Summit MacHine Tool Manufacturing Corp. v. Victor Cnc Systems, Inc. MacHinery Trade Center

7 F.3d 1434, 30 U.S.P.Q. 2d (BNA) 1302, 93 Cal. Daily Op. Serv. 7878, 93 Daily Journal DAR 13457, 1993 U.S. App. LEXIS 27584, 1993 WL 426420
CourtCourt of Appeals for the Ninth Circuit
DecidedOctober 25, 1993
Docket91-55993
StatusPublished
Cited by74 cases

This text of 7 F.3d 1434 (Summit MacHine Tool Manufacturing Corp. v. Victor Cnc Systems, Inc. MacHinery Trade Center) is published on Counsel Stack Legal Research, covering Court of Appeals for the Ninth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Summit MacHine Tool Manufacturing Corp. v. Victor Cnc Systems, Inc. MacHinery Trade Center, 7 F.3d 1434, 30 U.S.P.Q. 2d (BNA) 1302, 93 Cal. Daily Op. Serv. 7878, 93 Daily Journal DAR 13457, 1993 U.S. App. LEXIS 27584, 1993 WL 426420 (9th Cir. 1993).

Opinions

O’SCANNLAIN, Circuit Judge:

We are called upon to decide, in this unfair competition case involving industrial machine tools, whether the “bodily appropriation” standard applies to a Lanham Act claim.

I

Summit Machine Tool Manufacturing Corporation (“Summit”), an Oklahoma corporation, designs, builds, and markets industrial machine tools. In 1986, Summit entered into a contract with Zhenjiang Machine Tool Works (“ZMTW”), a Chinese manufacturer, to build lathes from Summit’s designs. The agreement provided that Summit had the exclusive right to sell outside of China all lathes manufactured by ZMTW in accordance with Summit’s designs. Summit worked with ZMTW over a period of several years to refine the new lathes.

During 1989 and 1990, Victor CNC Systems, Inc. and Taiwan Machinery Trade Center (collectively “Victor”), California corporations, purchased seven lathes from ZMTW for resale in the United States. Summit learned of the purchase by Victor in September 1990. In a letter to Victor dated October 1, 1990, Summit notified Victor of its contract with ZMTW and demanded that Victor stop selling the lathes. Victor did not respond. Summit again wrote to Victor in January 1991. Victor refused to cease its efforts to market the lathes.

Summit then brought suit, alleging false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); unfair competition under California Business and Professions Code § 17200 and California common law; intentional interference with contract; and intentional interference with prospective economic advantage. Federal jurisdiction over Summit’s state law claims is premised on the supplemental jurisdiction statute, 28 U.S.C. § 1367(a), as well as the diversity of the parties under 28 U.S.C. § 1332.

The district court denied Summit’s ex parte motion for a temporary restraining order. Victor then stipulated to the issuance of a preliminary injunction which prohibited Victor from selling any of the disputed lathes.

A two day bench trial was held in the district court. At the beginning of trial Summit admitted that there was no evidence that Victor knew of Summit’s contract with ZMTW at the time it purchased the seven lathes. On that basis, the district court granted judgment in favor of Victor on Summit’s claims for intentional interference with contract and interference with prospective economic advantage. The court concluded that Victor “had every right to sell the lathes having rightfully acquired them.”

The primary issue at trial was the degree of similarity between Summit’s lathes and the lathes sold to Victor. The district court concluded that the Summit and Victor lathes were not substantially similar. On that basis, the district court held that Summit’s Lanham Act claim failed. For the same reason, the court concluded that Summit’s unfair competition claims failed. Moreover, the court held that, to the extent that Summit sought to protect its designs, Summit’s unfair competition claims were preempted by federal patent and copyright laws. The court also found that the lack of evidence that Victor had any knowledge of Summit’s contract with ZMTW precluded any claim for unfair competition with regard to Victor’s purchase of the lathes.

Accordingly, the district court entered judgment for Victor and lifted the preliminary injunction. Summit timely appeals.

II

A

Summit’s first claim is based on section 43(a) of the Lanham Act, 15 U.S.C. [1437]*1437§ 1125(a). Summit claims that the lathes sold under Victor’s name were actually designed by, and manufactured for, Summit. The Lanham Act proscribes, in connection with goods, any false designation of origin “which is likely to cause confusion, or to cause mistake, or to deceive ... as to [their] origin.” 15 U.S.C. § 1125(a)(1). According to this court, the Lanham Act “has progressed far beyond the old concept of fraudulent passing off, to encompass any form of competition or selling which contravenes society’s current concepts of ‘fairness.’” Smith v. Montoro, 648 F.2d 602, 604 (9th Cir.1981). Thus, the Act proscribes conduct that is the “economic equivalent” of passing off, including “reverse palming off.”1 Id. at 605.

“Reverse palming off occurs with the direct misappropriation of the services or goods of another.” Roho, Inc. v. Marquis, 902 F.2d 356, 359 (5th Cir.1990) (citing Smith, 648 F.2d at 606-607). “Express reverse passing off” occurs when one party purchases or otherwise obtains a second party’s goods, removes the second party’s name, and then markets the product under its own name. Smith, 648 F.2d at 605. “A defendant may also be guilty of reverse palming off by selling or offering for sale another’s product that has been modified slightly and then labeled with a different name.” Roho, 902 F.2d at 359. This court has explained that

[a]s a matter of policy, such conduct, like traditional palming off, is wrongful because it involves an attempt to misappropriate or profit from another’s talents and workmanship. Moreover, in reverse palming off cases, the originator of the misidentified product is involuntarily deprived of the advertising value of [his] name and the goodwill that otherwise would stem from public knowledge of the true source of the satisfactory product. The ultimate purchaser (or viewer) is also deprived of knowing the true source of the product and may even be deceived into believing that it comes from a different source.

Lamothe v. Atlantic Recording Corp., 847 F.2d 1403, 1406-1407 (9th Cir.1988) (quoting Smith, 648 F.2d at 607).

In essence, Summit complains that Victor has sold and will continue to market a slightly modified version of the Summit lathe. See Roho, 902 F.2d at 359. It cannot be disputed that Victor has the right to copy Summit’s lathe. See id. at 360. The common law has long recognized that an unpatented article “is in the public domain and may be made and sold by whoever chooses.” Id. “Although copyists undoubtedly incur the enmity of the product’s creator, they serve the public interest by promoting competition and price reductions.” Id. “Accordingly, those with the ingenuity to copy a popular but unpatented product are entitled to do so, as long as they do not run afoul of the unfair trade practices laws.” Id. Thus, while Victor is permitted to copy the Summit lathe, the question here is whether in purchasing the lathes in question from ZMTW, Victor engaged in an unfair trade practice — namely reverse palming off. See id.

In this case, the district court framed its inquiry as whether the lathe Victor was selling was actually a Summit lathe.

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7 F.3d 1434, 30 U.S.P.Q. 2d (BNA) 1302, 93 Cal. Daily Op. Serv. 7878, 93 Daily Journal DAR 13457, 1993 U.S. App. LEXIS 27584, 1993 WL 426420, Counsel Stack Legal Research, https://law.counselstack.com/opinion/summit-machine-tool-manufacturing-corp-v-victor-cnc-systems-inc-ca9-1993.