The opinion of the court was delivered by: CONGER
Motion by defendant (1) to dismiss the suit pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, 28 U.S.C.A., as to plaintiff, The People of the Virgin Islands; or in the alternative (2) to drop said plaintiff for misjoinder in that said plaintiff is not the real party in interest; and (3) to dismiss the suit pursuant to Rule 12(b)(6) of the Federal Rules as to the plaintiff, the Virgin Islands Corporation.
A very brief statement of the nature of the action as gathered from the complaint I think would be helpful. The complaint is rather voluminous and contains many facts which are interesting historically, but which are not relevant to the issues here.
The controversy arises out of a dispute over a trade-mark and trade-name.
The Virgin Islands Corporation (Vicorp) was organized by Act of Congress on June 30, 1949. 48 U.S.C.A. § 1407 et seq. It was the successor of Virgin Islands Company (Vico) which had been organized under the laws of the Virgin Islands. The objects and purposes of both corporations were to aid in effecting the economic rehabilitation of the Islands and to promote the general welfare of the People of the Virgin Islands. By the above Act of Congress, Vicorp succeeded to the assets and liabilities of Vico.
As one of its activities Vico, in the Spring of 1935, commenced the production of rum in two distilleries in the Virgin Islands. By the early part of 1936 it had distilled a considerable quantity of this rum and was in the market to dispose of it. In order to create a market in the United States it entered into a contract with defendant on October 8, 1936, appointing defendant its 'sole agent and distributor to market and sell this rum in the United States.' Said contract was later amended and continued until March 30, 1945 when it terminated.
The complaint is silent as to the reason for the failure to renew the contract. There is no allegation in the complaint that either party in any way failed to carry out its terms. Efforts to negotiate a new agreement were unsuccessful and then Vico entered into a new contract with the Munson G. Shaw Company.
When the original contract was entered into no name or brand or label had been decided upon for this rum, and according to the complaint it was decided 'that a suitable name would be originated by defendant in view of its superior knowledge of and experience in the field of distributing rum and other liquors'.
The name finally arrived at was 'Government House'. It was printed on a label in connection with a picture of a white house, blue waters and a white sailboat.
On March 24, 1937 defendant applied to the U.S. Patent Office for registration of the trade-mark 'Government House'. This was granted on July 6, 1937.
On June 4, 1937, defendant made a similar application to register the 'Government House' picture. This was granted on October 5, 1937.
In the complaint there is an account of how the trade-mark and picture were originated, but while most interesting, it seems not to be relevant because of the terms of the contract between the parties. At any rate from 1937 down to the termination of the contract (except for a time during the War) the rum was bottled by Vico and labelled with this label, sold by Vico to defendant and resold by it in the United States. Since July, 1945 the same procedure has continued except that now the rum is being sold by the Shaw Company with the same name, picture and label.
As I read this complaint, plaintiff Vicorp has brought this action to get back the title to this name, mark or label on the ground that it is the legal and beneficial owner thereof.
Some of the relief asked for herein is for an order that 'defendant assign to Vicorp as equitable owner thereof the Trade-Mark Registrations'.
I have studied the complaint with great care but I can find no facts stated therein upon which ...