By virtue of the Act of March 3, 1887, c. 373, as corrected by
the Act of August 13, 1888, c. 866, a corporation incorporated by a
the Union cannot be compelled to answer to a suit for infringement
of a trademark under the Act of March 3, 1881, c. 138, in a
district in which it is not incorporated and of which the plaintiff
is not an inhabitant, although it does business and has a general
agent in that district.
This was a petition for a writ of mandamus to the judges of the
Circuit Court of the United States for the Southern District of New
York to command them to take jurisdiction and proceed against the
E. L. Patch Company upon a bill in equity, filed in that court on
January 26, 1895, by the petitioner, described in the bill as a
corporation organized and existing under the laws of the State of
Pennsylvania, against the E. L. Patch Company, alleged in the bill
to be a corporation organized and existing under the laws of the
State of Massachusetts and having its principal office and place of
business in the City and State of New York, and against Henry E. C.
Kuchne and Edward H. Lubbers, alleged to be citizens of the United
States and of the State of New York, and managing or general agents
of the E. L. Patch Company in that state, for infringement of a
trademark, owned by the petitioner, registered in the Patent Office
under the laws of the United States, and used in commerce between
the United States and several foreign nations named in the bill,
and alleging that
"this is a suit of a civil nature in equity where the matter in
dispute exceeds, exclusive of interest and costs, the sum or value
of two thousand dollars, and arising under the laws of the United
States, and also in which there is a controversy between citizens
of different states within the intent and meaning of the statute in
such case made and provided."
Upon the filing of the bill in equity, a subpoena addressed to
all the defendants was issued and was served in the City of New
York upon the E. L. Patch Company by exhibiting the original and
delivering a copy to Kuchne, one of its managing agents in the
district, and was also served upon Kuchne and Lubbers
individually.
Upon the return of the subpoena, the E. L. Patch Company, by its
solicitor, appearing specially for this purpose, moved to set aside
the alleged service of the subpoena upon the company, and the
circuit court, upon a hearing, ordered that the motion be granted,
and that service set aside as null and void, and the company
relieved from appearing to plead or answer to the bill.
Page 160 U. S. 226
MR. JUSTICE GRAY, after stating the case, delivered the opinion
of the Court.
This case presents a single question of jurisdiction of the
circuit court of the United States, and involves no consideration
of the merits of the cause of action asserted in the bill filed in
that court.
By the Act of March 3, 1881, c. 138,
"owners of trademarks used in commerce with foreign nations, or
with the Indian tribes, provided such owners shall be domiciled in
the United States, or located in any foreign county or tribe which
by treaty, convention or law affords similar privileges to citizens
of the United States, may obtain registration of such
trademarks"
by causing to be recorded in the Patent Office a statement and
description thereof, and complying with other requirements of the
act. 21 Stat. 502.
By section 7 of that act,
"Any person who shall reproduce, counterfeit, copy, or colorably
imitate any trademark registered under this act, and affix the same
to merchandise of substantially the same descriptive properties as
those described in the registration shall be liable to an action on
the case for damages for the wrongful use of said trademark at the
suit of the owner thereof, and the party aggrieved shall also have
his remedy, according to the course of equity, to enjoin the
wrongful use of such trademark used in foreign commerce or commerce
with Indian tribes as aforesaid and to recover compensation
therefor in any court having jurisdiction over the person guilty of
such wrongful act, and courts of the United States shall have
original and appellate jurisdiction in such cases without regard to
the amount in controversy."
By section 11, nothing in this act shall be construed
"to give cognizance to any court of the United States in an
action or suit between citizens of the same state, unless the
trademark in controversy is used on goods intended to be
transported to a foreign country or in lawful commercial
intercourse with an Indian tribe. "
Page 160 U. S. 227
While section 7 provides that "courts of the United States shall
have original and appellate jurisdiction in such cases without
regard to the amount in controversy," and while the provision of
section 11 that nothing in the act shall be construed to give
"cognizance to any court of the United States in an action or suit
between citizens of the same state" unless the trademark is used in
commerce with a foreign country or an Indian tribe implies that a
suit for infringement of a trademark used in such commerce may be
maintained in some court of the United States, yet neither of those
sections, and no other provision of the act, specifies in what
court of the United States or in what district suits under the act
may be brought, but the jurisdiction of such suits in these
respects is left to be ascertained from the acts regulating the
jurisdiction of the courts of the United States.
At the time of the passage of the Trademark Act of 1881, the
only act to which reference could be had to ascertain such
jurisdiction was the Judiciary Act of March 3, 1875, c. 137,
section 1, providing that
"The circuit courts of the United States shall have original
cognizance, concurrent with the courts of the several states, of
all suits of a civil nature at common law or in equity, where the
matter in dispute exceeds, exclusive of costs, the sum or value of
five hundred dollars, and arising under the Constitution or laws of
the United States, or treaties made, or which shall be made, under
their authority, . . . or in which there shall be in controversy
between citizens of different states, . . . or a controversy
between citizens of a state and foreign states, citizens or
subjects. . . . But no person shall be arrested in one district for
trial in another in any civil action before a circuit or district
court. And no civil suit shall be brought before either of said
courts against any person, by any original process or proceeding,
in any other district than that whereof he is an inhabitant, or in
which he shall be found at the time of serving such process or
commencing such proceeding,"
except in certain cases not material to the present inquiry. 18
Stat. 470.
The restriction of jurisdiction with respect to amount in the
act of 1875 was perhaps superseded, as to trademark
Page 160 U. S. 228
cases, by the express provision of section 7 of the act of 1881;
but the jurisdiction with regard to the court, as well as to the
district, in which such suits should be brought, was controlled by
the act of 1875, as the only act in force upon the subject. Under
the provision of that act, which allowed a defendant to be sued in
the district of which he was an inhabitant or in that in which he
was found, a corporation could doubtless have been sued either in
the district in which it was incorporated or in any district in
which it carried on business and had a general agent.
Ex Parte
Schollenberger, 96 U. S. 369,
96 U. S. 377;
New England Ins. Co. v. Woodworth, 111 U.
S. 138,
111 U. S. 146;
Shaw v. Quincy Mining Co., 145 U.
S. 444,
145 U. S. 452;
Southern Pacific Co. v. Denton, 146 U.
S. 202,
146 U. S.
207.
But when this suit was brought, the first section of the
Judiciary Act of 1875 had been amended by the Act of March 3, 1887,
c. 373, as corrected by the Act of August 13, 1888, c. 866, in the
parts above quoted, by substituting, for the jurisdictional amount
of $500, exclusive of costs, the amount of $2,000, exclusive of
interest and costs, and by striking out, after the clause
"and no civil suit shall be brought before either of said courts
against any person by any original process or proceeding in any
other district than that whereof he is an inhabitant"
the alternative, "or in which he shall be found at the time of
serving such process, or commencing such proceeding," and by
adding
"but where the jurisdiction is founded only on the fact that the
action is between citizens of different states, suit shall be
brought only in the district of the residence of either the
plaintiff or the defendant."
24 Stat. 552; 25 Stat. 433.
The last clause is added by way of proviso to the next preceding
clause, which, in its present form, forbids any suit to be brought
in any other district than that of which the defendant is an
inhabitant, and the effect is that in every suit between citizens
of the United States when the jurisdiction is founded upon any of
the grounds mentioned in this section other than the citizenship of
the parties, it must be brought in the district of which the
defendant is an inhabitant, but when the jurisdiction is founded
only on the fact that the parties
Page 160 U. S. 229
are citizens of different states, the suit shall be brought in
the district of which either party is an inhabitant. And it is
established by the decisions of this Court that within the meaning
of this act, a corporation cannot be considered a citizen, an
inhabitant, or a resident of a state in which it has not been
incorporated, and consequently that a corporation incorporated in a
State of the Union cannot be compelled to answer to a civil suit at
law or in equity in a circuit court of the United States held in
another state, even if the corporation has a usual place of
business in that state.
McCormick Co. v. Walthers,
134 U. S. 41,
134 U. S. 43;
Shaw v. Quincy Mining Co., 145 U.
S. 444;
Southern Pacific Co. v. Denton,
146 U. S. 202.
Those cases, it is true, were of the class in which the
jurisdiction is founded only upon the fact that the parties are
citizens or corporations of different states. But the reasoning on
which they proceeded is equally applicable to the other class,
mentioned in the same section, of suits arising under the
Constitution, laws, or treaties of the United States, and the only
difference is that, by the very terms of the statute, a suit of
this class is to be brought in the district of which the defendant
is an inhabitant, and cannot, without the consent of the defendant,
be brought in any other district, even in one of which the
plaintiff is an inhabitant.
When the parties are citizens of different states, so that the
case comes within the general grant of jurisdiction in the first
part of the section, the defendant, by entering a general
appearance in a suit brought against him in a district of which he
is not an inhabitant, waives the right to object that it is brought
in the wrong district.
Interior Construction Co. v. Gibney,
ante, 160 U. S. 217, and
cases there cited. But a corporation, by doing business or
appointing a general agent in a district other than that in which
it is created, does not waive its right, if seasonably availed of,
to insist that the suit should have been brought in the latter
district.
Shaw v. Quincy Mining Co. and
Southern
Pacific Co. v. Denton, above cited.
In the case of
In re Hohorst, 150 U.
S. 653, on which the petitioner in this case principally
relied, the decision was that the provision of the act of 1888
forbidding suits to be
Page 160 U. S. 230
brought in any other district than that of which the defendant
is an inhabitant had no application to an alien or a foreign
corporation sued here, and especially in a suit for infringement of
a patent right, and therefore such a firm or corporation might be
so sued by a citizen of a state of the Union in any district in
which valid service could be made on the defendant. That case is
distinguishable from the one now before the court in two essential
particulars: first, it was a suit against a foreign corporation,
which, like an alien, is not a citizen or an inhabitant of any
district within the United States, and was therefore not within the
scope or intent of the provision requiring suit to be brought in
the district of which the defendant is an inhabitant.
See
Galveston &c. Railway v. Gonzales, 151 U.
S. 496. Second, it was a suit for infringement of a
patent right, exclusive jurisdiction of which had been granted to
the circuit courts of the United States by section 629, cl. 9, and
section 711, cl. 5, of the Revised Statutes, reenacting earlier
acts of Congress, and was therefore not affected by general
provisions regulating the jurisdiction of the courts of the United
States, concurrent with that of the several states.
In
United States v. Mooney, 116 U.
S. 104, it was likewise held that the first section of
the Judiciary Act of 1875 did not take away the exclusive
jurisdiction conferred by earlier statutes upon the district courts
of the United States over suits for the recovery of penalties and
forfeitures under the customs laws of the United States.
No such rule is applicable to a suit for infringement of a
trademark under the act of 1881. That act, while conferring upon
the courts of the United States, in general terms, jurisdiction
over such suits without regard to the amount in controversy, does
not specify either the court or the district of the United States
in which such suits shall be brought; nor does it assume to take
away or impair the jurisdiction which the courts of the several
states always had over suits for infringement of trademarks.
This suit, then, assuming it to be maintainable under the act of
1881, is one of which the courts of the United States
Page 160 U. S. 231
have jurisdiction concurrently with the courts of the several
states. The only existing act of Congress which enables it to be
brought in the circuit court of the United States is the act of
1888. The suit comes within the terms of that act both as arising
under a law of the United States and as being between citizens of
different states. In either aspect, by the provisions of the same
act, the defendant cannot be compelled to answer in a district of
which neither the defendant nor the plaintiff is an inhabitant. The
objection, having been seasonably taken by the defendant
corporation, appearing specially for the purpose, was rightly
sustained by the circuit court.
Whether the provision in section 7 of the trademark act of 1881
that the courts of the United States should have original
jurisdiction in such cases without regard to the amount in
controversy would control the pecuniary limit of jurisdiction in
the subsequent act of 1888, as in the prior act of 1875, of which
that act was an amendment, it is unnecessary to consider, because
this bill distinctly alleges that the matter in dispute exceeds,
exclusive of interest and costs, the sum or value of $2,000.
Writ of mandamus denied.