Appeal from the District Court of the United States for the Northern District of Illinois, Eastern Division; William H. Holly, Judge.
Before SPARKS and TREANOR, Circuit Judges, and LINDLEY, District Judge.
This is an appeal from a judgment in favor of the plaintiff in a suit to recover $41,114.85 for cigars alleged to have been sold and delivered to the defendant. The defendant filed a plea of non assumpsit, affidavit of merits, and a counterclaim for $100,000 damages. At the close of all evidence and after argument the court, upon plaintiff's motion, withdrew the evidence from the consideration of the jury and instructed the jury to find the issues for the plaintiff and to assess the plaintiff's damages in the sum of $38,661.66, together with interest thereon from May 3, 1933; and the court further instructed the jury "to find the issues in favor of the plaintiff and against the defendant on the defendant's pleas of set-off."
The defendant is an Illinois corporation, anderson, Thorson & Co., and the plaintiff, corral, Wodiska Y Ca., is a foreign corporation organized under the laws of Florida. Prior to May 1, 1917, defendant owned certain trade and registered marks described in certificate of registrations as "Bering" and "Vitus Bering," and had the exclusive right to their use and of sale thereunder throughout the United States. These brands were specially featured in Chicago and suburbs; and the cigars which were sold under the brands were made by the plaintiff for the defendant and were described as a "clear Havana cigar" of the finest quality.
Early in the year 1917, the plaintiff indicated a desire to purchase the trade-marks "Bering" and Vitus Bering" and negotiations were conducted by a Mr. Hammer, acting for the plaintiff, with Mr. Thorson, the vice president of the defendant company. It is the contention of the defendant, the appellant here, that the result of the negotiations was a contract by the terms of which the defendant agreed to transfer the brands, or trade-marks, to the plaintiff, and the plaintiff agreed that the defendant should have the exclusive right of sale of cigars under the trade-name in the city of Chicago and suburbs, and that "plaintiff would not, at any time, sell any cigars so branded to any one either in said territory or in any other territory where the same would be transferred into d efendant's said exclusive territory, or to any person, firm, or corporation that would bring the same or send the same into said exclusive territory and which territory was, as a condition of transfer, reserved and agreed upon as belonging exclusively to defendant who should have and retain the said exclusive sales rights and business therein."
The basis of defendant's counterclaim is the alleged violation of defendant's right to have the exclusive sale of the Bering brand in Chicago and vicinity. We adopt as correct the following summary of the contested issues as stated by appellee:
(1) Whether or not the defendant Anderson, Thorson & Co. had a definite and specific agreement with the plaintiff, Corral, Wodiska Y Ca., for an exclusive sales territory.
(2) Whether or not, after assuming there was a definite agreement between the parties, such agreement was lacking in mutuality.
(3) Whether or not the defendant Anderson, Thorson & Co. could by parol testimony vary the terms of a written assignment in order to show that it, the defendant, retained some right or reversionary interest in and to the trade-marks and trade-names.
(4) Whether or not the evidence of damages introduced by the defendant should have been submitted to the jury.
As stated above, the trial court withdrew the evidence from the consideration of the jury and directed a verdict for the plaintiff and against the defendant. Appellant urges that such action of the trial court constitutes reversible error for the reason that there was sufficient substantial evidence to require a submission to the jury of the issues of fact presented by the counterclaim and replication thereto. Appellant also urges that the trial court committed prejudicial error by excluding certain testimony which was offered to explain what was meant by the recital "other good and valuable considerations" in the written assignment of the trade-marks "Bering" and "Vitus Bering" to the plaintiff from the defendant.
An examination of the evidence in the record leads us to the conclusion that there was substantial evidence from which the jury reasonably could have concluded that a definite contract was made between the plaintiff and the defendant prior to the 29th day of May, 1917; and that by the terms of the contract the defendant agreed to assign its title to the trade-marks in question to the plaintiff in consideration of the plaintiff's paying the ...