# Petition — Gilbert v. Union Carbide Corp.

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition
- **Published:** January 1, 1980
- **Citation:** 445 U.S. 911

## Text

, ‘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Seventh Circuit Unpublished Order and Opinions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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385006_1512%3A1. Public record. Not legal advice.