Zenie Bros. v. Miskend

• Decision Date: 10 April 1935
• Citation: 10 F. Supp. 779
• Parties: ZENIE BROS. v. MISKEND et al.
• Court: U.S. District Court — Southern District of New York

10 F. Supp. 779

ZENIE BROS. v. MISKEND et al.

District Court, S. D. New York.

April 10, 1935.

Edward J. Leon, of New York City (William S. Gluck and Leon H. Amdur, both of New York City, of counsel), for plaintiffs.

Mock & Blum, of New York City, for defendants.

PATTERSON, District Judge.

The plaintiffs brought a bill with two counts, the first for declaratory judgment, the second for injunction against unfair competition. The motion is to dismiss the bill as insufficient on its face.

The plaintiffs, according to the bill, are partners, one residing in New York and the other in New Jersey; the defendant Miskend resides in New York, and the defendant Lande & Miskend, Inc., is a corporation organized under the laws of New York. The substance of the bill is that letters patent were recently issued to Miskend, covering a seam for garments and the method of making the seam; that Lande & Miskend, Inc., is the exclusive licensee of Miskend; that in truth the seam is very old, having been known to and used by the plaintiffs and numerous others for many years; that the plaintiffs are competitors of the defendants and manufacture garments using the seam; that the defendants, with knowledge that the patent is void, are threatening the plaintiffs and their customers with suits for infringement, the threats being such as to cause irreparable damage to the plaintiffs. The relief asked for includes a judgment declaring that the plaintiffs have the right to use the seam free from molestation by the defendants and declaring that the defendants' patent is invalid; also an injunction against asserting that the patent has been infringed and recovery of damages sustained by the plaintiffs.

On the count for unfair competition, the defendants' motion is well taken. There is no diversity of citizenship, one of the plaintiffs being a citizen of the same state as the defendants. Strawbridge et al. v. Curtiss, 3 Cranch, 267, 2 L. Ed. 435. The cause of action for unfair competition is pleaded as a separate and distinct one. There is then no jurisdiction in a federal court to try the issue of unfair competition, whatever the sufficiency of the other cause of action. Hurn v. Oursler, 289 U. S. 238, 248, 53 S. Ct. 586, 77 L. Ed. 1148. This leaves for consideration the adequacy of the count for declaratory judgment.

The Declaratory Judgment Act was passed by Congress in the Act of June 14, 1934 (Judicial Code, § 274d, 28 USCA § 400). It reads:

"(1) In cases of actual controversy the courts of the United States shall have power upon petition, declaration, complaint, or other appropriate pleadings to declare rights and other legal relations of any interested party petitioning for such declaration, whether or not further relief is or could be prayed, and such declaration shall have the force and effect of a final judgment or decree and be reviewable as such.

"(2) Further relief based on a declaratory judgment or decree may be granted whenever necessary or proper. The application shall be by petition to a court having jurisdiction to grant the relief. If the application be deemed sufficient, the court shall, on reasonable notice, require any adverse party, whose rights have been adjudicated by the declaration, to show cause why further relief should not be granted forthwith.

"(3) When a declaration of right or the granting of further relief based thereon shall involve the determination of issues of fact triable by a jury, such issues may be submitted to a jury in the form of interrogatories, with proper instructions by the court, whether a general verdict be required or not."

1. The defendants say that the act is unconstitutional, that a suit for declaratory judgment is not a "case" or "controversy" within the judicial power of the constitutional courts as defined in article 3, § 2 of the Constitution. The decision in Nashville, Chattanooga & St. Louis Ry. Co. v. Wallace, 288 U. S. 249, 53 S. Ct. 345, 77 L. Ed. 730, 87 A. L. R. 1191, is an answer. It was there held that in a case presenting questions under the Constitution of the United States, the Supreme Court had power to review a declaratory judgment of a state court so long as the essentials of an adversary proceeding, actual controversy, and finality of judgment were present. The dicta in earlier cases relied on here by the defendants (Liberty Warehouse Co. v. Grannis, 273 U. S. 70, 47 S. Ct. 282, 71 L. Ed. 541; Willing v. Chicago Auditorium Ass'n, 277 U. S. 274, 48 S. Ct. 507, 72 L. Ed. 880) were explained and limited. True, the court remarked more recently in Alabama v. Arizona, 291 U. S. 286, 291, 54 S. Ct. 399, 401, 78 L. Ed. 798, that it "may not be called on to give advisory opinions or to pronounce declaratory judgments"; but the statement, so far as declaratory judgments are concerned, doubtless referred not to want of constitutional authority, but to want of statutory authority, a want which has now been supplied. The Nashville Case must, I think, be deemed determinative that the judicial power is broad enough to cover suits for declaratory judgment "in cases of actual controversy."

If further support of the constitutionality of the act is sought, the fact is impressive that 19 state courts have unanimously held similar statutes valid. See Borchard on Declaratory Judgments, p. 249, note. Nor can the fact be ignored that for centuries courts of equity have been issuing decrees that are no more than declaratory, as in suits to remove cloud on title and in suits to declare the nullity of a void marriage, Id., c. 3. The declaratory judgment, though at times classed with the advisory opinion and the moot case, does not resemble them. A proceeding for declaratory judgment is justiciable because it presents a controversy which is in existence between parties arrayed against one another, and which is capable of binding determination. These characteristics are not found in advisory opinions and moot cases.

2. The other branch of the argument is that the act, if constitutional, does not for several reasons cover the present case, one to declare a patent invalid for want of invention.

That the act is applicable only to cases or controversies which the federal courts are empowered to hear is beyond question. The controversy wherein rights or relations are to be declared must be one which by reason of subject-matter or by reason of parties is within the jurisdictional limits, both constitutional and statutory, of the United States courts. Mississippi Power & Light Co. v. City of Jackson, 9 F. Supp. 564, 570 (D. C. Miss.). The instant case is plainly within those limits. The District Court has original jurisdiction of "all suits at law or in equity arising under the patent, the copyright, and the trade-mark laws." Judicial Code, § 24 (7), 28 USCA § 41 (7). A suit to have a patent declared invalid for want of invention is one arising under the patent laws, as plainly as the ordinary suit for infringement. The validity of the patent is the...