Suburban Gas Service, Inc. v. McCall

173 F. Supp. 182, 121 U.S.P.Q. (BNA) 261, 1959 U.S. Dist. LEXIS 3299

• Court: District Court, D. Oregon
• Decided: April 3, 1959
• Docket: Civ. No. 10000
• Status: Published

Opinion

SOLOMON, Chief Judge.

This case is before the court on the motion of defendants to dismiss for lack •of jurisdiction.

Plaintiffs, claiming jurisdiction under the Lanham Act, 15 U.S.C.A. § 1051 et ■seq., particularly §§ 1121 and 1126, seek •damages and injunctive relief against ■defendants, alleging various acts of unfair competition. They also claim that defendants are infringing an unregistered trademark. There is no diversity of ■citizenship.

Plaintiffs assert that the Lanham Act gives this court jurisdiction on a naked ■claim of unfair competition, and they ■cite as controlling three cases decided by the Court of Appeals for this circuit. Stauffer v. Exley, 9 Cir., 1950, 184 F.2d 962; Pagliero v. Wallace China Co., 9 Cir., 1952, 198 F.2d 339; Ross-Whitney Corp. v. Smith Kline & French Laboratories, 9 Cir., 1953, 207 F.2d 190.

An examination of these cases reveals the fact that although broad language is used to the effect that federal courts have such jurisdiction, in each case there is an independent basis for jurisdiction. As Judge William Mathes, in his exhaustive opinion in Haeger Potteries v. Gilner Potteries, D.C.Cal.1954, 123 F. Supp. 261, so ably pointed out, the Stauffer and Pagliero cases involved substantial questions of unregistered trade names, which are specifically covered by the Act in § 1126 (g-i), and the Ross-Whitney case involved both a federally registered trademark and diversity of citizenship. Judge Peirson Hall, in Panaview Door & Window Co. v. Van Ness, D.C.Cal.1954, 124 F.Supp. 329, citing Haeger came to the same conclusion and refused to retain jurisdiction in a case which involved only a claim of unfair competition.

Here there is no question of a trade name (either registered or unregistered) or a registered trademark. A fair interpretation of the Lanham Act does not warrant the conclusion that Congress intended to create a federal law of unfair competition, and this interpretation is supported by the weight of authority of cases in point. American Auto Ass’n v. Spiegel, 2 Cir., 1953, 205 F.2d 771, certiorari denied 346 U.S. 887, 74 S.Ct. 138, 98 L.Ed. 391; L’aiglon Apparel v. Lana Lobell, Inc., 3 Cir., 1954, 214 F.2d 649; Royal Lace Paper Works, Inc. v. Pest-Guard Products, 5 Cir., 1957, 240 F.2d 814.

In view of these facts, I agree with Judge Mathes’ conclusion that it is proper to construe the Court of Appeals cases of this circuit as being only as broad as necessary to sustain federal jurisdiction in those cases.

I am acquainted with the holding in the case of Heath v. Montgomery Ward, D.C.Cal.1957, 114 U.S.P.Q. 60, and do not agree with it.

Defendants’ motion to dismiss is granted.