BROWNE-VINTNERS CO. v. NATIONAL D. & C. CORP.
151 F.Supp. 595 (1957)
BROWNE-VINTNERS CO., Inc., G. H. Mumm & Co., Société Vinicole de Champagne Successeurs, G. H. Mumm & Co. (Société Vinicole de Champagne Successeurs) of New York, Inc., Plaintiffs, v. NATIONAL DISTILLERS AND CHEMICAL CORPORATION, Defendant.
United States District Court S. D. New York.
May 15, 1957.
Breed, Abbott & Morgan, New York City, for defendant, Gerald J. Craugh, New York City, and Morris, Pearce, Gardner & Pratt, David A. Fegan, Washingon, D. C., of counsel.
McGOHEY, District Judge.
This is an action for injunctive relief and damages for alleged infringement of
The defendant, by selling Rhine wine under the name "G. H. v. Mumm," has competed unfairly with the plaintiffs and infringed their trade-mark "G. H. Mumm & Co." A decree of injunction will be entered. As the plaintiffs showed no pecuniary loss, an accounting will not be ordered.
The plaintiffs are G. H. Mumm & Co. Société Vinicole de Champagne, Successeurs, a French corporation (hereafter called the French Société), which produces champagne at Rheims, France; G. H. Mumm & Co. Société Vinicole de Champagne, Successeurs of New York, Inc., a New York corporation (hereafter called the New York Société), which is a wholly owned subsidiary of the French Société and the present registered owner of the trade-marks; and Browne-Vintners Co., Inc., a Delaware corporation, which imports champagne produced by the French Société into the United States and sells it here under the trademarks, pursuant to exclusive licenses from the French and New York Sociétés.
The defendant is National Distillers Products Corporation (hereafter called National), a Virginia corporation, which was substituted for the original defendant Bellows & Co., Inc., a New York corporation, after the latter was merged with National.
In 1934 Bellows & Co. commenced to distribute bottled Rhine wine in the United States as the agent of the supplier which was also the producer of the wine. At that time the main label on the bottles indicated "Hermann v. Mumm'sche Kellerei" as the producer. In 1937, this was changed to "Johannisberger aus der G. H. v. Mumm'sche Kellerei" (Johannisberg wine from the cellar of G. H. v. Mumm). The main label also contains the ancient coat of arms of the Mumm family. On another label affixed to the neck of the bottles appear the words "G. H. v. Mumm'sche Gutsverwaltung" (Administration of the Estate of G. H. v. Mumm). The latter is located at Johannisberg, Germany. It is the present producer of the Rhine wine and the supplier of National.
"Godefroy H. v. Mumm & Co., Kellereinen of Eltville-am-Rhein, Germany" is the producer of various wines other than Rhine wine, including a sparkling wine similar to champagne. It is a limited partnership with share owners, of whom the largest and the legally and financially responsible partner is Godefroy Hermann von Mumm who for convenience will hereafter be called "Godefroy." He is also the legal and financially responsible head of the "Gutsverwaltung." The estate is that of Hermann von Mumm, who was his father.
The complaint alleged that since 1853 the French Société and its predecessors have sold champagne in the United States under the trade-marks "Mumm," "G. H. Mumm & Co." and "Mumm-Reims"; that the American Société now owns those trade-marks and their United States registrations; that Browne-Vintners is the sole agent in the United States for the sale and distribution of the French Société's product under those trade-marks; that the defendant National imports Rhine wine from G. H. v. Mumm'sche Kellerei and sells it in interstate commerce under the latter name, thus tending to and in fact causing confusion and deception as to the source of the Rhine wine; all of which constitutes infringement and unfair competition, done with knowledge and for the purpose of trading on the good will attached to the French Société's trade-marks. It asks that National be enjoined "from using upon or in connection with the sale of wines or any other beverages the words G. H. v. Mumm or the word Mumm or any other colorable imitation of any of the same." (Emphasis supplied.)
National's answer denies these allegations except the allegation that it imports
More than a year after the answer was filed National moved for leave to amend and interpose a counterclaim in which it asserted, "if the court should find" that "the marks of the defendant's supplier and the plaintiff's marks are confusingly similar and likely to cause confusion * * * then [the defendant's] supplier and not any of the plaintiffs has the exclusive right to the use of the mark or word `Mumm,' or any combination thereof with other words, in association with the sale and distribution of potable beverages * * *"; and prayed for a decree that the "defendant's supplier has the sole and exclusive right to the use of the trade-marks `Mumm,' `Mumm-Reims' and `G. H. Mumm & Co.' and any like words or combinations thereof" and that the "plaintiffs and those controlled by them" be enjoined from using those words or any like words or combinations thereof "upon or in connection with the sale of wines, champagnes or other beverages." (Emphases supplied.)
Judge Weinfeld denied that motion but gave National's supplier leave to intervene in this action, D.C., 15 F.R.D. 205. This, the latter did not do, although it is under agreement to hold National harmless.
In its brief filed after trial National does not, as it did in its proposed counterclaim, assert its claims with respect to ownership of the trade-marks and the validity of the United States registrations, in the subjunctive. It now contends unconditionally that the evidence in this case requires a decree that only National's supplier, of which Godefroy is the head, has "the right to the exclusive use of the marks `Mumm' on vinous products"; that the plaintiffs have no right whatsoever in the trade-marks; that the registrations thereof in the Patent Office should be ordered cancelled; and that the plaintiffs should be permanently enjoined from "any and all use of [the name `Mumm'] on and in association with vinous products" except that the French Société "might be permitted to continue to use the name `G. H. Mumm & Co. Société Vinicole de Champagne, Successeurs' on and in association with French champagne, provided that all the words of such name are of the same size, color, style and prominence, and further provided its labels contain an appropriate notation to the effect that it is not associated with the defendant's supplier."
This is but the latest in a long series of law suits over these trade-marks. It will be helpful in understanding the issues presented here, to summarize the historical context in which they arise.
For almost a century and a half the Johannisberg vineyards have been owned and operated by successive generations of the Mumm family whose ancestor Peter Arnold Mumm founded the family wine business at Frankfort, Germany, fifty years before the Johannisberg properties were acquired in 1811. The Rhine and other wines produced on the family vineyards in Germany have been sold under some form of the name "Mumm" for very close to two centuries.
In 1827 members of the family then engaged in the wine business in Germany under the name "P. A. Mumm & Co., Frankfort, Cologne, Johannisberg," established a champagne business at Rheims, France. This, also, was carried on by successive generations of the family until 1914, usually under management by the same persons who managed the wine business in Germany. At first it went under the name "P. A. Mumm-Giesler & Co.-Rheims." In 1837 that firm was dissolved and until 1853 the champagne business was carried on under the German wine company's name to which was added the word "Rheims," namely, "P. A. Mumm & Co., Frankfort, Cologne, Johannisberg, Rheims." In 1914 it was being conducted under the name "G. H. Mumm & Co.-Rheims,"
After the outbreak of World War I, France seized the champagne company and all its assets including trade-marks and good will as alien enemy property; and in 1920 sold them to the French Société whose name was then "Société Vinicole de Champagne." The change to its present name "G. H. Mumm & Co. Société Vinicole de Champagne, Successeurs" was made in 1946. At the time of the seizure of G. H. Mumm & Co.-Rheims, Godefroy's father, Hermann von Mumm, was its head. It then owned the trade-marks: "G. H. Mumm & Co.," "Mumm" and "Mumm-Reims" which in 1906 it had registered in the United States. By the terms of the Versailles Treaty, Germany undertook to indemnify its nationals for property seized by France and thereafter, under laws enacted pursuant to the Treaty, paid the Mumm family more than $1.7 million-gold. Since 1920 the French Société has produced champagne and sold it throughout the world including, since 1933 at least, the United States, under the names "G. H. Mumm & Co.," "Mumm" and "Mumm-Reims." In 1923, the French Société registered the three trade-marks in its own name as the successor of G. H. Mumm & Co.-Rheims. The registrations were subsequently renewed and in 1948 they were republished under the Lanham Act. The French Société has built up in the United States a large and profitable trade in its champagne sold under the trade-marks. Its champagne enjoys wide renown.
The Mumm family has refused and seemingly still refuses to abide the results of the French action of 1914. Since the end of World War I members of the family have repeatedly attempted by various means to establish a champagne business under the name "Mumm" in some form. This has resulted in a series of litigations both abroad and here. In all of these, Godefroy's father, Hermann von Mumm, who was then the head of the family, and the others who were parties, sought to nullify France's seizure and sale of G. H. Mumm & Co.-Rheims to the French Société, or at least to circumscribe the effects of these actions so as to enable members of the family to engage in the champagne business in France and elsewhere under some form of the name "Mumm" and to compete for the french Société's trade in champagne sold under the trade-marks. These efforts uniformly failed. One was a suit in this court decided in 1935.
Judge Woolsey's final decree was entered May 25, 1937. The Mumms did not appeal. Neither, however, did they cease their efforts to establish a champagne business under the name "Mumm" in competition with the French Société in the United States. Judge Woolsey had decreed that, in the champagne business, Walther could not use "any name other than Mumm von Schwarzenstein" which the judge held to be his true name. In June, 1943, seven and a half years after the opinion was filed and six years after entry of the final
The decree National seeks here would: (a) take from the French Société, without compensation, valuable assets it purchased from France and profitably exploited with consequent enhancement in value since 1920 and successfully defended in repeated litigations with the Mumms not only in Europe but in this court; (b) turn back to the Mumms assets for which they were long since compensated; (c) make a free gift to the Mumms of the good will which the French Société has built up in the champagne business in the United States at least since the repeal of prohibition in 1933; (d) permit Godefroy, contrary to Judge Woolsey's decree, to use the name "G. H. v. Mumm" in advertising and selling champagne not produced by the French Société. These results would, in effect, completely subvert the decrees of all the courts, including this one, which, in the prior litigations between Godefroy's father and other members of the Mumm family and the French Société, held the latter entitled to the exclusive right to use the trade-marks on champagne.
National is the sole defendant here and so the first question is whether it has standing to assert such claims, and to demand such relief; and whether in the absence of its supplier as a party here, such a decree could stand. National, it is true, besides defending against the claims for damages, has an interest to protect its monopoly of the sale in the United States of Rhine wine under the name "Mumm." But it has no present interest in the sale of champagne under that name. Accordingly protection of National's interests does not require the extraordinary relief it demands. Still less does it require that the court reach out to grant such relief to those who have rejected its invitation to come in and assert their claims. The real and permanent beneficiaries of the requested decree would be, not National whose agency even for Rhine wine may be terminated, but the Mumm family in general and Godefroy in particular who, as already noted, manufactures a sparkling wine similar to champagne. He, however, though actually present at the trial and specifically authorized by Judge Weinfeld to do so, declined to intervene and assert his and his family's claims. He was neither named nor served as a party nor did he appear as such, either in person or by attorney. He was, however, National's principal witness. He testified at great length from ancient original family records which he brought over from the family archives in Germany, the genuineness of which the plaintiffs conceded. His testimony covered the period from about 1760 to the present and included not only the family's conduct of the wine business in Germany but also of the champagne business at Rheims, France. As to the period from at least 1928 to the present, his testimony was based on personal knowledge. As noted above, Judge Woolsey enjoined not only the Mumm Champagne and Importation Co., Inc. but also its "other officers, agents and servants." Godefroy was one of these, to wit, a vice president. He now says he was merely a "nominal" officer. I do not accept this self-serving disclaimer. I think the inevitable inference from Godefroy's testimony is that his position in the corporation was substantial. Judge Woolsey, it is true, held that the corporation was the "alter ego" of Godefroy's uncle, Walther Mumm,
If the defendant's supplier, of which Godefroy is the head, had intervened here and asserted the exclusive right to use these trade-marks "on all vinous products" two questions would have arisen: (a) whether Godefroy as an officer of the defendant in the earlier suit was not estopped to challenge Judge Woolsey's findings and conclusions respecting the ownership of and the exclusive right to use the trade-marks on champagne and the ownership and validity of the United States registrations, and (b) whether he could now be heard to demand a decree permitting him to do precisely what Judge Woolsey's unappealed decree restrained him from doing. Godefroy is not a party to this suit and National was not a party to the 1935 suit. Because of this and also because the former suit is said to have "involved" champagne while the instant suit "involves" Rhine wine, National contends that there is no basis here for the application of estoppel doctrines. But it is in no sense correct to imply as National does that champagne is not "involved" in this case. National itself has "involved" it by its contention that only Godefroy's wine company has the exclusive right to use the marks on "vinous products" which of course include champagne. Indeed it was the main objective of National's defense, which Godefroy managed and directed, to sustain that contention. Godefroy stipulated to be bound by the decree herein. The true situation here is this. Godefroy, who produces a sparkling wine similar to champagne, having declined to intervene in order, as seems obvious, to avoid the problems which that would have entailed, is nevertheless, in National's name, attempting (a) to revive and relitigate de novo the Mumm family's claims as to the ownership of and the exclusive right to use the trade-marks on champagne, all of which were rejected in favor of the French Société more than twenty years ago by Judge Woolsey from whose decree no appeal was taken; and (b) to secure a new decree which would permit him to use the name "G. H. v. Mumm" in advertising and selling champagne not produced by the French Société, which is precisely what Judge Woolsey restrained him from doing. I think it clear that National has no interest of its own, which a court will recognize, in these claims with respect to use of the trade-marks on champagne, and that the decree it prays for could not stand.
In 1948 the French Société assigned the trade-marks to the New York Société which then assigned them to Browne-Vintners, the exclusive distributor of the French Société's champagne. Browne-Vintners thereafter assigned them back to the New York Société in whose name they were thereupon registered. The New York Société then issued to Browne-Vintners a new exclusive license to import and sell the champagne. By the terms of the assignments the New York Société, which concededly does not itself sell or advertise the champagne, was given authority and responsibility to determine the quality of the champagne to be imported, the advertising of it by Browne-Vintners and the disposition of complaints. It was also charged with responsibility to protect the marks. It is not clear just why it was thought necessary to make all of these assignments.
We come then to the issues of infringement and unfair competition. The trade-marks alleged to have been infringed do not consist of fabricated symbols
The plaintiffs also concede that, as far as they know, there has been no confusion as to the source of the Rhine wine. However, they do not concede, and indeed it cannot be said that, there is no likelihood of some such confusion.
In S. C. Johnson & Son v. Johnson
From 1760 to 1899, the Rhine wine was sold under the name "P. A. Mumm & Co." In the latter year, Godefroy's grandfather, then the head of the business, whose full name was "Peter Arnold Gottlieb Hermann von Mumm," changed its name to "Hermann von Mumm'sche Kellerei" and thereafter sold the Rhine wine under that name. This was continued after his death in 1904, by his widow and son. The latter was Godefroy's
The plaintiffs contend that Godefroy's true name is "Alphonse Godefroy Hermann Mumm von Schwarzenstein";
Godefroy was born in France in 1908, and his birth certificate records his name as "Alphonse Godefroy Hermann de Mumm." On this point, his testimony which was neither contradicted nor weakened in any way was, that he has never used or been known by the name "Alphonse"; and that in school, in business and in social life he has always used and been known only by the name "Godefroy Hermann von [or v. or de] Mumm."
Godefroy chose, however, not to exercise that right. On the contrary, he began at once to sell the Rhine wine under the name "G. H. v. Mumm'sche Kellerei." This, allegedly, was only to show his ownership and control of that business as his grandfather had done in 1899; and his great-grandfather in 1853 with respect to the French champagne business at Rheims. Each of these, however, had a freedom in this regard which Godefroy did not have. In 1853 and in 1899, the same person owned or, at least, controlled both enterprises and, except as other members of the family might have had power to interfere, Godefroy's great-grandfather and grandfather were free to make the changes they did or other changes. In 1937, the situation was radically different. The French Société then had the exclusive right to use "G. H. Mumm & Co." on champagne and had been using it for 17 years on their product. Godefroy, therefore, was not free to adopt "G. H. v. Mumm," even if that be his true name, for use on the Rhine wine.
It is true that a man will hardly ever be denied all use of his name in business. But it is well established that he will be restrained from using a form which will permit him to deceive and to trade unfairly on the good will of another entitled to use the same name.
National's defense of laches is unavailing here. While it is sufficient to defeat the claim for damages as to which, in any event, no proof whatever was offered, it is not enough to bar injunction against future infringement and unfair competition.
The plaintiffs have shown no pecuniary damage. Accordingly an accounting will not be ordered.
In view of the plaintiffs' vigorous contention that adequate protection of their rights requires that Godefroy be denied all use of the name "Mumm" unless followed by "von Schwarzenstein," it will be appropriate to consider whether the foregoing relief will adequately safeguard two other interests, not yet discussed, which they are entitled to protect. The first is that their reputation be not stained by the business practices of National or Godefroy. The second is that they be not unreasonably excluded from a market into which they might reasonably hope or expect to expand in the future.
It is believed that the essential facts and conclusions have been sufficiently set forth. If, however, counsel for the parties think further findings or conclusions are necessary, these, if not inconsistent with this opinion, may be submitted within fifteen (15) days hereof. Any such proposed findings shall cite the page or pages of the trial transcript which it is claimed support them. Proposed conclusions shall cite the relevant authorities.
Submit proposed decree on five (5) days notice.
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