Complainant as the owner of letters patent for a cancelling and
postmarking machine brought suit against a postmaster to restrain
him from using infringing machines which were in his post office
used exclusively by his subordinates, employs of the United States,
such use being in the service of the United States, the machines
having been hired by the Post Office Department for a term not yet
expired from the manufacturer at an agreed rental payable on the
order of the Department by whose order they were placed and used in
the post office.
Held that the suit was virtually one against the United
States and the circuit court of the United States has not the power
to grant an injunction against the defendant restraining the use of
the machines pending the leased period.
Belknap v. Schild, 161 U. S. 10,
followed.
This case came before the Court on the following certificate for
instructions:
"The complainant, as the owner of letters patent of the United
States for new and useful improvements in stamp cancelling and
postmarking machines, brought a bill in equity against the
defendant, who is postmaster of the United States post office at
Syracuse, New York, complaining of the use in said post office of
two machines which infringe the complainant's letters patent, and
praying for an injunction against the further use of said machines.
The defendant never personally used any stamp cancelling and
postmarking machines, but the use of said two machines in said post
office at Syracuse is by some of defendant's subordinates, who are
employees of the United States government, such use being in the
service of the United States."
"The machines so used were hired by the United States Post
Office Department for a term, which is, as yet, unexpired,
Page 194 U. S. 602
from the manufacturer and owner of said machines at an agreed
rental, which is payable on the order of the Post Office
Department, by whose orders said machines were placed in the
Syracuse post office, and were and are now used there."
"And the said United States Circuit Court of Appeals for the
Second Circuit further certifies that, to the end that it may
properly decide the questions in such cause, and presented in the
assignments of error therein filed, it requires the instructions of
the Supreme Court of the United States on the following question,
to-wit:"
" Upon the foregoing facts, has the United States circuit court
the power to grant an injunction against the defendant, restraining
the use of the machines? "
Page 194 U. S. 605
MR. JUSTICE HOLMES delivered the opinion of the Court.
This case is governed by
Belknap v. Schild,
161 U. S. 10.
There, an injunction was sought against the commandant of the
United States navy yard at Mare Island, California, and some of his
subordinates, to prevent the use of a caisson gate in the dry dock
at that place, contrary to the rights of the plaintiff, as
patentee. The case was heard on pleas setting up that the caisson
gate was made and used by the United States for public purposes,
and, as they were construed, that it was the property of the United
States. The pleas were held bad as answers to the whole bill,
because the bill also sought damages, and the defendants might be
personally liable, but it was held that an injunction could not be
granted, and the bill was dismissed, without prejudice to an action
at law.
Vavasseur v. Krupp, 9 Ch.Div. 351, was cited for
the proposition which was made the turning point of the case, that
the court could not interfere with an object of property unless it
had before it the person entitled to the thing, and this
proposition was held to extend to an injunction against the use of
the thing as well as to a destruction of it or to a removal of the
part which infringed. It was pointed out that the defendants had no
personal interest in the continuance of the use, and that, so far
as the injunction was concerned, the suit really was against the
United States. Of course, if those defendants were enjoined, other
persons attempting to use the caisson gate would be, and thus the
injunction practically would work a prohibition against its use by
the United States.
Belknap v. Schild differed from
United States v.
Lee, 106 U. S. 196, and
Tindal v. Wesley, 167 U. S. 204, and
also from
Page 194 U. S. 606
American School of Magnetic Healing v. McAnnulty,
187 U. S. 94,
relied on by the appellant, in the fact, among others, that the
title of the United States to the caisson gate was admitted, and
therefore the United States was a necessary party to a suit which
was intended to deprive it of the incident of title, the right to
use the gate. As the United States could not be made a party, the
suit failed. In the case at bar, the United States is not the owner
of the machines, it is true, but it is a lessee in possession, for
a term which has not expired. It has a property -- a right
in
rem -- in the machines, which, though less extensive than
absolute ownership, has the same incident of a right to use them
while it lasts. This right cannot be interfered with behind its
back; and, as it cannot be made a party, this suit, like that of
Belknap v. Schild, must fail. The answer to the question
certified must be "no." Whether or not a renewal of the lease could
be enjoined is not before us.
The question is answered in the negative, and it will be so
certified.
MR. JUSTICE HARLAN, dissenting:
It is to be assumed upon this record that the plaintiff, the
International Postal Supply Company, is the owner of letters patent
granted by the United States for new and useful improvements in
stamp cancelling and postmarking machines, and that the defendant,
Bruce, against the will of the patentee, and without paying any
royalty to him, is using, and, unless enjoined, will continue to
use, machines that infringe the plaintiff's letters patent.
Can the defendant be prevented from thus violating rights of the
plaintiff in respect of his patent, the validity of which is not
here disputed? In answering this question it is necessary to bring
together the observations of this Court in some cases heretofore
decided. That being done, but little additional need be said.
Page 194 U. S. 607
In
James v. Campbell, 104 U. S. 356,
104 U. S. 357,
this Court, speaking by Mr. Justice Bradley, said:
"That the government of the United States, when it grants
letters patent for a new invention or discovery in the arts,
confers upon the patentee an exclusive property in the patented
invention which cannot be appropriated or used by the government
itself, without just compensation, any more than it can appropriate
or use, without compensation, land which has been patented to a
private purchaser, we have no doubt. The Constitution gives to
Congress power"
"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,"
"which could not be effected if the government had a reserved
right to publish such writings or to use such inventions without
the consent of the owner. Many inventions relate to subjects which
can only be properly used by the government, such as explosive
shells, rams, and submarine batteries, to be attached to armed
vessels. If it could use such inventions without compensation, the
inventors could get no return at all for their discoveries and
experiments. It has been the general practice, when inventions have
been made which are desirable for government use, either for the
government to purchase them from the inventors, and use them as
secrets of the proper department; or, if a patent is granted, to
pay the patentee a fair compensation for their use. The United
States has no such prerogative as that which is claimed by the
sovereigns of England, by which it can reserve to itself, either
expressly or by implication, a superior dominion and use in that
which it grants by letters patent to those who entitle themselves
to such grants. The government of the United States, as well as the
citizen, is subject to the Constitution, and when it grants a
patent the grantee is entitled to it as a matter of right, and does
not receive it, as was originally supposed to be the case in
England, as a matter of grace and favor."
Observe, that the Court said that, without compensation to the
patentee, the government could not appropriate or use his
invention.
Page 194 U. S. 608
These views were reaffirmed by the unanimous judgment of this
Court in
United States v. Palmer, 128 U.
S. 262,
128 U. S. 272.
And as late as
Belknap v. Schild, 161 U. S.
10,
161 U. S. 16,
after observing that, in England, the grant of a patent for an
invention was considered as simply an exercise of the royal
prerogative, and was not to be construed as precluding the Crown
from using the invention at its pleasure, the Court said:
"But, in this country, letters patent for inventions are not
granted in the exercise of prerogative or as a matter of favor, but
under Art. I, sec. 8, of the Constitution of the United States,
which gives Congress power"
"to promote the progress of science and useful arts by securing,
for limited terms, to authors and inventors, the exclusive right to
their respective writings and discoveries."
"The Patent Act provides that every patent shall contain a grant
to the patentee, his heirs, and assigns for a certain term of
years, of 'the exclusive right to make, use, and vend the invention
or discovery throughout the United States.' . . . And this Court
has repeatedly and uniformly declared that the United States have
no more right than any private person to use a patented invention
without license of the patentee or making compensation to him,"
citing
United States v.
Burns, 12 Wall. 246,
79 U. S. 252;
Cammeyer v. Newton, 94 U. S. 225,
94 U. S. 235;
James v. Campbell, 104 U. S. 356,
104 U. S. 358;
Hollister v. Benedict Mfg. Co., 113 U. S.
59,
113 U. S. 67;
United States v. Palmer, 128 U. S. 262,
128 U. S.
270-272.
In the previous case of
United States v. Lee,
106 U. S. 196,
which was a suit to recover certain lands to which the plaintiffs
claimed title, but which were in the possession of the defendants
(officers of the Army), who asserted title in the United States, it
was contended that the suit was, in legal effect, one against the
United States, and therefore not maintainable. But the contrary was
adjudged in that case. The Court, upon an extended review of the
authorities, held that the suit was not to be deemed one against
the government, within the recognized rule that the United States
cannot be sued without its consent, and that it was competent for
the
Page 194 U. S. 609
courts to protect the rights of the plaintiffs against the wrong
acts of the defendants, although they were officers of the
government, and acting by its authority. Mr. Justice Miller,
speaking for the Court, said:
"This right being clearly established, we are told that the
court can proceed no further, because it appears that certain
military officers, acting under the orders of the President, have
seized this estate, and converted one part of it into a military
fort and another into a cemetery. It is not pretended, as the case
now stands, that the President had any lawful authority to do this,
or that the legislative body could give him any such authority
except upon payment of just compensation. The defense stands here
solely upon the absolute immunity from judicial inquiry of every
one who asserts authority from the executive branch of the
government, however clear it may be made that the executive passed
no such power. Not only no such power is given, but it is
absolutely prohibited, both to the executive and the legislative,
to deprive any one of life, liberty, or property without due
process of law, or to take private property without just
compensation. These provisions for the security of the rights of
the citizen stand in the Constitution in the same connection, and
upon the same ground, as they regard his liberty and his property.
It cannot be denied that both were intended to be enforced by the
judiciary as one of the departments of the government established
by that Constitution. . . . No man in this country is so high that
he is above the law. No officer of the law may set that law at
defiance with impunity. All the officers of the government, from
the highest to the lowest, are creatures of the law, and are bound
to obey it. It is the only supreme power in our system of
government, and every man who, by accepting office, participates in
its functions, is only the more strongly bound to submit to that
supremacy, and to observe the limitations which it imposes upon the
exercise of the authority which it gives. Courts of justice are
established not only to decide upon the controverted rights of the
citizens as against
Page 194 U. S. 610
each other, but also upon rights in controversy between them and
the government, and the docket of this Court is crowded with
controversies of the latter class. Shall it be said, in the face of
all this, and of the acknowledged right of the judiciary to decide
in proper cases, statutes which have been passed by both branches
of Congress, and approved by the President, to be unconstitutional,
that the courts cannot give a remedy when the citizen has been
deprived of his property by force, his estate seized, and converted
to the use of the government without lawful authority, without
process of law, and without compensation, because the President has
ordered it, and his officers are in possession? If such be the law
of this country, it sanctions a tyranny which has no existence in
the monarchies of Europe, nor in any other government which has a
just claim to well regulated liberty and the protection of personal
rights."
In
Pennoyer v. McConnaughy, 140 U. S.
1,
140 U. S. 10, the
Court, speaking by Mr. Justice Lamar, after referring to the class
of suits in which the defendants, claiming to act as officers of
the state, and under color of an unconstitutional statute, commit
acts of wrong and injury to the rights and property of the
plaintiff, said:
"Such suit, whether brought to recover money or property in the
hands of such defendants, unlawfully taken by them in behalf of the
state, or for compensation in damages, or, in a proper case, where
the remedy at law is inadequate, for an injunction to prevent such
wrong and injury, or for a mandamus, in a like case, to enforce
upon the defendant the performance of a plain, legal duty, purely
ministerial -- is not, within the meaning of the Eleventh
Amendment, an action against the state."
This principle was reaffirmed by the Court, speaking by the
present CHIEF JUSTICE in
In re Tyler, 149 U.
S. 164,
149 U. S. 169,
and again in
Scott v. Donald, 165 U. S.
58,
165 U. S.
68.
In
Tindal v. Wesley, 167 U. S. 204, by
a unanimous judgment, the Court held that a suit against an
individual, to recover possession of certain real estate, was not
one against
Page 194 U. S. 611
a state, forbidden by the Eleventh Amendment, although defendant
was in possession as an officer of the state, not asserting any
interest for himself in the property. It said:
"If a suit against officers of a state, to enjoin them from
enforcing an unconstitutional statute, whereby the plaintiff's
property will be injured, or to recover damages for taking, under a
void statute, the property of the citizen, be not one against the
state, it is impossible to see how a suit against the same
individuals to recover the possession of property belonging to the
plaintiff and illegally withheld by the defendants, can be deemed a
suit against the state. Any other view leads to this result: that
if a state, by its officers, acting under a void statute, should
seize for public use the property of a citizen, without making or
securing just compensation for him, and thus violate the
constitutional provision declaring that no state shall deprive any
person of property without due process of law,
Chicago,
Burlington &c. R. Co. v. Chicago, 166 U. S.
226,
166 U. S. 236,
166 U. S.
241, the citizen is remediless so long as the state, by
its agents, chooses to hold his property; for, according to the
contention of the defendants, if such agents are sued as
individuals, wrongfully in possession, they can bring about the
dismissal of the suit by simply informing the court of the official
character in which they hold the property thus illegally
appropriated."
I cannot agree that the present decision is in harmony with the
principles announced in the above cases. The United States is not
here sued, although, as in
United States v. Lee, it may be
incidentally affected by the result. No decree is asked against it.
The suit is against Dwight H. Bruce, who is proceeding in violation
of the plaintiff's right of property, and denies the power of any
court to interfere with him, solely upon the ground that what he is
doing is under the order and sanction of the Post Office
Department. He is, so to speak, in the possession of, and
wrongfully using, the plaintiff's patented invention, and denies
the right of any court, by its mandatory order, to prevent him from
continuing in his lawless
Page 194 U. S. 612
invasion of a right granted by the Constitution and laws of the
United States. But, as shown by the cases above cited, not even the
United States, much less the head of a department, has a right to
use the patent of the plaintiff without its license and without
compensation. Although the Constitution and statutes of the United
States give to the plaintiff the right to the exclusive use of the
invention, nevertheless, according to the present decision, that
use may be rendered utterly valueless by the device of an order
from the head of an executive department to a subordinate, to
proceed in disregard of the rights of the patentee. Thus, every
patented right to an invention which can be profitably or
conveniently used in the business of the government may be
destroyed by the arbitrary action of the head of a department, and
the patentee deprived of any compensation whatever for his
invention, except such as Congress may, in its discretion, choose
to allow.
If Congress, by statute, and in the exercise of its power of
eminent domain, had chosen to take the plaintiff's patent right for
public use at the same time opening the way, by some appropriate
proceeding, through which the patentee could secure compensation
from the government for his property so taken, different
considerations would arise. But no such action has been taken by
Congress. The case before us is one in which it is held that the
court cannot, by any direct process against the defendant, stop him
from doing that which, confessedly, he has no legal right to do --
namely, to use an invention against the will of the patentee. It
was supposed that this Court announced an incontrovertible
proposition when, in
United States v. Lee, it said that
"no man in this country is so high that he is above the law," and
that "all the officers of the government, from the highest to the
lowest, are creatures of the law, and are bound to obey it." But it
seems that some officers are above the law, and may trample upon
the rights of private property; heads of departments, who may, upon
their own motion, seize the property of a patentee, and use it in
the public business, and then close the doors of the courts
Page 194 U. S. 613
with such effect that a subordinate officer, acting under
departmental orders, may not be stopped in his wrongful violation
of the rights of the patentee. Such arbitrary destruction of the
property rights of the citizen might be expected to occur under a
despotic government, but it ought not to be tolerated under a
government whose fundamental law forbids all deprivation of
property without due process of law, or the taking of private
property for public use without compensation. Both the Constitution
and the acts of Congress recognize the patentee's right to the
exclusive use of his invention. But, for every practical purpose,
the present decision not only places it in the power of an
executive department to destroy the rights of the patentee, but
recognizes the helplessness of the judiciary in the presence of
such a wrong.
Suppose Congress, under its power to regulate commerce, should
enact a statute regulating rates for freight and passengers on
interstate carriers, and that such statute, by reason of some
provisions in it, was unconstitutional, or incapable of execution
without destroying the legal rights of such carriers. Could it be
doubted that the courts might, at the instance of an interstate
carrier directly affected by the act, enjoin the public officers
charged with the execution of the act from enforcing its
provisions? Would their hands be stayed by the suggestion that, as
the United States, in its corporate capacity, could not be made a
party defendant of record, no relief could be granted against the
persons who sought, under the cover of official station, to enforce
an unconstitutional statute, destructive of private rights?
Or, suppose Congress should, by statute, expressly direct the
Postmaster General to use a particular patented invention, paying
nothing for such use, and at the same time withhold from the courts
jurisdiction of any suit against the government by the patentee to
obtain compensation for his property, so taken for public use.
Ought it to be doubted that such an act would be declared
unconstitutional and void, and that the courts would at the suit of
the patentee, although
Page 194 U. S. 614
the government was not and could not be made a party defendant
of record, prevent the person holding the office of Postmaster
General from proceeding under the act? Such a suit would not be
regarded as a suit against the United States in its governmental
capacity, any more than a suit by a railroad company against the
official representatives of a state, charged with the execution of
an unconstitutional statute fixing confiscatory rates for freights,
would be deemed a suit against a state within the meaning of the
Eleventh Amendment.
Smyth v. Ames, 169 U.
S. 466, and authorities cited.
Let me give another illustration. Suppose Congress should, by
statute, in a time of peace, direct the Secretary of War to take
possession of the private residence of a citizen and use it for a
quartermaster's office, and at the same time exclude from the
jurisdiction of any court a suit against the United States to
recover compensation for the property so taken for public use.
Would the court refuse to stay the hands of the Secretary of War in
executing the provisions of such a statute, simply because the
United States could not be made a party of record to the suit?
Surely not.
The court regards
Belknap v. Schild as decisive of this
case. I cannot assent to that view. That case was exceptional in
its facts, and its doctrines ought not to be extended so as to
embrace the present one. If there are expressions in the opinion in
that case which seem to sustain the present decision, they should
be withdrawn, or so modified as not to impair the force of previous
decisions. The relief asked in that case was not only an injunction
against the defendants from using the caisson gate which had been
constructed, as was alleged, in violation of the plaintiff's rights
as patentee for an improvement in caisson gates, but an order for
the destruction or delivery to plaintiff of the particular gate in
question, which had been built for the United States, according to
plans furnished by its officers, and had been placed in such
position that it had become a part, physically, of the docks at the
government navy yard. The destruction or displacement
Page 194 U. S. 615
of the gate, by order of the court, would have seriously
disturbed the general business of the entire Navy Yard. In the
present case, the facts are altogether different. To enjoin the
present defendant from using the plaintiff's invention may produce
some inconvenience, for a time at his particular office, but it
will only make it necessary for the government to be honest, and
either pay the plaintiff for the right to use its invention, or
direct that some mode of stamp cancelling be employed other than
that involved in the plaintiff's patent. A government employer
cannot justify the illegal use of a patentee's invention upon the
ground that such use will subserve his convenience, or enable him
more efficiently to serve the public. The effective relief sought
here is not the physical destruction of the machines leased by the
government, but an injunction to prevent the defendant Bruce from
using the plaintiff's invention, embodied in whatever machine,
without his license, and without compensation to him. No relief is
asked against any other person than the defendant. It is admitted
that the United States cannot, any more than a private individual,
use a patented invention without the license of the patentee. It is
admitted that the head of an executive department cannot legally
authorize a postmaster to use such invention against the will of
the patentee. It is admitted that no postmaster can legally justify
his invasion of the patentee's right by any order given by the
Postmaster General which was made or issued in derogation of the
rights of the patentee. And yet it is now adjudged that, although a
postmaster may be confessedly proceeding in direct violation of the
legal rights of the patentee, the court cannot, by any direct
process, stop him in his destruction of the patentee's right of
property. Under the present decision, the Post Office Department
not only may use, without compensation, the particular postmarking
machines in question here, but it can lease others, and continue
its violation of the patentee's rights at its discretion, thereby
making the exclusive use granted by the patent of no value
whatever.
Page 194 U. S. 616
It may be said that the patentee has a remedy in an action for
damages against the infringer. But clearly such a remedy is not at
all adequate or efficacious. The slightest reflection will show
this. The only effectual remedy is an injunction against him. In
Pennoyer v. McConnaughy, 140 U. S. 1,
140 U. S. 10, and
in
In re Tyler, 149 U. S. 164,
149 U. S. 169,
it was held that in suits against public officers on account of
wrongful acts done under color of an unconstitutional statute,
where the remedy at law was inadequate, an injunction to prevent
such wrong and injury was proper. The books are full of cases in
support of that principle. I submit that the immunity of the United
States from direct suit is an all-sufficient reason why the court
shall lay its hands upon the defendant, who happens to be a local
postmaster, and prevent him, by injunction, from disregarding the
admittedly legal rights of the plaintiff. No other remedy is
adequate. If that relief cannot be granted, then the rights of all
patentees whose inventions can be used in the prosecution of the
business of the government are subject to be destroyed by the
arbitrary action of heads of departments and their subordinate
officers.
I am of opinion that every officer of the government, however
high his position, may be prevented by injunction, operating
directly upon him, from illegally injuring or destroying the
property rights of the citizen, and this relief should more readily
be given when the government itself cannot be made a party of
record.
The courts may, by mandamus, compel a public officer to perform
a plain ministerial duty prescribed by law, and that may be done
although the government itself cannot be made a party of record.
Can it be possible that the court is without authority to enjoin
the same officer from doing a direct, affirmative wrong to the
property rights of the citizen, upon the ground that the government
whom he represents, and in whose interest he is acting, is not and
cannot be made a party of record? The present decision --
erroneously, I take leave to say -- answers this question favorably
to the defendant.
Page 194 U. S. 617
But that answer cannot, I submit, be made consistently with the
declaration which this Court has often repeated, that no officer of
the law, however high his position, can set that law at defiance
with impunity; that the government, as well as the citizen, is
subject to the Constitution, and therefore cannot legally
appropriate or use a patented invention without just compensation
any more than it can appropriate or use, without compensation, land
that it had patented to a private purchaser. Instead of a
patentee's having the exclusive use or control of his invention --
which is the mandate of both the Constitution and the statute --
heads of department, it seems, are not bound to respect the rights
of inventors, but can enjoy the exclusive privilege of
appropriating to the use of the government, without compensation to
the patentee, any patented invention that may be beneficial in the
prosecution of the public business. In my judgment, it is not
possible to conceive of any case, arising under our system of
constitutional government, in which the courts may not, in some
effective mode, and properly, protect the rights of the citizen
against illegal aggression, and to that end, if need be, stay the
hands of the aggressor, even if he be a public officer, who acts in
the interest, or by the direction, of the government.
MR. JUSTICE PECKHAM concurs in this dissent.