# Opposition Brief — California Apparel Creators v. Wieder of California, Inc. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386416_1383%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Opposition Brief - **Published:** January 1, 1947 - **Citation:** 332 U.S. 816 ## Text B . = Pes riLe COPY COT 27 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, Pt 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 9 16 18 4 2 AP LON OLMEI OE SS PR i 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 : a : < ¢ i 4 2 % Sd ete eae RRS coe whe Pin PER Ke Miele ek iv 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 y 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 vi 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, < 77 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! 3 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 4 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). ' ; s 6 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, 5 2 fe HALTS IK 8 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 — 9 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); . -” ' - — — 10 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 11 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 12 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- 13 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 Sion ani SM 14 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 15 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. ELE LEM POE GLE DOSES J Se “$8 FS s SOP OS RP it VPRO? VAR PT eA - $9 RRO NON GMI EO ET RC NUR BOAT) MAR ETN TIE ONE LON OMT HEU EUR OR OST STG REL, 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- 17 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 om a 18 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). hoa Saieet SIA iy OLS ae Gk EE LOGE REE WEE SLES RNS Spi Ng bs Bh ipa eae Khong, ~~ : ne . —* Ah crepe Lo NLD & ‘ oad f at pe, od 19 3 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 —— . ee cetera PMT IES YOR AIEEE ONLI IE PG LO LAR EI ICL I GOLD IG SA, SB LOU ee | et REF PDT LF MALI ITAL FURIE APD et : PINION SALE Sot 2 & = q { ia : ? ! ig itn a PO AERA at ene XE DE 20 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, 4 : b 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). are eg pana TEX SE NK, ORE NA TINE EEN CIEE ENR SADT OAT GOI: FL CLG IE ELL ALES ANANSI Y Pel 22 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 9 23 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). r aX aeeee 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 24 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 | H 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, ee ea X z EE CTI 25 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 copyright or patent protection no exclusive right to the 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 — 26 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 | 27 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 eux: © POTD COE IB BLEED ADI eee I: ae) Om tieue wn ile. se Oe ne oe er 9g -. 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 a? pm 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. 29 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 TRE AM LPNY | A " i“ aes ate A I Snide ik ALN Vet AAP MR tie Te BGI 30 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). 31 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. --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386416_1383%3A2. Public record. Not legal advice.