CLARK, Circuit Judge.
In this appeal we must decide whether or not a group of manufacturers and dealers in wearing apparel located in the State of California may prevent manufacturers and dealers in wearing apparel located in New York from using the names "California" or "Californian" in connection with their businesses. There are 76 plaintiffs, comprising an incorporated trade association and 75 of its members. The defendants are three corporations of New York City — Wieder of California, Inc., California Sportswear, Inc., and Cortley Shirt Company, Inc. Defendant Cortley does not use any variant of the word "California" in its trade name, but it does use the term "Californian" as a brand name for a line of its sportswear and on the labels affixed to such sportswear. Purporting to act not only for themselves, but also for all California manufacturers of wearing apparel, plaintiffs joined together to bring this action for unfair competition against defendants. In it they demanded damages, an accounting for profits, and an order enjoining the defendants from using the word "California" or any variation of it in their trade names or in describing their products. Defendants in their answers counterclaimed for declaratory judgments. Defendants Wieder and Sportswear sought declarations of their rights to continue to use their trade names, and defendant Cortley sought a declaration of its right to use its label and brand name. Plaintiffs moved for a preliminary injunction, and all defendants moved for summary judgment dismissing the complaint and on their counterclaims. The District Court denied plaintiffs' motion and granted defendants' motions — Wieder's in toto, and those of the other defendants in part. The District Court excepted from its order and preserved for future trial the claim of one of the plaintiffs, California Sportswear Co., against the defendant Sportswear because of similarity of their trade names, and against defendant Cortley because of similarities in their labels. D.C.S.D.N.Y., 68 F.Supp. 499. From this judgment plaintiffs have appealed.
In their complaint and later affidavits submitted to the District Court, appellants maintained that California-made wearing apparel was generally superior in quality and design to that made in all other sections of the country. They argued further that California apparel manufacturers had spent large sums of money advertising their wares and had succeeded in getting this idea accepted by the buying public. The answer and answering affidavits of the defendants challenged these claims and asserted the contrary. As was perhaps inevitable from the nature of the case, the statements on both sides tended in general to be opinions or conclusions of the affiants, rather than basic facts, however vigorously the respective views were advanced or asserted. Defendants claim, however, that whatever weight be given to the assertions on behalf of the plaintiffs, they show no right to relief in the premises; and the District Court was of this view, except for those cases of asserted direct injury to a specific plaintiff by the use of clearly similar names which it reserved for trial.
It is obvious that this presents an interesting and an important issue. The manufacturers of California have so considered it, as shown by the large numbers who have grouped together to enforce these claims as against businesses at so great a distance and seemingly not of nationwide scope. This is shown also by the support given the plaintiffs' plea by briefs amici curiæ by the Attorney General of California and the Los Angeles Chamber of Commerce. On the other hand, the rather far-reaching scope of the plaintiffs' claims is emphasized by the defendants, who suggest the numerous instances of well-known products, such as Manhattan shirts, Palm
First we should note the character and capacity of the plaintiffs and the effect of their declaration that they sue on behalf of other California manufacturers similarly affected. Plaintiff California Apparel Creators is a non-profit organization, organized some three months before the institution of this suit, which includes as members 17 associations of wearing apparel manufacturers and their respective members composed in the aggregate of "hundreds of firms manufacturing wearing apparel within the metropolitan area of the County of Los Angeles, California." It asserts that it has spent and is spending many thousands of dollars in advertising to create consumer demand for California wearing apparel manufactured and styled by plaintiffs; but it shows no direct interest in itself, such as ASCAP had in the royalties of composers as appeared in Gibbs v. Buck, 307 U.S. 66, 59 S.Ct. 725, 83 L.Ed. 1111. There also appear as plaintiffs 28 individuals, 36 copartnerships, and 11 corporations, or a total of 75 named parties who assert individual wrongs. These plaintiffs claim not only to represent themselves as manufacturers of various types of men's, women's, and children's wearing apparel, with their factories and places of business within the State of California, but also to represent all other California manufacturers who would be similarly affected and as to whom there is a common question of law and fact affecting their rights in the same manner as the rights of the named plaintiffs. Defendants assert that there are upwards of 4,500 such manufacturers in California; and this is not only not denied, but appears to be accepted as fact by the plaintiffs. In other words, the named plaintiffs represent less than 2 per cent of the potential number. There is no showing of the relative value of their investments; the large number of unincorporated businesses among the plaintiffs, considered in the light of American business practice generally, suggests certainly no greater proportionate investment than do the numbers.
So far as these plaintiffs assume to represent others they can do so only by
Turning, therefore, to the merits of the claim for unfair competition, we find it of course settled that a geographical name, indicative of the place of manufacture, cannot be appropriated as a trademark. Columbia Mill Co. v. Alcorn, 150 U.S. 460, 464, 14 S.Ct. 151, 37 L.Ed. 1144; Canal Co. v. Clark, 80 U.S. 311, 13 Wall. 311, 20 L.Ed. 581; LaTouraine Coffee Co. v. Lorraine Coffee Co., 2 Cir., 157 F.2d 115, certiorari denied Lorraine Coffee Co. v. LaTouraine Coffee Co., 329 U.S. 771, 67 S.Ct. 189.
In the development of this branch of the law the name or mark acquired its secondary or actionable significance as identification of the source of manufacture of the goods, and hence as showing the origin of the goods. Hence we find the rule so often stated that to establish such a secondary meaning, while it is not necessary to show that the public has become conscious of the personal identity of the manufacturer, yet it must be shown that whatever is asserted to carry the secondary meaning has come to signify origin from a single, though anonymous, source. Crescent Tool Co. v. Kilborn & Bishop Co., 2 Cir., 247 F. 299; Coty, Inc., v. Le Blume Import Co., D.C.S.D.N.Y., 292 F. 264, affirmed 2 Cir., 293 F. 344; Shredded Wheat
With the development of more far-flung business enterprises and the wider uses of advertising, it must now be recognized that newer forms of trade deceit may be developed where the literal language of the "single source" rule may not adequately reflect the precedents. This seems particularly the case with reference to certain geographical names where through some combination of circumstances such a name may come to mean in the public mind not a single source, but a number, even though limited, of independent manufacturers or producers. Thus actions have been held maintainable for misrepresentation by appropriation of geographical names where products of the soil of certain localities were, because of climatic or other natural advantages, superior to similar products of other localities, California Fruit Canners' Ass'n v. Myer, C.C.D.Md., 104 F. 82; Harvey v. American Coal Co., 7 Cir., 50 F.2d 832, certiorari denied 284 U.S. 669, 52 S.Ct. 43, 76 L.Ed. 566, or where producers of a particular region, using a peculiar patent or other special process, have produced a product of a single quality whose superiority is generally recognized. Pillsbury-Washburn Flour-Mills Co. v. Eagle, 7 Cir., 86 F. 608, 41 L.R.A. 162, certiorari denied 173 U.S. 703, 19 S.Ct. 884, 43 L.Ed. 1184; Grand Rapids Furniture Co. v. Grand Rapids Furniture Co., 7 Cir., 127 F.2d 245, 138 F.2d 212, certiorari denied 321 U.S. 771, 64 S.Ct. 529, 88 L.Ed. 1066; Douglas v. Newark Cheese Co., 153 Misc. 85, 274 N.Y.S. 406; Schweizerishe Kaeseunion Bern v. Saul Starck, Inc., 162 Misc. 485, 293 N.Y.S. 816; Douglas v. Mod-Urn Cheese Packing Co., 161 Misc. 21, 290 N.Y.S. 368. It is but natural that plaintiffs should seize upon such cases as the Grand Rapids Furniture case
It is true that on the basis of the cited cases some text writers have asserted a general expansion of the law, though others have pointed out the dangers of monopoly inherent in the expansion of property concepts in names beyond the deceit of the public and the public interests advanced by free competition.
These cases of course are authorities against the plaintiffs' claims; but we need not go so far or decide to what extent they still represent the law.
While this decision was in turn reversed by the Supreme Court, Mosler Safe Co. v. Ely-Norris Safe Co., 273 U.S. 132, 47 S.Ct. 314, 71 L.Ed. 578, it was done on the ground that in this case, also, no exclusive right was shown by the plaintiff. The plaintiff had a patent on an explosion chamber in a safe as protection against robbery. But as Justice Holmes points out, it was consistent with every allegation in the bill that there were other safes with explosion chambers besides that for which the plaintiff had a patent. Hence there appeared nothing to prevent the defendant from making a representation that its safes had an explosion chamber if the representation was true. He continued: "If on the other hand the representation was false as it is alleged sometimes to have been, there is nothing to show that customers had they known the facts would have gone to the plaintiff rather than to other competitors in the market, or to lay a foundation for the claim for a loss of sales." 273 U.S. 132, 134, 47 S.Ct. 314, 71 L.Ed. 578.
This decision and the implication from the two opinions, construed together, have been widely accepted as prevailing law.
It is nowhere claimed that there is, or will be, available any proof of specific customers diverted from specific plaintiffs through the actions of these defendants. The only possible suggestion of injury is by a strained process of inference, as by the suggested conclusion that the general effect of defendants' actions must have diverted customers from the plaintiffs. Here we are met with the direct difficulty found insurmountable by Justice Holmes in the Ely-Norris Safe Co. case, that there is no reason to assume that defendants' customers, deceived as to the place of origin, would otherwise have bought of these plaintiffs. Not only are these plaintiffs a small portion of the total California manufacturers, but they do not even appear to be large manufacturers themselves or to control any considerable portion of the California business. The reasons which led the Supreme Court to dismiss the bill in that case on its allegations are therefore more pertinent here, where the limited extent of the plaintiffs' share of the total business definitely appears and is not merely a matter of inference, as there.
True, the complaint here contains, in addition to the general allegations of superiority of the California clothes, certain general allegations that the inferior character of the defendants' clothes injures the reputation of California clothes. But no attempt is made to support these conclusory statements in the affidavits and it is clear that they cannot be supported. Some of the various affiants do make the general claims of superiority of manufacture of the California goods which we have noted, but they also show the absence of definite standards of quality and assert only a group pressure to produce goods of high quality. By the very form of their statements they show that there are necessarily deviations in quality in their own group which are more natural sources of injury to the other manufacturers in California than this distant and only potential New York competition. Were such injury by deleterious quality directly charged by specific and comparative facts, we would still be thrown back, however, on the question of lack of showing of loss to these particular plaintiffs, out of all the California manufacturers who conceivably might be injured. In other words, the difficulty found in the Ely-Norris case
The grant of the summary judgment was therefore appropriate to the extent ordered by the court. The claim that the plaintiffs were not given enough time to gather and submit affidavits was properly denied in the discretion of the court. They had had reasonably full opportunity to produce affidavits, and it was clear that the further ones sought were merely cumulative. Indeed, the affidavits do not reach
In so far as the judgment appealed from finally adjudicates claims of all the plaintiffs except the California Sportswear Co., it is a final and appealable judgment. In so far as it preserves the claims of that plaintiff against Cortley and Sportswear, it is not final and hence not appealable. But, as we have seen, the claims of each of the plaintiffs against each of the defendants were separate claims which could be litigated together only because of the permissive joinder provisions of the new rules. See Rules 20(a), 23(a) (3), F.R.C.P. The retention of some for trial, therefore, in no way affects the appealability of a judgment disposing of others. Rule 54(b), F. R.C.P.; Reeves v. Beardall, 316 U.S. 283, 62 S.Ct. 1085, 86 L.Ed. 1478.
Judgment affirmed except as to those portions preserving for trial the claims of California Sportswear Co. against Cortley Shirt Company, Inc., and California Sportswear, Inc. As to those portions, appeal dismissed.
L. HAND, Circuit Judge (dissenting):.
As I understand my brothers, they do not dissent from the doctrine, which we laid down in Ely-Norris Safe Co. v. Mosler Safe Co.,
Moreover, I should go further. This, I agree, is a "spurious" class action under Rule 23(a) (3); I also agree that the California Apparel Creators Inc. has no standing to complain. However, there are seventy-five individual merchants who have joined as plaintiffs; and it well may be that collectively they could prove that some of them must have lost, or were losing, customers by the advertisements, although they could not identify the individual sufferers. That would be enough to my mind to support an injunction in favor of all the seventy-five against the defendants; and my justification is this. By hypothesis the defendants are injuring some one or more of the group; and he or they would get an injunction, if they could be ascertained; the others are not so entitled only because they have not been able to prove that they do not as yet need one. Faced with a choice between denying any remedy to those to whom a remedy is due, and extending it to those who do not need it, I should not hesitate. It seems to me that the joinder now allowed under Rule 23(a) (3) may, and should, be read to accomplish such a change in addition to allowing several actions to be tried at once.
We are affirming a summary judgment cutting off the plaintiffs from any trial because they have not been able in their affidavits to make out a prima facie case. I cannot agree to that. In trials of this kind the issues are as vagrant and vague almost, if not quite, as in prosecutions under the Anti-Trust Acts. In all cases where the fraud is not stark and bare, the issue tried is