
The claim, on the first theory, is nonfederal in character.2 Federal jurisdiction is therefore wanting, since there is no diversity of citizenship, unless this case comes within the doctrine of Hurn v. Oursler, 289 U.S. 238, 53 S.Ct. 586, 77 L.Ed. 1148. An important source of confusion in the discussion of that doctrine stems from this paradoxical aspect of the rule as to "final," appealable orders.3 Theoretically, under the statutes governing appeals, we lack appellate jurisdiction to decide whether the trial court's order correctly or erroneously denied federal jurisdiction of the nonfederal claim unless and until we first decide that the trial court's order was "final" and therefore appealable. However, if the two claims are sufficiently distinct to oust federal jurisdiction of the nonfederal claim, then they are also so distinct as to render final and appealable an order of the trial court dismissing the nonfederal claim while the other claim still remains on the trial calendar.3a It is usually convenient, therefore, to telescope the two questions, since, should we hold that federal jurisdiction of the nonfederal claim is absent, we will be answering both questions at once.3b We turn, then, directly to the question whether the trial court, in the instant case, had jurisdiction of the nonfederal claim, under the doctrine of Hurn v. Oursler, supra.
In that case, the plaintiffs, in a suit lacking diversity of citizenship, sought relief on three claims: (1) A claim under the federal copyright statute for conduct infringing plaintiffs' copyright to a play; (2) a nonfederal claim based upon the very same conduct, which, even if it did not constitute infringement of the copyright, was alleged, as a matter of law, to constitute common law unfair competition consisting of the unauthorized use of that same play; (3) a nonfederal claim for unfair competition in the unauthorized use of a revised version of that play, written after the date of the copyright, the revised version not having been copyrighted. The trial court, after a trial, finding no violation of the copyright, held there was no federal jurisdiction of the second and third claims, and dismissed the bill. The Supreme Court held that, since the first or federal claim was "substantial,"3c federal jurisdiction existed as to the second claim but held that the federal jurisdiction as to the third claim had been properly denied. Because that case has recently been much discussed,4 we quote from it at length:
5
The court's statements (that the first and second claims rested "upon identical facts", "characterize the same group of circumstances," resulted "from the same acts," and must be regarded as "inseparable") are, we think, not to be taken too literally. Yet that they were intended to be highly restrictive appears from the court's concluding remarks concerning the second claim: 5a
It thus appears that plaintiffs, to sustain their second claim, had offered no evidence not relevant to and needed to support their first (federal) claim. But in order to support the third claim plaintiffs were obliged to offer not only the evidence needed to support the first claim—i.e., the defendant's production of a play said to invade plaintiffs' rights—but additional evidence not relevant to the first claim, i.e., proof of the additional matter in the revised uncopyrighted version not contained in the copyrighted version. There was a substantial amount of overlapping evidence (what has been called "an identic basic core") as to the claims, but the fact that proof of substantial additional facts was necessary led the Supreme Court to reject federal jurisdiction of the third claim. The doctrine of the Oursler case is thus exceedingly narrow in scope, as appears from the court's language in disposing of the third claim: ...
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