Petition — Gilbert v. Union Carbide Corp.

, ‘Benzama Court, U. &

* FILED

JAN 5 1980 |

MICHAEL RODAK, JR., CLERN

In the

Supreme Court of the United States

Octoser Term, 1979

‘a *““¢@5.00 7, YO-.0

MARK GILBERT. an individeal,

Petitioners,

vs.

UNION CARBIDE CORPORATION, A Corporation,

Respondent.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

at

Marx Gisert, Petitioner, pro se

315 South Peoria Stree

Chicago, Illinois 60607

(312) 226-2100

January 6, 1980

SESE R SAO AE TAI TEETER EEE SESE. 3 NEE Se EAS CE ERIS EAL SATS

The Scheffer Press, Inc.—(312) 263-6850

ae

INDEX

PAGE

Seventh Circuit Unpublished Order and Opinions

aL scccenpiestosnncenpeosees 1,2

a sanssanaclooshnpsconeptoperoess 2

Questions Presented for Review ..........sccseseeeessseeees 3

Constitutional Clauses Involved ..........ccscsscsssssesseseessess 4

Pe WD ceckivesisccesceccce td sccccctsncccsesscnsacscccnsccsees 4

Reasons Why Writ Should Be Granted ...n....ssuss 14

DDRII, cccttpenepttinssnsstcnrssesaroresnrpnibnssasbennyrtvaranecoreteceseyeqoosees 17

I. Jurisdiction Over A Litigant’s Major Affirma-

tive Defense Resides In The District Court—

Original Adjudication of Appellee’s Defense

of Laches Was Not the Proper Function of

The Court of Appeals When That Question

Was Unappealed, Unargued and Had Been

Reserved by the District Court; All Appealed

Questions Having Been Decided Without Need

IE il divetessieedeaspicosccbecseecsacssernnsseceee 17

II. When The Seventh Circuit Undertook Its Con-

sideration and Disposition of Laches It Failed

To Provide Conditions and Controls To Assure

Fair, Impartial and Equitable Treatment

of Litigants ........ssee LMG NA SR OS 20

li

: PAGE | PAGE

IfI. The Injunction As Modified By The Seventh | 5. Opinion—United States Court of

Circuit Was Excessive, Particularly In Not | Appeals, Seventh Circuit, and as

Allowing A Period For Orderly Transition Amended on Denial of Rehearing March

Even Though Petitioners Had Not Been | 11, 1976 as Amended March 16, 1976

Charged With Bad Faith and Had Won A | Including Amendments .........scsseesseeees A30-A72

Complete Victory In The District Court. The eae ‘

Injunction Was Also Excessive In Prohibiting 6. nga. ee Bene a

Use Of Ever-Ready On Desk Lamps and On = ede ‘ 15. 1975 6 A73-A95

Bulbs For Desk Lamps, In View. Of ‘Their BU BT iccisncssiscersccsssostbedictehastete

Long Standing Useage And That They Were 7. Rummler-Robertson Motion For Leave

Outside Of Union Carbide’s U.S. Patent Office To File Brief of Amici Curiae: Also

Registration Certificates As Well As Its Proffered Brief as Accepted ........:cue A96-A111

Complaint Based On Those Certificates ........ 26 8 Amicus Robertson Letter of May 6, 1978

IV. The Practice Of The Seventh Cireuit Court | to Chief Judge Thomas E. Fairchild ..... A112

Of Appeals As Indicated By The Foregoing . lit f Citizens

Lack Of Due Process Must Be Declared . oecorigg Mange Sars + en Pa "Tile

Improper As Protection To All Litigants , of Aseonted A119-A117

Similarly Situated And As A Matter Of | Te ee

Prubibig: Termeni ssi sie sic5d ccticchccndnsbocchddcasens 26 10. Chicago Daily Law Bulletin, April 5,

Conclusi 1977, “EVEREADY error overcorrected ;

IN sieiaientencsictopinptotepteemntiadaakadsDipctets siawaamibebipitacenintenseseese 27 | sad plight of ‘Mr. Ever-Ready’” ........... A118

APPENDIX: : 11. Chicago Daily Law Bulletin, J ~ 7,

| 6 : ;

1. Denial of Petition for Rehearing by the sg Whiaae dim ie dae alas inioen A119

US. Court of Appeals for the Seventh 0) p ere occcvccecccce

Circuit entered August 9, 1979 ......00000... Al 12. Chicago Daily fe b oomige™ July ~

ae , . 1977, “Turneoat Confesses: Surveys 0

: Tone 27 we. ieee mere ors A2-A23 trademarks ean be illusions”... A120

+] POSES ESEEESEESSETHSEOE EES ESER ESE ESSE EESEEE Pm

3. Order of the Seventh Circuit entered 13. Office World News, March 1, 1978,

June 13, 1979. Unpublished Order— “Gilbert vs. Union Carbide: A fight

BOD TO TO CG cccithctactsisioviinvitenssiviintineen A24-A26 for ‘Ever-Ready’ ” ...sscssssssssenesserssesesnsnenenees A121

4, Judgment Order on Remand entered

March 3, 1977—George N. Leighton,

District Judge “Injunction” .......... A27-A29

iv

Taste Or CAsEs

PAGE

Armstrong v. Menz,

380 U.S. 545, "359, 85 S.Ct. 1187, 1191, 14 L.H.2d

Ge CERIO ~ seccsnctsessniesomicviosttntnumasignmaminaenuanmasiasadnie 18

Bess v. Daniel, 355 N.E.2d 566 (1976) .......cccssmsssseeees 20

Gafney v. McCarron,

360 N.E.2d 508 (Ill. ist Dist. 1976) ............... iicliaicaies 19

Jerrel v. Kenai Peninsula Boro. Sch. Dist.,

Alaska, 567 P.2d 760 (Sup. Ct. of Alaska 1977) ... 19

Stolberg v. Caldwell, 423 S. Supp. 1295 (1976) ............ 23

16 Am. Jur. 2d Sec. 583 (with citations on due

PE CORRE) ..<criinnavivenesnesneieiioievetahiihepiienbdiencengulibaieinnipniiaiedts 23

STATUTES AND RULES

SB UBC. £10DE ccaticrresstritnitcentenanntibinismaiiie 25

y IE CR DCR ER ee eee rh See 25

SB UDG. 4 SI cccenetepceitipittinmeiaiaianans 24

U.S. Supreme Court Rule 19.1(D) ......nseccsrcrsssssrsrsssreeees 26

In THE

SUPREME COURT OF THE UNITED STATES

Ocroser Term, 1979

No.

—

EVER-READY INCORPORATED, a corporation and

MARK GILBERT, an individual,

Petitioners,

vs.

UNION CARBIDE CORPORATION, A Corporation,

Respondent.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

Petitioners, Ever-Ready Incorporated and Mark Gil-

bert, respectively pray that a writ of certiorari issue to

review the Order of the United States Court of Appeals

for the Seventh Circuit entered in this proceeding on

June 13, 1979, (Unpublished Order—Not To Be Cited),

and affirmed by the denial of a petition for en banc re-

hearing on August 9, 1979, six of eight active judges ab-

staining.

oie en

OPINIONS BELOW

The Order of the Court of Appeals for the Seventh Cir-

cuit entered June 13, 1979 is unpublished and unreported.

The Opinion of the District Court on remand, for the

Northern District of Illinois, Eastern Division, entered

March 3, 1977, is unpublished and unreported. These opin-

ions derived directly from the Opinion of the Court of

Appeals for the Seventh Cirenit entered January 30, 1976,

as amended March 11, 1976. The Opinion of the Seventh

Circuit entered Janua y 30, 1976, as amended March 11,

1976 is reported at 531 F.2d 366. The original trial court

Opinion of the District Court for the Northern District

of Illinois, Eastern Division, entered February 18, 1975,

is reported at 392 F. Supp. 280. The unpublished orders

of the Seventh Cirenit and the Remand Court and the

published opinions of the Seventh Circuit in 1976 and

the prior Opinion of the District Court are appended

hereto.

JURISDICTION

The Order of the Court of Appeals for the Seventh

Circuit was entered June 13, 1979 as “Unpublished Order

—Not To Be Cited.”

Petition for en banc rehearing, timely filed June 27,

1979, was denied August 9, 1979.

On petitioners’ application for extension of time for

filing a petition for writ of certiorari in the above en-

titled cause, time was extended to January 6, 1980 by this

Court, assigning to it No. A-335 on October 22, 1979.

This Court’s jurisdiction is invoked under 28 U.S.C.

§1254(1).

a

QUESTIONS PRESENTED FOR REVIEW

1. Whether the Court of Appeals for the Seventh Cir-

énuit had jurisdiction over the question of laches, when

that question was unappealed, unargued and had been

reserved by the District Court; all appealed questions

having been decided without need to decide laches.

_2. Whether the Court of Appeals deprived petitioners

of due process of law or other essential elements of jus-

tice, when it decided the unappealed and reserved ques-

tion of laches without prior notice to the parties and

without first hearing arguments on that question especially

when; the facts relative to laches had not been stated by

either party or by the District Court; the Court of Ap-

peals deciding the question on its own statement of facts

which neither party had seen and which was clearly er-

roneous.

3. Whether the injunction as modified by the Court of

Appeals was excessive, particularly in not allowing a

period for orderly transition even though petitioners

had not been charged with bad faith and had won a com-

plete victory in the District Court; and also in prohibiting

use of Ever-Ready on desk lamps and on bulbs for desk

lamps, considering their long standing useage and that

they were outside of the Union Carbide complaint as well

as outside of Carbide’s U.S. Patent Office Trademark

Registration Certificates.

4. Whether the practice of the Seventh Cireuit Court

of Appeals as indicated by the foregoing must be declared

improper as protection to all litigants similarly situated

and as a matter of public importance.

éotiiiaas

CONSTITUTIONAL CLAUSES INVOLVED

FIFTH AMENDMENT. “* * * nor shall any person

* * * be deprived of life, liberty, or property, without due.

process of law”

FOURTEENTH AMENDMENT, Section 1. “* * *

No State shall make or enforce any law which shall

abridge the privileges or immunities of citizens of the

United States; nor shall any State deprive any person

of life, liberty, or property, without due process of law;

nor deny to any person within its jurisdiction the equal

protection of the laws.”

ARTICLE IV, SECTION 2. “The Citizens of each

State shall be entitled to all Privileges and Immunities of

Citizens in the several States.

ARTICLE VI, Paragraphs 2 and 3. “This Constitu-

tion, and the Laws of the United States which shall be

made in Pursuance thereof * * * shall be the supreme

Law of the Land. * * * all executive and judicial Officers,

both of the United States and of the several States, shall

be bound by Oath or Affirmation, to support this Con-

stitution * * *.”

STATEMENT OF THE CASE

Petitioner, Mark Gilbert, is the owner of a desk lamp

and desk lamp accessory business formerly known as

Ever-Ready, Inc. Gilbert began his business in 1944 and

used the term Ever-Ready in his company name and on

his products from 1944 until 1977, when, by the terms of

the injunction issued on remand by the District Court,

he was ordered to immediately terminate, allowing no

time for transition, the use of Ever-Ready in his com-

pany name and to immediately cease the sale of his in-

ventory of products bearing that term.

=.

peer ns

Prior to this litigation, petitioners’ small business was

fairly successful. Mark Gilbert, the Ever-Ready principal,

began his business in 1944 as Ever-Ready Fluorescent

Service and continues to conduct a fluorescent mainte-

nance service under that name. That business expanded

to include the sale of fluorescent tubes and desk lamps

labeled “Ever-Ready” and in 1946 a new company called

Ever-Ready Electric Co. was formed to separate such

products from the business of contract lighting mainte-

nance and to further a developing national desk lamp

business. The business was incorporated as Ever-Ready

Electrical Supply Company in 1952, its name changed to

Ever-Ready Incoporated (1955) and Ever-Ready Inter-

national, Ltd. (1972).

In 1950, on submitted application, Union Carbide ap-

pointed petitioners’ Ever-Ready as a franchised distribu-

tor of its EVEREADY batteries and flashlights. Carbide

conditioned that appointment on Ever-Ready’s giving up

their sales of Bright Star batteries and flashlights but

did not require petitioners to abandon their Ever-Ready

mark. Carbide renewed the franchise for 1951 and 1952.

(Rec. DX118, App. 233, 234, 277-279).

The evidence adduced at trial showed conclusively that

petitioners continuously used the mark Ever-Ready in

their company names and on their products starting with

1944 to 1971 when Carbide filed its action. (Record, Ap-

pendix pp. 218, 236, 237, 243, DX131; 219; pp. 11, 58, 59

of Catalog 156-A, (Exh.DX1); pp. 162, 163, 169 of Catalog

155-B, (Exh.DX-2) 221; Exh. PX49, pp. 271, 273, 287;

DX55, 226; DX31, pp. 162, 231, 232, 260; pp. 226, 270;

Gilbert depos. 2/23/72, Exh. Forms 9003-ADV., 9005-

ADV., pp. 43, 45 Sep. Cert. 6/20/77). .

a es

Among 300 users: of some variant of the mark ever

ready, on electrical products other than those of peti-

tioners and respondent, were American Safety Razor

Corp., Ever-Ready electric shavers, date of first use 1904;

Sears-Roebuck & Co., Eveready electric power drives,

date of first use 1949; Eveready Flood Control, Inc.,

Eveready electric compressors, date of first use of mark,

1957; Eveready Burner Supply Co., Eveready electric

heaters and G.T.E. Sylvania, Ever-Ready electrical wiring

devices. (Short Rec. 4/1/77. Also see TCR certified com-

puterized printout, Appellants’ main brief at A36-A65).

In July 1971, Carbide first contacted petitioners, stating

that sale of their high intensity light bulbs for home use

under the trademark “Ever-Ready” constituted infringe-

ment of Carbide’s “EVEREADY” mark used on packag-

ing of General Electric miniature lamp bulbs which Car-

bide sold until General Electric terminated their agency

agreement in 1974, following a 1973 federal court deci-

sion that General Electric lamp bulb Agency agreements

were in restraint of trade and violative of antitrust law.

(DX142, DX143 Sep.Cert. 6/30/77).

Following petitioners’ refusal to abandon their mark

used for more than 25 years, on December 30, 1971, re-

spondent filed suit for trademark infringement and un-

fair competition, with a pendent dilution claim under

the Illinois Trade-Mark Act, Ill. Rev. Stat., Ch. 140, § 22.

Jurisdiction of the District Court was founded upon 15

U.S.C. § 1121, 28 U.S.C. §§ 1332 and 1338. The complaint

asked that defendants be perpetually enjoined from using

their mark “EVEREADY” in any connection with the

“advertising, offering for sale or sale of any products

such as electric flashlights and accessories, lanterns, -bat-

= os

teries, and miniature lamp bulbs for flashlights and ac-

cessories, lanterns, lamps, toys, novelties, and automotive,

aircraft, marine and related uses or services connected

therewith” (Rec. App. 8-9, See. 1(a), (b), (¢), (d)).

The complaint made no mention of lamps as receptacles

for light bulbs. The complaint made no mention of high-

intensity light bulbs. The complaint was supported by

five Exhibits To The Complaint, which purported to be

copies of U.S. Patent Office Trademark Registration Cer-

tificates. The purported copies were uncertified by the

U.S. Patent Office. They purported to be copies of: U.S.

Patent Office Trademark Registration Certificate No.

135,757 (Class 21) “for electric batteries, dry cells and

storage batteries”; Certificate No. 268,557 (Class 21)

“for electric batteries”; Certificate No. 796,721 (Class 26)

“for electric equipment and controls for testing batteries” ;

Certificate No. 707,745 “EVEREADY and design”; and

Certificate No. 815,394 “EVEREADY ENERGIZER

and design”. (See Complaint Exh. 2A, 2B, 2C, 2D, 2E).

None of the purported Trademark Registration Certi-

ficate copies dealt with lamps as receptacles for light

bulbs or with light bulbs. At the time of the filing of its

complaint, Carbide did not sell high-intensity light bulbs.

Carbide first applied for a U.S. Patent Office Trademark

Registration Ce-tificate for “MINIATURE AND LARGE

ELECTRIC LAMP BULBS FOR GENERAL SERV-

ICE AND INDUSTRIAL USES” on February 10, 1975,

some 37 months after the filing of its law suit and eight

days before a District Court Opinion adverse to Carbide

was to come down. (Certif. Serial No. 43,922, See main

brief A-57).

While Carbide’s law suit did not seek damages or an

accounting of Ever-Ready’s profits, it did seek that Ever-

we

Ready be required to deliver up to it all material and

merchandise bearing the allegedly infringing term Ever-

Ready. (See prayer of complaint).

Petitioners denied the substantive allegations of the

complaint, and raised as affirmative defenses, laches and

misuse of Carbide’s trademark in violation of antitrust

laws. At trial, this latter defense was severed for separate

trial pursuant to Federal Rule of Civil Procedure 42(b).

(A. 41)

Upon a bench trial, Judge Prentice H. Marshall found

no infringement, no unfair competition and no dilution

under Illinois law. Judge Marshall also decided that there

was no likelihood of confusion, no actual confusion and

collaterally ruled that plaintiff’s use of its mark on bat-

teries was descriptive and therefore invalid under the

Lanham Act. This decision was rendered after the trial

court had the opportunity to observe the demeanor of the

witnesses and carefully weigh the evidence. Having dis- |

posed of the complaint, Judge Marshall did not reach

'the issue of whether laches barred Carbide from obtain-

| ing relief. (R. 73-95)

Carbide appealed to the Seventh Circuit Court of Ap-

peals and obtained a reversal of Judge Marshall’s deci-

sion in its entirety. Among other things, the Court held

that Carbide’s mark had become incontestible under 15

U.S.C. § 1065 and that Carbide had exclusive use of the

trademark. As a result, the Court concluded that Car-

bide’s 1nark was immune from any attack on its validity.

To reach this conclusion, the Seventh Circuit reversed its

position as stated in John Morrell & Co. v. Reliable Pack-

ing Co., 295 F.2d 314 (1961). Moreover, Judge Pell rec-

ognized that the Court’s new position was directly con-

trary to the decisions of the Ninth Circuit in Tillamook

i.

County Creamery Association v. Tillamook Cheese and

Dairy Association, 345 F.2d 158 (1965) cert. denied, 382

U.S. 903, and the Eighth Circuit in Wrist-Rocket Manw-

facturing Co., Inc. v. Saunders Archery Co., 516 F.2d 845

(1975), cert. denied, ........ Was valet , 96 S. Ct. 1384, 46

L.Ed. 2d 100. (A. 32-51).

In reversing Judge Marshall, Judge Pell held, inter

alia, that the trial court erred in respect to its conclusion

of law that there had been no infringement, and further

held that he erred with respect to his finding of fact that

there was no likelihood of confusion. Judge Pell further

held that the antitrust issues severed by Judge Marshall

pursuant to Fed. R. Civ. P. 42(b) was not involved in

the appeal and that the laches defense was not available

to the defendants. (A. 52-66).

Following receipt of that Opinion, defendants-appel-

lees filed a Petition For Rehearing asking for trial court

adjudication of the affirmative defenses of misuse of Car-

bide’s trademark in violation of antitrust laws and laches.

Whereupon, the Seventh Circuit invited Carbide to re-

spond to Part II of the petition dealing with the laches

defense. Defendants-appellees were not permitted to reply

to the response and no full briefing was scheduled.

Shortly after receiving Carbide’s response to Part Il

of the Petition For Rehearing, the Seventh Circuit

amended its Opinion, remanded the antitrust defense to

trial (A. 70-71) and ruled that the laches defense was not

available to defendants, (A. 72), declaring:

“In 1969 defendants commenced importing minia-

ture lamp bulbs having the term Ever-Ready stamped

on their bases and selling these bulbs in blister pack-

ages containing the term Ever-Ready in a four-sided

a a

logo and indicating that they are for high-intensity

lamps.” 531 F.2d 366 at 371 (1976) (A. 32).

“Prior to 1971, Ever-Ready did not market the

products involved in this case under its own name..

* * * In 1971, Ever-Ready began marketing the prod-

ucts involved in this case. Carbide filed its complaint

on December 30, 1971. The time lapse is insufficient

to establish laches on the facts of this case.” 531

F.2d 366 at 388-389, (1976) (A. 66).

In -ny event, the issues of laches was not urged

on this appeal and may be considered as having been

waived.” 532 F.2d 366 at 389, (1976) (A. 66).

Introduced in evidence at the District Court trial on

October 13, 1976, before Judge George N. Leighton hear-

ing the antitrust defense, were Exhibit DX142, plaintiff’s

notice of a meeting with General Electric called to dis-

cuss “alternate methods of selliny lamps * * * made neces-

sary by a court decision declaring ‘agency’ illegal” and

Exhibit DX143, the minutes of that meeting confirming

agency contracts as violative of antitrust law. Also avail-—

able to the District Court were copies of the General Elec-

tric-Union Carbide agency agreement, some of which

were held under seal. Judge Leighton, immediately upon

conclusion of a three hour trial, held that there was no

violation of antitrust law, basing his decision on a pur-

ported October 1, 1976 Stipulation of Uncontested Facts

Relating to Antitrust Defenses Alleged by Defendants,

which had been entered by defendants’ then attorneys

without defendants’ knowledge or consent, which stipula-

tions had been previously contested and which contradicted

the very arguments presented before Judge Marshall at

the original trial. (Appellant’s main brief pp. 37-42).

al hac.

Just days prior to the October 13, 1979 remand trial,

Gilbert discovered that his attorneys had entered stipula-

tions which had been previously contested and which con-

tradicted their arguments in the original trial and that

they were not planning to call as witnesses the partici-

pants at the General Electric-Union Carbide meeting

called to discuss “alternate methods of selling lamps * * *

made necessary by a court decision declaring ‘agency’

illegal”. (DX142, DX143 See appellants’ main brief).

Facing his attorneys with the unauthorized and previously

contested stipulations and their failure to call essential

witnesses, he asked them to withdraw from the case and

ask the court for some time in which to find replacement

attorneys. They refused stating it was too late and that

the judge would not so permit. (Main brief p. 41).

On January 5, 1977, Judge Leighton’s findings of fact

came down, the substance of which were the unauthorized

and previously contested stipulations. Thereafter, on

February 4, 1979, defendants’ attorneys did withdraw and

Gilbert proceeded as pro se.

On March 3, 1977, Judge Leighton entered an injunc-

tion, allowing no time for transition which stated:

“1. Defendant MARK GILBERT, individually,

and the corporate defendant, EVER-READY INCOR-

PORATED, by change of name, EVER-READY

INTERNATIONAL LTD., its officers, directors,

agents, servants, employees, attorneys, confederates

and all persons acting for, with, by through or under

them, and each of them, be and they thereby are

perpetually enjoined and restrained: (A. 28)

“(a) From using the term EVER-READY * * *

on or in connection with the advertising, offering for

sale or sale of electric flashlights and accessories,

lanterns, batteries, lamps, miniature lamp bulbs, lamp

sas ili

bulbs or any other electrical products not sold by or

under the authority of Union Carbide Corporation.”

(A. 28). ;

“(b) From using the term EVER-READY * * *

as part of any corporate, partnership, firm or trade

name, on or in connection with the advertising, offer-

ing for sale or sale of electrical products * * *”.

(A. 28).

On April 1, 1977, petitioners’ motion for reconsidera-

tion was denied and on that day he filed an appeal and

an emergency motion in the Seventh Circuit asking for a

stay of the injunction during pendency of appea]. The

Court of Appeals granted the motion but on objection

of respondent, the Court dissolved the stay on April 14,

1977, without permitting petitioners to respond. (Main

Br. p. 15).

Plaintiff moved to enforce the injunction on August

15, 1977 and the District Court compelled compliance on

October 13 and 20, 1977.

On June 8, 1978, Mark Gilbert was formally given per-

mission to withdraw sealed documents from the record.

That night, for the first time in 32 years, Gilbert’s office and

warehouse were broken into. Only the office was bur-

glarized, Gilbert losing three attache cases and a sample

case containing documents in this cause. (Chicago Police

Report Z-198694). On June 16, 1978, he again withdrew

sealed documents. That night, he was hit by a second try,

this time a break-in attempt that was foiled by changes

in the burglar alarm system. (Chicago Police Report Z-

209911). Under Circuit Rule 4(g), had record elements

been stolen so that they could not be returned, Gilbert

could not have filed his reply brief. (Reply Brief pp. 37-

38).

ow 19 4

Petitioner appeared for Oral Arguments on May 25,

1979 and the Court of Appeals for the Seventh Circuit by

order entered June 13, 1979, found the injunction entered

by Judge Leighton as overbroad and ordered a slight nar-

rowing of the injunction. The Court held defendant’s argu-

ments on laches and misuse of mark in violation of anti-

trust law and deprivation of due process as “without

merit”. The Seventh Circuit failed to respond specifically

to any of the 23 assignments of error, six of those as-

signments dealing with laches, as developed by defen-

dants in their arguments. The Unpublished Order-Not To

Be Cited offered no explanations of why petitioners’

arguments were “without merit”. (A. 24-26).

Petitioners on June 27, 1979, then sought a rehearing

en banc but this was denied by “a majority of the judges

on the original panel” on August 9, 1979. (A. 1).

—!

REASONS WHY THE WRIT SHOULD

BE GRANTED

The importance of correction of the holdings of the

Court of Appeals for the Seventh Circuit transcends the

issues of unfair competition and trademark infringement,

the paramount questions being due process, equal treat-

ment under law and the rule of law itself.

If any of these rights are violated, such violation im-

pacts on every citizen in the land and the rule of law

becomes a sham, a nullity where equality may be equated »

with the resources of litigants, wherein those of equal

financial strength and influence are accepted as true equals

before the bar of justice.

The publie’s concern with the quality of judicial ad-

ministration of the rule of law is reflected in the state-

ment of Senator Orrin G. Hatch made on the floor of the

Senate on September 7, 1978, when in support of 8.1423,

The Judicial Tenure Act, he said:

“In my legal practice, I have seen certain Federal

judges controlled or influenced by large corpora-

tions. I have seen control of certain Federal Judges

by large law firms and I have seen it on more than

one occasion. I have also seen Federal judges who

were controlled by special interests.

“I have seen Federal judges become arbitrary, capri-

cious, exhibit all kinds of partiality, and [ have seen

an abuse of the legislative processes by what has been

referred to as ‘Government by judiciary’ ”

“T have seen judicial intemperateness and I have seen

judges continually intervening in the trial of cases,

even when there were competent trial lawyers trying

anti...

the cases, because the judges took sides early in the

trial instead of being impartial as judges should be.”

—Congressional Record at S 14766.

When courts are perceived by the public as particularly

responsive to the persuasion of power and influence over

law, the rule of law breaks down as is evidenced by the

accelerating increase in crime and the increasingly dimin-

ishing respect by the citizenry for lawyers, their courts

and government.

The basic notion of due process invoives granting each

litigant the opportunity to be heard, and to present the

facts most favorable to their position before decision.

Procedures which are contrived to deprive citizens of

property without due process of law, if permitted to

maintain, would violate our last line of defense against

the tyrannies of a prejudiced court.

Petitioners’ positions have found support in the in-

terest of the public as is evidenced from the Rummler-

Robertson Amici Curiae Brief (A. 96-111), the Robert-

son letter to the Seventh Circuit dated May 6, 1978 (A-

112) and the Amicus Brief of the Committee For Equal-

ity of Citizens Before the Courts (A. 113-117). That

the issues are of further public interest may be seen from

articles published in the Chicago Daily Law Bulletin

“EVEREADY error overcorrected; sad plight of ‘Mr.

Ever-Ready’” (A. 118), “Union Carbide does not deny

lack of due process” (A. 119), “Turncoat confesses: Sur-

veys of trademarks can be illusions” (A. 120) and other

publications such as Office Worid News, now first pre-

sented. (A. 121).

Petitioners submit that should the writ issue in the

instant cause, the Supreme Court could declare that sua

ma! Doe

sponte appellate consideration of an issue unadjudicated

in the trial court is off limits and violates the standards

of review authority; that such issue or issues be remanded

for hearing and judgment by the trial court; and that in

any event, should an appellate court take on such heavy

responsibility, that it permit full briefing and arguments

on facts and law, before deciding such issue.

By granting the writ, the Supreme Court will come to

grips with the universally accepted requirement that

every litigant is entitled to trial court hearing, considera-

tion and adjudication of lawful pleadings before the po-

tential of appellate review can be brought to bear; that

such procedural safeguards for all citizens are essential

to fair and equal treatment under law and that the due

process requirements guaranteed by the constitution would

be best served by such definitive standards, without which

this problem and reoccurrences are not likely to heal

themselves.

* If the burdens of this Court prevent consideration of

a full writ of certiorari, an easied writ of mandamus

would be helpful. It could direct the Seventh Circuit to

vacate its improper determination of laches. If the Court

has any hesitancy to so direct, it could offer an alterna-

tive for the Court of Appeals to explain why it does not

do 80, beyond its statement that the issue is “without

merit.

I

JURISDICTION OVER A LITIGANT’S MAJOR AF.-

FIRMATIVE DEFENSE RESIDES IN THE DISTRICT

TRIAL COURT—ORIGINAL ADJUDICATION OF AP-

PELLEE’S DEFENSE OF LACHES WAS NOT THE

PROPER FUNCTION OF THE COURT OF APPEALS

WHEN THAT QUESTION WAS UNAPPEALED, UN-

ARGUED AND HAD BEEN RESERVED BY THE

DISTRICT COURT; ALL APPEALED QUESTIONS

HAVING BEEN DECIDED WITHOUT NEED TO DE-

CIDE LACHES.

The function of an appellate tribunal is to review the

judgments rendered by the trial court. It is not consistent

with this function for an appellate court to assume juris-

diction over an issue and make determinations of facts

which are the province of the trial court, particularly

when that issue was not on appeal and therefore un-

argued, having been reserved by the District Court.

The trial court Opinion came down on February 18,

1975. In that Opinion, Judge Prentice H. Marshall treated

all of the elements in the Union Carbide complaint, hold-

ing that there was no unfair competition, no dilution and

no infringement; collaterally ruling that Carbide’s use

of EVEREADY on batteries was descriptive and there-

fore invalid under the Lanham Act; and reserving the

affirmative defenses of Carbide’s misuse of its trademark

in violation of antitrust law and laches for separate trial.

(A. 73-95). Of the laches defense, Judge Marshall said:

“Tn light of my conclusion on the trademark infringe-

ment issue, I do not reach defendants’ affirmative de-

fense of laches.” (Footnote 28) (A. 95).

Kags aie

From that statement, it may be readily seen that the

District Court decision recognized the defense of laches

but ruled that its decision. for the defendants on other

grounds made the laches defense unnecessary, and the

District Court therefore reserved it.

Union Carbide appealed the issues reached in the trial

court and the litigants did not argue the reserved issues

of misuse in violation of antitrust law and laches. NO

ASPECT OF THE APPEAL OR THE RESPONSE

THERETO EXPRESSLY BROUGHT THE ISSUE OF

LACHES BEFORE THE COURT OF APPEALS, AND

THE BRIEFS DID NOT URGE THAT IT BE DE-

CIDED.

Judge Marshall was reversed on each of his findings

of fact and conclusions of law and following a petition

for rehearing asking for trial court adjudication of the

reserved issues of antitrust violation and laches, the

Seventh Circuit remanded the antitrust issue but ruled

that the defense of laches was not available to defen-

dants-appellees. (A. 70-72).

The assumption of jurisdiction over the issue of laches

and the role of the trier of fact by The Seventh Circuit

deprived petitioners of their right to trial and denied

their rights to due process as guaranteed by the Fifth

and Fourteenth Amendments to the Constitution.

This Court has said:

“The essence of due process is the opportunity to

be heard ‘at a meaningful time and in a meaningful

manner’”, Armstrong v. Manz. 380 U.S. 545, 552, 85

S.Ct. 1187, 1191, 14 L.Ed.2d 62 (1965).

By coming to its sua sponte decision on laches, with-

out remanding that issue for trial, the Seventh Circuit

wet BD oe

denied petitioners the opportunity to be heard “at a mean-

ingful time and in a meaningful manner”—thus peti-

tioners were denied due process.

In Jerrell v. Kenai Peninsula Boro. Sch. Dist., a Court

of Appeals stated:

«* * * Nevertheless, under established appellate princ-

iples, our rule on review does not permit us to ignore

the trial court’s conclusion or its exercise of discre-

tionary powers, absent an abuse of that discretion.

For us to reweigh the facts and equities and then

substitute our judgment where there is no abuse of

discretion, would abrogate the distinction between

the functions of an appellate court and a trial court.”

Alaska, 567 P.2d 760 at 767. S.Ct. of Alaska (1977).

In Gaffney v. McCarron, an appellate court added fur-

ther substance to this principle as it stated:

Where the outcome of a case is contingent upon the

facts found in the record, a reviewing court will not

disturb the findings and judgment of the trial court

in nonjury cases should the record reveal any evi-

dence to support those findings”. (Citing Brown v.

Zimmerman (1959), 18 Ill. 2d 94, 102, 163 N.H.2d

518.) |

“Furthermore, even when the evidence appears to be

in direct conflict, a reviewing court will not substi-

tute its judgment as to credibility of the witnesses

for that of the trial court and will not disturb those

findings unless they are clearly against the manifest

weight of the evidence. (Citing Scheinge v. Village of

Niles (1st Dist. 1968). 101, Tl. App.2d 406, 243 N.E.

2d 255.)

“Our courts have declared manifest weight to mean

‘the clearly evident, plain and indisputable weight of

the evidence’.” (Citing Gettemy v. Grgula (1st Dist.

1975), 25 Ill.App.3d 625, 628, 323 N.E.2d 628, 630.)

Gaffney v. McCarron, 360 N.E.2d 508 at 509 (1st Dist.

1977.)

= =e

In Bess v. Daniel, 355 N.E.2d 566 at 599 (1976), an ap-

pellate court held that it did not have the authority to

consider a matter not passed on by the trial court. It

stated :

“This court will not consider an issue which the trial

court did not consider. It is well settled that we do

not have the authority to consider a matter not passed

on by the trial judge (Trisko v. Vignola Furniture

Co., 12 Ill.App.3d 1030, 299 N.E.2d 421; Murphy v.

Kumler, 344 Il.App. 287, 100 N.E.2d 660), or which

the trial judge refused to consider. (Board of Edu-

cation of Chicago v. Chicago Teachers Union, 26 Il.

App.3d 806, 326 N.E.2d 158) It is apparent that the

trial judge’s final order adjudicated only the liability

of plaintiffs and the County. Any additional issue

are not properly before us. Edelman v. Lee Optical

Co., Inc., 24 Ill.App.3d 216, 320 N.E.2d 517.”

In assuming jurisdiction over the question of laches

when that issue was unappealed, unargued and had been

reserved by the District Court, the Seventh Circuit has

abrogated the functional distinction between trial and

appellate courts.

II.

WHEN THE SEVENTH CIRCUIT UNDERTOOK ITS

CONSIDERATION AND DISPOSITION OF LACHES IT

FAILED TO PROVIDE CONDITIONS AND OCON-

TROLS TO ASSURE FAIR, IMPARTIAL AND EQUI-

TABLE TREATMENT OF LITIGANTS.

A. It overlooked the fact that the Record and the Ap-

pendix reflecting that Record were not selected in con-

sideration of the issue of laches as that issue had been

reserved by the trial court. No aspect of the appeal or

the response thereto expressly brought that issue before

the Court of Appeals.

eerste =F tN NOt Nt a NOTA CE NPL Kitt ST EN BL RO

sa at anata

fe ae tt. enna titte hate we

renee fens ane nasa 2 —

_

B. It failed to notify the parties that it was going to

take up this unappealed issue so that arguments could be

properly briefed and the inadequacies of the Record could

be brought to its attention.

C. There was no oral argument on the issue of laches,

and the Court of Appeals did not call for any oral or

written argument on the question before deciding it.

D. The Court of Appeals based its sua sponte denial

of laches on its own generated statement of facts which

had not been presented to it by the parties (at least not on

the record) and which was grossly in error, prejudicial to

the petitioners. Although repeatedly requested in papers

before that Court, the Seventh Circuit has never cor-

rected or explained the origins of those misstatements,

wherein it said:

“Prior to 1971, Ever-Ready did not market the prod-

ucts involved in this case under its own name * * * In

1971, Ever-Ready began marketing the products in-

volved in this case. Carbide filed its complaint on De-

cember 30, 1971. The time lapse is insufficient to estab-

lish laches on the facts of this case.” 531 F.2d 366 at

388-389, (1976) (A. 66).

“In any event, the issue of laches was not urged on

this appeal and may be considered as having been

waived.” 531 F.2d 366 at 389, (1976) (A. 66)

The trial Record is replete with exhibits and considera-

ble unchallenged testimony showing petitioners’ use of

Every-Ready on their products since 1944, in clear con-

tradition of the Seventh Circuit’s statements of fact on

the laches issue, origins still unknown. (Record, Appendix

pp. 218, 236, 237, 243, DX131; 219; pp. 11, 58, 59 Catalog

156-A, (Exh.DX1); pp. 162, 163, 169 Catalog 155-B, (Exh.

DX2) 221: Exh. PX 49, pp. 271, 273, 287; DX55, 226, DX

31, pp. 162, 231, 232, 260; pp. 226, 270; Gilbert Despos.

=

2/23/72, Exh. Forms 9003-ADV., 9005-ADV., pp. 43, 45

Sep. Cert. 6/20/77).

Strangely, the Seventh Circuit, in contradiction of its

own generated finding that defendants had first used

Ever-Ready on products in 1971, had earlier in its Opin-

ion stated:

“In 1969 defendants commenced importing miniature

lamp bulbs having the term Ever-Ready stamped on

their bases and selling these bulbs in blister packages

containing the term Ever-Ready in a four-sided logo

and indicating that they are for high-intensity

lamps.” 531 F.2d 366 at 371 (1976) (A. 32).

E. On petition for rehearing, when petitioners had

pointed out error in the Seventh Cireuit’s own generated

statement of fact, and plaintiff had filed a responding

brief claiming the criticism to be incorrect, the Court of

Appeals did not give petitioners a chance to respond to

this assertion of incorrectness, but as to laches denied

forthwith the petition for rehearing. Respondent, on page

3 of its Repiy To Defendants’ motion To Reconsider and

Vacate Order of April 14, 1977 characterizes the Seventh

Circuit’s misstatement of facts as mere “inaccuracies”.

F. One ground of the plaintiff for resisting reheariug

ou the question of laches was that even if laches were to

be found, an injunction would still be needed to protect

the public; but on subsequent trial of the antitrust de-

fense, a former official of plaintiff, serving as plaintiff’s

witness, and in the course of belittling the importance of

EVEREADY from the antitrust standpoint, testified to

the effect that no one purchasing a lamp bulb (low voltage

being contemplated) relied on trademarks. On common

knowledge, the clear fact is that in buying a replacement

low voltage bulb the purchaser matches the type of bulb

ee

en ee rrr nm en en eS ener rT nem

— pe

he has to replace, and takes whatever line the dealer hap-

pens to carry. (Reply brief p. 33 Rec. Sep. Certf. 6/30/77).

G. Although the Court’s sua sponte statement of facts

asserts that defendant did not start using Ever-Ready on

the goods involved in the litigation until the year suit was

brought (1971), Amici Charles W. Rummler and Louis

Robertson pointed to a particular exhibit in the record

which clearly showed that defendants were publicly ad-

vertising “Ever-Ready” desk lamps (which are subject to

the injunction) in 1968. (A. 104).

Of due process, 16 Am Jur 2d Section 583 comments:

“Generally speaking, due process is satisfied by one

hearing which furnishes a full and fair opportunity

within the rules. * * * A hearing before judgment,

with full opportunity to present all the evidence and

the arguments which the party deems important, is

all that can be adjudged vital under the guaranty of

due process of law. * * * One hearing before judg-

ment, if ample, satisfies the demand of the Federal

Constitution in this respect.” 11 Louisville & N.R. Co.

v. Higson, 234 U.S. 592, 58 L ed 1484, 34 S. Ct. 948;

United States v. Heinze, 218 U.S. 532 54 L ed 1139,

31 S. Ct. 98; James v. Appel, 192 U.S. 129, 48 L ed

377, 24 S. Ct. 222; et al.

Petitioners have never enjoyed that “hearing before

judgment, with full opportunity to present all the evidence

and the arguments which the party deems important” as

required by due process.

In Stolberg v. Caldwell, 423 F. Supp. 1295 (1976) at

1299, it is pointed out that “(t)he Supreme Court has

established the framework for analyzing a due process

claim such as is presented here. The initial determination

is whether the plaintiff has been deprived of ‘interests en-

—

compassed by the Fourteenth Amendment’s protection of

liberty and property.’ Board of Regents v. Roth, 408 U.S.

564, 569, 92 S.Ct. 2701, 2705, 33 L.Ed. 548 (1972). If such

a deprivation has occurred, the remaining question is ‘the

nature of the process that is due.’ Morrissey v. Brewer,

408 U.S. 471, 484, 92 S.Ct. 2593, 2602, 33 L. Ed.2d 484

(1972)”.

The deprivation of due process in this series of litiga-

tion has been denial of a fair and full trial, or denied

trial, even a fair and full consideration by the Seventh

Circuit of the affirmative defense of laches.

The nature of the process that is due is a judicious

examination of the affirmative defense of laches.

As petitioners pointed out in their Reply Brief at page

14 in No.’s 77-1378 and 77-2035, the Court of Appeals

had no jurisdiction to rule on laches in No. 75-1371

when that affirmative defense had not been reached by

the trier of fact.

28 U.S.C. 2106 only gives a court of appeals power to

“modify * * * or reverse any judgment, decree or order

of a court lawfully brought before it for review”, and

there was nothing that lawfully brought before the Court

of Appeals in this cause the issue of the affirmative de-

fense of laches.

Once the Court of Appeals had proceeded as far as re-

versing the determinations of the court below on invalidity

and infringement, the affirmative defenses which the trial

court had held in abeyance ceased to be moot (as the

Seventh Circuit itself recognized, when on denial of the

Petition for Rehearing, it amended its Opinion to remand

the affirmative defense of misuse of mark in violation of

antitrust law), and there was no longer a “final decision”

—— om

by which the Court ot Appeals could retain jurisdiction

under 28 U.S.C. 1291. What remained was no more than

“interlocutory” and could only reach the Court of Ap-

peals for review when made final for 28 U.S.C. 1291 to

apply again or when certified to that Court under U.S.C.

1292. Neither occurred.

In reaching its decision to deny availability of laches

to petitioners, the Seventh Circuit accepted as established

fact certain allegations made by Union Carbide, on the

Court’s invitation to respond to Part II of the petition

for rehearing, without affording petitioners the oppor-

tunity to respond to those allegations. This procedure is

contrary to the basic notions of fair play which the due

process clause of the Fifth Amendment guarantees. The

adversary system can not be expected to result'in the

even handed administration of justice if one party is

denied the opportunity to be heard, and to present the

facts most favorable to their position. The arbitrary and

capricious manner in which the Seventh Circuit ruled that

the defense of laches had been waived prevented the peti-

tioners from presenting any of the facts on their behalf.

Such glaring violation of petitioners’ rights is funda-

mental to this cause and taints any proceedings which

took place subsequent to such violation.

Daniel Webster, in a proceeding before this honorable

court, said: “The law should proceed upon inquiry, and

only render judgment after hearing all the facts”. That

statement is just as appropriate today as it was in the

early 19th century. Regrettably, in this instant case, this

basic principle has not been observed.

In its sua sponte decision denying laches against the

facts in the record and the law dealing with such pro-

a fon

cedure, the U.S. Court of Appeals for the Seventh Cir-

cuit has “so far departed from the accepted and usual

course of judicial proceedings * * * as to call for an exer-

cise of this Court’s power of supervision.” Supreme Court

Rule 19.1(b).

Ii

THE INJUNCTION AS MODIFIED BY THE SEVENTH

CIRCUIT WAS EXCESSIVE, PARTICULARLY IN

NOT ALLOWING A PERIOD FOR ORDERLY TRAN-

SITION EVEN THOUGH PETITIONERS HAD NOT

BEEN CHARGED WITH BAD FAITH AND HAD WON

A COMPLETE VICTORY IN THE DISTRICT COURT.

THE INJUNCTION WAS ALSO EXCESSIVE IN PRO-

HIBITING USE OF EVER-READY ON DESK LAMPS

AND ON BULBS FOR DESK LAMPS, IN VIEW OF

THEIR LONG STANDING USEAGE AND THAT

THEY WERE OUTSIDE OF UNION CARBIDE’S

U.S. PATENT OFFICE TRADEMARK REGISTRATION

CERTIFICATES AS WELL AS ITS COMPLAINT

BASED ON THOSE CERTIFICATES.

IV.

THE PRACTICE OF THE SEVENTH CIRCUIT COURT

OF APPEALS AS INDICATED BY THE FOREGOING

LACK OF DUE PROCESS MUST BE DECLARED IM-

PROPER AS PROTECTION TO ALL LITIGANTS

SIMILARLY SITUATED AND AS A MATTER OF

PUBLIC IMPORTANCE.

Petitioners, pursuant to their request for extension of

time in which to file this petition and as granted, had an-

ticipated that they would secure the services of profes-

sional counsel to present this petition. For this reason,

and while still strenuously seeking counsel, petitioners

had not prepared this petition.

— a

This left petitioners with inadequate time to prepare

and present all of their arguments, particularly as to III.

and IV., above.

As to those arguments, petitioners stand on these brief

statements above.

As to the affirmative defense of laches, we submit that

there has been no valid adjudication and for all of the

reasons and law presented above, the Order in 77-1378

and 77-2035 should be vacated and petitioners should have

their right to initial adjudication of this issue by the Dis-

trict Court restored. |

CONCLUSION

The facts and the law have been amply detailed above.

If this Court agrees with their validity, a writ should is-

sue to review or vacate the judgment of the United States

Court of Appeals for the Seventh Circuit.

Respectfully submitted,

Mark GILBERT, petitioner, pro se

315 South Peoria Street

Chicago, Illinois 60607

(312) 226-2100