Ridings:
Thе following matters which, by order entered on June 12, 1945, were ordered sub
I. The objections of the plaintiff to certain portions of the Findings and Judgment, as ordered by the decision of the Court filed on May 5, 1945, are, and each of them is, overruled. D.C.,
II. The objections of the defendant to the Findings and Judgment proposed by the plaintiff are, and each of them is, overruled.
III. The application and motion of the defendant for judgment denying the plaintiff all relief, or, in the alternative, for a modification of the proposed judgment ordered to be prepared by the decision of May 5, 1945, are, and each of them is, denied.
IV. The motions of the defendant:
(a) To entertain and consider the verified application of the defendant tо modify the judgment, and to hold appropriate hearing thereon;
(b) To modify the memorandum of decision and opinion of the Court dated and filed on May 5, 1945;
(c) To grant such equitable relief to the defendant which is just and рroper in the premises;
(d) To consider the objections to that proposed form of findings and judgment submitted by the plaintiff, and to settle and determine the form of the findings and judgment to be entered herein; and
(e) To fix a datе for the hearing of said motions and prescribe the notice thereof to be given to plaintiff;
are, and each of them is, overruled and denied.
V. The Court herewith files its Findings and Judgment herein.
Comment:
Ordinarily, the filing of the Court’s Findings and Judgment calls for nothing more than the entry of the fact in the register of actions and notification of counsel by the Clerk.
But the nature of the objections filed in this case calls for brief comment.
This case has had the fate of all strongly contested cases in which the judgment of thе Court, because it does not grant either side all they ask, satisfies neither. This has brought on the very situation which I sought to avoid—namely, that of having each side attempt, even before the Findings were signed, to change the decision arrived at on May 5,1945. And the way in which I sought to avoid it was to file not only an elaborate opinion, giving my reasons for the conclusions reached and ordering findings, but to outline, in a separate decision, the specific findings I desired to make on the issuable facts in the case. This was done by indicating—as to each paragraph of the Complaint and each separate defense pleaded in the Answer—the finding to be made, which I deemed consistent with the views expressed in the opinion.
The method was of no avail. For the plaintiff, while attempting to comply with the directions and submitting proposed findings and judgment, has filed objections to the portions which embody rulings adverse to its contentions.
This is contrary to our practice. For it is assumеd that when counsel for the prevailing party, on order of court, prepares findings which are unfavorable to him, he does not waive the right to question them on appeal from the judgment which carries them into effect, if the portion of the judgment based on these findings is separable from the portion favorable to him.
The defendant, in turn, has filed objections, which reach practically every finding, except those which сontain narrative facts not in dispute. If allowed, there would be little, if anything, left to sustain the judgment.
At the same time, and consistent with the nature of their objections, the defendant has filed an application for modificаtion of the judgment and motions thereon and has submitted a new brief, a portion of which was prepared by new counsel, Mr. Nims, the author of a standard book on unfair competition. The application, motions and brief seek a judgment in favor of the defendant, or, in the alternative, that a judgment be entered allowing the defendant to use the word “Brooks” in conjunction with the word “California”. Thus, the defendant has sought to obtain more thаn it could obtain by a motion for a new trial—the entry of a totally different judgment, i. e., one in their favor.
For, while the Federal Rules of Civil Procedure give the trial court the right, on a motion for a new trial, to change the findings аnd judgment and to' enter a new
Under California practice, the trial judge may enter “another and different judgment”. But this can he done only if, on the basis of the findings, a different judgment consistent with them could be entered. Only the conclusions of law, but not thе findings may be amended. California Civil Code of Procedure, Sec. 663.
It may well be that, in the end; the method here pursued will save time. For, having urged, in advance of the filing of formal findings and judgment, all that could possibly be urged in favor оf a new trial, there remains nothing to be said on any motion for a new trial which either party might make. So that the added labor of counsel and of the court now, may avoid further labor and result in an immediate apрeal to the higher courts to review the decision, which I am thoroughly convinced is correct.
These facts led to the adoption of the procedure which I have, on some occasions, adoрted in the past. Rather than indicate to counsel either in writing or orally, after a conference, the changes which should be made, I have rewritten and recast the findings and judgment in their entirety.
They will reach counsel in the form which I have finally chosen, after considering and assaying all the obj ections made.
An analysis of the Findings and Judgment by counsel will show readily what, if any, changes I have introduced in each paragraph. In some instances, I have eliminated verbiage which I thought was surplusage. Even as rewritten, the findings are longer than we have been accustomed to in the past. But, all findings, at the present time, are, of necessity, such. For the Suprеme Court in Schneidermann v. United States,
And following the Schneidermann decision, the Ninth Circuit Court of Appeals sent back to mе a similar case (United States v. Bergmann, 1942,
The order of. the Circuit Court was that I make the findings conform to the ruling in the Schneidermann case. This I did, by, in effect, epitomizing all the evidence in thе case. That this is what the court expected is evidenced by the fact that no question of their sufficiency as to form was raised after-wards. And the appeal was decided on the basis of the facts which I set fоrth.
I make this observation because were it not for the binding effect of thesé decisions, I would have “trimmed” some of the proposed findings even more than I did.
These remarks would ordinarily suffice. However, because оf the insistence of plaintiff that the finding of laches be eliminated and that they be awarded damages and the insistence of the defendant that the judgment either go their way, or that, at least, it be modified so that they be аllowed to use the name “Brooks” in conjunction with the name “California,” I desire to state that I have read and studied carefully the new arguments, and given thorough consideration to the views presented in the new brief filеd by the defendant in support of their application for modification, and the plaintiff’s printed reply to it. The opinion has been reread twice, at least. Once word for word) when I read proof for the оfficial report of the case for Federal Supplement. I am satisfied with the conclusions reached, as I feel they achieve substantial justice. And I find no reason for modifying the.judgment as asked by either side.
Coming now to certain specific objections. I arrived at the conclusion that.' laches bar recovery in a trademark registration case chiefly on the basis of the decision of the Ninth Circuit Court of Appeаls in Golden West Brewing Co. v. Milonas & Sons, Inc., 9 Cir.,
The unfair competition phase of the case was decided more on the basis of federal than of California decisions. Authorities such as Professor Chaffee (see, Zechariah Chaffee, Unfair Competition, 33 Harvard Law Review, 1289) seem to think that, in view of the decision оf the Supreme Court in Erie Railroad Co. v. Tompkins, 1938,
In this connection, the plaintiff is very insistent that I turn into a positive finding the statement in the opinion that the defendant’s profits were due to thеir “aggressive merchandising methods and * * * business acumen.” I intended the statement as a tribute to the skill of the defendants, grounded more on a hunch or inference than on specific proof. For all I had before me is evidence of success. No one testified as to the cause of it. And I purposely omitted the statement from the corresponding paragraph of the decision. See Decision, p. 3, lines 24 to 29 inclusive. I would оrder it stricken from the opinion if I thought it conflicted with the decision rendered, or that it could be used to impeach it. It is obvious that it cannot be so used. For the trial judge speaks to the higher court through his findings and judgment and not through his reasons for them. Only a dеsire to disclose to counsel-the grounds of decision, in compliance with the admonition of the Canons of Judicial Ethics of the American Bar Association, adopted August 27, 1909, prompts me to undertake the addеd task of opinion writing. See Canon 19. And see my comments on it in United States v. Food and Grocery Bureau of Southern California, D.C., 1942,