"could have been" brought under the Lanham Act. The trial was on the merits, as was the ruling on appeal.
Vitarroz also was a removed case tried to judgment and appealed. There was no motion to remand. On appeal, the Court of Appeals considered the propriety of the removal, due to its effect on subject-matter jurisdiction, even though not questioned by the parties. It noted that the complaint alleged facts showing trademark infringement which could be a claim under either New York law or the Lanham Act, and that the party making a claim is master to decide whether he will rely on State law or federal law. It also noted that the statutory removal jurisdiction requires the existence of the federal question to appear on the face of the complaint.
Although it recognized that had plaintiff resisted removal by a prompt motion to remand, federal jurisdiction would probably have been defeated, the court thought that by not contesting jurisdiction at an early stage plaintiff indicated its willingness to see the case treated as a claim under federal law.
In this Circuit, the rule is more specific and emphatic. In La Chemise Lacoste v. The Alligator Company, 506 F.2d 339 (CA3, 1974), the court vacated a judgment on the merits after trial on the ground that the case had been improvidently removed and without jurisdiction.
The complaint there had been filed in a Delaware court, after defendant had threatened suit over the use of similar crocodile or lizard-like emblems. Plaintiff did not wait for suit but filed a complaint for declaratory judgment claiming its ownership of and right to use the crocodile emblem as a trademark for toiletries and for an injunction against interference. Nothing in the complaint, as here, made reference to federal law.
Judge Aldisert's opinion emphasizes the "unwavering series of cases" in the Supreme Court requiring that federal question jurisdiction must appear on the face of the complaint and cannot be supplied by the petition for removal, as well as the "formidable Supreme Court instruction" that the statutory removal procedure reflects a Congressional policy of severe abridgement of the right to remove state court actions. He refers to Professor Moore's comment as a "felicitous phrase", namely that a litigant "is free to ignore the federal question and pitch his claim on the state ground."
The complaint here states a classic claim for unfair competition under state law, grounded on the use of an identical name for a restaurant tending to confuse the public. It is of the same kind as has long been filed in the New Jersey courts. See Eureka Fire Hose Co. v. Eureka Rubber Mfg. Co., 69 N.J.Eq. 159, 60 A. 561 (Ch. 1905); Chas. S. Merton & Co. v. Percy Merton, Inc., 103 N.J.Eq. 380, 143 A. 515 (Ch. 1928); Hilton v. Hilton, 89 N.J.Eq. 182, 104 A. 375 (E & A 1918); Standard Oil Cloth Co. v. Trenton Oil Cloth Co., 71 N.J.Eq. 555, 63 A. 846 (Ch. 1906); National Grocery Co. v. National Stores Corp., 95 N.J.Eq. 588, 123 A. 740 (Ch. 1924), aff'd, 97 N.J.Eq. 360, 127 A. 925 (E & A 1924), for examples.
Playboy argues that federal law is implied by the allegation in the complaint that plaintiff's restaurant had gained a reputation not only in northern New Jersey but also in "the metropolitan New York area", and that this implies interstate commerce and hence a federal Lanham Act claim. But the allegations in La Chemise Lacoste were even broader, the claim being that the emblem had been long associated with M. Lacoste in his days as a Davis Cup tennis player as his personal symbol, and had come to identify plaintiff's toiletry products not only in Delaware but also "elsewhere in the United States, in France and generally throughout the world." Yet, the Court of Appeals discerned no federal claim on the face of the complaint, unaided by the petition for removal.
As was emphasized in La Chemise Lacoste and elsewhere, it is the plaintiff who has the choice of claiming on state law only, or on state and federal law. The defendant cannot make that choice for him by seeking to draw an inference or implication of a federal claim in the removal petition. Now that plaintiff's attention has been drawn to the choice he has, it may be that he will decide during the course of the suit to amend his complaint to assert a Lanham Act claim. If he does, then defendant will for the first time have an opportunity to remove. This is what is contemplated by the second paragraph of 28 U.S.C. § 1446 (b).
The court is obliged to act of its own initiative in any case where it appears that it lacks jurisdiction. It is contrary to the objects spelled out in Rule 1, F.R.Civ.P., to allow a case to go to judgment when there is no jurisdiction. Needless time, effort and expense are wasted, as was the case in La Chemise Lacoste. A party who believes the remand to be wrong will always be heard on application to reconsider, because the order of remand is not reviewable on appeal or otherwise under 28 U.S.C. § 1447(d); Briscoe v. Bell, 432 U.S. 404, 97 S. Ct. 2428, 53 L. Ed. 2d 439 (1977); Gravitt v. Southwestern Bell Telephone, 430 U.S. 723, 97 S. Ct. 1439, 52 L. Ed. 2d 1 (1977). This rule includes review by mandamus, a course tried here, for which the writ was denied on that ground, 67 Goffle Road, Inc. v. Playboy Hotel Casino, Appeal No. 81-2500, judgment order dated September 17, 1981.
As a consequence, the remand order will remain in force and the application to withdraw it is denied.
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