3 F.R.D. 459 | D. Del. | 1944
Plaintiffs move under Rule 12(f), Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c, to strike that portion of defendant’s answer contained in the Fourth to Ninth Defenses, inclusive. A brief statement of the nature of the case and the state of the pleadings will facilitate an understanding of the contentions of the parties.
Plaintiffs commercially manufacture and produce rolled oats under various trade names for human consumption. The complaint charges that defendant, General Mills, Inc., is guilty of actionable unfair competition by making misrepresentations in relation to its product, a ready-to-eat breakfast food, which defendant sells under the name “Cheerioats”. Plaintiffs claim
Defendant’s First, Second and Third Defenses are conceded to be relevant defenses. In addition to these three defenses, defendant has added Defenses Four to Nine, and it is to those that the motion to strike is directed. These defenses assert:
Fourth Defense. Plaintiffs have no right or property in the words “oat”, “oats”, and “oatmeal”, as these words are in the public domain and plaintiffs have in fact expressly disclaimed any exclusive right in or to those words; so, plaintiffs have no right in the “good will associated with those words and with the products which they describe.”
Fifth Defense. Plaintiffs are estopped to claim unfair competition upon the part of defendant because some of the plaintiffs (as rolled oats manufacturers) solicited defendant to purchase rolled oats or oat flour — and some actually sold rolled oats and oat flour to defendant — with knowledge of the purpose to which defendant would put the purchased goods.
Sixth, Seventh and Eighth Defenses. Plaintiffs are estopped to claim unfair competition on defendant’s part because plaintiffs, or some of them, have (a) selected names for several of their other products and (b) advertised those and other products in such a fashion that the names given to those products and the methods of advertising utilized are subject to the same criticism as is directed at defendant’s naming of its product “Cheerioats” and defendant’s advertising and sales methods relating to its product. In the Seventh Defense, defendant asserts that plaintiffs, or some of them, produce and sell rolled oats prepared for use as a breakfast cereal, but in the sale of said cereal represents that it is a natural whole grain product, though said rolled oats are made by a process by which some of the natural nutritive values of the oat grain are lost.
Ninth Defense. Plaintiffs are not entitled to relief because they come into court with unclean hands, since they have falsely claimed that their products, or some of them, are equal to meat in protein value, and the richest source of Vitamin B, etc.
Plaintiffs argue that these particular defenses, with the exception of the Ninth Defense and that part of the Seventh Defense dealing with rolled oats, should be stricken because they are not confined to such conduct of the plaintiffs as immediately concerns the litigation before the court. In short, they are not confined to conduct dealing with rolled oats. With respect to plaintiffs’ conduct called in issue by the Ninth Defense, and for that part of the Seventh Defense dealing with rolled oats products, plaintiffs concede that these matters are germane to the issues. Plaintiffs, nevertheless, contend that such defenses should likewise be stricken because these defenses are intended to raise the defense of “unclan hands” which is not a valid defense in unfair competition causes.
1. The first group of defenses must be stricken under Rule 12(f), Federal Rules of Civil Procedure, on the ground that they are not germane to the subject matter of this suit. Rule 12(f) provides as follows: “Upon motion made by a party before responding to a pleading or, if no responsive pleading is permitted by these rules, upon motion made by a party within 20 days after the service of the pleading upon him or upon the court’s own initiative at any time, the court may order any redundant, immaterial, impertinent, or scandalous matter stricken from any pleading.” This rule has been interpreted in such a way that any pleading not germane to the issues should be stricken on motion by the adverse party. In Schenley Distillers Corporation v. Renken, D.C., 34 F.Supp. 678, 684, for example, the Court said: “If a special defense states matter which in law constitutes no defense, having reference to the issues in controversy, it is irrelevant, immaterial and not responsive to the issues of the controversy and should be stricken on proper motion.” The opinion in the Schenley case contains a definition of “impertinence” as given by the Supreme Court in Harrison v. Perea, 168 U.S. 311, 18 S. Ct. 129, 42 L.Ed. 478, and contains this statement of a leading text-writer (Moore): “ ‘Impertinence’ * * * ‘consists of any
It is clear that these particular defenses are not germane to the issues before the court. These defenses, in effect, claim that the plaintiffs are estopped because of various actions on their part to claim that defendant is guilty of unfair competition. That this defense, even assuming that there is a true estoppel, is not germane to the issues will become clear by a consideration of a few specific examples. In the Sixth Defense,
The obvious objection to these defenses is made more apparent by a consideration of the Seventh Defense in which defendant alleges that there are objections (a) to Quaker’s advertising relating to “Puffed Wheat Sparkies”, and (b) with relation to “Puffed Rice Sparkies”, and (c) to National Oats Company’s advertising of “National Oats”, and (d) to The Best Foods, Inc.’s advertising relating to “H-0 Oats”. If this defense is not stricken the court will be trying five unrelated lawsuits in which questions clearly foreign to the primary issues in controversy must be determined.
The Eighth Defense is even more clearly defective. In that defense, defendant states that “Plaintiff The Quaker Oats Company has produced and sold a ready-to-eat breakfast cereal under the name ‘Quaker Wheat Crackels’, sometimes called ‘Quaker Crackels’, and in its sale has represented that it is made ‘by blending together the choicest energy parts of Nature’s finest grain foods’ and so gives ‘the wonderful nourishment of these different grains combined into one supreme cereal’. On information and belief, the product sold by said plaintiff under such name is a multiple in
These defenses must be stricken as not being germane to the issues before the court.
2. Sufficiency of “unclean hands” as a defense to this action. As stated, plaintiffs conceded at the argument that the Ninth Defense and part of the Seventh Defense are germane to the issues before the court. The question, then, with respect to these defenses is whether the defense of “unclean hands” is sufficient in law to require a dismissal of the action, for if the defense is legally insufficient it must be stricken. Schenley Distillers Corporation v. Renken, supra. The maxim that “He who comes into a court of equity must come with 'c-Iean hands’ ” is as old as equity itself. In the early cases of unfair competition if it was proved that plaintiff himself was guilty of a misrepresentation in connection with the trading of his goods, the complaint was dismissed because of plaintiff’s unclean hands, regardless of whether defendant was blandly guilty of unfair competition. In the leading “Syrup of Figs” case
In the recent “Raisin Bran” case,
The rule has been applied in analogous fields. For example, in General Excavator Co. v. Keystone Driller Co., 6 Cir., 62 F.2d 48, evidence of “unclean hands” respecting the patent involved in the litigation was recognized as germane. But, in Yan Kannel Revolving Door Co. v. General Bronze Corporation, D.C., 6 F.Supp. 518, evidence relating to patents not in suit was considered not germane. In Jergens Co. v. Bonded Products Corp., 2 Cir., 21 F.2d 419, evidence of “unclean hands” as to shaving cream .and cold cream products was held not germane in an action relating to “Wood-bury’s facial soap.”
The Fourth Defense alleges affirmatively that the words “oats” and “oatmeal” are in the public domain. However, plaintiffs do not claim an exclusive right to the use of these words. Plaintiffs seek freedom from unfair competition. They assert no right of monopoly. Plaintiffs claim to be free from defendant’s misuse of “oats” and “oatmeal” upon the theory that if their competitors use the words they must do so truthfully, and not attempt to trade upon the reputation of plaintiffs’ products. In any event, it would appear that the Fourth Defense is substantially repetitious of the averments contained in the First and Second Defenses.
The substance of the Fifth Defense is that some of plaintiffs solicited defendant to purchase their products, knowing that defendant would use them in making Cheerioats. Thus, defendant claims plaintiffs should be estopped. There is no real estoppel here. Defendant’s purchases gave no right to misname its product “Cheerioats” — if at trial plaintiffs can successfully prove such a misnomer exists — nor does the mere fact of such purchases constitute a consent in advance by plaintiffs for defendant to mislead by advertising or to acquire “a free ride” on the efforts of plaintiffs and other rolled oats manufacturers. At most, the estoppel defense is based on the concept of “You made me do it; I didn’t want to do it.”
Worden & Co. v. California Fig Syrup Co., 187 U.S. 516, 23 S.Ct 161, 47 L.Ed. 282.
In the early development of the law of unfair competition, “unclean hands” was applied with classical strictness. The Leather Cloth Co., Ltd. v. The American Leather Cloth Co., Ltd., 11 H.L.C. 523; Manhattan Medicine Co. v. Woo 108 U.S. 218, 2 S.Ct. 436, 27 L.Ed. 706; Edward Thompson Co. v. American Law Book Co., 2 Cir., 122 F. 922, 62 L.R.A. 607; Fetridge v. Wells, 4 Abb. Prac., N.Y., 144. But the, underlying danger to the public in applying the doctrine was recognized in Hilson Co. v. Foster, C.C., 80 F. 896, 901, where the court said: “The rule of law applicable to such circumstances is perfectly clear. Equity will refuse to aid a complainant, in cases of this character, who is himself guilty of making, material false statements in connection with the property he seeks to protect. [Manhattan] Medicine Co. v. Wood, 108 U.S. 218, 2 S.Ct. 436 [27 L.Ed. 706]; [Solis] Cigar Co. v. Pozo, 16 Colo. 388, 26 P. 556, [25 Am.St.Rep. 279]; Fetridge v. Wells,, 4 Abb.Prac. [N.Y.], 144; Krauss v. [Jos. R.] Peebles’ Sons, [C.C.], 58 F. 585; Seabury v. Grosvenor, Fed.Cas. No. 12,576, 14 Blatchf. 262; Prince Manuf’g Co. v. Prince’s Metallic Paint Co., 135 N.Y. 24, 31 N.E. 990, [17 L.R.A. 129]; Connell v. Reed, 128 Mass. 477, [35 Am.Rep. 397]. It would seem
Le Blume Import Co. v. Coty, 2 Cir., 293 F. 344.
Skinner Manufacturing Co. v. General Food Sales Company, Inc., D.C., 52 F.Supp. 432.