225 F. 883 | E.D. Pa. | 1915
This case presents unusual features. Some of them relate to questions which have been already passed upon and should be regarded as eliminated, except so far as they may be still included among those which may be raised on exceptions to the master’s report when it comes to be filed. Others of them may be regarded as still in the case to be determined. A short outline statement of certain record facts may serve to separate the ins from the outs, and enable one to state the governing principles applicable to each.
The plaintiff filed its bill of complaint August 12, 1913, averring both a common-law and a statutory proprietary right in a trade-mark known as the “Gem,” and charging both unfair trade and an infringement of its proprietary exclusive privilege, and praying for an injunction and the awarding of damages and profits. On October 6, 1913, a preliminary injunction issued. The cause then proceeded to trial, and defendants, through their counsel, admitted both the trespass .and the infringement. Thereupon the cause further proceeded to the entry of a decree adjudicating these facts, and thus far the rights of the parties by making permanent the injunction and referring the cause to have found whether an account of profits should be taken. This was on January 22, 1914. An accounting was found to be called for. A reference then followed to have determined “what sum” the plaintiff should recover. Subsequently there came to the defendants information of facts which were in lethal conflict with the claims of right set up by the bill of complaint. This information was that the claim of a common-law trade-mark had been' adjudicated against the plaintiff, and registration of the trade-mark, upon which its statutory right depended, had been denied it. These new aspects of the case were presented to the court in the form of an application to have the decree of January 22, 1914, vacated. This relief was denied by the court. The grievance was re-presented in the form of a motion to open the decree which had first been made. This motion was like
Recurring now to the proceedings before the master, we have this record: The'defendants presented evidence of the facts upon which the prayer of their petition was based. They also presented what they characterize as an account of their dealings in the device to which the dispute between the parties relates. This was not acceptable to the plaintiff as the account to which it claims to be entitled. The master upheld the views of the plaintiff, and by his order indicated that the defendants, in addition to the purely accounting features of the statement, should incorporate in it a list of the names (with addresses) of the customers to whom the clips had been sold, as well as details of production cost, and the facts relating to the credits claimed in the account. The defendants have not complied with this order, and the question of being in contempt has arisen. .
Viewing the present case in the light of this distinction, it is clear that the court cannot proceed to a final award without first finding whether defendant has been guilty simply of the tortious act, or the appropriation of property, or of both. This was done by the decree of January 22, 1914. The decree, it is true, is interlocutory; but as long as it stands it disposes of everything involved in it. We entertain no doubt of the power of control which the court has over such
The decree of January 22, 1914, has not only the original sanction of its first entry, but the double confirmation of two refusals—one to vacate, the other to open, it. If this were all the record shows, it surely would stand as made. The decree of July 3, 1914, and the opinion of Judge McPherson accompanying it, however, implies its at léast partial suspension, and forbids us to treat it as a closed chapter of the controversy. As the question of the property rights of the plaintiff is still in the case, this in consequence affects the duty imposed upon the master to report “what sum, if any, plaintiff is entitled to recover.” The controversy has already been unduly prolonged, and the litigation, so far as conducted in this court, should be brought to a final decree. The order of July 3d contemplated a report from the master which would enable the court to make a final decree. It further expresses the will of the court to retain control of the questions otherwise determined by the decree of January 22d. This decree is none the less in force. It, coupled with the order of July 3d, imposes a triple duty upon the master. This would involve a finding of the sum to be found under the decree as made. It would also involve a separate finding of such sum, based upon the unfair competition by itself, in the event of the proprietary property feature being eliminated. Finally, it would call for a report of the facts averred in the petition upon which- the order of July 3d was based, so that the court might modify or refuse to change the decree of January 22d. ✓
The order in which these several duties were to be discharged is not indicated in the order. It would therefore be within the province of the master, if so requested by the parties, or if in his judgment such a disposition of the cause was called for, to report first upon the facts of the petition by an interlocutory report, and thus clear the case of the necessity of a finding of more than one sum. The final decree could, of course, be expedited by the parties agreeing upon and joining in a request for a modification of the decree by limiting the sum to be found to the amount which the plaintiff is entitled to recover for unfair competition only. To this, we understand from the report of the master, the plaintiff has agreed. If such is the case, the finding may be accordingly limited. This should enable the master to proceed with what is pending before him. It does not, however, dis
When the right of a plaintiff to an accounting is found, rule 63 (198 Rod. xxxvii, 115 C. C. A. xxxvii) gives ample authority to require the defendant to file such account, and sufficiently designates its form and what it shall contain. In form it must be a debtor and creditor statement. The rule indicates that it shall be on the basis of a cash statement of moneys received and disbursed. The analogue of an account slated by a sales agent or other fiduciary will afford a guide to what is required. If the account is accepted by the plaintiff, the profits have been ascertained, and this inquiry is at an end. If the statement is not acceptable, the case of a hearing upon exceptions to the account of any trusiee supplies the required guide. The account, as stated by the defendants, is one thing. The evidence from which the master finds the facts upon which to base an account stated by him is another thing. Care should be taken to keep the distinction clear. The first should be a. financial statement in cash account form simply. It should nei be a list of possible witnesses, nor a statement of evidence, by which die items of the account may be vouched. The parties may call witnesses or offer evidence bearing upon accounting facts. Sub-pa'irj.s may issue and include the usual, duces tecum clauses. The production of hooks and papers may be compelled. Rules 62 and 63 ami the ordinary rules which pertain to such matters apply. If a defendant objects to account, or a witness is asked to testify, qr to produce hooks or papers, and objection is made, the question raised should be passed upon by the master. If the order of the master is niel: by a refusal to comply, the refusal may be certified to the court, or the opposite party may ask the master to find the facts and to suite an account against the defendants from all the evidence before him.
In making such orders, care should, of course, always be taken to preserve to each party all his rights. Under the guise of requiring an account, or eliciting facts through testimony and evidence, neither parly should be required to disclose the course of his dealings, so that a rival or competitor may injure him or gain an unfair advantage. The lest is always: Is the requirement relevant to the decision of the cause? Almost everything in such cases must in the first instance be left to the discretion of the trial judge, or of the master acting in that capacity. Bringing these abstractions to the concrete, we decline to adjudge the defendants to be in contempt because of what this record
1. Let the master definitely find whether plaintiff agrees to join with defendants in the prayer to have the decree of January 22, 1914, so modified as to limit the finding against the defendants to one of unfair competition only, and to withdraw all claim to infringement of trademark property, and to further agree that the determination of the “sum, if any, which plaintiff is entitled to recover from the defendants” be likewise limited.
2. If the inquiry is so limited by agreement, the master may then determine “the sum, if any, to which plaintiff is entitled,” and questions which may incidentally arise, including the one* of whether, in the case as so limited, the defendants should be called upon to disclose the amount of moneys received by them. If the plaintiff has not so agreed, or does not do so, then the master, if the parties so request and stipulate, or if in his judgment such interlocutory report will expedite the decision of the cause, may report a finding of all the facts bearing upon the petition referred to him hy the order of July 3, 1914, or the master may proceed to determine all the questions now before him, and report, in addition to the findings above indicated, findings of the sum, if any, to which plaintiff is entitled on the basis of a finding of unfair trade alone, and also on the basis of a finding of both unfair trade and infringement of trade-mark property being in the case, these amounts to be separately stated, respectively.
This order is made with a view to having the case in shape for final decree on exceptions, if any are taken, to the master’s report.