Maternally Yours, Inc. v. Your Maternity Shop, Inc.

CLARK, Chief Judge

(concurring).

My concurrence in Judge Waterman’s able opinion herewith perhaps ought not to be marred by a query as to his reliance on the state law of unfair competition, for a more academic issue can hardly be conceived. Since problems of unfair competition in trade and trade names almost invariably concern also trade-marks and transcend state lines, it is not surprising that the governing law developed in the federal courts and much of its doctrine is connected with the names of great federal judges. So the issue is really whether we shall apply our regurgitation of the state redistillation of federal precedents or go more directly and realistically to the sources themselves. Actually, so far as I can discover, we have never found any difference in ultimate result, and so quite often lump federal and New York law together, as in Hyde Park Clothes, Inc., v. Hyde Park Fashions, Inc., 2 Cir., 204 F.2d 223, 225 , certiorari denied 346 U.S. 827 , 74 S.Ct. 46 , 98 L.Ed. 351 , or— even more conveniently — eschew all reference to the matter. Mastercrafters Clock & Radio Co. v. Vancheron & Con-stantin-Le Coultre Watches, Inc., 2 Cir., 221 F.2d 464 , certiorari denied 350 U.S. 832 , 76 S.Ct. 67 . The latter is the course taken below in a decision and judgment which we are finding correct and which in all its major essentials is admittedly subject to federal law. As a matter of fact it requires rather diligent search to find a small corner of the relief granted which may even present the issue.

But the demands of doctrine, pure and true, must be served; and since the subject begets confusion, some comment upon it is justified. Of course I should prefer the direct and realistic approach in- *546 • cheated above, and do believe we are entitled to go directly to the apposite federal ; precedents without subterfuge or ornamental rationalization. But if the • latter is required, I believe it is rather .easily , found — in several different ways .in fact. Thus Ju.dge Waterman relies on diversity cases in unfair competition as affording a state basis for claims pendent to trade-mark claims, and so within federal jurisdiction under 28 U.S.C. § 1338 (b). But the conclusion is clearly not required by the premise, and to me seems too great a jump to be accepted. Federal jurisdiction is here justified entirely because of the close interrelation of the two claims, the practical impossibility of 'disentwining them, and the intention (as the Reviser in the quoted Note says) “to avoid ‘piecemeal’ litigation.” Is the desirable Congressional purpose to be hampered, if not thwarted, by reading into the statute some requirement of doctrinal piecemealing? I do not think we should here (a bit unnecessarily) initiate a novel precedent thus impairing the statutory union.

Then, too, I do not see how we can avoid the clear federal jurisdiction arising under the new and quite extensive provision covering the false description or representation of goods introduced into commerce. Lanham Act, § 43(a), 15 U.S.C. § 1125 (a). By the broad and liberal construction properly given this remedial legislation, as in L’Aiglon Apparel, Inc., v. Lana Lobell, Inc., 3 Cir., 214 F.2d 649 , the major and more important portions of the relief here granted would be supported under federal law. I think we must consider the applicability of this statute, and cannot avoid it, even though counsel does not cite it; for we are bound by the law of the land, whether cited to us by counsel or not. See Sword Line, Inc., v. United States, 2 Cir., 230 F.2d 75 . Indeed, there is indication here and elsewhere that the bar has not .yet realized the potential impact of this statutory provision.

Only when we pass these points of federal jurisdiction do .we come to the point particularly stressed in note 1 of the ■ opinion, in apparent criticism of the Ninth Circuit view that § 44 of the Lan- . ham Act, 15 U.S.C. § 1126 , created a substantive federal law of unfair competition wherever interstate commerce is involved. I hope I have demonstrated that, even though the Ninth Circuit’s interpretation is rejected, it does.not follow that New York law must govern here; -for the reasons stated above, I think.the contrary must be the view. But though not strictly necessary, I do want to reiterate briefly the support I have already expressed for that interpretation, as in, e. g., Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc., supra, 2 Cir., 204 F.2d 223, 227 ; Admiral Corp. v. Penco, Inc., 2 Cir., 203 F.2d 517 ; Dad’s Root Beer Co. v. Doc’s Beverages, Inc., 2 Cir., 193 F.2d 77, 80 . It is true that the contrary has been held by a panel of our court. American Auto. Ass’n v. Spiegel, 2 Cir., 205 F.2d 771 , certiorari denied 346 U.S. 887 , 74 S.Ct. 138 , 98 L.Ed. 391 . But I feel constrained to point out that the discussion there was most summary and that the decision has been subjected to question on other grounds, since it made not one but three very restrictive holdings as to federal jurisdiction, which have been brilliantly criticized, as, for example, in 39 Com.L.Q. 351. The destructive effects of that case upon useful and respected trade-marks suggest that the whole question deserves re-examination, if not by us, at least by some tribunal. 1 As I have pointed out above, we *547 necessarily have now at least a partial federal law of unfair competition; we so much need a complete and uniform law to supplement and round out the existing federal law of trade-mark infringement that we should be astute to avoid this confusing fragmentation of decision wherever we reasonably can.

. The AAA case, supra, went beyond questions of controlling law to deny federal jurisdiction to protect the AAA trademark, so well known to autoists. Thus it rejected as grounds (1) infringement of a federally registered mark, (2) pendent jurisdiction over a- claim of unfair competition, and' (3)- the Ninth -Circuit :rule;' • ..although it. did .remand for the..limited possibility of a further showing of facts to support a bona fide claim of trademark infringement to which the claim of unfair competition could be related. But thus it made what is aptly termed in 39 Corn.L.Q. 351, 352, a “narrow and technical construction,” to limit remedies available on the first two grounds and to reject the third ground entirely. It held *547 the AAA’s trade-mark to be infringed only in connection with goods, not services, and, upon finding its use as to goods limited, essentially denied a remedy for its protection, as well as removed the basis for pendent jurisdiction of a claim for unfair competition. Hence the cited criticism is pointedly persuasive even if the Ninth Circuit view is to be rejected. But as stated in, e. g., 39 Corn.UQ. 351, supra, and 6 Syracuse L.Rev. 200, rather strong arguments can be made for the Ninth Circuit’s conclusion of a Congressional intent for a wider and more uniform remedy for unfair competition; and the Supreme Court has already shown its awareness of the problem. See Steele v. Bulova Watch Co., 344 U.S. 280, 283, note 6 , 73 S.Ct. 252 , 97 L.Ed. 252 . The restricted construction to the contrary depends perhaps more on judicial conservatism and inability to accept easily a broadening of remedies, even in response to felt needs, than upon any necessity of statutory interpretation in itself. Such a construction of remedial legislation may itself engender problems, as we have discovered. Transmirra Products Corp. v. Fourco Glass Co., 2 Cir., 233 F.2d 885 , 887 and note 4 thereof.