Papers Relating to the Foreign Relations of the United States, Transmitted to Congress, With the Annual Message of the President, December 6, 1880

No. 30.
Mr. Evarts to Mr. Kasson.

Department of State,
Washington, December 19, 1879.

No. 142.]

Sir: I have to acknowledge the receipt of your No. 265, relative to the decision of the Supreme Court of the United States (October term, 1879), declaring the legislation of Congress, contained in sections 4937 to 4947 Revised Statutes, concerning trade-marks unconstitutional; and, referring to the proposed conventions on the subject, which you were instructed by my communication of July 30, last, to negotiate with Servia and Roumania, I accordingly inclose a copy of the decision.

You will see by one of the latter clauses of the decision that the court desired “to be understood as leaving the whole question of the treaty-making power of the general government over trade-marks, and the duty of Congress to pass any laws necessary to carry such treaties into effect, untouched.” But Congress is at present occupied in the consideration of the law of trade-marks as affected by the decision of the court. Several means of meeting the questions raised by that decision have been suggested, one by an amendment of the Constitution and another by a modification of the enactments above referred to. Under the circumstances, therefore, it is considered the better course to delay the proposed negotiations on the subject with Servia and Roumania.

I am, &c.,

WM. M. EVAKTS.

[Inclosure 1 in No. 142.]

unconstitutionality of the trade-mark law.

United States Supreme Court. October term, 1879.

Nos. 705, 711, and 719.

The United States, plaintiffs,	}
v.
Emil Steffens.
The United States, plaintiffs,	}
v.
Adolph Witteman.

On certificates of division in opinion between the judges of the circuit court of the United States for the southern district of New York.

The United States, plaintiffs,	}
v.
W. W. Johnson, T. E. McNamara, and N. S. Reeder.

On a certificate of division in opinion between the judges of the circuit court of the United States for the southern district of Ohio.

Defendants being indicted for violations of the civil and criminal statutes of the United States for the protection of trade-marks, the circuit judges of the courts where the indictments were pending were divided in opinion as to the constitutionality of those laws, and certified that division to the Supreme Court Held by that court:

1. That property in trade-marks has long been recognized and protected by the common law and by the statutes of the States, and does not owe its existence to the act of Congress providing for their registration in the Patent Office.

2. That a trade-mark is neither an invention or discovery, nor the writing of an author, within the meaning of the clause of the Constitution in regard to securing to authors and inventors the exclusive use of their writings and discoveries.

3. That as a regulation of commerce, if trade marks can in any case be the subject of Congressional action, that action is limited by the Constitution to their use in “commerce with foreign nations, among the several States and with the Indian tribes.”

4. That the legislation of Congress in regard to trade-marks contains nothing in its terms or in its essential character which looks to a regulation thus limited, but in its language it embraces and was intended to embrace all commerce, including that between citizens of the same State.

5. As the statute is so framed that it is impossible to separate that which has reference to commerce within its control and that which is not, and as Congress certainly did not intend to pass the limited registration law which such a construction would imply, the whole legislation must fall as being void for want of constitutional authority.

Mr. Justice Miller delivered the opinion of the court:

The three cases whose titles stand at the head of this opinion are criminal prosecutions for violations of what is known as the trade-mark legislation of Congress. The first two are indictments in the southern district of New York, and the last is an information in the southern district of Ohio. In all of them the judges of the circuit courts in which they are pending have certified to a difference of opinion on what is substantially the same question, namely, are the acts of Congress on the subject of trade-marks founded on any rightful authority in the Constitution of the United States?

The entire legislation of Congress in regard to trade-marks is of very recent origin. It is first seen in sections seventy-seven to eighty-four, inclusive, of the act of July 8, 1870, entitled “An act to revise, consolidate, and amend the statures relating to patents and copyrights.” The part of this act relating to trade-marks is embodied in chapter two, title sixty, sections 4937 to 4947 of the Revised Statutes.

It is sufficient at present to say that they provide for the registration in the Patent Office of any device in the nature of a trade-mark to which any person has by usage established an exclusive right, or which the person so registering intends to appropriate by that act to his exclusive use; and they make the wrongful use of a trademark, so registered, by any other person, without the owner’s permission, a cause of action in a civil suit for damages. Six years later we have the act of August 14, 1876 (19 U. S. Statutes, 141), punishing by fine and imprisonment the fraudulent use, sale, and counterfeiting of trade-marks registered in pursuance of the statutes of the United States, on which the informations and indictments are founded in the cases before us.

The right to adopt and use a symbol or device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of the use of that symbol by all other persons, has been long recognized by the common law and chancery courts of England and of this country, and by the statutes of some of the States. It is a property right for which damages may be recovered in an action at law, and the violation of which will be enjoined by a court of equity, with compensation for past infringement. This property and the exclusive right to its use were not created by the act of Congress, and do not now depend upon that act for their enforcement. The whole system of trade-mark property and the civil remedies for its protection existed long anterior to the act of Congress and remain in full force since its passage.

These propositions are so well understood as to need no citation of authorities or elaborate argument to prove them.

The property in trade-marks and the right to their exclusive use, resting on the laws of the States in the same manner that other property does, and depending, like the great body of the rights of person and of property, for their security and protection on those laws, the power of Congress to legislate on the subject, to establish the conditions on which these rights shall depend, the period of their duration, and the legal remedies for their protection, if such power exists at all, must be found in some clause of the Constitution of the United States, the instrument which is the source of all the powers that Congress can lawfully exercise.

In the argument of these cases this seems to be conceded, and the advocates for the validity of the acts of Congress on this subject point to two clauses of that instrument in one or in both of which, as they assert, sufficient warrant may be found for this legislation.

The first of these is the eighth clause of section eight of the first article of the Constitution. That section, manifestly intended to be an enumeration of the powers expressly granted to Congress and closing with the declaration of a rule for the ascertainment of such powers as are necessary by way of implication to carry into efficient Operation those expressly given, authorizes Congress, by the clause referred to, “to promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries.”

As the first and only attempt by Congress to regulate the right of trade-marks is to be found in the act to which we have referred, entitled “An act to revise, consolidate, and amend the statutes relating to patents and copyrights,” terms which have long since become technical as referring, the one to inventions and the other to writings of authors, it is a reasonable inference that this part of the statute also was, in the opinion of Congress, an exercise of the power found in that clause of the Constitution. It may also be safely assumed that until a critical examination of the subject in the courts became necessary, it was mainly if not wholly to this clause that the advocates of the law looked for its support.

Any attempt, however, to identify the essential characteristics of a trade-mark with inventions and discoveries in the arts and sciences, or with the writings of authors, will show that the effort is surrounded with insurmountable difficulties.

The ordinary trade-mark has no necessary relation to invention or discovery. The trade-mark recognized by the common law is generally the growth of a considerable period of use, rather than sudden invention. It is often the result of accident rather than design, and when under the act of Congress it is sought to establish it by registration, neither originality, invention, discovery, science, nor art is in any way essential to the right conferred by that act. If we should endeavor to classify it under the head of writings of authors, the objections are equally strong. In this, as in regard to inventions, there is required originality. And while the word writings may be liberally construed, as it has been, to include original designs for engravings, prints, &c., it is only such as are original, and are founded in the creative powers of the mind. The writings which are to be protected are the fruits of intellectual labor, embodied in the form of books, prints, engravings, and the like. The trade-mark may be, and generally is, the adoption of something already in existence as the distinctive symbol of the party using it. At common law the exclusive right to it grows out of the use of it, and not its mere adoption. By the act of Congress this exclusive right attaches upon registration. But in neither case does it depend upon novelty, upon invention, upon discovery, or upon any work of the brain. It requires no fancy or imagination, no genius, no laborious thought. It is simply founded on priority of appropriation. We look in vain in the statute for any other qualification or condition. If the symbol, however plain, simple, old, or well known, has been first appropriated by the claimant as his distinctive trade-mark, he may by registration secure the right to its exclusive use. While such legislation may be a judicious aid to the common law on the subject of trade-marks and may be within the competency of legislatures whose general powers embrace that class of subjects, we are unable to see any such power in the constitutional provision concerning authors and inventors and their writings and discoveries.

The other clause of the Constitution supposed to supply the requisite authority in Congress is the third of the same section, which, read in connection with the granting clause, is as follows:

“The Congress shall have power to regulate commerce with foreign nations, and among the several States, and with the Indian tribes.”

The argument is that the use of a trade-mark—that which alone gives it any value—is to identify a particular class or quality of goods as the manufacture, produce, or property of the person who puts them in the general market for sale. That the sale of the article so distinguished is commerce. That the trade-mark is, therefore, a useful and valuable aid or instrument of commerce, and its regulation by virtue of the above provision of the Constitution belongs to Congress, and that the act in question is a lawful exercise of this power.

It is not every species of property which is the subject of commerce, or which is used or even essential in commerce, which is brought by this clause of the Constitution within the control of Congress. The barrels and casks, the bottles and boxes in which alone certain articles of commerce are kept for safety and by which their contents are transferred from the seller to the buyer, do not thereby become subjects of Congressional legislation more than other property. (Nathan v. Louisiana, 8 How., 73.) In the case of Paul v. Virginia, 8 Wallace, 168, this court held that a policy of insurance made by a corporation of one State on property situated in another was not an article of commerce, and did not come within the purview of the clause of the Constitution we are considering. “They are not,” says the court, “commodities to be shipped or forwarded from one State to another, and then put up for sale.” On the other hand, in the case of Almy v. The State of California, 24 How., 169, it was held that a stamp duty imposed by the legislature of California on bills of lading for gold and silver transported from any place in that State to another out of the State was forbidden by the Constitution of the United States, because such instruments were a necessity to the transaction of commerce, and the duty was a tax upon exports.

The question, therefore, whether the trade-mark bears such a relation to commerce in general terms as to bring it within Congressional control, when used or applied to the classes of commerce which fall within that control, is one which, in the present case, we propose to leave undecided. We adopt this course because when this court is called on in the course of the administration of the law to consider whether an act of Congress, or any other department of the government, is within the constitutional authority of that department, a due respect for a co-ordinate branch of the government requires that we shall decide that it has transcended its powers only when that is so plain that we cannot avoid the duty.

In such cases it is manifestly the dictate of wisdom and judicial propriety to decide no more than is necessary to the case in hand. That such has been the uniform course of this court in regard to the statutes passed by Congress will readily appear to any one who will consider the vast amount of argument presented to us assailing such statutes as unconstitutional, and will count, as he may do on his fingers, the instances in which this court has declared an act of Congress void for want of constitutional power.

Governed by this view of our duty, we proceed to remark that a glance at the commerce clause of the Constitution discloses at once what has been often the subject of comment in this court and out of it, that the power of regulation there conferred on Congress is limited to commerce with foreign nations, commerce among the States, and commerce with the Indian tribes. And while bearing in mind the liberal construction that commerce with foreign nations means commerce between the citizens of the United States and the citizens and subjects of foreign nations, and commerce among the States means commerce between the individual citizens of different States, there still remains a very large amount of commerce, perhaps the largest, which, being trade or traffic between citizens of the same State, is beyond the control of Congress.

When, therefore, Congress undertakes to enact a law which can only be valid as a regulation of commerce, it is reasonable to expect to find on the face of the statute, or from its essential nature, that it is a regulation of commerce with foreign nations, among the several States, and with the Indian tribes. If it is not so limited, it is in excess of the power of Congress. If its main purpose be to establish a regulation applicable to all trade, to commerce at all points, especially if it is apparent that it is designed to govern the commerce wholly between citizens of the same State, it is obviously the exercise of a power not confided to Congress.

We find no recognition of this principle in the chapter on trade-marks in the Revised Statutes. We would naturally look for this in the description of the class of persons who are entitled to register a trade-mark, or in reference to the goods to which the trade-mark should be applied. If, for instance, it described persons engaged in a commerce between the different States, and related to its use in such commerce, it would be evident that Congress believed it was acting under the clause of the Constitution which authorizes it to regulate commerce among the States. So if, when the trade mark has been registered, Congress had protected its use on goods sold by a citizen of one State 10 another, or by a citizen of a foreign State to a citizen of the United States, it would be seen that Congress was at least intending to exercise the power of regulation conferred by that clause of the Constitution. But no such idea is found or suggested in this statute. Its language is: “Any person or firm domiciled in the United States, and any corporation created by the United States, or of any State or Territory thereof,” or any person residing in a foreign country which by treaty or convention affords similar privileges to our citizens, may by registration obtain protection for his trade-mark. Here is no requirement that such person shall be engaged in the kind of commerce which Congress is authorized to regulate. It is a general declaration that anybody in the United States, and anybody in any other country which permits us to do the like, may, by registering a trade-mark, have it fully protected. So, while the person registering is required to furnish “a statement of the class of merchandise, and the particular description of the goods comprised in such class, by which the trade-mark has been or is intended to be appropriated,” there is no hint that it is goods to be transported from one State to another, or between the United States and foreign countries. Section 4939 is intended to impose some restriction upon the Commissioner of Patents in the matter of registration, but ho limitation is suggested in regard to persons or property engaged in the different classes of commerce mentioned in the Constitution. When we come to the remedies provided by the act for infringement of the rights of the owner of the registered trade-mark, there is no restriction of the right of action, or suit, to a case of trade-mark used in foreign or inter-State commerce.

It is, therefore, manifest that no such distinction is found in the act, but that its broad purpose was to establish a universal system of trade-mark registration, for the benefit of all who had already used a trade-mark, or who wished to adopt one in the future, without regard to the character of the trade to which it was to be applied or the locality of the owner, with the solitary exception that those who resided in foreign countries which extended no such privileges to us were excluded from them here.

It has been suggested that if Congress has power to regulate trade-marks used in commerce with foreign nations and among the several States, these statutes shall be held valid in that class of cases, if no further. To this there are two objections: First, the indictments in these cases do not show that the trade-marks which are wrongfully used were trade-marks used in that kind of commerce. Secondly, while it may be true that when one part of a statute is valid and constitutional and another part is unconstitutional and void, the court may enforce the valid part where they are distinctly separable so that each can stand alone; it is not within the judicial province to give to the words used by Congress a narrower meaning than they are manifestly intended to bear in order that crimes may be punished which are not described in language that brings them within the constitutional power of that body. This precise point was decided in the case of the United States v. Rees (97 U. S. R., 221). In that case Congress had passed a statute punishing election officers who should refuse to any person lawfully entitled to do so the right to cast his vote at an election. This court was of the opinion that, as regarded the section of the statute then under consideration, Congress could only punish such denial when it was on account of race, color, or previous condition of servitude.

It was urged, however, that the more general description of the offense included the more limited one, and that the section was valid where such was in fact the cause of denial. But the court said, through the Chief Justice: “We are not able to reject a part which is unconstitutional and retain the remainder, because it is not possible to separate that which is constitutional, if there be any such, from that which is not. The proposed effect is not to be attained by striking out or disregarding words that are in the section, but by inserting words that are not there now. Each of the sections must stand as a whole or fall together. The language is plain. There is no room for construction, unless it be as to the effect of the Constitution. The question, then, to be determined is, whether we can introduce words of limitation into a penal statute so as to make it specific, when, as expressed, it is general only. * * * To limit this statute as now asked for would be to make a new law, not to enforce an old one. This is no part of our duty.” If we should, in the case before us, undertake to make by judicial construction a law which Congress did not make, it is quite probable we should do what, if the matter were now before that body, it would be unwilling to do, namely, make a trade-mark law which is only partial in its operation, and which would complicate the rights which parties would hold, in some instances under the act of Congress and in others under State law. (Cooley on Cons. Limitation, 178, 179; Commonwealth v. Hitchings, 5 Gray, 485.)

In what we have here said we wish to be understood as leaving the whole question of the treaty-making power of the general government over trade-marks, and the duty of Congress to pass any laws necessary to carry such treaties into effect, untouched.

While we have, in our references in this opinion to the trade-mark legislation of Congress, had mainly in view the act of 1870, and the civil remedy which that act provided, it was because the criminal offenses described in the act of 1876 are, by their express terms, solely referable to frauds, counterfeits, and unlawful use of trade-marks which have been registered under the provisions of the former act. If that act is unconstitutional, so that the registration under it confers no lawful right, then the criminal enactment intended to protect that right falls with it.

The questions in each of these cases, being an inquiry whether these statutes can be upheld in whole or in part as valid and constitutional, must be answered in the negative, and it will be so certified to the proper circuit courts.