P. Beiersdorf & Co., Inc. v. McGohey Judge ( 1951 )

FRANK, Circuit Judge.

1. For purposes of this decision, the facts may be simply stated. Duke Laboratories, Inc., sued P. Beiersdorf & Co., Inc., in the State Court of Connecticut, asking a declaratory judgment that Duke had not infringed certain registered trademarks, that Duke owned these trade-marks although they had been issued to Beiers-dorf, and that a contract between the parties (relative to the manufacture and distribution of the articles under the trademarks) was either invalid or had been completely performed. While this suit was pending, some two months later Beiersdorf sued Duke, in the court below, for infringement of the trade-marks, for breach of contract, and for an accounting. On motion of Duke, Judge McGohey entered an order staying the second suit until the completion of the trial of the Connecticut suit. See opinion, 92 F.Supp. 287. Beiersdorf has petitioned this court for leave to file a petition for a writ of mandamus directed to Judge McGohey, requiring him to vacate that stay order.

2. Since, in practical effect, the stay may well prevent an exercise of the district court’s jurisdiction and our own, we think we may properly entertain the petition for a writ of mandamus.¹

3. Judge Chase and I think that we must decide against petitioner on the merits because of this court’s recent decision in Mottolese v. Kaufman, 2 Cir., 176 F.2d 301.

Judge Chase regards Mottolese as correctly decided. I dissented in that case, and still consider the decision wrong for reasons stated in detail in that dissent. Were I to join Judge Clark in the instant case, victory here would go to petitioner. But I believe that the considered rationale of the majority opinion in Mottolese was so sweeping that it should not be avoided merely on the basis of the different facts here. I feel, therefore, that I must be content with hoping that the Supreme Court, recognizing an “intra-Circuit conflict,” ² will grant review and reverse this decision, which involves an important problem of federal jurisdiction.

1 . In re Hohorst, 150 U.S. 653, 14 S.Ct. 221, 37 L.Ed. 1211; McClellan v. Carland, 217 U.S. 268, 30 S.Ct. 501, 54 L.Ed. 762; Mottolese v. Kaufman, 2 Cir., 176 F.2d 301; Ex parte Edelstein, 2 Cir., 30 F.2d 636.

2 . Dickinson v. Petroleum Corp., 338 U.S. 507, 508, 70 S.Ct. 322, cf. Maggio v. Zeitz, 333 U.S. 56, 68 S.Ct. 401, 92 L.Ed. 476.