Musher Foundation, Inc. v. Alba Trading Co. ( 1942 )

AUGUSTUS N. HAND, Circuit Judge.

The complainant, Musher Foundation, Inc., brought suit against Alba Trading Co. and in its amended complaint alleged (1) for a first cause of action, that the defendant by manufacturing and selling an oil under the brand name and registered trade-mark “Bertola” infringed three patents belonging to complainant and covering products and processes for an infusion of a sufficient amount of olive oil or olive paste into com oil to prevent rancidity; (2) for a second cause of action, that the defendant infringed complainant’s common law rights in the words “Infused,” “Infusing” and “Infusion” and was guilty of unfair competition with complainant by embodying in defendant’s advertising and applying to its containers for the sale of oil the word “Infused” which had acquired a secondary meaning indicating products that had been made in accordance with the patents above referred to and under the complainant’s supervision.

The defendant moved to dismiss the second cause of action of the amended complaint: (a) For lack of jurisdiction, because there was no allegation of diverse citizenship between the parties to the suit, (b) for failure to plead facts sufficient to constitute a cause of action. The District Court made an order dismissing the second cause of action on both grounds, from which complainant has appealed. Since the order was made, the defendant has filed an answer to the cause of action for patent infringement. In so far as the order dismissed the second cause of action for lack of jurisdiction we think it should be affirmed, but in so far as it dismissed it for failure to state a cause of action that question was not properly before the court since jurisdiction of the subject-matter was lacking.

As we understand the decision in Hurn v. Oursler, 289 U.S. 238, 53 S.Ct. 586, 77 L. Ed. 1148, the Supreme Court there held that a non-federal claim, over which the United States Court had no jurisdiction because of an absence of diverse citizenship, might be joined with a federal claim if the non-federal count differed from the federal count only because it asserted a different ground for recovery upon substantially the same state of facts. Justice Sutherland treated the two counts in that case as stating separate grounds for recovering upon what he characterized as but a single cause of action. Justice Reed reiterated the same theory in Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 59 S.Ct. 191, 83 L.Ed. 195, in an opinion in which all the Justices seem to have concurred.

We see little, if any, resemblance between the situation in which the court upheld jurisdiction over the non-federal count in Armstrong Paint & Varnish Works v. Nu-Enamel Corp., supra, and that in the case at bar. The proof of infringement of the patents in suit will depend on complainant’s success in establishing that the defendant employed the process of infusing oil or has manufactured, used or sold the infused product, and not that it has advertised the product as “infused” or placed it in containers bearing that descriptive mark. Indeed, the defendant might infringe the patents without the use of containers bearing the name “infused” and without employing the words “infused” or “infusion” in its advertising or sales talk. It might also make representations that would render it guilty of unfair competition without selling oil manufactured under complainant’s process. The only cases where there has been joinder of a federal with a non-federal count and jurisdiction over the latter count has been sustained have been cases of joinder of suits on registered copyrights with suits for unfair competition based on common law copyrights; suits on registered trade-marks with suits for unfair competition based on unregistered trademarks and suits on * design patents with suits for unfair competition based on products made in accordance with the patented designs. Hurn v. Oursler, 289 U.S. 238, 53 S.Ct. 586, 77 L.Ed. 1148; Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 59 S.Ct. 191, 83 L.Ed. 195; L. E. Waterman Co. v. Gordon, 2 Cir., 72 F.2d 272; Warner Publication, Inc., v. Popular Publications, Inc., 2 Cir., 87 F.2d 913; Lewis v. Vendome Bags, 2 Cir., 108 F.2d 16.

In the situations dealt with in the foregoing decisions substantially the same evidence determined the liability of the various defendants both under the applicable federal statutes and under the common law right to prevent unfair competition through a copying or simulation of complainant’s compositions, trade-marks or designs, to the injury of its business and good-will and the loss of its customers. The common law copyright, trade-mark or design was of the'same matter covered by the registered copyright, trade-mark or patent and the only additional factor required in order to establish unfair competition was proof that goods having the appearance of defendant’s had become associated in the public mind with products emanating from the complainant.

In the case before us we can see no substantial identity between the proof showing infringement of the complainant’s patents and that showing an infringement of its common law trade-mark “Infusion.” Proof of infringement of the patents would require no evidence of the use of the word “infusion” and proof of the similarity of complainant’s and defendant’s containers would not establish infringement of the patents. The two counts do not merely allege different grounds of recovery founded upon substantially the same facts, but rather set forth causes of action which under the doctrine of Hurn v. Oursler and Armstrong Paint & Varnish Works v. Nu-Enamel Corp., supra, are separate and cannot be joined, since one is federal and the other non-federal. Consequently, the district judge properly dismissed the second cause of action for lack of jurisdiction.

If jurisdiction over the second cause of action had existed it would seem probable that sufficient facts were set forth to uphold the claim of unfair competition. The complaint alleges that the designation “infused” has acquired a secondary meaning which indicates to the trade and the public a product, made under the supervision of the complainant and manufactured according to the patents in suit. Accordingly the allegations would apparently be sufficient to sustain the cause of action on the merits, in spite of the fact that “infused” is a descriptive term and it is not alleged that complainant has been engaged in manufacturing. Menendez v. Holt, 128 U.S. 514, 9 S.Ct. 143, 32 L.Ed. 526. But when the court dismissed the second cause of action because federal jurisdiction was lacking it had no power to pass upon the merits of the claim. Absence of federal jurisdiction over the subject-matter necessarily rendered further consideration of the claim impossible and made all further questions nonjusticiable.

Under our decision in Collins v. Metro-Goldwyn Pictures Corp., 2 Cir., 106 F.2d 83, the order is appealable. Indeed, if the second cause of action is properly held independent of the claim of patent infringement, an appeal is allowable under familiar canons of appellate procedure. United States v. River Rouge Imp. Co., 269 U.S. 411, 46 S.Ct. 144, 70 L.Ed. 339.

The order so far as it dismissed the second cause of action for lack of jurisdiction is affirmed, but so far as it dismissed the cause of action on the merits is reversed. The motion for dismissal on the merits which was granted in the court below is denied for lack of jurisdiction over the subject-matter.