Switzerland Cheese Association, Inc. v. E. Horne’s Market, Inc.

PETITIONER:Switzerland Cheese Association, Inc.
RESPONDENT:E. Horne’s Market, Inc.
LOCATION:El Paso Natural Gas Co. Headquarters

DOCKET NO.: 42
DECIDED BY: Warren Court (1965-1967)
LOWER COURT: United States Court of Appeals for the First Circuit

CITATION: 385 US 23 (1966)
ARGUED: Oct 17, 1966
DECIDED: Nov 07, 1966

Facts of the case

Question

Audio Transcription for Oral Argument – October 17, 1966 in Switzerland Cheese Association, Inc. v. E. Horne’s Market, Inc.

Earl Warren:

Number 42, Switzerland Cheese Association, Incorporated et al., petitioners versus E. Horne’s Market, Incorporated.

Mr. Toren.

David Toren:

Mr. Chief Justice and may it please the Court.

The issue before the Court is a jurisdictional one that has long vexed the Court of Appeals and has caused to deter the event.

It reaches the Court on certiorari to the First Circuit and involves interpretation of that section of the judicial code which states and I quote, “the Courts of Appeal shall have jurisdiction of appeal from interlocutory orders of the District Court refusing injunction.”

The question here is whether this language authorizes an appeal from an interlocutory order which refused a permanent injunction prayed for in a motion for summary judgment.

The language of the statute is plain, simple and unconditional in authorizing appeals from refusals of injunction for all purposes.

We therefore urge the Court to answer the Court in the affirmative.

We do not prevent the issue as an abstract proposition but rather in the context of a cause in regard to which the refusal of the injunction has a far reaching and drastic effect on the business and rights of these petitioners.

Petitioners are the exclusive representatives of the cheese producing community of Switzerland which for many centuries has produced quality cheese which is famous for its excellence throughout the western world including the United States.

This cheese is generally and universally known outside Switzerland as Imported Swiss Cheese and has been marketed under this name by these petitioners for many decades in the United States.

The respondent, a Boston cheese trader, sells as Imported Swiss Cheese an inferior, imitative, less expensive Swiss-type cheese product originating from Finland or Austria without informing the public that the cheese in fact comes from these countries.

This conduct is infringement of our rights.

It dilutes our trade name.

It confuses the public.

It lessens the goodwill which has been built up for the trade name and the cheese and of course it causes financial loss to these petitioners.

Accordingly, by way of summary judgment procedure, we move for a permanent injunction enjoining this respondent from using our trade name on non-Switzerland cheese, unless and that is important, the respondent at the same time indicates the country of origin of the cheese.

In other words, we are not asking for permanent injunction for all purposes.

What we want is that this respondent when he sells Imported Swiss Cheese, he should indicate where the cheese comes from.

The motion was denied without opinion by the District Court for the District of Massachusetts.

We then appeal to the First Circuit pursuant to Section 1292 which as stated before authorizes appeals from interlocutory orders refusing injunction.

When we answered the calendar call, last fall, the chief judge of the First Circuit, dismissed the appeal for want of jurisdiction and refused to hear oral argument.

This Court then granted certiorari.

In dismissing the appeal, the Court of Appeals of the First Circuit made the following statement which is if I may say the key sentence of the opinion.

I quote, “Because of a general policy against piecemeal appeals, statutes permitting interlocutory appeals ought to be construed with some strict rules.

On this basis, whatever may be the exact letter the spirit of Section 1292 is against plaintiff’s position.

Abe Fortas:

Well, in reality, does this case involve anything more than the question as to whether this Court is going to review and perhaps overrule a decision of the United States District Court on a motion for summary judgment that the case is not right for summary disposition that there is a genuine issue, a fact which the Court wants to try out.

Is there anything more before us than that?

David Toren:

May it please, Your Honor.

The question which has been presented on certiorari is limited exactly to the proposition Your Honor just outlined.

David Toren:

Now, my learned friend here in his brief has urged the Court to dispose of the subject matter pursuant of the matter and should limit itself to the question —

Abe Fortas:

Well, I am not asking you that.

Let’s forget about that aspect of it but I have difficulty to state quite frankly saying where this does involve a question under the statute governing interlocutory appeals in general.

It seems to me that this involves the quite familiar question, questions quite familiar to lawyers, a lot of lawyers anyway as to whether an order denying a motion for summary judgment is appealable.

Well, presumably the United States District Court felt rightly or wrongly that there was a genuine issue of fact that was not satisfied to decide this case on the basis of the affidavits that had been submitted and the thought that the case should go to trial and that there should be a decision after a presentation of evidence.

Am I right in understanding that that is the situation?

David Toren:

Your Honor, I’m afraid I have to disagree.

Abe Fortas:

Why?

David Toren:

The question involved here as far as we are concerned is a question of law to which in our original motion for summary judgment we raised a legal proposition.

We said that an international convention for the protection of industrial property which is implemented in the Lanham Act, the trademark statute which prohibits unfair competition and deceptive misuse of famous trade name.

Now, that was the basis of our motion.

Abe Fortas:

But that means — that assumes —

David Toren:

That’s not a question of fact.

Abe Fortas:

Well, it’s not question — I don’t mean to call it a question of law because that assumes that in this particular case, there is a deceptive use of a trademark.

David Toren:

Right.

Abe Fortas:

Now, it’s quite — the Court — the District Court wrote no opinion made no findings than after most of the summary judgments as I understand the law whether it’s quite possible that the District Court thought that that was not satisfied on the basis of the affidavits that the respondents use of its mark, otherwise deceptive, and that they wouldn’t have a full trial and just because you propose an issue of law in the District Court it does not follow, does it, that the District Court had to decide that issue of law?

David Toren:

The District Court conceded that it was a matter of law.

Abe Fortas:

Rather that — it wrote no opinion and made no findings.

David Toren:

Sorry?

Abe Fortas:

It wrote no opinion and made no findings.

All it did was to deny a motion for summary judgment, isn’t that right which means in ordinary course that you’d have to go trial and make your proof, isn’t that right?

David Toren:

Correct.

Abe Fortas:

Now, do you know of any other — of any case on the books other than the decision of Judge Frank I think is and the Second Circuit?

David Toren:

Oh, yes, the leading case is Federal Glass Company v. Loshin which has been dealt with at great length in our brief that the Circuit Judge Learned Hand.

We said that there’s much more decided in a motion for summary judgment than simply pushing the case back to trial because he said, it says a question of law involved —

Abe Fortas:

Well, we’re not trying —

David Toren:

And the judge said, it denies it and then he had said as a matter of law you are not entitled to your remedy to your injunction and that’s exactly is the present case.

We say —

Abe Fortas:

Was there a ruling to the effect that assume that the issue of this trademark is deceptive by the respondent and you are not entitled to relief?

David Toren:

I think there was a ruling that I am not entitled to relief as a matter of law.

David Toren:

And let’s say —

Abe Fortas:

Well, you’re not entitled to relief, that’s clear, isn’t it?

You’re not entitled to relief as a matter of law.

The courts don’t decide abstract questions of law.

David Toren:

Well, we say it isn’t abstract because we have a statute and the treaty.

Abe Fortas:

But the Court don’t have to agree with you.

The District Court could have said that is not satisfied that this is a deceptive use of a trademark and that it wants the case to go to trial.

David Toren:

Right but it didn’t —

Abe Fortas:

But you didn’t move after — did you or did you not after the denial of the motion for summary judgment.

Did — was any final judgment entered or did you seek final judgment?

David Toren:

No, Your Honor but we construed this as a final judgment.

Abe Fortas:

Sir?

David Toren:

We construed this order which denied the permanent injunction as a final judgment and if I may explain to you I —

Abe Fortas:

As far as I am concerned, there’s a very real question on that.

David Toren:

Now, Your Honor, my question — why we go to the trouble of petitioning for a writ instead of going back to the District Court in trying the case.

Well, the answer is very simple, Your Honor.

The trade in general is honest respects our trade name and they have no quarrel with the trade as a whole.

However, there are few retailers like the present respondent who try to take advantage of our trade name which has a tremendous goodwill by selling inferior, less expensive cheese product under our trade name without telling the public where the cheese comes from.

Now, we feel if we have a — from the federal court a permanent injunction as a matter of law, as distinguished from an injunction which has resulted from a trial, we have a better weapon to defend ourselves against all these retailers otherwise we will have to try that case maybe 10 times.

Abe Fortas:

That it seems to me that what you’re seeking is something that may be unknown to our system of law.

David Toren:

No, Your Honor.

Abe Fortas:

That is to say I don’t see how a court can give you an injunction except in terms of a fact of — facts of particular cases and it seems to me that what the District Court did here was may have been to say that I am not satisfied as to the facts of this particular case and you got to go to the trial.

Now, you’re telling us now if I correctly understood your last statement that what you wanted was a general declaration of the law and without respect to the respondent’s foreign practices here that you can use against the A&P and Safeway and anybody else regardless of the differences on the nuances and what they call a cheese with holes in it and I know of nothing like that in our law.

David Toren:

Your Honor, as far as I am concerned the language of the statute is so plain and clear it permits for one interpretation only.

The statute says the courts of appeals shall have jurisdiction of appeal from interlocutory orders refusing injunction.

There’s no distinction between a preliminary injunction or a permanent injunction.

It says simple language.

And in fact there are about 15 cases —

Well, put the matter in another way, the Court of Appeals if I understand your position did not reach any of the questions of Justice Fortas has suggested to you.

It simply said you had no right to be up there.

David Toren:

That’s right.

No oral argument —

An appeal.

And if you got up there, why then these questions as to what the District Court did or whether you are entitled to injunction as a matter of law would be right for decision by the Court of Appeals.

They didn’t reach any of that.

David Toren:

They didn’t reach it.

The chief judge wouldn’t be onset, the calendar calls it dismissed for want of jurisdiction and in his opinion the chief judge said he disagreed with the Federal Glass Case which is a Second Circuit and he disagreed the case as Mr. Justice Fortas mentioned that is United States versus New York and New Haven Railroad where Circuit Judge Friendly and Judge Frank said what Mr. Justice Fortas said.

Now, the issue was never reached in the Court of Appeals of the First Circuit and we feel that we’re entitled to go there because the statute is clear.

You’re not asking us — excuse me —

Abe Fortas:

I beg your pardon.

You’re not asking us that up here to decide anything except the appealability question.

David Toren:

I have no objection if the Court rules on the matters of the case as my learned friend has urged in his brief but we haven’t asked for it.

You’ll be very much surprised if we did.

David Toren:

I would be very much surprised if you did.

William J. Brennan, Jr.:

Well, actually you would be really (Inaudible) the State of the Court of Appeals you hear this appeal on the merits.

David Toren:

That’s correct Your Honor.

William J. Brennan, Jr.:

Well, obviously you couldn’t advise that, could you?

David Toren:

No that’s all I want.

The question is presented in our petition in our brief exactly say that.

Byron R. White:

Is there something not to be tried out of the Court.

Let’s assume that we — let’s assume that we turned you down here that you did not win here, and that the Court of Appeals doesn’t have to hear anything more, is the case over?

David Toren:

No.

I would then go back to the trial court, to the District Court to try the case.

Byron R. White:

But what is there to be tried if the dispositive issue of law has already been decided against you?

David Toren:

Well, have there?

Byron R. White:

Well, that’s what I understood what you said.

David Toren:

We say as a question law, it has been decided they gave us those but not if the (Voice Overlap).

Byron R. White:

Well, how can you win then?

How can you win?

David Toren:

Well, I could bring in the 50 witnesses and the market —

Byron R. White:

Well, you mean there are some disputed issues of fact?

David Toren:

No, there are not.

Byron R. White:

Well, what are you going to hear?

David Toren:

There is a disputed issue of fact which has been raised by the respondent when he says —

Byron R. White:

Well, then the Court is absolutely right, that the Court of Appeals is absolutely right when it said that the District Court merely held that an issue of fact making summary judgment inappropriate.

David Toren:

No, that is wrong, it’s an incorrect statement.

We have pointed that out in our brief.

The District Court judge said that is a matter of law.

Byron R. White:

Yes, but the District Court judge also said the only question before me is whether or not there is any genuine dispute as to any material fact, that’s on page 44 and stated again on page 47.

If there’s a genuine dispute of any material fact I cannot overrule the objection of another party.

That’s what District Court said and this is what the Court of Appeals said and if there is no issue of fact left in this case, I don’t know how you can say this is anything to be tried out.

What would you call witnesses too if there are those issues of facts in the case.

Everybody has agreed on the facts.

What — what would you get witnesses to testify to?

David Toren:

Your Honor, we say there is no fact which is (Inaudible) that is our contention.

We say as a matter of law, the treaty and the statute rules in our favor, counts us to be entitled to this injunction.

Now, the Court has turned us down for reasons I do not know because there was no opinion rendered by the District Court judge.

All that he admitted at one point during the argument that the question of the treaty and the statute that is the matter of law so I have a right to —

William J. Brennan, Jr.:

Well, I gather what you’re really saying is you don’t agree with the District Court in saying that there’s an issue of fact but if you’re stuck with it and you have to go back —

David Toren:

Correct.

William J. Brennan, Jr.:

— then you proceed on the ground that there was an issue of fact.

David Toren:

If I only may disagree with the statement that the District Court did not say —

William J. Brennan, Jr.:

Well, whatever — if it did —

David Toren:

Yes.

William J. Brennan, Jr.:

If the District Court said there was an issue of fact, even though you disagree with that.

Nevertheless, if you’re stuck with it, you have to go back and try the case on the premise that there is an issue of fact.

David Toren:

Correct.

Byron R. White:

Well then we have —

We wouldn’t even do that I would suppose if we go back to the District Court and say look (Inaudible) there’s nothing but the question of law and we were denied for interogatory appeal to this kind of (Inaudible).

Byron R. White:

If you think — if you think it’s — if you really think it’s only a question of law, I think Mr. Justice Harlan it’s absolutely correct and I think the case is over except for getting a decent appeal on an issue of law.

David Toren:

Well, Your Honor, the defendant has completely ignored the legal issue in the proceedings below and has said this is a matter of fact.

Byron R. White:

Well, I know but you could have gotten a review on that, you wouldn’t have ignored it if you have said instead of taking an appeal from — on the what you call interlocutory appeal from the denial injunction, an appeal under merits, could you say well, the case is over please enter a primary judgment.

David Toren:

Suppose the judge wouldn’t do that.

Suppose the judge would have said well I think that case should be tried because my learned friend here said there are some people who —

Byron R. White:

No.

I don’t know about that suppose because that hasn’t happen.

David Toren:

It’s only speculative.

I don’t know how this —

Byron R. White:

But at least — but wouldn’t you — why don’t say here which I really understand you are saying that it doesn’t make any difference why the District Court turned down the summary judgment whether it was because of an untried issue of fact or because he ruled against you on a dispositive issue of law.

It doesn’t make a bit of difference under the statute on appealability judgment?

David Toren:

Correct, Your Honor.

Byron R. White:

So then what part of argument about —

David Toren:

I don’t know.

Mr. Justice Fortas started it.

Byron R. White:

Yes, but you — but your position is that it doesn’t make any difference.

This is the point.

David Toren:

It makes no difference whatsoever.

Byron R. White:

And even if the trial judge says what there’s a disputed issue of fact here and I am going to turn down summary judgment and you say, yes that’s exactly why he did it.

You still would say you’re entitled to an appeal.

David Toren:

Right.

The statute says —

Byron R. White:

You go that far.

David Toren:

Yes.

Appeals from refusals of injunctions are allowed.

Well, an injunction has been refused so I can appeal, it’s that simple.

Byron R. White:

(Inaudible)

David Toren:

If I may develop my argument on that point, we concede that interlocutory appeals are not looked upon this favor.

We have no quarrel with that but we feel that the reasoning of the court below is fallacious and unsound for three reasons.

One, it ignores the purpose of the statute.

Two, it ignores the plain wording and meaning of the statute, and three it is against the very purpose of summary judgment.

David Toren:

Now, in respect of the purpose of the statute, the purpose of Section 1292 is to create an exception to the rule of finality that has been previously recognized by this Court, Mr. Justice Fortas and I refer you to Baltimore Contractors versus Bodinger which was decided in 1954 and the Court expressly stated that this section, Section 1292 is an expressed exception to the rule of finality.

Now, the legislative history does not shed any light on the reasons why Congress modified the rules of finality in respect to interlocutory appeal.

But this Court in devoting our case which I referred state it and I quote, “the changes seem plainly to spring from a developing need to permit litigants to effectually challenge interlocutory orders of serious, perhaps irreparable consequence.”

Earl Warren:

Mr. Toren, I’ve been wondering why if you were satisfied, there was no issue of fact involved in this case and it was purely a question of law, why didn’t you submit your case and ask for a final judgment?

David Toren:

I didn’t think I have to, Your Honor.

I have a statute which I can appeal from the refusal of the injunction.

Earl Warren:

Why did you want to come up on that kind of a record instead of a final judgment of your — in your case.

Was it because you weren’t satisfied that there was no factual issue involved in the case?

David Toren:

No, Your Honor.

Earl Warren:

Well, what advantage — what advantage do you get by going through this procedure which is at least arguable instead of going through the other one which will not be arguable?

David Toren:

I must confess Your Honor when that matter came up, there was not a slightest doubt in our mind that that this is an appealable order.

The plain clear meaning of the statute says that I can appeal from the refusal of an injunction.

What else do I need?

Why should I go through additional procedural if the statute tells me I can appeal?

(Inaudible)

David Toren:

I have the circuit against us but I have an overwhelming —

(Inaudible)

David Toren:

Well, I have the Fifth Circuit on my side that the International Forwarding case and I have the statute.

What else do I need?

I think Mr. Justice Fortas if I may disagree in respect I think the points raised by Your Honor completely ignore the statute.

Abe Fortas:

Well, it’s entirely up to you to think that.

I just want to ask you one question.

Suppose that the Court of Appeals had felt that this was an appealable order, what would the Court of Appeals decide?

David Toren:

Pardon, I didn’t —

Abe Fortas:

What issue would the Court of Appeals decide?

It wouldn’t just say this is an appealable order.

It’s alright, this is an appealable order, now what’s the issue of court would decide?

David Toren:

The issue for the Court of Appeals is whether or not the motion was denied correctly or incorrectly.

Abe Fortas:

That is whether there are or there are not, you mean on the merits?

David Toren:

On the merits sure.

David Toren:

It never reached the merits on the Court of Appeals.

Abe Fortas:

Well, suppose the — suppose the Court of Appeals looked at this and said that there are questions of fact.

David Toren:

But that’s not what the Court said.

Abe Fortas:

I know but suppose they did.

David Toren:

The Chief Justice went up and said dismissed.

Abe Fortas:

I understand that that’s what he said and he said it’s not appealable but you came up from the District Court and for reasons of your own, you did not obtain the entry of a final order on the merits of your case.

You came up from a denial of a motion for summary judgment.

David Toren:

Correct.

Abe Fortas:

A motion for summary judgment may be denied without passing on the merits of the case if the judge concludes that there are genuine issues of fact, isn’t that right?

And for all that we know and hope you’ll correct me if I am wrong about this as I understand this case, for all that we know and the district judge have planned to pass on your motion for summary judgment, decline to grant a motion for summary judgment because the district judge thought that there were genuine issues of fact.

David Toren:

I don’t agree with that.

Abe Fortas:

Now, for most circumstances, a Court of Appeals would pass on the question of whether there were or were not genuine issues of fact.

That’s the first question that it has to decide.

Courts of Appeals don’t usually supersede the District Court in passing on the merits of a matter before the District Court has passed on it in circumstances where the District Court has properly declined to pass on the merits because there are remaining issues of fact.

David Toren:

Your Honor.

Your Honor will agree with me that if the District Court would have granted a motion, he would have had a final judgment, a final order appealable under Section 1291.

Abe Fortas:

Of course.

David Toren:

But then now — suppose now the Court of Appeals would have held that motion should not have been granted because there were issues of facts, now the respondent to it would have had the opportunity to appeal.

Now, why should we be in the worst position?

In fact, —

Abe Fortas:

Because there’s no final disposi — there was no judgment by the District Court passing on the merits of your claim.

David Toren:

There was the statute that say I can appeal.

Abe Fortas:

And in my system of jurisprudence, Courts of Appeals as I understand it ordinarily defer to District Courts and expect the District Court to pass on issues before they are passed on by the Court of Appeals and so far as I know the only issue that the District Court did pass on was whether there were or not genuine issues of fact.

David Toren:

But, I disagree with that Your Honor because the District Court judge said this is a matter of law and this is a forum.

Potter Stewart:

But even if — let’s assume that Mr. Justice Fortas is correct in his premise and it’s your mistake in disagreeing with him and that what the District Court — certainly what he — what the District Court could have based this decision on was his finding that there are disputed issues of material facts.

Certainly, that’s true, isn’t it?

David Toren:

Okay, it wouldn’t make any difference —

Potter Stewart:

The question is the jurisdiction of the Court of Appeals under this statute, that’s the question in this case, isn’t it?

David Toren:

Perfect.

Potter Stewart:

And Mr. Fortas — Justice Fortas is entirely correct in saying I should think that if the Court of Appeals does have jurisdiction, the very first question it’s going to consider on appeal is whether or not there were disputed issues of material fact, and if they were the district judge regardless of what he might have said in colloquy about the law, he was quite right in denying the summary judgment for final injunction, isn’t that correct?

David Toren:

Correct.

Potter Stewart:

But that’s for the Court of Appeals to decide if it has jurisdiction as you tell us it has under the statute.

Could I ask you one question about the (Inaudible)?

David Toren:

No, Your Honor.

What happened was one of our counselor sitting in the chamber as the case was called and it’s supposed to tell the time of argument so our men went up and said one hour argument so the chief judge says, case dismissed for want of jurisdiction.

That’s it and that was the end of it.

And then came an opinion.

And the opinion was written without any argument?

David Toren:

Without any argument.

Now we feel that that this was correct.

Abe Fortas:

Are you telling us, were there briefs?

David Toren:

Oh yes.

Abe Fortas:

There were briefs submitted on the merits?

David Toren:

Pardon?

Abe Fortas:

There were briefs submitted on the merits?

David Toren:

On the merits.

Abe Fortas:

So that what we have here is that the Chief Judge Aldrich and sitting with Judge Hamlin and Circuit Judge McCarthy said they didn’t want to hear argument?

David Toren:

That’s correct.

Now in our brief, we argued the appealability of the order but not only as an auxiliary matter because we sought that was more or less clear cut.

Potter Stewart:

Was there a motion to dismiss the appeal?

David Toren:

No.

Abe Fortas:

Well then, you said that the judge — the trial judge says that this is a question of law.

David Toren:

That’s correct.

Abe Fortas:

Page 48 of the record there is the judge’s order which clearly recites motion denied after hearing.

Then what are you talking about?

David Toren:

If I may refer Your Honor to our brief.

On page 17 of our brief, I quote from the record pages 47 and 48 and I read from the brief.

Mr. Toren, that’s me, “Now the second point was the international conventional of the Lanham Act.

It hasn’t even been mentioned in Mr. Cole’s brief.”

Mr. Cole, for the respondent, now, that means he has not attacked it.

David Toren:

The Court, “Apparently, he takes the position that it is not conclusive.”

That is the position he takes from what he said Mr. Toren but that is not a matter of genuine issue of fact if he simply says with the Court that is the matter of law.

Abe Fortas:

May I read the next two lines.

David Toren:

Yes.

Mr. Toren, this is a matter of law, the Court, if you what you claim is so.

Abe Fortas:

Alright.

David Toren:

Now from this I can — I can infer —

Abe Fortas:

As a matter of law, and on page apart from the fourth saying it’s a matter of law, then on page 43, I draw your attention to the third — fourth paragraph and the Court said, well the question before me is whether or not there is any genuine dispute as to any material of fact.

David Toren:

Oh!

Yes, I know that.

Mr. Justice Fortas, as far as I’m concerned, it doesn’t make any difference if that motion was denied because of an outstanding matter of fact or an outstanding matter of law.

As far as I am concerned, we have a statute which permit appeals some refusals of injunction whatever the reason.

Mr. Chief Justice my time is up but —

Earl Warren:

You may answer the question, Mr. Toren.

David Toren:

Thank you.

I haven’t been able to present my argument if I may so.

So as far as we are concerned, it doesn’t make any difference whether it was a question of fact or a question of law.

The statute is abundantly clear, its plain meaning, its plain language is the Court of Appeals shall have jurisdiction from appeal from interlocutory orders refusing injunction.

Here we have an order which refused an injunction well then therefore within the statute.

Now, Mr. Justice Fortas, the court below admitted that we are within the exact letter of the statute but the Court says that the spirit of the statute is against us.

Now, what does it mean?

That means, if you read the statute literally, our appeal has to be allowed.

But literal reading is taboo because of the general policy against interlocutory appeals.

That means the Fifth Circuit spurns the meaning of the language, the plain meaning in favor of a doctrine for which this statute is the exception.

I submit that this is the most unpersuasive reason to ignore the plain meaning of the statute.

Thank you, Your Honor.

Earl Warren:

Mr. Cole.

Harold E. Cole:

Mr. Chief Justice and this Honorable Court.

On this manner of the statute and whether or not this is an interlocutory appeal I maintain it’s not interlocutory it’s not interlocutory at all because if the motion for summary judgment is allowed that is the case.

I am going to read from the hearing in the District Court.

Harold E. Cole:

The clerk called a case and the Court says, “Does the plaintiff waive damages in this case?”

Mr. Toren answered, “Yes, Your Honor.”

The Court, “Does the plaintiff waive attorney’s fees.”

Mr. Toren answers, “Yes, Your Honor.”

The Court says, “You waive for it?”

Mr. Toren says, “Yes, Your Honor.”

But now, if the permanent injunction is granted by the Court of Appeals that’s the end of the case, there’s nothing more to it.

I don’t see any point in calling this an interlocutory appeal agreeing that if it were a motion for a preliminary injunction then and was denied then he could appeal under the statute but he’s asking for a permanent injunction to complete the case in the Court of Appeals for the First Circuit and if their decision is favored, that ends the case.

In connection with this statute, this court has had something to say about it in the City of Morgan Town, West Virginia versus Royal Insurance Company, 376 U.S. 254 60 Supreme Court 1067.

The Court said, page 258 but piecemeal appeals have never been encouraged.

The growth of the law of procedure in the United States during the last half century has been steadily in the direction of simplicity and direction in the administration of justice and the appeal of order denied.

In that case I should state that Mr. Justice Black and Mr. Justice Rutledge did dissent.

But, however, it dealt with this statute although the matter was the denial of a jury trial in the District Court.

Nevertheless, it reached this Court and the Court refused to expand the statute.

Now, what the plaintiff petitioner is asking here is that this Court expand the statute and include motions for permanent injunction that are denied even though damages and attorneys fees are waived.

That’s what —

Or is it the other way around?

Harold E. Cole:

What’s that?

I should think it’s the other way around what the statute was saying regarding this appeal?

Harold E. Cole:

An appeal —

What you are suggesting is that the Court of Appeals (Inaudible)?

Harold E. Cole:

The — the statute —

A particular disruption on the jurisdictional statute (Inaudible).

Harold E. Cole:

Yes but the statute deals with interlocutory appeals.

Now, the word interlocutory has a clear meaning.

It certainly doesn’t mean an appeal where if it’s decided the whole case is it that this isn’t a case that will go back for damages ought to determine attorneys fees if the Circuit Court of Appeals decides the case where in it, where it is completed, that is that if they decide in favor of the plaintiff we never get a trial.

Now, I want to argue a little on why Congress never amended the statute to provide for appeals when a motion for permanent injunction is denied.

If — well, we’ll take the facts in this case and how abusive a process can be in court.

This defendant respondent is a small retail meat dealer having two employees and he has a small meat stall in Faneuil Hall Market at Boston.

He did not receive any notice in writing to stop using this little sign Imported Swiss Cheese.

Harold E. Cole:

He happens to sell about 15 to 20 pounds of cheese that’s imported either from Finland or Austria.

He had to charge more for Imported Swiss Cheese so he merely put on top of the cheese with a little sign Imported Swiss Cheese which is a fact, it’s true, it is imported.

It came, I believe this cheese came from Austria but Swiss cheese is the well-known term that he was using honestly in the dictionary it’s defined as Swiss cheese, a firm pale yellow or white cheese containing many holes, made usually from cow’s milk, half skimmed.

That’s from the American College dictionary.

Now, United States Department of Agriculture puts out a book on cheeses and in it, it defines Swiss cheese and it says Swiss, Emmentaler cheese which is a large, hard crust, curd cheese with an elastic body and a mild nut-like Swedish flavor.

It’s best known because of the holes or eyes that developed in the curd as the cheese ripens.

The eyes are often one half to one inch in diameter and so on.

And then it goes on to say Swiss cheese is made in many other countries beside Switzerland, including France, Denmark, Germany, Bulgaria, Italy, Austria, Finland, Russia, Argentina, and the United States.

And then it goes on to say that most of the Swiss cheese is made in Wisconsin but some other countries also make Swiss cheese.

(Inaudible)

Harold E. Cole:

Well, first of all, I want to point out if you do allow an appeal from a denial of a motion for summary judgment, how much this split of a case?

What damage you can do to a poor defendant.

He is a fellow with a little market.

He goes into court because he wasn’t given written orders.

Then there’s an appeal, alright, if the Court, the circuit court denies the appeal, back it goes to the District Court then up to the Court of Appeals again all over one little word.

He said the cheese was imported.

It is imported.

What you emphasize is what Court of Appeals (Inaudible).

Harold E. Cole:

Yes, but the point is — here is the way we started.

In November 1963 the complaint was filed.

A year and more later, when the case was nearly ready for trial, this motion for summary judgment was filed.

Now, that keeps the case from being tried.

So we hear the motion for summary judgment.

It’s denied.

Now, he gets another year before trial.

He goes up to the Court of Appeals for the First Circuit and we used up approximately another year getting up there in briefs and so forth.

Now, I don’t think Congress wants you to expand the statute to include a motion for summary judgment because of the unfairness and the hardship of a little defendant.

Now, they are bringing this case up or trying to bring it up to the Court of Appeals again and have them decide that the words Imported Swiss Cheese mean (Inaudible) that is the Switzerland Swiss Cheese.

It’s a strange thing but while this case was going on an advertisement came out in the New York Times and the Ladies’ Home Journal in which they said in their ad, “Imported Swiss cheese isn’t good enough for you.

Insist on genuine Switzerland Swiss Cheese.”

Harold E. Cole:

They don’t believe that they had any right in Imported Swiss Cheese but they can go on and on with a case like this.

Right up one court to another then back to the other court then up to the other court and we can have a trial after something like three years now.

We can’t even get a trial.

Hugo L. Black:

Did you attack this copyright?

Harold E. Cole:

Oh he didn’t have any.

He didn’t have any registration.

He hasn’t have any copyright.

Hugo L. Black:

How did the court get it —

Harold E. Cole:

They just —

Hugo L. Black:

— out in the federal court and get jurisdiction on a purely local case.

Harold E. Cole:

They — when they started the case, they attached a lot of patent office, trademark registrations but that’s been dropped long ago.

We didn’t infringe those.

Those trademark registrations covered Switzerland Swiss Cheese.

Hugo L. Black:

But what’s the end of it?

Harold E. Cole:

Oh!

He says that the plaintiff has exclusive rights in the words Imported Swiss Cheese.

Hugo L. Black:

Imported Swiss —

Harold E. Cole:

Swiss Cheese.

That if anyone uses the word —

Hugo L. Black:

Did you attack the right to get some kind of a trademark or a semi patent on the words Imported Swiss Cheese?

Harold E. Cole:

Well, they haven’t done any.

What they say is that in the trade, when anyone uses the word Imported Swiss Cheese, they mean only the plaintiff’s cheese and they put a couple of affidavits in.

What I am pointing out is that same time the lawyers were doing that, this advertisement came out in the New York Times and the Ladies’ Home Journal saying that Imported Swiss Cheese isn’t good enough for you.

Hugo L. Black:

Well, that would like be getting some kind of a right to use alone?

Imported Russian fur.

Harold E. Cole:

Well, that’s what they want.

That’s what they’re asking for.

The sole argument in this case in there briefs is that is a question presented —

Hugo L. Black:

Well, if the courts — the courts below decided get on the facts that they allege, they didn’t have enough, they didn’t have jurisdiction regarding the thing that’s no good.

Would that give the court jurisdiction?

Harold E. Cole:

Well maybe I don’t understand, the Court only decided that they couldn’t hear an appeal from a denial of motion for summary judgment, that’s all they decided.

Hugo L. Black:

But what did the District Court decided on?

Harold E. Cole:

Oh the District Court said it was a question of facts.

They said a number of facts.

Hugo L. Black:

And then decided against them on the question of fact?

Harold E. Cole:

What’s that?

Hugo L. Black:

And decided against them on the question of fact?

Harold E. Cole:

Well, yes.

They said it was a question of fact.

But it seems the affidavits were contradictory and so they wouldn’t decide that Imported Swiss Cheese means plain as is, they wouldn’t decide that.

They said the affidavits are contradictory.

So there was the end of that part and I think Judge Julian made it clear several times because he did talk an awful lot as you see in the record about it that it was a question of fact and he was stuck.

He says I can’t issue a — I can’t grant you motion for summary judgment and he refused so he — Judge Julian is very implying to grant the motion.

If you read in the record here the number of things he said on the subject.

Now, —

Hugo L. Black:

Did you say or not that they do have a trademark?

Harold E. Cole:

No they don’t have trademark on Imported Swiss Cheese.

They —

Hugo L. Black:

They have no copyright on it?

Harold E. Cole:

No, they have none.

Hugo L. Black:

They have no patent?

Harold E. Cole:

No.

What they did they attached the patent office trademark registration to the complaint to get into the federal court.

Once that they got it in there then they drop the whole thing.

They don’t claim —

Hugo L. Black:

They drop the whole thing about the —

Harold E. Cole:

Except the words Imported Swiss Cheese.

Hugo L. Black:

Said they have been using that and that you’re deceiving somebody.

A plain order in that case —

Harold E. Cole:

Yes, that’s what they said.

Harold E. Cole:

It is what he says in his brief.

Petitioner says the exclusive representatives of the cheese manufacturers of Switzerland.

They alleged that respondents use of the of the trade designation Imported Swiss Cheese on non-Switzerland cheese without indicating the country origin of the cheese is deceptive and an unfair trademark practice as a matter of law.

Earl Warren:

We’ll recess now Mr. —

Continue your argument.

Harold E. Cole:

Thank you.

I meant earlier in my argument to explain why I asked that the Court dismissed the case on the merits because there is authority and I refer to Patterson v. Alabama 294 U.S. 600 page 607.

We have frequently held that in the exercise of our appellate jurisdiction, we have power not only to correct error in the judgment under review but to make such disposition of the case as justice requires and the Court has on different occasions dismiss the case.

Well, of course we’re anxious in that.

I would argue would be dismissed because all we’re using is the word “imported” and we don’t want to go on from court to court fighting for our rights.

In fact I better say this that this was a small sign and when the suit started the attorney for the defendant who isn’t here told his client to take down the sign.

The sign hasn’t been up since then but what they want is an injunction and we aren’t willing to have the injunction issue because you make use of an injunction naturally legally by advertising it so forth so that’s where our difference.

We don’t consider calling Imported Swiss Cheese, any great event while you’re only selling only 15 to 20 pounds a week and actually we aren’t doing it.

Now, I depended also on a case not in my brief but Your Honors will recall on that Sears, Roebuck v. Stiffel 376 U.S. 225.

In that case, this Court made it clear that nothing was to be taken out of the public domain and given to anyone party.

In that case, it happen to be a lamp that wasn’t patented and they had gotten an injunction enjoining the defendant Sears Roebuck from using the lamp even though it was patented and this Court made it clear if there were no statutory protection for that lamp either by a design patent or regular patent or a copyright that anyone who’s free to make it, in the same holds here as to the word imported.

Anyone is free to use the word imported if it’s truthful.

Now, the Code of Federal Regulation Title 21 Chapter 1 defines in Section 2 Swiss cheese.

I don’t need to read the definition but in order for the import division, the treasury department to permit the entry of cheese they defined Swiss cheese and of course Swiss cheese it’s coming from all these different countries.

Another thing I should mention the defendant respondent never uses Switzerland, he never called this cheese Switzerland.

He never called his cheese genuine.

All he calls it is imported.

Another thing during the hearing in fact the motion for summary judgment contain no proof or advertisement whatsoever that the plaintiff, petitioner here ever used the words imported Swiss cheese alone to describe its product.

They presented no advertisement showing that.

All the advertisements described the product as Switzerland Swiss cheese.

Now, coming to the decision because while the Second Circuit Court of Appeals did permit an appeal from a denial of summary judgment I think the case of Morgenstern v. Schering 181 F.2d 160 from the Third Circuit is better reasoned.

On page 162 the Court said the denial of summary judgment in the court below has no comparable significance.

The Court has not reached much less decided the merits of plaintiff’s claim for injunction.

The motion for summary judgment is not an application for a preliminary injunction.

Nothing has occurred in or as a result of the denial of the motion which precludes plaintiff from seeking a temporary injunction.

Harold E. Cole:

Now, in the Court of Appeals for the Second Circuit where they did allow the appeal I think you will see the fallacy especially in Judge Frank’s opinion where he said regarding the case of contrary conclusion by sheer ritualism would waste time for plaintiff the next minute after the denial of the summary judgment motion could present the same papers and changed except for a new label motion for a preliminary injunction.

In other words, what —

Hugo L. Black:

What is that case?

Harold E. Cole:

What’s that?

Hugo L. Black:

What is that case?

Harold E. Cole:

Oh that was Judge Frank’s case —

What —

It’s — oh Second Circuit.

I believe it’s a Federal Glass —

Hugo L. Black:

Judge —

Harold E. Cole:

No this was Judge Frank.

He followed Judge Hand out.

Judge Hand had the first one.

Hugo L. Black:

What —

Harold E. Cole:

What’s that?

Oh this one here?

The U.S.C. 276 F.2d 525.276 F.2d 525.

Hugo L. Black:

That’s Judge Hand?

Harold E. Cole:

No that’s Judge Frank.

Hugo L. Black:

What’s Judge Hand.

Harold E. Cole:

Well, oh Judge Hand.

Hugo L. Black:

Well, you don’t have that in —

Harold E. Cole:

It’s in the Federal Glass Company versus Loshin 217 F.2d 936 Ca.2.

But in the Second Circuit now, some of the judges who have been constrained to follow Judge Hand’s and Judge Frank’s decision said solely they do it with regret that they don’t think it was good law but they of course feel they are bound to follow.

On the other hand, we have the Third Circuit now and the First Circuit deciding the case otherwise.

Now, that completes my argument.

David Toren:

Mr. Chief Justice may I request some additional time?

Earl Warren:

No.

I think not.

We’ll have to get the rest from your brief.

Earl Warren:

That’s the regular routine of the Court then.

I’m sorry.

David Toren:

Thank you.