Opposition Brief — California Apparel Creators v. Wieder of California, Inc.

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IN THE

Supreme Court of the United States

OCTOBER TERM, 1947

No. 378

CALIFORNIA APPAREL CREATORS, a corporation, et al.,

Petitioners,

vs.

Wieper or Carirornia, Ixc., CALIFORNIA Sportswear, INc.,

CortLey Suretr Company, INnc.,

Respondents.

BRIEF IN OPPOSITION TO PETITION FOR WRIT

OF CERTIORARI ON BEHALF OF CORTLEY SHIRT

COMPANY, INC., RESPONDENT

Leon LAUTERSTEIN,

Lauterstein, Spiller & Brown,

Attorneys for Respondent

Cortley Shirt Company, Inc.,

15 William Street,

New York, N. Y.

Of Counsel:

Jacos L. Isaacs.

ALRITE DA IE LO

HY aK oI

DPT 8 Meo ee

ROLY ELLIE

FPL LYM,

SRA Se eet at |

INDEX

STATEMENT...

ProcEEDINGS BrLow

COMPLAINT

Arripavits BELow

Question or Law Soveut To Br Revirwep......

Pot I—A writ of certiorari should not issue since

the decision of the Second Cireuit Court of Appeals

is based on substantive principles of law well estab-

lished hy this court and recognized and followed by

other courts

A. Peiitioners can have no monopoly in the geo-

graphic names “California” or “Californian”

B. The protection of a geographical name under

the doctrine of “secondary meaning” is prem-

ised on the requirement that the name has come

to signify origin from a single source

(. Where single source of origin is absent, a

private suit cannot be maintained on the ground

of public deception...

D. The requirement that the name must denote a

single source cannot be evaded by the device

of joinder or spurious class suit

Porst 11—There is no conflict between the Second and

Seventh Cireuit Courts of Appeals on the substan-

tive question of law involved in this case...

Port [11—Even if there is a conflict of Circuits on the

substantive law of unfair competition, such conflict

cannot be resolved by this court since under the doc-

trine of Erie v. Tompkins local law governs unfair

competition

seated IRD FARO os

2 AP LON OLMEI OE SS PR

PAGE

Pornt TV—The Cirenit Court’s decision does not eon-

flict with any other Cireuit Court or this court as to

the proper application of Rule 56 FL R. CG. Pew. 94

Point V—This case does not present a federal ques-

tion. Moreover, the questions here presented have

been made inoot by the new trade-mark law (Lanham

Act) .

A. The law of unfair competition is governed by

local law . 7

B. Ali future questions of the nature presented

herein will be governed by the Lanham Act,

and as a result, the decision in this case as a

precedent is moot 98

CONCLUSION Pa

TABLE OF CASES

Addressograph- Multigraph Corp. v. American Expan-

sion Bolt & Mfg. Co., 124 F. (2d) 706 (C. C. A. 7th,

1941), cert. den. 316 U. S. 683 (1942)... rime!

American Civil Liberties Union v. Kiely, 40 F. (2d)

451 (C. C. A. 2d, 1930) 21

American Washboard Co. v. Saginaw Mfg. Co., 103 Fed.

281 (C. C. A. 6th, 1900) 13,15

Armstrong Paint & Varnish Works v. Nu-Enamel

Corp., 305 U. S. 315 (1938) 9, 11

Associated Press v. U. 8., 326 U. S. 1 (1944). 24, 26

Bushwick-Decatur Motors v. Ford Motor Co., 116 F.

(2d) 675 (C. C. A. 2d, 1940) 24

Canadian Ale case, F. T. C. Release, week ended April

13, 1946; Modified Order No. 4572, April 9, 1946;

3 C. C. H. Trade Reg. § 18,377 26

—7_ nee htc NE TELL A OES I LIENIE NS LI LOR ILL LOL A LENE OLED a

ill

PAGE

Charles Broadway Rouss. Inc. v. Winchester Co., 300

Fed. 706 (C. C. A. 2d, 1924), cert. den. 266 U. S. 607

(1924) -..- 9

Cheney Bros. v. Doris Silk Corp., 35 F. (2d) 279 (C. C.

A. 2d, 1929), cert. den, 281 U.S. 728 (79)... 25

Columbia Mill Co. v. Aleorn, 150 U. 8. 460 (1893)... 9

Crescent Tool Co. v. Kilborn & Bishop Co., 247 Fed.

agg, 300 (C. C. A. 2d, 1917) 9,10

Delaware & Hudson Canal Co. v. Clark, 80 U.S. 311, 18

Wall. 311. (1871) 9

District of Columbia v. Sweeney, 310 U. S. 631 (1939)....29

astern Wine Corp. v. Winslow Warren Ltd., 187 F.

(2d) 955 (C. C. A. 2d, 1948), cert. den. 320 U.S. 57

|: | eee — 30

Klein National Watch Co. v. Illinois Wateh Case Co.,

179 U. S. 665 (1900). ae

ly-Norris Safe Co. v. Mosler Safe Co., 7 F. (2d) 6038

iC, C. A. 2d, 1925)— ion . 2

Ely-Norris Safe Co. v. Mosler Safe Co., 62 F. (2d) 524

(7. C. A. 2d, 1933), cert. den. 989 U.S. 756 (1933)... 13

Engl vy. Aetna Life Ins. ('o., 139 F. (2d) 469 (C. C. A.

“6 9)... 24

Erie Railroad Co. v. Tompkins, 304 U. 5. 64 (1937)

29, 23, 28

Fashion Originators’ Guild v. F. T. C., 312 U.S. 457

(1940), aff'g 114 F. (2d) 80 (C. C. A. 2d, 1940)....25, 30

Federal Trade Commission v. Algoma Lumber Co., 291

Uv. §. 67 (1933) _$ ——_—__$__ _____—___—— 13, 16

Federal ‘Trade Commission v. Klesner, 280 U. S. 19

NE iccacewasnen 13, 16

Sd ete

eae

RRS

coe whe

Pin PER Ke

Miele ek

PAGE

Fidelity & Deposit Co. of Maryland v. U. 8., 187 U.S,

See | CUE Piisinirinnnsinnnianiniaeseniinieistniininesinalaittltetiiabtceestatiae :e

Fletcher v. Evening Star Newspaper Co., 133 F. (2d)

395 (App. D. C., 1942), cert. den. 319 U.S. 755 (19438) 24

lurniture Manufacturers Ass’n of Grand Rapids y,

Grand Rapids Guild of Exhibitors, 268 Mich. G85

‘§: | ee wee

CGebbie v. Stitt, 82 Hun 93 (N. Y., 1894), app. dismissed,

te ey 5 5 SERRE a ee 12

Girand Rapids Furniture Co, et al. v. Grand Rapids

Furniture Co,, 127 I. (2d) 245 (C. C. A. 7th, 1942),

COPE, COU ee Ds ee FER CR ceric 18, 20, 29, 93

Haddock v. Haddock, 201 U.S. 562 (1905). 2 |

Hall v. Duart Sales Co., Ltd., 28 F, Supp. 838 (N, D.

2 |

Harvey v. American Coal Co., 50 FF. (2d) 882 (C. CLA,

7th, 1931), cert. den. 284 U.S. 669 (1931). 18, 19

Indian ‘Territory Oil & Gas Co. v. Indian Territory

Iluminating Oil Co., 95 F. (2d) 711 (C. C. A. 10th,

1938), cert. den. 305 U.S. GOT (1988) occ 12

Kellogg Co. v. National Biscuit Co., 305 U.S. 111

(1938), rehearing den. 305 U. S. 674 (1988)009, 11,12

LaTouraine Coffee Co., Inc. v. Lorraine Coffee Co., Ine.,

157 F. (2d) 115 (C. C. A. 2d, 1946), cert. den. 529

U.S. 771 (1946) 12

Layne & Bowler Corp. v. Western Well Works, 261

U. S. 387 (1922) 29

LeRoy Fibre Co. v. Chicago, Milwaukee & St. Paul

Railway Co., 232 U. 8. 340 (1913)... . 2

Meleor Steel Co. v. George A. Fuller Co., 316 U.S. 145

INO -cicciecssosssaptabsnpreisneecadeensveachandbecia nbcscdalelahtonthec labia 21

PAGE

Vosler Sate Co. v. Kly-Norris Safe Co., 273 U.S. 132

(1926)... 13, 14, 15, 16, 17, 19, 20, 25, 27

National Broadeasting Co., Ine. v. U. S., 319 UL_S.

To er: IRR ATE Ane Gee 26

Yew York & R. Cement Co. v. Coplay Cement Co., 44

Fed. 277 (C. C. E. D. Pa., 1890), rehearing den.

45 Fed, 212 (C. C. EB. D. Pa., 1891)... 13, 14, 15, 16, 17, 20

Oppenheimer Vv. I,J. Young & Co., Inc., 144 FP. (2d) 387

TY Gk GRY, VA) 0) en 7

Pochour Lozenge Co., Inc, v. National Candy Co., Ine.,

BI UL Se COG (194) nesssesesesesennnnnnnsnnisenemnseine set 22, 23 28

Pillshury-Washburn Flour Mills Co. et al. v. Kagle, 86

Fed, 608 (C, C. A. 7th, 1898), cert. den, 173 U.S.

fe) -aniauisslsirensitiviosiocinionanstnecenneanaee 18,19

Ruhlin v. New York Life Ins. Co., 8040.5. YO2 (1987) 23

Seandanavia Belting Co, v. Asbestos & Rubber Works

of America, Ine., 257 Fed. 9387 (C. C. A. 2d, 1919),

cert. den, 250 U. S. 644 (1919)... PER eaten Fepatae 7)

Jacob Siegel v. F. T. C.. 90 L. Ed. 697 (U.S. 1945). 20

Skinner Mfg. Co. v. General Foods Sales Co., Ine. 52

F. Supp. 482 (D.C. Neb., 1943), aff'd 143 F. (2d)

895 (CC. CL AL Sth, 1944), cert. den. 323 UL 8. TO6

(GAA) ac cncecsnecnvanecrneencconnrscornnnsnennnnensnnencomnneeenunnteoununmonsneescnnnremnnnesensensnsneeae 10, 12

M. Snower & Co. v. U. S., 140 F. (2d) 367 (C. C. A. 7th,

SI recente cscs gneve 24

Toehelman vy. Missouri-Kansas Pipe Line Co., 130 F.

(9d) 1016 (C. C. A. 3d, 1942)_______._-__—.. 4

United States v. Associated Press, 52 F. Supp. 362

(SS. TD. Ni. Yog UGB) ccesencneneeeensnsvrenerneneenetneensnenennrnneneanennntenennmntn 26

United States v. Bausch & Lomb Optical Co., 131 F.

(2d) 545 (C. C. AL 2d, 1942), aff'd 320 U.S. 711

(19GB) ecceescnrcseroensovnsoreeresceeasnnnsoenpnvnssesnnsecnssssaresnanensnsesnnneennmaensrstsnaener ene 30

PAGE

Whitaker v. Coleman, 115 F. (2d) 305 (C. C. A. 5th,

ERE. - crcsessiccasleppaesisinscliestnacsnbeniaeesindeesoapsiacnopianiosecainitesspinns cate 24

Yale Electric Corporation v. Robertson, 26 F. (2d) 972

ie ty ae istihccceeAlersobaenimaneaiesacccke.. 10

OTHER AUTHORITIES CITED

150 A. L. R. 1067 (1944) . 18

Borchardt, Are Trade-Marks an Anti-Trust Problem,

(1943) 31 Georgetown Law J. 24 Buccs ay)

Boskey, Mechanics of the Supreme Court Certiorari

4 Jurisdiction, (1946) 46 Columbia Law Rev, 255... 2)

i Chafee, Unfair Competition, (1940) 53 Harvard Law

4 aa. TREE SI Re rene ORO NEE oe SEIT Ose SPER oe 13

f Clark on Code Pleading, 2d Ed. (1947) oncom 7

Clark, Summary Judgments, A Proposed Rule of Court,

Fe ots Be gitar a hated bapsaaticemedacaos 21

Derenberg, Trade Mark Protection and Unfair Trad-

ing (1986). Curt ~

Poe. ee

Rule 23 (a) (3) 17

Rule 56 2, 24, 26

Handler, Unfair Competition, (1936) 21 Iowa Law

ERA I I Oooh Oe OET eI ERT TN OO 16

Hearings, Committee on Patents, Subcommittee on

Trade-Marks, 75th Cong., 3rd Sess. on H. R. 9041

(1941) 28

Lanham Act, Public Law 489, Chap. 540, 15 U.S. C. A.

§§ 1051 et seq 28

DB ek, Free Fon ee irre 17

_—~" sete WME LEA RATES SLY PE OBERLIN TM I EY IAI SIMO ES HRD GARIN PRET :

vii

PAGE

» \oore, Federal Practice 94, 26

Vote, (1946) 46 Columbia Law Rey. 818 17

Note, (1947) 47 Columbia Law Rey. 598 9]

Restatement, Torts:

Section 727, Comment (€), P. DSB ccrccccseeeseemseernesses 10

Section 715, Comment (D), pe DAq cece eee it See 10

Robertson and Kirkham, Jurisdiction of the Supreme

Court of the United States (1986) nme 29

Rules of the Supreme Court of the United States, Rule

44 | SL | | Seen nenn te cemeteconn nani Ena monn Nene 8, 20

Zlinkoff, Monopoly v. Competition: Significant Trends

in Patent, Anti-Trust, Trademark, and Unfair Com-

petition Suits, (1944) 53 Yale 1. 1 1. a

pinehieieeee |

IN THE

Supreme Court of the United States

OCTOBER TERM, 1947

No. 378

CALIFORNIA APPAREL CREATORS, a corporation, et al.,

Petitioners,

Wreper or Cauirornia, INc., Catirornia Sportswear, INc.,

CortTLEY Suirt Company, INc.,

Respondents,

BRIEF IN OPPOSITION TO PETITION FOR WRIT

OF CERTIORARI ON BEHALF OF CORTLEY SHIRT

COMPANY, INC., RESPONDENT

Statement

Petitioners seek the issuance of a writ of certiorari to

review the decision and judgment of the United States Cir-

cuit Court of Appeals for the Second Circuit (C. C. A. fols.

095-417), affirming the judgment of the United States Dis-

trict Court for the Southern District of New York (D. C.

fols, 25-32) and dismissing, in part, the appeal therefrom.

28 Spates

DP ietitey

ee Ais

OW fee iad

ro ~—_ —

FAD SRL Se

Proceedings Below

Petitioners, consisting of an incorporated trade asso-

ciation and seventy-live manufacturers of wearing ap-

parel located in the State of California brought an action

in the United States District Court for the Southern Dis.

trict of New York to enjoin the respondents from using the

names “California” or “Californian” in any way in connee-

tion with their businesses and for an accounting and dan-

ages (D. C. fols. 128-151). Respondents are three manu-

facturers of wearing apparel incorporated and located in

the State of New York and having no connection with each

other, Respondent Cortley does not use any variant of

the word “California” in its trade name but does use the

word “Californian” as a brand name for a line of its sports.

wear. However, the term “Californian” when used on labels

or tags atlixed to respondent Cortley’s sportswear has

always heen accompanied by a legend indicating not only

the name of the manufacturer but also that Cortley is

located in New York City (D.C. fols. 281-284, 287, 366,

367).

Respondents moved under Rule 56, FL R. C. P., for sun-

mary judgment dismissing the complaint and for declara-

tory relief (D. C. fols. 201-207, 214-222). The District

Court denied the petitioners’ motion for preliminary in-

junction and granted respondents’ motions, reserving how-

ever for separate trial two issues involving alleged simi-

larity of trade names between one petitioner, California

Sportswear Company, and respondent, California Sports-

wear, Inc., and between the same petitioner and Cortley

Shirt Company, as to any ¢laim relating to a label once

used by said respondent—but not the label mentioned in the

complaint (D.C. fols, 25-82; D. C. Opinion, fols. 1096-

1161).

On appeal from the judgment of the District Court the

Cireuit Court of Appeals for the Second Cirenit affirmed

the judgment of the District Court, dismissing that portion

of the appeal relating to the two issues reserved by the

lyr a eR OR IE Rn OS ee at arte ene, ee!

District Court for separate trial (C. C. A. fols. 395-417).

It is this judgment which petitioners seek to review by pe-

tition for a writ of certiorari.

In view of the fact that petitioners claim that the deci-

sion below is in conflict with decisions of other Circuits it

is necessary to recite the undisputed and controlling facts

which emerged from the voluminous affidavits on the mo-

tion for summary judgment and to refer to the nature of

petitioners” claim as alleged in their complaint. Com-

parison of the undisputed facts herein with those dis-

cussed in the eases relied on by petitioners clearly demon-

strates that there is no conflict and that for this and other

reasons hereinafter set forth certiorari should be denied.

Complaint

The gravamen of the complaint is that the seventy-five

petitioners manufacture and distribute wearing apparel

and accessories in California (D. C, fol, 81); that consider-

able sums of money have been spent in advertising Cali-

fornia apparel (D.C. fols, 87-89, 92, 94, 95, 110); that their

labels indicate the origin of such products as California,

and that “plaintiffs by means of the care, skill, integrity,

fidelity, styling and workmanship used by them in the man-

facturing of their products, have acquired a great reputa-

tion with the retailers and purchasing public” for their

wearing apparel and a great demand for their products

iD. C. fols. 90, 91).

As to the respondent, Cortley, it is alleged that Cortley

has sold and has offered for sale sportswear with the label

which reads “Californian” above the legend “Sportswear

by Cortiey, New York” (see sample labels annexed to

complaint, D. C. fol, 132); that such apparel was not actu-

ally manufactured in California; that the goods were so

labeled to fraudulently procure trade from the purchasing

public and to induce retailers and the buying public to be-

a RRR REO ERED ET UN

lieve that Cortley’s apparel was in fact made and styled in

California; and that Cortley’s products “are inferior in

quality, stvle and workmanship to the apparel manufac-

tured within the State of California” (D. C. fols. 120-128),

Whether this means inferior to the best or poorest quality

goods made in California is not stated either in the com-

plaint or in petitioners’ affidavits.

Petitioners purport to sue not only in their own right but

in behalf of “all other manufacturers of men’s, women’s

and children’s wearing apparel whose places of manufac-

ture are located in the State of California” (D. C. fols. 81,

82). There is no allegation that any of the named plain-

tiffs is entitled to the exclusive use of the word “California”

or “Californian” as among themselves or as to other Cali-

fornia manufacturers not parties to this suit. On the con-

trary, implicit in the complaint is the claim that all mann-

facturers located in California may use these names in

connection with their goods and that all outside that state

are barred, under any circumstances, from using them

(D. C. Opinion, fol. 1115).

Despite extravagant claims in the complaint for the su-

periority of California goods there is no allegation that

there is any standard of quality to which California apparel

manufacturers must or do conform.

There is no allegation as to the nature, volume, history

or background of any particular petitioner’s business or

as to the manner in which any petitioner used the name or

the relation to or effect on such business of the use of such

name; or of any prior exclusive use of the names “Cali-

fornia” or “Californian” by any or all of the petitioners; or

of the length of time of the alleged extensive advertising of

the various California-made products engaged in by any or

all of the petitioners: or as to the period of alleged public

demand for the products, either in the aggregate or as to

any one petitioner or as to the contribution to the alleged

“reputation” or the creation of the alleged “public demand”

by any one or all of the named petitioners as against the

contribution of California manufacturers not parties to the

a — ne RO ee ee ee ee incntintineaciineet icine |

cuit; nor is there any specifie allegation that there has

heen a diversion of sales from any one of the seventy-odd

named petitioners or from any particular manufacturer

in the State of California.

Affidavits Below

These omissions in the complaint are not supplied by

petitioners’ affidavits. The following facts in the answering

aflidavits of Cortley on motion for injunction (which were

also the moving affidavits on motion for summary judg-

ment) were not denied or disputed in the petitioners’ reply

or other affidavits filed during the pendency of the motions

or elsewhere in the record. Moreover, the facts as below

set forth, quoted verbatim from Cortley’s answering brief

in the Second Cireuit Court of Appeals, were not disputed

in petitioners’ reply brief in that court.

“1, Cortley adopted ‘Californian’ as a brand and

style name for men’s and boys’ sport apparel in Feb-

ruary, 19388, and has used it ever since (D. C. fols.

YAH, 287).

>». Whenever the word ‘Californian’ is used on Cort-

lev’s label, or garment tags, it is accompanied by the

words ‘Sportswear by Cortiey New York’ or ‘Sports-

wear by Cortley Shirt Co. N. Y2 (D.C. fol. 284;

sample lahel and tag at fols. 281, 282). Similarly, on

mailing labels, calling cards, salesman’s advance eards,

brochures, letterheads and envelopes used by Cortley

there is printed the name of Cortley and its address

12 West 27th Street, New York 1, New York (D. C.

fols. 284, 287, 366, 567).

3. At the time of the adoption of this name by

Cortley, manufacture and advertising of California

made sportswear was negligible (D.C. fols. 285, 380,

381).

4. Most of the named plaintiffs were not in business,

at least not under their present names, until after

the adoption of the brand naine ‘Californian’ by Cortley

(D. C. fol. 318).

;

Plaintiff California Apparel Creators, Ine., a trade

association, was not incorporated until a few months

hefore this action was begun. It does not manufacture

or distribute. The purpose of its organization, infer

alia, was the propagandizing of California made ap.

parel (D. C. fols. 333, 621-626).

5. The name ‘California’ has been frequently used

by non-California manufacturers and, to the limited

extent permitted by the statute, has been registered

in the patent office by manufacturers outside of tha:

State (D. C. fols. 293-296, 303-305, 487-440).

6. Many concerns in California use ‘New York’ to

designate their business or products (D. C. fols. 297-

299).

7. In the apparel trade geographical names (as is

well known) are frequently used not to indicate place

of manufacture but arbitrarily to associate the article

with the type of garment used in or the climate of a

locality, ete.; for example, Palm Beach suits, Paris

garters, ete. (D. C. fols. 300, 301, 369, 370, 422-426).

8. Included among the many plaintiffs are manu-

facturers of such diverse articles as dresses, leather

goods, photo supplies, neckwear, slippers and shoes,

infants’ and children’s wear, jewelry, hats and eaps,

millinery and handbags (D. C. fols. 318, 319, 550,

551).

9, On the argument it was conceded, and so stated

in the answering affidavits without denial in the reply

affidavits, that there are as many as 4,500 apparel!

manufacturers located in the State of California in

addition to the named plaintiffs (D. C. fol. 320).

10. There is no standardization of quality of the

many products made by the seventy-odd named plain-

tiffs or by the many other California manufacturers

in whose behalf plaintiffs claim to bring this suit

(D. C. fols. 307, 389).

There is no square denial that some California

inanufacturers purchase their original designs and pat-

terns at various model houses in the east, and mosily

Ee [EEE EER ATR TRIE TE = PURE SO 0 Sake par

(

in New York, and affix thereto labels with their Cali-

fornia address; nor is it squarely denied that almost

all fabrie from which apparel is manufactured is manu-

factured in the east (D. C. fols. 428-435, 384, 385,

748-751).

11. Nota single affidavit by any member of the pur-

chasing public was filed on either motion to show that

any person had bought Cortley’s goods in the belief

that they were the goods of a California manufacturer

or that Cortley’s label was likely to deceive or cause

confusion.

12. There was no affidavit or proof by plaintiffs of

diversion of sales from any one or all of the plain-

tiffs or from any other particular California mann-

facturer: in fact, plaintiffs frequently assert that the

demand for California-made apparel has been in excess

of the ability of the California manufacturers to pro-

duce (D. C. fols. 597, 668).”

Qn these conceded and indisputable facts in the record

as applied to the allegations of the complaint, and dis-

regarding any dispute therein as to which party could

properly claim “superiority” of goods or the larger public

demand, ete., or other matters which are immaterial to

the hasie question presented, Cortley was, we respectfully

submit. entitled to dismissal of the complaint as a matter

of law. and hence summary judgment was properly granted.

Question of Law Sought To Be Reviewed

Thus the question of law decided by the Circuit Court of

Appeals which petitioners seek to review by the issuance

by this court of a writ of certiorari is, whether seventy-five

named plaintiffs, manufacturers of diverse articles of wear-

ing apparel, all having their places of business in California,

claiming to sue in behalf of at least 4,500 additional manu-

facturers (none of whom intervened in this suit), can main-

‘ain a private so-called class suit to enjoin defendant Cort-

ley, 2 New York manufacturer of men’s sportswear from

ryt Gente APD,

fe HALTS IK

using the brand or style name “Californian” accompanied

by the legend “Sportswear by Corttey, New York”, where,

upon undisputed and conceded facts,

a) The names “California” or “Californian” do not con-

note a single source but rather as a minimum, according

to petitioners’ own theory, all wearing apparel manufac-

turers in the State of California;

b) There is no standardization of the many products

made by the various petitioners;

ce) Although four months elapsed during the pendency

of the motions in the District Court during which petition-

ers presented voluminous affidavits, not a single affidavit

was presented to show that in fact there had been or

could be any diversion of sales from any one California

manufacturer as a result of Cortley’s label which clearly

indicated its New York location.

POINT I

A writ of certiorari should not issue since the de-

cision of the Second Circuit Court of Appeals is based

on substantive principles of law well established by

this court and recognized and followed by other courts.

It is not the function of a writ of certiorari to bring up

for review by this court decisions based on long and well-

established principles of law (see Rules of the Supreme

Court of the United States, § 38 (5)). Contrary to peti-

tioners’ contentions (Petitioners’ Brief, Points I, III), the

decision of the Second Cireuit in the instant case not only

does not conflict with any decision of the Seventh Cireuit

(see Point IL, infra) but is based on the following substan-

tive principles of law which have been established by this

court and recognized and followed by other courts.

rere eevee ween ten —

4. Petitioners can have no monopoly in the geographic

names “California” or “Californian”.

It is of course well settled that a geographical name,

indicative of the place of manufacture, cannot be granted

9 trade-mark monopoly.

Elgin National Watch Co. v. Illinois Watch Case Co.,

179 U. S. 665 (1900) ;

Columbia Mill Co. v. Alcorn, 150 U. S. 460 (18953);

Delaware & Hudson Canal Co. v. Clark, 80 U.S. 311,

13. Wall. 311 (1871).

B. The protection of a geographical name under the doctrine

of “secondary meaning” is premised on the requirement

that the name has come to signify origin from a single

source.

Although a geographic name will be protected if it has

acquired secondary significance, such protection is condi-

tioned on the indispensable requisite that whatever is

asserted to carry the secondary meaning has come to signify

origin from a single and particular source.

Kellogg Co. v. National Biscuit Co., 305 U.S. 111,

118, 119 (1938), rehearing den. 305 U. S. 674

(1938) ;

Armstrong Paint & Varnish Works v. Nu-Enamel

Corp., 805 U.S. 315, 335, 336 (1938) ;

Elgin National Watch Co. vy. Illinois Watch-Case Co.,

179 U.S. 665 (1900) ;

Charles Broadway Rouss, Inc. v. Winchester Co., 300

Fed. 706, 715 (C. C. A. 2d, 1924), cert. den. 266

U.S. 607 (1924) ;

Scandanavia Belting Co. v. Asbestos & Rubber Works

of America, Inc., 257 Fed. 937, 942 (C. C. A. 2d,

1919), cert. den. 250 U.S. 644 (1919);

Crescent Tool Co. v. Kilborn & Bishop Co., 247 Fed.

299, 300 (C. C. A. 2d, 1917);

. -” ' - — —

Skinner Mfg. Co. v. General Foods Sales Co., Inc.,

52 F. Supp. 432, 447 (D. C. Neb., 1943), aff'd 149

F. (2d) 895 (C. C. A. 8th, 1944), cert. den. 323 T.s.

766 (1944) ;

Restatement, Torts, Sec. 727, Comment (a), p. 58s:

also id. Section 715, Comment (hb), p. 544.

4 The rule is settled that

. “Legally, the fundamental function of a trade-mark

| or trade name is to denominate or identify the goods,

& services or business of a single trader” (Restatement,

4 Torts, supra, p. 588).

‘

‘ It is

4 “an absolute condition to any relief whatever that

the plaintiff in such cases show that the appearance

of his wares has in fact come to mean that some par-

ticular person—the plaintiff may not be individually

; known—makes them, and the public cares who does

! make them and not merely for their appearance and

structure * * *” (Crescent Tool Co. vy. Kilborn é&

Bishop Co., supra, at p. 300). (Italics ours.)

ERGO

Manifestly, in a case where upwards of 4,500 competing

manufacturers make various lines of apparel and it is not

only conceded but claimed by petitioners that each may

and does use the same name to designate his goods to the

public, then whether the name is coined, generic or geo-

graphical, it cannot denote a single source or be the ex-

elusive property of any one or all of such manufacturers.

The theory of the doctrine of secondary meaning is tlie

protection of names which have hecome recognized by the

public as the “commercial signature” or the “authentic

seal” of a particular merehant. (See Yale Electric Cor-

poralion vy. Robertson, 26 F. (2d) 972, 973, 974 (C. C. A.

2d, 1928).) Where the name is used in common by thou-

sands of manufacturers who have no definite standard of

quality. as denominating various types of goods, the name

‘annot indicate to the public the source. or guarantee the

reputation or the quality of the goods of any manufacturer.

Ee” pe nth RAR NCCE RAIN UE A n

Petitioners’ basic contention, as adequately summarized

inthe opinion of the District Court below, is that California

manufacturers are entitled to the exclusive use of the

names “California” or “Californian” to the exclusion of

al] other manufacturers (D. C. Opinion, fol. 1115). Indeed,

petitioners in the District Court flatly advanced the broad

claim, quoted by the District Judge from their brief in that

court, that without regard to the circumstances, “of two

ysers of a geographic term, the one located in that geo-

eraphic area could restrain the other not located in that

area” (D. C. Opinion, fol. 1127). The confusion as to the

true nature and scope of “secondary meaning” which this

contention reveals is also demonstrated in petitioners’ com-

plaint, affidavits and brief. Petitioners allege, in their com-

plaint, that as a result of the advertising and other activi-

ties by the petitioners

“* * * the word ‘California’ has acquired a secondary

meaning in the minds of the purchasing public to denote

wearing apparel of fine styling, good workmanship,

originality and color * * *” (D.C. fol. 99).

To acquire secondary significance the words must denote

not the goods but the trader. A coniention essentially

identical to that propounded by the petitioners here was

rejected by -ustice Brandeis in Wellogg Co. ¥. Nations!

Risenit Co., BOD U.S. 111 (1988), who stated (at p. TIS):

“But to establish a trade name in the term ‘shredded

wheat’ the plaintiff must show more than a subordinate

meaning Which applies to it. It must show tha the

primary significance of the term in the minds of the

constming public is not the product but the producer.

This it has not done.” (Italies ours. )

To the same effect is Armstrong Paint & Varnish Works

v. Nu-Enamel Corp., 305 U.S. 315, 386 (1988).

Petitioners, in their affidavits, have also averred that the

“word ‘CaliZernia’ or ‘Californian’ means to the buying

public merchandise. whether sportswear, tailored wear,

aecessories, or other commodities produced and manufac-

tured in the State of California” (D. C. fol. 759). (Italies

Nd Ri EN A ARAN

ours.) Thus, boiled down, petitioners’ claim to exclusive

use of the name “California” is founded on the thesis that

such protection is warranted because such name when

affixed to wearing apparel denotes that such apparel origi-

nates from the geographical locality of California.

Petitioners erroneously fail to perceive the well-estab-

lished essential distinction between the primary and sec.

ondary meaning of geographical names. When a name

is used merely to denote that the product comes from a

particular geographical locality, such name is being used

in its primary and not secondary sense. It is only where

a name has acquired a significance apart from this primary

meaning as denoting the products of a particular producer,

wherever he may be located, that the name can be said to

have a secondary meaning and protected as such. Kellogg

case, supra; Skinner Mfg. Co. v. General Foods Sales Co.,

Inc., 52 F. Supp. 482 (D. C. Neb., 1948), aff'd 143 F. (2d)

895 (C. C. A. 8th, 1944), cert. den. 323 U. S. 766 (1944);

see Indian Territory Oil and Gas Co. vy. Indian Territory

Illuminating Oil Co., 95 F. (2d) 711, 7138 (C. C. A. 10th,

1938), cert. den. 305 U. S. 607 (1938); Derenberg, Trade

Mark Protection and Unfair Trading, pp. 326, 327 (1936).

To support petitioners’ contention would so pervert the

established doctrine of secondary meaning that it would

abolish (1) the rule that there can be no monopoly in a

geographic name (see paragraph A, supra) and (2) the

rule that a trader although not in the geographical area

may arbitrarily or fancifully adopt such a name as a trade

mark or trade name for his goods (see LaTouraine Coffee

Co., Inc. v. Lorraine Coffee Co., Inc., 157 F. (2d) 115

(C. C. A. 2d, 1946), cert. den. 329 U.S. 771 (1946); Gebbie

vy. Stitt, 82 Hun 93 (N. Y. 1894), app. dismissed, 148 N. Y.

732 (1895).

€. Where single source of origin is absent. a private suit

cannot be maintained on the ground of public deception.

This court has recognized and applied the well-established

principle that where single source of origin is absent a pri-

vate suit cannot be maintained on the ground of public de-

ception. The sole remedy in such cases lies with the Fed-

eral Trade Commission.

New York & R. Cement Co. v. Coplay Cement Co.,

44 Fed. 277 (C. C. E. D. Pa., 1890), rehearing den.

45 Fed. 212 (C. C. E. D. Pa., 1891);

American Washboard Co, v. Saginaw Mfg. Co., 103

Fed, 281 (C. C. A. 6th, 1900) ;

Ely-Norris Safe Co. v. Mosler Safe Co., 7 F. (2d)

603 (C. C. A. 2d, 1925) ;

Mosler Safe Co. v. Ely-Norris Safe Co., 973 U.S. 132

(1926) ;

Ely-Norris Safe Co. v. Mosler Safe Co., 62 F. (2d)

524 (C. C. A. 2d, 1933), cert. den. 289 U.S. 756

(1933) ;

See:

Federal Trade Commission v. Klesner, 280 T. S. 19,

95, 26 (1929) ;

Federal Trade Commission vy. Algoma Lumber Co.,

2991 U. S. 67, 79 (1983) ;

Hall v Duart Sales Co., Ltd., 28 F. Supp. 838, 839,

840 (N. D. TIL. 1939):

Chafee, Unfair Competition, (1940) 53 Harvard Law

Rey., 1289, 1307-1321.

The Cireuit Court of Appeals for the Second Cireuit has

properly relied on the principles established by these cases.

In the Coplay Cement case, supra, it was held that a suit

to restrain the use of the name “Rosendale Cement” could

not be maintained though such name was known to the

public to mean cement made in Rosendale where it did not

appear that the plaintiffs were the only persons making

cement in that place and where defendant's factory was in

another state.

Mr. Justice Bradley stated (p. 278) that to allow such a

suit or one by dealers in genuine Dresden crockery or Irish

linen against a merchant who sold goods under those names

but not of that origin “would open a Pandora’s box of vex-

atious litigation”; that although the legislature might

: PMS WEASEL RE RNC OMOEA Ta AREER

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justly intervene to prevent impositions on the public, nev-

ertheless, “if a person seeks to restrain others from using a

particular trade-mark, trade name, or style of goods, he

must show that he has an exclusive ownership or property

there, To show that he has a mere right, in cominon with

others, to use it, is insufficient” (p. 279). (Italies ours.)

The doctrine of the Coplay case has been recognized and

applied by this court in the case of Mosler Safe Co. y. Ely.

Norris Safe Co., 273 U.S. 182 (1936). The decision of this

court in the Mosler case is controlling in this case and was

thus properly followed by the Second Cireuit Court of

Appeals. In that case, plaintiff, a manufacturer of safes

with an explosion chamber sought to enjoin a competitor

from falsely representing to purchasers that the latter's

safes contained explosion chambers, with the result that the

public was led to purchase defendant's safes. In the Dis-

trict Court, Judge Augustus Hand dismissed the bill, stat-

ing:

“Such conduct might serve as a basis for a restrain-

ing order in a suit by the Federal Trade Commission.

It does not follow, however, that a private person can

secure an injunction by reason of mere misbranding

where, as here, the defendant has never sold its goods

- moe of complainant” (Transcript of Record, fols.

obey e

On appeal to the Second Circuit Court of Appeals, Judge

Learned Hand recognized the underlying principle of the

Coplay case that where a number of manufacturers pro-

duce an article or articles, there is no exclusive property

right residing in any or all of these manufacturers and, as

a result, damage cannot be shown (Coplay case, supra, at

p. 279). In discussing the Coplay case, Judge Hand

pointed out that it did not appear that the plaintiffs were

the only persons making cement in Rosendale. The result,

according to Judge Hand, was that “There was no reason,

therefore, to assume that a customer of the defendant, de-

ceived as to the place of origin of defendant's cement, and

desiring to buy only such cement, would have bouglit of the

plaintiffs. It resulted that the plaintiffs did not show any

necessary loss of trade through defendant’s fraud upon its

own customer” (p. 603). Judge Hand stated that in such

a case (Where the plaintiff has no monopoly of the goods)

the plaintiff “though aggrieved in company with other hon-

est traders cannot show any ascertainable loss. He may not

recover at law and the equitable remedy is concurrent. The

law does not allow him to sue as a vicarious avenger of the

defendant's customers” (p. 604).* (Italics ours.)

Having thus explained and affirmed the Coplay case,

Judge Hand then proceeded to distinguish it from the case

before him on the ground that the complaint in the Mosler

ease alleged a practical monopoly for the articles in ques-

tion with the result that there was a necessary inference

that all purchases from defendant by customers desiring

explosion chamber safes were diversions of sales from the

plaintiff. On this basis alone Judge Hand reversed the

decree below.

This court granted certiorari hecause of an alleged con-

flict between the decision of the Second Circuit and the de-

cision in American Washboard Co. v, Saginaw Mfg. Co.,

supra.** This court, reversing, found it unnecessary to

*Tr is difficult to reconcile this statement to the effect that at law

there could be no recovery because no plaintiff could show “any ascer-

tainable loss” and that the “equitable remedy is concurrent” with

Judge Hand's statement in the dissent below to the effect that

although no action at law could be maintained by these plaintiffs

because of inability to show “ascertainable loss”, that injunction

might issue on the speculative assumption that some one plaintiff

might show loss. As Judge Clark pointed out below (C. C. A.

Opinion, fol. 400) summary judgment is based on realities and

cannot be denied merely on the basis of unrealistic speculative possi-

bilities, particularly where under the doctrine of the Mosler case as

applied to the theory of petitioners’ own complaint none of the peti-

tioners, as a matter of law, can be damaged.

** The Coplay case was pressed even further in the American

Iashboard case, wherein a distinguished bench consisting of Judges

Day, Taft and Lurton, held that plaintiff, the sole manufacturer of

washboards with aluminum rubbing surfaces could not enjoin de-

jendant from falsely representing its washboards as aluminum, where

plaintiff failed to show direct loss of customers or direct injury to

itself, The alleged conflict of circuits revolved solely around the

question of whether such an action could be maintained where plain-

tiff had a monopoly of the goods.

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resolve the alleged conflict because, as Mr. Justice Holmes

construed the complaint in the Mosler case (p. 134):

“It is consistent with every allegation in the bill and

the defendant in argument asserted it to be a fact, that

: there are other safes with explosion chambers beside

* that for which plaintiff has a patent. The defendant is

4 charged only with representing that its safes had ‘an’

‘ explosion chamber, which, so far as appears, it had a

i perfect right to do if the representation was true. /f,

a on the other hand, the representation was false as it is

alleged sometimes to have been, there is nothing to

show that customers had they known the facts would

have gone to the plaintiff rather than to other competi-

tors in the market, or to lay a foundation for the claim

for a loss of sales.” (Italics ours.)

It is thus clear that implicit in the opinions of both the

Circuit Court and this court was the recognition of the

principle stated by Mr. Justice Bradley in the Coplay case

that where a number of manufacturers make the article or

articles, thus providing an open market, a private suit for

injunction will not lie even where there has been misrepre-

sentation or misbranding as to the source which results in

injury to defrauded customers or the public. See Handler,

Unfair Competition, (1936) 21 lowa Law Rev. 175, 194.

The distinction between private litigation to establish an

exclusive property right in a name and a proceeding by the

Federal Trade Commission to prevent public deception was

reiterated and clearly stated by Mr. Justice Brandeis in

Federal Trade Commission vy, Klesner, 280 U.S. 19, 25, 26

(1929) and by Mr. Justice Cardozo in Federal Trade Com-

mission Vv. Algoma Lumber Co., 291 U.S. 67, 79 (1933).

D. The requirement that the name must denote a single

source cannot be evaded by the device of joinder or

spurious class suit.

Petitioners, alleging broadly a demand for California

wearing apparel generally, without regard to the product

of any particular manufacturer, evidently recognize the im-

ssibility of compliance with the requirement set down

in the Mosler case of a legally demonstrable loss of trade

by a particular manufacturer. They seek to overcome this

obstacle by a “spurious” class suit (Rule 23 (a) (8)

F. R. C. P.) which presumably it was thought would bind

and inure to the benefit of every manufacturer of the vari-

ous articles in question located in the State of California.

The difficulty cannot be met in this manner. The “spuri-

ous” class suit is merely a permissive joinder device which

does not grant authority to adjudicate finally the rights of

non-appearing parties or confer any additional substantive

rights upon the plaintiffs suing. Oppenheimer v. F. J.

Young & Co., Inc., 144 F. (2d) 387 (C. C. A. 2d, 1944) ; 2

Moore’s Federal Practice, 2235-2245, 2291; Note, (1946) 46

Columbia Law Rev. 818; cases cited in Clark on Code

Pleading, 2d Ed. (1947), pp. 405, 407. No other Cali-

fornia manufacturers except the original plaintiffs have

intervened. If, as plaintiffs contend, there is a public de-

mand for California-made apparel without regard to the

particular manufacturer, quality, price and the other usual

considerations of purchase, the patronage, instead of going

to any of the named plaintiffs, might go to any one or

more of the other 4,500 manufacturers not parties to this

suit and who, as Mr. Justice Bradley stated in the Coplay

case (supra, p. 279), “might with equal justice prosecute

for the same profits”. Thus the fatal defect in the cause

of action found by this court to exist in the Mosler case

exists in the instant case to even a greater degree,

GL As SOOO NE COT OEE a

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POINT Il

There is no conflict between the Second and Seventh

Circuit Courts of Appeals on the substantive question

of law involved in this case.

Petitioners base their petition for the issuance of a writ

of certiorari on the alleged conflict between the decision

of the Second Circuit in the instant case with decisions in

the Seventh Circuit in the cases of Pillsbury-Washburn

Flour Mills Co., et al. v. Eagle, 86 Fed. 608 (C. C. A. 7th,

1898), cert. den. 173 U.S. 703 (1899); Harvey v. American

Coal Co., 50 F. (2d) 832 (C. C. A. 7th, 1931), cert. den, 284

U.S. 669 (1931); and Grand Rapids Furniture Co., et al.

v. Grand Rapids Furniture Co., 127 F. (2d) 245 (C. GC. A.

Tth, 1942), cert. den. 321 U.S. 771 (1948). Not only did the

Second Circuit follow, as controlling, legal principles estab-

lished by this court (see Point 1, infra) but these principles

are not in conflict with decisions of the Seventh or any other

Circuit.

In a few exceptional cases the doctrine of “single souree”

has been expanded to encompass the protection of certain

geographical names where through some combination of

circumstances such a name has come to connote in the public

mind not a single producer, but a limited number of pro-

ducers. These exceptions have heen limited to cases where

the particular desirability of the products bearing the name

is inherent in the goods because of the peculiar natural

attributes of the locality from which they are mined or

where they are grown (Harvey v. American Coal Co.,

supra) or where a limited group of producers in a particu-

lar region, using a peculiar patent or other special process,

have produced a product of a single quality whose superi-

ority is generally recognized and connected with the region.

Pillsbury-Washburn Flour Mills Co., et al. v. Eagle, supra:

Grand Rapids Furniture Co., et al. v. Grand Rapids Furn-

ture Co., supra; see Note, 150 A. L. R. 1067, 1092, 1093

(1944).

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In the Pillsbury case the seven plaintiffs all manufac-

tured flour in Minneapolis, jointly developed over thirty :

vears, Which flour, known as “Minneapolis Patent”, re- i

sulted in the reputation for producing the finest hard spring :

wheat flour in the country. The wheat used by these mills .

was systematically inspected and graded by competent and é

disinterested persons appointed by the State of Minnesota 4

for that purpose; comparison of mill products was made

daily for over twelve years by submission to an expert by

each mill of two pounds of its highest grade flour. The

same systems, methods and machinery were employed by

each member of the group. Defendant originally sold

plaintiffs’ processed flour but later substituted an inferior

brand milled outside of Minnesota under the name “H. R.

Eagle’s Best Minnesota Patent, Minneapolis, Minnesota”.

Relief to plaintiffs was granted, the court holding that

this small group of Minneapolis manufacturers, for prac-

tical purposes, operated as a single entity.

It is plain that this decision based as it was on the rigid

standardization of one product by a small group, does not

purport to encompass and cannot be stretched to support

a “spurious” class suit relating to the diverse products of

over 4,500 manufacturers, covering an entire state, where

there is no possible claim of standardization as to any of

the various kinds of products here involved. The Pillsbury

‘ase decided before the controlling Mosler ease was cited

to this court in the latter case in appellants’ main (p. 33)

and reply briefs (p. 2) but was not noticed in the opinion,

probably because its holding was regarded as based on rd

exceptional facts which did not justify application of the

case to a different state of facts.

The Harvey case, supra, involved twenty-three plaintiffs

who were producers of coal in the Pocohontas Valley region

of Virginia and West Virginia. Because of qualities in-

herent in the soil of the Pocohontas region, the coal, known

as “Pocohontas Coal”, mined from this locality possesses

qualities found in no other coal. In view of the fact that

the standardized qualities of Poeohontas coal which made

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it unique were imparted to it by the physical attributes of

the locality, independent of the contributions or identity

of the individual producers it was perhaps proper for the

Seventh Circuit to treat the term “Pocohontas Coal” as

connoting a “single source”. This case, however, does not

stand as precedent for any holding contrary to that of the

Second Circuit in the instant case, since there is, of course,

no uniform quality inherent in dresses or other wearing

apparel merely because the manufacturer happens to be

located in California,

Appellants also rely on the Grand Rapids Furniture case,

supra. Neither the opinion nor the briefs in that case dis.

cuss the question here presented. In that case twenty-five

plaintiffs, all manufacturers of furniture which conformed

to uniformly high standards of quality and enjoyed many

years of public approval, sought to enjoin the defendants

from using the name “Grand Rapids Furniture Company”.

No aflidavits were filed in support of or in opposition to

the motion. The defendant moved to strike the complaint

solely on jurisdictional grounds. The sole question dis-

cussed by the court in detail was whether in a class suit,

the individual party plaintiffs could aggregate the value

of their claims in order to satisfy the jurisdictional require-

ment. Neither the Coplay nor the Mosler cases were cited

nor the principle here involved discussed in the briefs or by

the court. The decision of the Second Circuit in the in-

stant case cannot conceivably be viewed as in conflict “on

the same maiter” with a decision wherein the issues herein

involved were neither raised nor discussed. (Rules of the

United States Supreme Court, $38 (5) (a).)

Whether the eases cited by the petitioners can be con-

sidered to have legal vitality in the face of the decision

of this court in the JWosler case is extremely doubtful, but

even if suel vitality be conceded, arguendo, their limited

holdings form no basis of conflict with the decision of the

Cireuit Court in the instant case.

Judge Clark, writing for the majority in this case, did

not consider these cases to be in conflict with his decision,

9] ;

but rather, properly treated them as sui generis exceptions * f

to the well-established. requirement of “single source” :

whose extension to encompass the instant case was required ‘

neither by logie nor law (C. C. A. Opinion, fols. 403, 404). :

As Judge Clark pointed out, the logic of the cases cited

hy petitioners, involving small identifiable groups of manu-

facturers, producing goods having a close and obvious con-

nection with the locality either because of the qualities ‘

imparted to the goods by the locality or because of a stand- ;

ardization of quality imposed by and adhered to by all

the producers in that locality, cannot be extended to cover

a case involving a large unidentifiable group of manufac-

turers, encompassing an entire state, manufacturing di-

verse forms of apparel for both men and women from te

jewelry through under and outer garments, to hats, which

goods have no apparent connection to the locality in which

they are made and which concededly meet no fixed standard ?

of quality or grading (C. C. A. Opinion, fol. 405).*

The difference in degree between the situation upon

which petitioners’ claim for protection in this case is based

and the factual situation in the cases relied on by petition-

ers is obviously so great that no real basis for a claim of

conflict exists. As Justice Holmes frequently reiterated,

differences of law are often based on differences of de-

gree. (Holmes, J., in LeRoy Fibre Co. v. Chicago, Mil-

waukee & St. Paul Railway Co., 232 U.S. 340, 354 (1913) ;

Haddock v. Haddock, 201 U.S. 562, 631 (1905).

*This distinction between small identifiable groups and large

amorphous groups has been recognized in the law of libel (in some

respects cognate to unfair competition), where as an exception to the

general rule that the libel must refer to an identifiable person, the

courts have permitted the action to be maintained where the libel

referred to a small identifiable group. Note, (1947) 47 Columbia Law

Review, 598, 599. However, this exception was not extended to cover

a case where it was charged that the libel related to citizens of the

entire State of California. See American Civil Liberties Union v.

Kiely, 40 F. (2d) 451 (C. C. A. 2d, 1930).

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POINT III

Even if there is a conflict of Circuits on the substantive

law of unfair competition, such conflict cannot be

resolved by this court since under the doctrine of Erie

v. Tompkins local law governs unfair competition.

This case involves solely a question of common law

unfair competition. In Pecheur Lozenge Co., Inc. v. Na-

tional Candy Co., Inc., 315 U. S. 666 (1941), this court

held that under the doctrine of Erie Railroad Company vy.

Tompkins, 304 U. S. 64 (1937), questions of unfair com-

petition were governed by the local law of the states. (To

the same effeet is Addressoqraph-Multigraph Corp. y.

American Eapansion Bolt & Mfg. Co., 124 F. (2d) 706

(C. C. A. 7th, 1941), cert.den. 316 U.S. 685 (1942).) Sinee

local law, rather than federal law, governs substantive

questions in the field of unfair competition it is inaccurate

to refer to divergent Cireuit Court opinions in this field as

involving conflicts in federal law.

The Second Cireuit Court of Appeals recognized the ap-

plicability of the Pecheur doctrine to the instant case and

utilized federal precedent only as a guide to state law,

stating, “While ‘most of the issues in this case involved

questions of common law’, we feel we should say, wit!

Justice Brandeis in a similar situation, Kellogg Co. v. Na-

tional Biscuit Co., 305 U.S. 111, 115, n. 1: ‘but no clain

has been made that the local law is any different from

the general law on the subject, and both parties have relied

almost entirely on federal precedent’ ” (C. C. A. Opinion,

fol. 402, n. 5). It should also be noted that in the Gran/

Rapids Furniture Co. case (the only case cited by peti-

tioners decided subsequent to Erie v. Tompkins), there

was precedent in the local law of the State of Michigan

for the action taken although not cited or discussed. See

Furniture Manufacturers Ass'n of Grand Rapids vy. Grand

Rapids Guild of Exhibitors, 268 Mich. 685 (1934). Thus,

LR ODS RNR PME eee c OR

even if it were conceded that the holding of the Second

(irenit in the instant case conflicts with the decision of the

Seventh Cireuit in the Grand Rapids case, this conflict can

he properly viewed as merely a conflict between the state

courts of New York and Michigan, a conflict which this

court has no duty or authority to resolve.

Even if it be conceded, arguendo, that the decisions of

the Second Circuit in the instant case and of the Seventh

Cireuit in the cases cited by petitioners are conflicting appli-

‘ations of federal law, a decision by this court would nof

resolve that conflict for future cases. Since, in future liti-

gation involving the matters here presented the Cireuit

Courts, under the doctrine of the Pecheur case, are required

to follow local law, no decision by this court contrary to

local law would be binding either on the state courts or the

Circuit Courts. See Addressograph-Multigraph Corp. v.

American Expansion Bolt & Mfq. Co., supra.

As was stated by this court in Ruldin v. New York Life

lus. Co., 304 U.S. 202, 206 (1937) :

“As to questions controlled by state law, however,

conflict among circuits is not of itself a reason for

granting a writ of certiorari. The conflict may be

merely corollary to a permissible difference of opinion

in the state courts * * *.

No decision at the present time could reconcile any

‘conflict of circuits’ or do more than enunciate a tenta-

tive rule to guide particular federal courts. There-

fore, even assuming that it is adequately presented

on the record, we decline to decide the issue of state

law.”*

*The only reason that the writ of certiorari issued in the Ruhlin

case was not dismissed as improvidently granted was because ‘“‘the

question in the case was regarded below, both by courts and by coun-

sel [prior to the decision in Erie v. Tompkins] as one of ‘general’

or ‘iederal law’ * (pp. 206, 207). In the instant case, Judge Clark

clearly regarded local law as controlling but since neither party

claimed that the local law in any way differed from federal precedent,

he looked to federal cases merely as guides to the local law (C. C. A.

Opinion, fol. 402, n. 5).

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PROT TIPPL?

EA REE I OOM NE aN TIS SB EASA BENE YAN LAS PRT NENT: gS PPE I ITE SR DRE EN RS OS SE RAT ate Fr

POINT IV

The Circuit Court’s decision does not conflict with

any other Circuit Court or this court as to the proper

application of Rule 56 F. R. C. P.

E |

Petitioners’ contention that the views of the Circuit

Court in this case as to the proper application of the sum-

mary judgment rule conflict with its own prior decisions,

and decisions in this court and other circuits is, like Don

Quixote’s tilts with windmills, an attempt to find dispute

where none in reality exists. It would serve no purpose

to review in detail the Circuit and Supreme Court decisions

cited by petitioners which are allegedly in conflict with the

views of the Second Circuit in the instant case. Suffice it

to say that all these cases merely stand for the proposition

that it is erroneous to grant summary judgment where

there is a genuine dispute as to material facts. This propo-

sition was not denied by the Second Cireuit in this case.

Respondent, in its briefs and arguments below, took the

position, which it maintains, that as matter of law, on the

undisputed facts, petitioners have no case.

The cases cited by petitioners, and the decision of the

Cireuit Court below, all affirm the proposition that where

there is no genuine dispute as to any material facts and

where on the basis of the conceded facts one party is en-

titled to judgment as a matter of law, the vranting of

summary judgment is not only proper but called for. (See

e.g. Associated Press v. U. S., 326 U.S. 1, 16 (1944) ; Toebel-

man v. Missouri-Kansas Pipe Line Co., 130 F. (2d) 1016,

1018 (C. C. A. 3d, 1942); Whitaker v. Coleman, 115 F. (2d)

305, 306 (C. C. A. Sth, 1940); M. Snower & Co. v. U. S., 140

I’, (2d) 367, 369 (C. C. A. 7th, 1944); Engl v. Aetna Life

Ins. Co,, 189 F. (2d) 469, 472, 473 (C. C. A. 2d, 1948):

; Bushwick-Decatur Motors v. Ford Motor Co., 116 F. (2d)

675, 679 (C. C. A. 2d, 1940) ; Fletcher v. Evening Slar News-

paper Co.,, 133 F. (2d) 395 (App. D. C., 1942), cert. den. 319

U.S. 755 (1943); 3 Moore, Federal Practice 3175 (1938).)

NE SA aaa OSE oe PARAS ACh,

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Petitioners, in their petition and brief, enumerate the

allegedly “disputed facts”. These “facts” are in substance

whether “California” or “Californian”, as used by these

7) petitioners in common with several thousand other Cali-

fornia. manufacturers, possess secondary significance;

whether respondent’s practices are deceptive; and whether

petitioners have suffered loss by reason of such practices.

These are false issues since, on the basis of conceded facts.

petitioners, as a matter of law, have no exclusive property

right in and cannot show any secondary meaning in the

names “California” or “Californian” (Point I B, supra),

and since, as a matter of law, the requirement of “single ;

source” as expounded in the Mosler case, and the estab- &

lished substantive law on which the doctrine of that case

is founded, is absent. It follows that petitioners cannot

show any “ascertainable loss” (L. Hand., J., in Mosler ease,

supra, at p. 603) and hence petitioners have no case, what-

ever collateral factual disputes appear on the record.

Indeed, under the theory of the Mosler case, judgment

of dismissal on bill and answer without any affidavits would

have heen proper in this case. This was the procedure

under which the bill was dismissed by this court in the

Mosler case.

The alleged dispute as to whether respondent's label did

or is likely to deceive the public is legally immaterial in

the absence of any property right in the petitioners in the

names involved. In Fashion Originators’ Guild v. F. T. C..

312 U.S. 457 (1940), aff’g 114 F. (2d) 80 (C. C. A. 2d, 1940),

a similar group of manufacturers, producers of dress and

textile patterns claimed to be of “original and distinctive”

design, sought to stop alleged “style piracy’. Both this

court and the Cireuit Court held that in the absence of

designs resided in the plaintiffs and hence the question of

Whether or not “piracy” existed, while presenting a ques-

tion of ethics for legislative consideration, was legally

insignificant. (See also, Cheney Bros. y. Doris Silk Corp.,

38) F. (2d) 279 (C. C. A. 2d, 1929), cert. den. 281 U.S, 728

(1930).)

Pat LR SELES LEE NINE LES ,

FEELERS a ee kT |

Rat IMPERIAL MEDI IE, HET MLI NG NET LER CEPT MOIR LAN EAA AI DN REA GES OPN, PR RS —

In connection with petitioners’ charge of “piracy” * it js

significant to note that during the many months that this

action was pending before the District Court, petitioners did

not cite a single instance of deception of any retailer (who

3 of course knows the source of his vendors’ goods) or of any

‘ member of the public by Cortley’s label or any likelihood

é thereof. The absence of proof can he accounted for hy

i the fact that deception was impossible since whenever the

; brand name “Cortley” was used by respondent, it was

i always qualified by a legend indicating the place of origin

a to he New York, a practice approved by both this court

4 and the l’ederal Trade Commission. (See Jacob Siegel y.

- hr. 7. C., 90 L. led. 697 (U.S. 1945); Canadian Ale ease,

3 I. T. C. Release, week ended April 13, 1946; Modified Order

; No. 4572, April 9, 1946; 3 C. C. H. Trade Reg. {| 13,337.)

Petitioners argue that summary judgment should not

he granted in unfair competition actions. The learned

judge writing the dissenting opinion below appears to give

some support to this view and in this respect refers to

actions under Anti-Trust Acts as analogous. However,

this court in Associated Press v. U. S., 326 U.S. 1 (1944).

suit for injunction under the Anti-Trust Laws, approved

the granting of summary judgment, affirming the decision

of Judge Learned Hand below (52 F. Supp. 362 (S. D.

N. Y., 1948). There is nothing in Rule 56 F. R. C. P.

restricting summary judgment to certain types of actions

(3 Moore, Federal Practice, p. 3177). The wide range of

eases in which this and other courts have approved the

granting of summary judgment is illustrated by the fol-

lowing cases:

National Broadcasting Co., Inc. v. U. S., 319 U.S.

190 (1942) (Validity of Chain Broadcasting Regu-

lations) ;

* Although the Federal Trade Commission investigated Cortley’s

label and advertising, presumably on complaint of petitioner, Cali-

fornia Sportswear Company, before this suit, no complaint by the

Commission issued (D. C. fols. 840-842).

—eEEo7_7~—" se Ra UL NO ie ey TREE NT 6 EMELINE HAT OIE AR EIEN, OPE ITED 5 Rp tie te cnn |

Melcor Steel Co. v. George A. Fuller Co., 316 U.S. :

143 (1941) (Patent Infringement) ;

Fidelity & Deposit Co. of Maryland v. U. S., 187

U.S. 315 (1902) (Action on a Bond);

See cases cited in Clark, Summary Judgments, A

Proposed Rule of Court, 2 F. R. D. 364, 367.

Of course, where there is a substantial issue of material

fact to be tried it should be tried in any type of case. But

if stripped of extraneous matter there is no real issue on

a material question of fact, summary judgment should he

awarded. The timid judge who puts off the decision to a

igter trial where there is only a question of law to decide

voverned by a controlling precedent of this court, because

confused by immaterial averments, fails in his clear duty—

clogs calendars at the expense of litigants who are com-

pelled to engage in useless and costly preparation involving

the taking of depositions on immaterial matters, perhaps

all over the country (as was threatened in this case, D. C.

fols. 887, S88), and to suffer needless delays. It was these

evils that the remedy of summary judgment was designed

to cure and the remedy was especially appropriate to this

case,

POINT V

This case does not present a federal question. More-

over, the questions here presented have been made

moot by the new trade mark law (Lanham Act).

A. The law of unfair competition is governed by local law.

Petitioners contend that the substantive questions of

law involved in this ease have never been decided by this

court. If any questions of federal law are involved, those

questions have been decided by this court in the Mosler

and other cases cited in Point I of this brief. However,

as previously discussed (Point I1), under the doctrine of

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Erie v. Tompkins, as applied to the field of unfair competi-

tion by Pecheur Lozenge Co., Inc. v. National Candy Co.,

Inc., 315 U. S. 666 (1941), the substantive questions of law

here involved are governed by the local law of the states

rather than by any general federal law.

B. All future questions of the nature presented herein will

be governed by the Lanham Act, and as a result, the de.

cision in this case as a precedent is moot.

Petitioners allude to the recently enacted Lanham Act

(Public Law 489, Chap. 540; 15 U. S. C. A, §§ 1051

et seq.) in support of their contention that an important

federal question is involved in this case. As_ petition.

ers properly concede, the Lanham Act has no retroae-

tive application to the instant case (Petitioners’ Brief,

p. 18). The impact of that statute on the doctrine of

Brie v. Tompkins and on the substantive rights of parties

in the position of petitioners awaits elucidation by this court

in appropriate cases arising under the Act in the future.

If, as petitioners contend, the Act gives to persons in the

status of petitioners suing as a group in a class action a

civil eause of action in the situation presented by this ease,

then the Act operates to change the existing common law.

The testimony before the Committee on Patents, prior to

the passage of the Lanham Act, indicates the general! wnder-

standing that regional marks, could not, prior to the effee-

tive date of the Act, be protected by civil action and that

the only remedy for misuse thereof is through the Federal!

Trade Commission. Committee on Patents, Subcommittee

on Trade-Marks, 75th Cong., 3rd Sess. on H. R. 9041 (1941),

at pp. 44, 194.

If it be conceded, in accord with petitioners’ contentions.

that the Lanham Act through its provisions for regional

marks (15 U.S. C. A. § 1054) and civil actions for misrep-

resentation of origin (15 U. S. C. A. § 1125) provides

persons in the position of the petitioners with the rem-

edies heretofore denied by the common law, this fact only

demonstrates that the issues involved in this case have be-

come moot as far as future litigation is concerned and of

interest solely to the instant parties. (See District of Co-

lumbia v. Sweeney, 310 U.S. 631 (1939).) The fact that a

litigation may have received considerable trade publicity

for advertising or other purposes (D. C. fols. 333, 334) or

the fact that this discussion may prove of interest in trade

discussions or that an attorney-general files a brief affirm-

ing the superiority of products made in his state (instead

of seeking redress of the F.T.C. created to protect against

public injury) does not give that issue in a private litiga-

tion the public interest contemplated as requisite for the

issue of a writ of certiorari. Boskey, Mechanics of Su-

preme Court Certiorari Jurisdiction, (1946) 46 Columbia

Law Review 255, 256. As has been frequently reiterated,

the writ of certiorari is designed to enable the Supreme

Court to settle principles of law when decision of such

questions is of importance to the public as distinguished

from the parties. This jurisdiction was not conferred

merely to settle private disputes or to give the party de-

feated helow another hearing. Layne & Bowler Corp. v.

Western Well Works, 261 U. S. 387, 393 ( 1922); Robertson

and Kirkham, Jurisdiction of the Supreme Court of the

United States (1936) 282.

CONCLUSION

The extent of the petitioners’ claims in the instant case

are symptomatic of the recent attempts to pervert the law

of unfair competition into a tool for the fostering of monop-

oly and restriction of desirable competition. See Zlinkoff.

Monopoly v. Competition: Siqnificant Trends in Patent.

Anti-Trust, Trademark, and Unfair Competition Suits,

(1944) 53 Yale L. J. 514: Borchardt, Are Trade-Marks an

Anti-Trust Problem?, (1943) 31 Georgetown L. J. 245. It

has only been through the unceasing vigilance of this and

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other courts that this attempt has not as yet succeeded, at

least not as the result of decisions by the courts. See

Zlinkoff, supra, at pp. 531-536; Fashion Originators’ Guild

v. F.T.C., 312 U. S. 457 (1940); Eastern Wine Corp. y.

Winslow Warren Ltd., 137 F. (2d) 955, 957-959 (C. C. A. 2¢,

1943), cert. den. 320 U.S. 578 (1943).

Petitioners seek to obtain their name monopoly not

only by wholesale changes in the well-established princi-

ples of the law of unfair competition (Point 1, supra) but in

the whole field of business practices.* The learned dissent-

ing Judge below properly described unfair competition

actions as complex. They involve as between a single plain-

tiff and defendant such issues as single source, prior use,

and other matters usually relevant in unfair competition

cases. In this case, petitioners, representing a powerful

trade association striving for a name monopoly, seek to

foree a New York manufacturer into the considerable ex-

pense of a trial conceivably involving multitadinous issues

on immaterial matters relating to the affairs and name

usage of not one but seventy-five plaintiffs (and thousands

of other manufacturers who can conceivably intervene).

Where on well-settled principles it is plain that the action

cannot be maintained and where trial of false and imma-

terial issues requiring burdensome expense could readily

“break” a selected small defendant manufacturer, “the

action is of precisely the sort which a motion for sun-

inary judgment was intended to nip in the bud” (Judge

Learned Hand in United States v. Bausch and Lomb Opti-

cal Co., 131 F. (2d) 545 (C. C. A. 2d, 1942), aff'd 320 U.S.

711 (1943)).

* As was stated by Judge Clark in the opinion below, “‘The extent

of the change in business practice which a plaintiffs’ judgment might

forecast may be suggested by an examination of any city directory

showing the widely prevalent usage of state and city names by busi-

ness houses. Thus, the New York City telephone directory has

seemingly countless such cases, including 40 or more involving Cali-

fornia” (C. C. A. Opinion, fol. 399).

Wherefore, respondent, Cortley Shirt Company, Inc., re-

snectfully prays that the Petition for a Writ of Certiorari

to the United States Cireuit Court of Appeals for the Sec-

ond Cireuit be denied.

Respectfully submitted,

Leon LAUTERSTEIN,

Lauterstein, Spiller & Brown,

Attorneys for Respondent

Cortley Shirt Company, Inc.,

15 William Street,

New York, N. Y.

Of Counsel:

Jacop L. Isaacs.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.