Hennessy v. Braunschweiger & Co.

HAWLEY, District Judge (orally). Is tbe complaint defective because it does not aver that the complainants and tbe respondent “are now, or ever were, engaged in commerce witb foreign nations or witb Indian tribes”? This is tbe most important question presented by tbe demurrer. It was argued by the complainants’ counsel that tbe averments that they “are exporters,” and that tbe brandy “has become widely known in tbe community and throughout the world, * * * and has commanded * * * an extensive sale throughout tbe United States and Europe,” are sufficient, by inference, at least, to show that complainants “were engaged in commerce witb foreign nations.” Admitting, for tbe purpose of this opinion, that such a view might be sustained, tbe question still remains whether, in order to enable complainants to maintain this suit, or obtain any rights under tbe act of congress of March 3, 1881, it must, in addition to tbe averments contained in the bill, be alleged that tbe respondent, in any of tbe unlawful acts charged against it, was engaged in commerce witb foreign nations. Tbe earliest legislation of congress for tbe registration and protection of trade-marks was contained in tbe patent act of 1870, and substantially re-enacted in tbe Eevised Statutes. Act July 8, 1870, c. 230, §§ 77-84; 16 Stat. 210-212; Eev. St. §§ 4937-4947. That legislation, as well as the Act of Aug. 1876, c. 274 (19 Stat. 141), for punishing tbe counterfeiting of trade-marks, was held by tbe supreme court, in 1879, to be unconstitutional and void, because not limited to trade-marks used in commerce witb foreign nations, or among the several states, or witb tbe Indian tribes. Trade-Mark Cases, 100 U. S. 82, 96. Congress thereafter, in 1881, passed “an act to authorize tbe registration of trade-marks and protect tbe same.” 21 Stat. 502. This act, as well as that of August 5, 1882, has ever since been treated as valid. Browne, Trade-Marks (2d Ed.) § 281; South Carolina v. Seymour, 153 U. S. 353, 14 Sup. Ct. 871; and authorities hereinafter cited. Section 11 of tbe act of 1881 is so re [667] stricted as not to give cognizance to any court of the United States in an action or suit between citizens of the same state, unless the trade-mark which is in controversy is used on goods intended to be transported to a foreign country, or in lawful commercial intercourse with an Indian tribe. Luyties v. Hollender, 21 Fed. 281. In relation to such cases, the court, in Schumacher v. Schwencke, 26 Fed. 818, said: “Tlie registration under the statute only confers a right to it in foreign commerce, and a claim for infringement, or to be protected against infringement, cannot arise under tlie constitution or laws of the United States unless the infringément is upon the right to use it in foreign commerce, which can only be by using the trade-mark without right in such commerce. The jurisdiction is not conferred at all by express words of the statute, but only by providing a mode of acquiring a right, a suit for the invasion of which would arise under the laws of the United States, within the act of 1875. The clause quoted from is restrictive of that jurisdiction. Tlie defendants do not infringe upon any right resting- upon the laws of the United States unless they use the trade-mark in foreign commerce, and jurisdiction of a suit for such infringement is not left in the courts of the United Stales unless such infringement consists in using the trade-mark by the defendants upon goods intended to be transported to a foreign country.” See, also, Luyties v. Hollender, 22 Blatchf. 413, 30 Fed. 632; Graveley v. Graveley, 42 Fed. 265; Prince’s Metallic Paint Co. v. Prince Mfg. Co., 53 Fed. 493; Ryder v. Holt, 128 U. S. 525, 9 Sup. Ct. 145. It will be noticed that in all these cases both parties to the suits were citizens of the same state, and hence it necessarily followed, ns is slated in Manufacturing Co. v. Ludeling, 23 Blatchf. 46, 48, 22 Fed. 823, (hat “the jurisdiction Invoked is * * * founded solely on the act of congress for the protection of trade-marks, and can only he exercised according to the statute which invests the court with authority to hear the controversy.” The question, therefore, arises whether in a case like (he present, where the jurisdiction of this court is acquired by reason of the fact that the complainants and respondent are not citizens and residents of the same state, the suit can he maintained without reference to the provisions of the federal statute relating to commerce with foreign nations. The principle is well settled that (lie rights and remedies pertaining to trade-marks generally depend upon the laws of the state, common and statutory, and not upon the laws of the United States. Property in trade-marks exists apart from the stalutes regulating their registration, and (heir validity is not dependent upon such statutes, except as expressly defined thereby. In Moorman v. Hoge, 2 Sawy. 78, 85, Fed. Cas. No. 9,783, the court said: “It will be observed that the statute under wliieb the claim is made does not define tlie term ‘irado-mark,’ or say of wliat it shall consist. The term is nsed as though its signification was already known to the law. It speaks of it as an already existing thing, and protects it as such. The thing 1o be protected must be an existing lawful ‘trade-mark,’ or something that may then for tlie first time be adopted as a lawful trade-mark, independent of the statute. There must be a lawful trade-mark adopted without reference to the statute, and then, by talcing the prescribed stops, that trade-mark, so already created and existing, may receive certain further protection under Ihe statute.” [668] In the Trade-Mark Cases, 100 U. S. 82, 92, in relation to this subject, the court said: “Tlie right to adopt and use a symbol or a device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of use by all other persons, , has been long recognized by the common law and the chancery courts of IDngland and of this country, and by the statutes of some of the states. It is a property right, for the violation of whicii damages may be recovered in an action at law; and the continued violation of it will be enjoined by a court of equity, with compensation for past infringement. This exclusive right was not created by the act of congress, and does not now depend upon it for its enforcement. The whole system of trade-mark property and the civil remedies for its protection existed long-anterior to that act, and have remained in full force since its passage.” See, also, Drug Co. v. Stucky, 46 Fed. 624, 628; Battle v. Finlay, 50 Fed. 106. These propositions, as was said in the Trade-Mark Cases, are so well understood as to require neither the citation of authorities nor an elaborate argument to prove them. Interpreting the various provisions of the act of 1881 in the light and reason afforded by the decided cases, my conclusion is that the complaint does state a cause of action against the respondent for an infringement of complainants’ trade-mark; that complainants, in order to enable them to maintain this suit, are not required to aver that the parties were engaged "in foreign commerce or -commerce with Indian tribes”; and that such an averment is essential only in cases where the action or suit is between citizens of tbe same state. It follows from the views expressed that the protection afforded to trade-marks, under the common law, by the United States courts, is ample, and that registration under the act of 1881 is of bat little, if any, value, except for the purpose of creating a permanent record of the date of adoption and use of the trade-mark, or in cases where it is necessary to give jurisdiction to the United States courts. The right of foreigners to register in the United States is the result of treaty and convention entered into for the purpose of creating mutual rights in trade-marks on the part of the citizens of the United States and those of other countries. The language of section 10 of the act of 1881 preserves all the common-law rights of both citizens and foreigners,. and has generally been construed to supply additional means of securing protection for trade-marks, instead of limiting any of the rights which existed prior to the passage of the act. 26 Am. & Eng. Enc. Law, 365, 366. But it has been held in some cases, arising upon special facts, that, if the registration itself shows a claim to a trade-mark more limited in its description than the owner’s common-law rights would otherwise be, the owner is bound by such limitation as showing what he really claimed. Manufacturing Co. v. Beeshore, 8 C. C. A. 215, 59 Fed. 572; Richter v. Reynolds, 8 C. C. A. 220, 59 Fed. 577. It is only necessary to add that under the provisions of the act of 1881 the registration of a trade-mark is only prima facie evidence of ownership, and is not conclusive or biuding upon the courts as to the right of a party to its exclusive use. Browne, Trade-Marks, § 339; Manufacturing Co. v. Ludeling, 22 Fed. 824, 826. The demurrer in this case — and in all the other cases which were submitted to abide the decision herein — is overruled.