Abercrombie & Fitch Company v. Hunting World, Incorporated
461 F.2d 1040
2d Cir.
1972
Check Treatment

*1 against inter- lien valid filing appel- long prior to est Ac- 1968.

lee’s tax lien March

cordingly, reverse fund and direct lower court appellant, dispute paid here in to the appellee.

Reversed. COMPANY, FITCH &

ABERCROMBIE Plaintiff-Appellant, INCORPORATED, WORLD,

HUNTING Defendant-Appellee. 493,Docket 71-1806.

No. Appeals,

United States Court Second Circuit.

Argued Feb. April

Decided City (San-

Roy Hopgood, C. New York doe, Hopgood Calimafde, Paul Blau- & H. stein, City, H. York and Richard G. New Conn., Cunningham, Stamford, brief), plaintiff-appellant. City Weis, (Sulz- Richard New York H. City, berger, Marcus, York New Weis defendant-appellee. brief), TIMBERS, Before FEINBERG THOMSEN, Judges, District Judge.* Judge: THOMSEN, District (plaintiff) Fitch Co. Abercrombie & Hunting World, (defendant) sued seeking the word defendant’s uses registered “Safari”, plaintiff had for various classes as a trademark goods.1 moved Defendant [*] Of the District designation. Maryland, sitting by 1. The der the Trade-Mark complaint alleges Act of infringements (Lan- un-

1041 F.R.Civ.P., 56(b), judgment Rule infringed ground that it had not on the granting part in defendant’s rights plaintiff’s trademark in the word summary judgment, motion for the dis considering plead- “Safari”. After ings, trict court’s order in effect constituted many ex- several affidavits injunc final denial merits of the by respective parties, and hibits filed prayed by plaintiff tive relief for as to hearing argument, after judge by those uses defendant of the word “sa F.Supp. opinion, filed an 657 fari” which the district court found (S.D.N.Y.1971), and entered order an rights any plaintiff to violate trademark following provisions: which included the may in have the word “safari”. these (1) “that the defendant’s motion for order is as summary judgment granted to ex- terlocutory refusing holding use of tent of that defendant’s 1292(a) under § its the word ‘Safari’ to describe safari argues Defendant that the order is not hat, ‘Minisafari’ to its smaller describe appealable, relying on Switzerland Cheese by hat, safari and the further use Market, Association, Inc. E. Horne’s defendant of coined word ‘Safari- Inc., 17 L.Ed. shop, part land’ of its to describe Geophysical 2d 23 and Western corporate name, the name of a and as Associates, Co. of America Bolt infringe rights newsletter, do not cases, 440 F.2d 765 Cir. Those plaintiff in the use of have distinguishable. however, are ‘Safari’, extent and to the further holding that defendant is entitled In Switzerland Cheese Court held those practice use the word describe ‘Safari’ denial that the summary of a motion products which relate to seeking injunctive ; (2) or cult of safari” “that refusal of an relief was not a denial or injunction par- be awarded to each of within because § against the other in relation to ties tentatively de- it did not “settle or even misrepresentation respective claims of anything merits of the cide about the by them”; (3) “that made each of strictly pretrial It is claim. respects” defendant’s motion all other thing the case decides —that summary judgment be denied. go at trial.” present appeal deals cer- S.Ct. at 195.2 Plaintiff and was denied a mo- by district court under tification with defendant’s was, summary judgment, F.R. and Rule tion for which U.S.C. § effect, appealed It then denial the merits Civ.P. a final on relying 1292(a) (1), plaintiff’s request as to reads for an on § pertinent part: de- word “safari” certain uses of the fendant. “(a) appeals have The courts of shall appeals from: Geophysical de- In Western this court “(1) Interlocutory orders jurisdiction un- appellate clined to take ** trict courts of the United States granting, continuing, 1292(a) (1) der § modifying, by a granted part motions had * fusing dissolving injunctions third-party defendant por- purposes of this For the opin- and counter- adequately defenses of several

facts are stated tions defendant, F.Supp. at raised ion of the district court. 327 sought injunctive seq. portions 659 et Frankel, 1051-1127, Act), Co. v. 2. See also ham §§ U.S.C. F.2d 197 Article of tlie Business Law General Consol.Laws, McKinney’s York, of New c. 20. is founded Jurisdiction and 15 U.S.C. U.S.C. judg- Accordingly, summary of the deci- created. The rationale the movants. granted single ment cannot be on this issue.” counterclaim that no sion was entirety F.Supp. and that in its been dismissed pray- injunctive relief full extent Then, oth- proceeding to discuss be se- could the defendant ed for “May summary judgment be er issue— its counterclaims. cured in each defendant’s uses *3 case, present how- judge ?”—the continued: ‘Safari’ remaining ever, are no regis though plaintiff has “Even encompass injunctive relief which would prod a mark for the tered ‘Safari’ as to “safari” as the word those uses question of and the ucts in here issue granted sum- court district which the undecided, meaning secondary remains defendant. mary in favor of registering as proper a noun ‘[t]he prevail plaintiff should if Even it from not withdraw a trademark does judg- summary remaining issues, language, ex to nor reduce it defendant with in favor of ment registrant possession of the clusive the word “safari” certain uses of guarding jealously it be remain in effect. defendant would against any all others.’ and use Although part a of the district L’Indus., Comptoir etc. v. De Societe appealable under therefore order is Inc., Stores, Department Alexander’s ”** 1292(a) scope appellate re- (1), the 33, that of the is limited to view Id. a ma- in a final denial which resulted jor portion judge de- then discussed several of requested in- “Safari”, fendant’s uses of the word findings comments, junction. The compound He found or in words. alone with of the conclusions uses certain instances that spect to the issues on which descriptively as a the word scope of are outside not refused trademark, despite con- to the evidence (1) appeal. a § trary, g., e. “TM” after letters and “Safariland”. words “Mini-safari” II the uses that some of He concluded discussion of At the conclusion his infringements, but the word were “May alone ‘Safari’ word issue— genuine toas issue of fact exists that ”— registered validly ? as a trademark plaintiff may whether be entitled the district stated: items, respect to other “Although generic word, ‘safari’ is specifically shoes, defend- genuine as to issue fact exists only ant’s motion whether created part. meaning secondary in its of the use ‘identifying opinion and show- intimate no source’ We buy ing ‘purchasers view But that are moved ultimate merits of ing case. source,’ from it because of its Blisscraft of to be drawn the inferences Hollywood Co., light underlying favor most v. United Plastics in the facts 694, 1961); opposing also motion party able to summary judgment,3 we conclude L. Gott- American Lead Pencil Co. v. genuine made of fact exist issues Sons, 178, (2d Cir. lieb & 181 F. judg improper to enter Judge Hand). Plaintiff Learned denying part the finally even in ment entitled to establish the discov- plaintiff. junctive relief ery process or on trial its contention meaning secondary that a has been and remanded. Reversed Diebold, 26 L.Ed.2d 3. See United States S.Ct. 8 L.Ed.2d 176 Co., (1962) ; Adickes Kress & 1292(a)(1).” Judge (concur TIMBERS, 441 F.2d at286. Further ring): opinion, the same observed “[t]hus, the dismissal de [three agree of the with the operated of a refusal fendants] reversing remanding, concur injunc separate tinct and claim for an majority opin- in all in the able tion, for which other relief that Judge ion of Thomsen. might emerge from the could never Judge Feinberg’s perceptive dis- Since adequately substitute.” F.2d at senting opinion to the is addressed States, Spangler See also United appealability issue 1969); F.2d hron, 1246-47 Cir. Telec following order, add I wish to Parissi, Inc. v. F.2d 757 issue, in brief addi- observations on that my complete tion concurrence short, teaching of these cases majority opinion’s that is- treatment of *4 and others would to seem be that it is sue. (whether operative the facts set forth sought by plaintiff If the relief below giving multiple in counts) one count or had in form a claim for been cast right rise to an enforceable which consti- preliminary injunction, for “claim”, Original Russe, tutes a Ballet summary judgment, it that then I take Theatre, Inc., Ltd. Ballet v. 133 F.2d refusing interlocutory court’s (2 1943), 189 Cir. such and when clearly injunction quite would be squared against “claim” is granted the relief (a)(1). appealable That be under §1292 or withheld ing so, it seems to me that order, or that deter- finally dis here under review injunctive mines whether relief been for missed claims certain of purposes or refused for of fed- injunctive the al relief jurisdiction. appellate eral recent- Just leged infringement plaintiff’s trade ly, Supreme Court, responding ato rights appealable is un mark fortiori challenge appellate jurisdiction to its Although §1292(a) (1). der other appeal consider a under the three- direct injunctive pending, are still statute, district court 28 U.S.C. sought relief on dismissed claims court 1253 where § legal theory re distinct from the appellants’ did not reach merits of tained claims. I find the instant claim for an but dismissed indistinguishable v. to be from Glenmore subject jurisdiction, lack matter (2 Cir.), Ahern, cert. 545 relevant held: Tri-Continental Finan denied sub nom. appellees “The also note that 1253 Corp. Glenmore, cial U.S. 964 v. permits appeals to appealable (1960), where our Court held ‘granting denying from orders or .. . (a)(1) under an order of a §1292 injunc- interlocutory permanent an trict court which had dismissed one They argue tion. . . that since .’ complaint, count the dis of multicount three-judge court never considered having in missed same count grant- should be whether junctive relief other counts but as several ed an the Court should lie to theory. legal 276 F.2d at distinct Appeals. three-judge The Buffalo, v. 545-47. Build however, judgment ‘denying entered a Sedita, sought by plaintiffs.’ all relief We “[b]y granting motion of held that consider therefore have (footnote to dismiss [three defendants] Lynch presented.” v. the claims effectively omitted), the district court Corp., Household Finance plaintiffs’ mo denied time same (1972). 5n. preliminary injunction tion (footnote Judge Feinberg’s Finally, those defendants. I think omitted) flag- senting opinion denial of an The .resultant is constructive junction ging is of the U.S.C. invitation author Ahern, 1292(a) (1), majority opinion in U.S.C.A. must be Glenmore guide supra, appropriate in an our than literal rather the statute’s to reconsider language. appealability was issue which See Co. v. Frank ease the el, 1966) (in sharply divided decided banc). ago. purpose Geo- clear of section 1292 more than a decade Western (a) (1) litigants “permit Bolt Asso- is to to effec physical America v. Co. of tually challenge interlocutory ciates, Inc., n. orders of all, serious, perhaps irreparable, five ac- conse of the After quence.” judges participated the Glen- Contractors Bod who Baltimore tive decision, only 176, 181, active inger, 252, more Moreover, the invita- has tendered L.Ed. 233 service he Congress original now seven There are when ex tion to amended reconsider. nothing judges ception final rule for who other active grant injunctive favor for one would do or continuance with Glenmore. relief, appropriate in an of such relief to add refusal such reconsideration case, Congress plain this is that “it believe seems rather do Among reasons, thinking primarily none er other ease case. temporary injunction here erred that the district roneous denial of a may doubts granting partial injury irreparable quite as cause gen- in favor view of one.” See Stew erroneous Westinghouse Corp. facts with Elec. as to material uine issues spect art-Warner *5 1963) meaning secondary (2d the Corp., of the Cir. 325 F.2d by (dissent), denied, the affi- as disclosed 376 U.S. cert. “Safari” (1964). before But exhibits which were davits and 11 L.Ed.2d 767 regard- cannot, plaintiff not, differ we indeed the ing And while and court. does irrepa special erroneous appealability of the or the claim that it suffer will I judgment, temporary granting unless allowed rable appeal harm order practical reason immedi think is a remanding the trial order there versing point ately. Any now be at this would be such assertion prelim dis- by plaintiff’s seek us: ultimate lied failure to case is before the litigation speeded inary injunctive position will be relief of this complaint by correcting period error the up since court in the ap- January due course when so that in was filed in now peal reaches from the final permanent suit for a Plaintiff’s asks possibility of may there least injunction against the use remand, whereas no need for a plaintiff’s of mark on various “Safari” certainty of present ais record there goods accounting classes of from on the issues remand need for a defendant. That un- suit remains summarily with- decided trict court has tried, except that the district has out a trial. plaintiff’s limited case as Plain- follows: Accordingly, concur in all using stop tiff cannot defendant from of Court and in hat, “Safafi” on a safari “Minisafari” majority opinion. hat, on a smaller “Safariland” shop newsletter, its or “Sa- name of FEINBERG, Judge (dissent- relating products practice fari” on to “the ing) : cult are or of safari.” What the latter majority opinion dissent from the not do do know. But we know regard- because plaintiff prove not district court’s is order still has case appealable. my view, ing there is com- other no defendant’s of “Safari” on use pelling justi- sense, products, reason in cases like this to such as In that shoes. fy abandoning policy the historic federal of im- and in the of threat absence against piecemeal appeals. injury, can irreparable Nor minent situation justification limiting purpose pre-trial be found order resembles damages prove, ap e. type plaintiff . ther consideration to [the again eliminating pealability suit, question] it g., lost in a contract Geophysical Corp., profits. Western Co. Kraftco arise.” Clark v. Cf. Associates, (2d 440 F.2d In such America v. Bolt 765, (2d ease, should not be able n. holding granting partial until that an appeal determination order the adverse summary judgment against defendant tried, has been unless the entire case appeal ground not was under section there for an immediate is Geophysical the court Western or 28 U.S.C. Fed.R.Civ.P. distinguished ground The applicable here.1 Glenmore not single permanent injunction plaintiff that in the then before it “no seeks finally granted yet fully had been counterclaim . . . been entirety.” is, at 770- missed in 440 F.2d and in the absence Until denied. pre- for a of a motion in the trial Buffalo, liminary injunction, Build of Thus, question appealability in Sedita, Inc. far from closed. cases such as this is appeal. not allow the we should Arguably, court’s or- since the district separate Admittedly, position perhaps con der here did not dismiss complaint, reasoning of our decision “count” of flicts with the right interlocutory appeal Ahern, un- to an is no Glenmore course, argument, Cir.), denied, 80 S.Ct. der our That 362 U.S. cases. cert. complicated the effect There we the fact that 4 L.Ed.2d 878 strong dissents, allowed, to narrow trial court’s over sought by scope injunctive a dis relief from under section Buffalo, plaintiff. dismissed Build trict court order which Cf. ap- complaint. Sedita, supra (plaintiffs allowed count of a multi-count injunctive requested peal scope same dismissed count dismissing junctive did other counts relief as was reduced complaint defendants, plaintiffs a “dis but was based three *6 prin injunction); legal theory.” preliminary Mc- But one of the moved for tinct (2d Educ., in Glen- cipal the court cases on which Millan v. Bd. of reaching decision, Fed tech- But aside from such more relied Loshin, arguments, policy behind nical both eral Glass Co.v. subsequently overruled considerations section administration, v. Frank judicial & Co. American this court disapproved Warehousing, the Su el, supra, Trans- Express Ltd. preme Co., Cheese in Switzerland america Ins. Market, Ass’n, 1967), support v. E. Horne’s the conclusion appeal- L.Ed.2d now 87 S.Ct. 385 U.S. the order here is ma (1966). Moreover, the writer The remainder this able. Glenmore, concluded, now Chief jority opinion in rather promptly and tried be suggested “it Judge Friendly, in bits in this court have surface than give fur- appropriate pieces. Judge routes, try both tliose 1. Plaintiff did under a certification entry prerequisites a final refused to direct Lasker judgment or to Rule