Motion Picture Patents Co. v. Universal Film Co.,
Annotate this Case
243 U.S. 502 (1917)
- Syllabus |
U.S. Supreme Court
Motion Picture Patents Co. v. Universal Film Co., 243 U.S. 502 (1917)
Motion Picture Patents Company v.
Universal Film Manufacturing Company
Argued January 12, 15, 1917
Decided April 9, 1917
243 U.S. 502
CERTIORARI TO THE CIRCUIT COURT OF APPEALS
FOR THE SECOND CIRCUIT
Under the patent law, the grant by patent of the exclusive right to use, like the grant of the exclusive right to vend, is limited to the invention described in the claims of the patent, and that law does not empower the patent owner, by notices attached to the things patented, to extend the scope of the patent monopoly by restricting their use to materials necessary for their operation but forming no part of the patented invention, or to send such articles forth into the channels of trade subject to conditions as to use or royalty, to be imposed thereafter, in the vendor's discretion. The Button-Fastener Case, 77 F. 288, and Henry v. Dick Company, 224 U. S. 1, overruled.
In determining how far the owner of a patent may restrict the use after sale of machines embodying the invention, weight must be given to the rules long established that the scope of every patent is limited to the invention as described in the claims, read in the light of the specification, that the patentee receives nothing from the patent law beyond the right to restrain others from manufacturing, using, or selling his invention, and that the primary purpose of that law is not to create private fortunes, but is to promote the progress of science and the useful arts.
The extent to which the use of a patented machine may validly be restricted to specific supplies or otherwise by special contract between the owner of the patent and a purchaser or licensee is a question outside of the patent law, and not involved in this case.
235 F. 398 affirmed.
The case is stated in the opinion.
MR. JUSTICE CLARKE delivered the opinion of the Court.
In this suit relief is sought against three defendant corporations as joint infringers of Claim number seven of United States letters patent No. 707,934, granted to Woodville Latham, assignor, on August 26, 1902, for improvements in projecting kinetoscopes. It is sufficient description of the patent to say that it covers a part of the mechanism used in motion picture exhibiting machines for feeding a film through the machine with a regular, uniform, and accurate movement, and so as not to expose the film to excessive strain or wear.
The defendants, in a joint answer, do not dispute the title
of the plaintiff to the patent, but they deny the validity of it, deny infringement, and claim an implied license to use the patented machine.
Evidence which is undisputed shows that the plaintiff, on June 20, 1912, in a paper styled "License Agreement," granted to the Precision Machine Company a right and license to manufacture and sell machines embodying the inventions described and claimed in the patent in suit and in other patents, throughout the United States, its territories and possessions. This agreement contains a covenant on the part of the grantee that every machine sold by it, except those for export, shall be sold
"under the restriction and condition that such exhibiting or projecting machine shall be used solely for exhibiting or projecting motion pictures containing the inventions of reissued letters patent No. 12,192, leased by a licensee of the licensor while it owns said patents and upon other terms to be fixed by the licensor and complied with by the user while the said machine is in use and while the licensor owns said patents (which other terms shall only be the payment of a royalty or rental to the licensor while in use)."
The grantee further covenants and agrees that to each machine sold by it, except for export, it will attach a plate showing plainly not only the dates of the letters patent under which the machine is "licensed,", but also the following words and figures:
"Serial No. ___."
"Patented No. ___"
"The sale and purchase of this machine gives only the right to use it solely with moving pictures containing the invention of reissued patent No. 12,192, leased by a licensee of the Motion Picture
Patents Company, the owner of the above patents and reissued patent, while it owns said patents, and upon other terms to be fixed by the Motion Picture Patents Company and complied with by the user while it is in use and while the Motion Picture Patents Company owns said patents. The removal or defacement of this plate terminates the right to use this machine."
The agreement further provides that the grantee shall not sell any machine at less than the plaintiff's list price, except to jobbers and others for purposes of resale, and that it will require such jobbers and others to sell at not less than plaintiff's list price. The price fixed in the license contract for sale of machines after May 1st, 1909, is not less than $150 for each machine, and the licensee agrees to pay a royalty of $5 on some machines and a percentage of the selling price on others.
It is admitted that the machine, the use of which is charged to be an infringement of the patent in suit, was manufactured by the Precision Machine Company, and was sold and delivered under its "License Agreement" to the Seventy-Second Street Amusement Company, then operating a Playhouse on Seventy-Second Street, in New York, and that, when sold, it was fully paid for and had attached to it a plate with the inscription which we have quoted, as required by the agreement.
Reissued patent 12,192, referred to in the notice attached to the machine, expired on August 31, 1914. The defendant Prague Amusement Company, on November 2, 1914, leased the Seventy-Second Street Playhouse from the Seventy-second Street Amusement Company, and acquired the alleged infringing machine as a part of the equipment of the leased playhouse. Subsequent to the expiration of reissued patent 12,192, the defendant Universal Film Manufacturing Company made two films or reels, which, between March 4th and 17th, 1915, were sold to the defendant the Universal Film Exchange, and on March 17, 1915, were supplied to the defendant Prague Amusement Company for use on the machine, acquired as we have stated, and were used upon it at the Seventy-second Street Playhouse on March 18th, 1915.
On January 18, 1915, the plaintiff sent a letter to the Seventy-Second Street Amusement Company notifying it in general terms that it was using without a license a machine embodying the invention of patent No. 707,934 and warning it that such use constituted an infringement of the patent, and on the same day the plaintiff addressed a letter to the defendant Universal Film Exchange, notifying it that it also was infringing the same patents by supplying films for use upon the machine of the Seventy-Second Street Playhouse and elsewhere. The bill in this case was filed on March 18, 1915.
The district court held that the limitation on the use of the machine attempted to be made by the notice attached to it after it had been sold and paid for, was invalid, and that the Seventy-Second Street Amusement Company, the purchaser, and its lessee, the Prague Amusement Company, had an implied license to use the machine as it had been used, and it dismissed the bill without passing on the question raised in the pleadings as to the validity of the patent. The circuit court of appeals affirmed the district court (235 F. 398), and the case is here for review on certiorari.
It was admitted at the bar that 40,000 of the plaintiff's machines are now in use in this country, and that the mechanism covered by the patent in suit is the only one with which motion picture films can be used successfully.
This state of facts presents two questions for decision:
First. May a patentee or his assignee license another to manufacture and sell a patented machine, and, by a mere notice attached to it, limit its use by the purchaser or by the purchaser's lessee to films which are no part of the patented machine, and which are not patented?
Second. May the assignee of a patent, which has licensed another to make and sell the machine covered by it, by a mere notice attached to such machine, limit the
use of it by the purchaser or by the purchaser's lessee to terms not stated in the notice, but which are to be fixed, after sale, by such assignee, in its discretion?
It is obvious that in this case we have presented anew the inquiry, which is arising with increasing frequency in recent years, as to the extent to which a patentee or his assignee is authorized by our patent laws to prescribe by notice attached to a patented machine the conditions of its use and the supplies which must be used in the operation of it under pain of infringement of the patent.
The statutes relating to patents do not provide for any such notice, and it can derive no aid from them. Rev.Stats. § 4900, requiring that patented articles shall be marked with the word "Patented," affects only the damages recoverable for infringement, Dunlap v. Schofield, 152 U. S. 244, and Rev.Stats. § 4901 protects by its penalties the inventor, but neither one contemplates the use of such a "License Notice" as we have here, and whatever validity it has must be derived from the general, and not from the patent, law.
The extent to which the use of the patented machine may validly be restricted to specific supplies or otherwise by special contract between the owner of a patent and the purchaser or licensee is a question outside the patent law, and with it we are not here concerned. Keeler v. Standard Folding Bed Co., 157 U. S. 659.
The inquiry presented by this record, as we have stated it, is important and fundamental, and it requires that we shall determine the meaning of Congress when, in Rev.Stats. § 4884, it provided that
"every patent shall contain . . . a grant to the patentee, his heirs or assigns, for the term of seventeen years, of the exclusive right to make, use, and vend the invention or discovery throughout the United States, and the territories thereof."
We are concerned only with the right to "use," authorized to be granted by this statute, for it is under warrant of this
right only that the plaintiff can and does claim validity for its warning notice.
The words used in the statute are few, simple, and familiar, they have not been changed substantially since they were first used in the Act of 1790, c. 7, 1 Stat. 109, Bauer v. O'Donnell, 229 U. S. 1, and their meaning would seem not to be doubtful if we can avoid reading into them that which they really do not contain.
In interpreting this language of the statute, it will be of service to keep in mind three rules long established by this Court, applicable to the patent law and to the construction of patents, viz.:
1st. The scope of every patent is limited to the invention described in the claims contained in it, read in the light of the specification. These so mark where the progress claimed by the patent begins and where it ends that they have been aptly likened to the description in a deed, which sets the bounds to the grant which it contains. It is to the claims of every patent, therefore, that we must turn when we are seeking to determine what the invention is, the exclusive use of which is given to the inventor by the grant provided for by the statute -- "He can claim nothing beyond them." Keystone Bridge Co. v. Phoenix Iron Co., 95 U. S. 274; Railroad Co. v. Mellon, 104 U. S. 112, 104 U. S. 118; Yale Lock Mfg. Co. v. Greenleaf, 117 U. S. 554, 117 U. S. 559; McClain v. Ortmayer, 141 U. S. 419, 141 U. S. 424.
2nd. It has long been settled that the patentee receives nothing from the law which he did not have before, and that the only effect of his patent is to restrain others from manufacturing, using, or selling that which he has invented. The patent law simply protects him in the monopoly of that which he has invented and has described in the claims of his patent. United States v. American Bell Telephone Co., 167 U. S. 224, 167 U. S. 239; Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U. S. 405, 210 U. S. 424; Bauer v. O'Donnell, 229 U. S. 1, 229 U. S. 10.
3rd. Since Pennock v. Dialogue, 2 Pet. 1, was decided in
1829, this Court has consistently held that the primary purpose of our patent laws is not the creation of private fortunes for the owners of patents, but is "to promote the progress of science and the useful arts" (Constitution, Art. I, § 8) -- an object and purpose authoritatively expressed by Mr. Justice Story in that decision, saying:
"While one great object [of our patent laws] was, by holding out a reasonable reward to inventors and giving them an exclusive right to their inventions for a limited period, to stimulate the efforts of genius the main object was 'to promote the progress of science and useful arts.'"
Thirty years later, this Court, returning to the subject, in Kendall v. Winsor, 21 How. 322, again pointedly and significantly says:
"It is undeniably true that the limited and temporary monopoly granted to inventors was never designed for their exclusive profit or advantage; the benefit to the public or community at large was another and doubtless the primary object in granting and securing that monopoly."
This Court has never modified this statement of the relative importance of the public and private interests involved in every grant of a patent, even while declaring that, in the construction of patents and the patent laws, inventors shall be fairly, even liberally, treated. Grant v. Raymond, 6 Pet. 218, 31 U. S. 241; Winans v. Denmead, 15 How. 330; Walker, Patents, § 185.
These rules of law make it very clear that the scope of the grant which may be made to an inventor in a patent, pursuant to the statute, must be limited to the invention described in the claims of his patent (104 U.S. 104 U. S. 118, supra), and, to determine what grant may lawfully be so made, we must hold fast to the language of the act of Congress providing for it, which is found in two sections of the Revised Statutes. Section 4886 provides that
"any person who has invented or discovered any new and useful art, machine,
manufacture, or composition of matter, or any new and useful improvement thereof, . . . may . . . obtain a patent therefor,"
and § 4884 provides that such patent, when obtained, "shall contain . . . a grant to the patentee, his heirs or assigns . . . of the exclusive right to . . . use . . . the invention or discovery."
Thus, the inventor may apply for, and, if he meets the required conditions, may obtain, a patent for the new and useful invention which he has discovered, which patent shall contain a grant of the right to the exclusive use of his discovery.
Plainly, this language of the statute and the established rules to which we have referred restrict the patent granted on a machine, such as we have in this case, to the mechanism described in the patent as necessary to produce the described results. It is not concerned with, and has nothing to do with, the materials with which or on which the machine operates. The grant is of the exclusive right to use the mechanism to produce the result with any appropriate material, and the materials with which the machine is operated are no part of the patented machine or of the combination which produces the patented result. The difference is clear and vital between the exclusive right to use the machine, which the law gives to the inventor, and the right to use it exclusively with prescribed materials to which such a license notice as we have here seeks to restrict it. The restrictions of the law relate to the useful and novel features of the machine which are described in the claims of the patent; they have nothing to do with the materials used in the operation of the machine, while the notice restrictions have nothing to do with the invention which is patented, but relate wholly to the materials to be used with it. Both in form and in substance, the notice attempts a restriction upon the use of the supplies only, and it cannot, with any regard to propriety
in the use of language, be termed a restriction upon the use of the machine itself.
Whatever the right of the owner may be to control by restriction the materials to be used in operating the machine, it must be a right derived through the general law from the ownership of the property in the machine, and it cannot be derived from or protected by the patent law, which allows a grant only of the right to an exclusive use of the new and useful discovery which has been made -- this and nothing more.
This construction gives to the inventor the exclusive use of just what his inventive genius has discovered. It is all that the statute provides shall be given to him, and it is all that he should receive, for it is the fair, as well as the statutory, measure of his reward for his contribution to the public stock of knowledge. If his discovery is an important one, his reward under such a construction of the law will be large, as experience has abundantly proved, and if it be unimportant, he should not be permitted by legal devices to impose an unjust charge upon the public in return for the use of it. For more than a century, this plain meaning of the statute was accepted as its technical meaning, and that it afforded ample incentive to exertion by inventive genius is proved by the fact that, under it, the greatest inventions of our time, teeming with inventions, were made. It would serve no good purpose to amplify by argument or illustration this plain meaning of the statute. It is so plain that to argue it would obscure it.
It was not until the time came in which the full possibilities seem first to have been appreciated of uniting in one many branches of business through corporate organization, and of gathering great profits in small payments, which are not realized or resented, from many, rather than smaller or even equal profits in larger payments, which are felt and may be refused, from a few, that it came to be thought that the "right to use . . . the invention"
of a patent gave to the patentee or his assigns the right to restrict the use of it to materials or supplies not described in the patent, and not, by its terms, made a part of the thing patented.
The construction of the patent law which justifies as valid the restriction of patented machines, by notice, to use with unpatented supplies necessary in the operation of them, but which are no part of them, is believed to have originated in Heaton-Peninsular Button-Fastener Co. v. Eureka Specialty Co., 77 F. 288 (which has come to be widely referred to as the Button-Fastener Case), decided by the Circuit Court of Appeals of the Sixth Circuit in 1896. In this case, the court, recognizing the pioneer character of the decision it was rendering, speaks of the "novel restrictions" which it is considering, and says that it is called upon
"to mark another boundary line around the patentee's monopoly which will debar him from engrossing the market for an article not the subject of a patent,"
which it declined to do.
This decision proceeds upon the argument that, since the patentee may withhold his patent altogether from public use, he must logically and necessarily be permitted to impose any conditions which he chooses upon any use which he may allow of it. The defect in this thinking springs from the substituting of inference and argument for the language of the statute, and from failure to distinguish between the rights which are given to the inventor by the patent law and which he may assert against all the world through an infringement proceeding, and rights which he may create for himself by private contract, which, however, are subject to the rules of general, as distinguished from those of the patent, law. While it is true that, under the statutes as they were (and now are), a patentee might withhold his patented machine from public use, yet, if he consented to use it himself or through others, such use immediately fell within the terms of the
statute, and, as we have seen, he is thereby restricted to the use of the invention as it is described in the claims of his patent, and not as it may be expanded by limitations as to materials and supplies necessary to the operation of it, imposed by mere notice to the public.
The high standing of the court rendering this decision and the obvious possibilities for gain in the method which it approved led to an immediate and widespread adoption of the system, in which these restrictions expanded into more and more comprehensive forms until at length the case at bar is reached, with a machine sold and paid for, yet claimed still to be subject not only to restriction as to supplies to be used, but also subject to any restrictions or conditions as to use or royalty which the company which authorized its sale may see fit, after the sale, from time to time to impose. The perfect instrument of favoritism and oppression which such a system of doing business, if valid, would put into the control of the owner of such a patent should make courts astute, if need be, to defeat its operation. If these restrictions were sustained, plainly the plaintiff might, for its own profit or that of its favorites, by the obviously simple expedient of varying its royalty charge, ruin anyone unfortunate enough to be dependent upon its confessedly important improvements for the doing of business.
Through the twenty years since the decision in the Button-Fastener Case was announced, there have not been wanting courts and judges who have dissented from its conclusions, as is sufficiently shown in the division of this Court when the question involved first came before it in Henry v. A. B. Dick Co., 224 U. S. 1, and in the disposition shown not to extend the doctrine in Bauer v. O'Donnell, 229 U. S. 1.
The exclusive right to "vend" a patented article is derived from the same clause of the section of the statute which gives the exclusive right to "use" such an article,
and, following the decision of the Button-Fastener Case, it was widely contended as obviously sound that the right existed in the owner of a patent to fix a price at which the patented article might be sold and resold under penalty of patent infringement. But this Court, when the question came before it in Bauer v. O'Donnell, supra, rejecting plausible argument and, adhering to the language of the statute from which all patent right is derived, refused to give such a construction to the act of Congress, and decided that the owner of a patent is not authorized by either the letter or the purpose of the law to fix, by notice, the price at which a patented article must be sold after the first sale of it, declaring that the right to vend is exhausted by a single, unconditional sale, the article sold being thereby carried outside the monopoly of the patent law and rendered free of every restriction which the vendor may attempt to put upon it. The statutory authority to grant the exclusive right to "use" a patented machine is not greater -- indeed, it is precisely the same -- as the authority to grant the exclusive right to "vend," and, looking to that authority, for the reasons stated in this opinion, we are convinced that the exclusive right granted in every patent must be limited to the invention described in the claims of the patent, and that it is not competent for the owner of a patent, by notice attached to its machine, to in effect extend the scope of its patent monopoly by restricting the use of it to materials necessary in its operation, but which are no part of the patented invention, or to send its machines forth into the channels of trade of the country subject to conditions as to use or royalty to be paid, to be imposed thereafter at the discretion of such patent owner. The patent law furnishes no warrant for such a practice, and the cost, inconvenience, and annoyance to the public which the opposite conclusion would occasion forbid it.
It is argued as a merit of this system of sale under a
license notice that the public is benefited by the sale of the machine at what is practically its cost, and by the fact that the owner of the patent makes its entire profit from the sale of the supplies with which it is operated. This fact, if it be a fact, instead of commending, is the clearest possible condemnation of the practice adopted, for it proves that, under color of its patent, the owner intends to and does derive its profit not from the invention on which the law gives it a monopoly, but from the unpatented supplies with which it is used, and which are wholly without the scope of the patent monopoly, thus in effect extending the power to the owner of the patent to fix the price to the public of the unpatented supplies as effectively as he may fix the price on the patented machine.
We are confirmed in the conclusion which we are announcing by the fact that, since the decision of Henry v. A. B. Dick Co. supra, the Congress of the United States, the source of all rights under patents, as if in response to this decision, has enacted a law making it unlawful for any person engaged in interstate commerce
"to lease or make a sale or contract for sale of goods, . . . machinery, supplies or other commodities, whether patented or unpatented, for use, consumption or resale . . . or fix a price charged therefor, . . . on the condition, agreement or understanding that the lessee or purchaser thereof shall not use . . . the goods . . . machinery, supplies or other commodities of a competitor or competitors of the lessor or seller where the effect of such lease, sale, or contract for sale, or such condition, agreement or understanding may be to substantially lessen competition or tend to create a monopoly in any line of commerce."
38 Stat. 730.
Our conclusion renders it unnecessary to make the application of this statute to the case at bar which the circuit court of appeals made of it, but it must be accepted by us as a most persuasive expression of the public
policy of our country with respect to the question before us.
It is obvious that the conclusions arrived at in this opinion are such that the decision in Henry v. A. B. Dick Co., supra, must be regarded as overruled.
Coming now to the terms of the notice attached to the machine sold to the Seventy-Second Street Amusement Company under the license of the plaintiff, and to the first question as we have stated it.
This notice first provides that the machine, which was sold to and paid for by the Amusement Company, may be used only with moving picture films containing the invention of reissued patent No. 12,192, so long as the plaintiff continues to own this reissued patent.
Such a restriction is invalid because such a film is obviously not any part of the invention of the patent in suit, because it is an attempt, without statutory warrant, to continue the patent monopoly in this particular character of film after it has expired, and because to enforce it would be to create a monopoly in the manufacture and use of moving picture films wholly outside of the patent in suit and of the patent law as we have interpreted it.
The notice further provides that the machine shall be used only upon other terms (than those stated in the notice), to be fixed by the plaintiff, while it is in use and while the plaintiff "owns said patents." And it is stated at the bar that, under this warrant, a charge was imposed upon the purchaser graduated by the size of the theater in which the machine was to be used.
Assuming that the plaintiff has been paid an average royalty of $5 on each machine sold, prescribed in the license agreement, it has already received over $200,000 for the use of its patented improvement, which relates only to the method of using the films which another had invented, and yet it seeks by this device to collect during the life of the patent in suit what would doubtless aggregate
many times this amount for the use of this same invention after its machines have been sold and paid for.
A restriction which would give to the plaintiff such a potential power for evil over an industry which must be recognized as an important element in the amusement life of the nation, under the conclusions we have stated in this opinion, is plainly void because wholly without the scope and purpose of our patent laws, and because, if sustained, it would be gravely injurious to that public interest, which we have seen is more a favorite of the law than is the promotion of private fortunes.
Both questions as stated must be answered in the negative, and the decree of the circuit court of appeals is
MR. JUSTICE McREYNOLDS concurs in the result.
MR. JUSTICE HOLMES, dissenting:
I suppose that a patentee has no less property in his patented machine than any other owner, and that, in addition to keeping the machine to himself, the patent gives him the further right to forbid the rest of the world from making others like it. In short, for whatever motive, he may keep his device wholly out of use. Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U. S. 405, 210 U. S. 422. So much being undisputed, I cannot understand why he may not keep it out of use unless the licensee, or, for the matter of that, the buyer, will use some unpatented thing in connection with it. Generally speaking, the measure of a condition is the consequence of a breach, and if that consequence is one that the owner may impose unconditionally, he may impose it conditionally upon a certain event. Ashley v. Ryan, 153 U. S. 436, 153 U. S. 443; Lloyd v. Dollison, 194 U. S. 445, 194 U. S. 449. Non debet, cui plus licet, quod minus est non licere. D. 50, 17, 21.
No doubt this principle might be limited or excluded in cases where the condition tends to bring about a state of things that there is a predominant public interest to prevent. But there is no predominant public interest to prevent a patented teapot or film feeder from being kept from the public, because, as I have said, the patentee may keep them tied up at will while his patent lasts. Neither is there any such interest to prevent the purchase of the tea or films that is made the condition of the use of the machine. The supposed contravention of public interest sometimes is stated as an attempt to extend the patent law to unpatented articles, which, of course, it is not, and more accurately as a possible domination to be established by such means. But the domination is one only to the extent of the desire for the teapot or film feeder, and if the owner prefers to keep the pot or the feeder unless you will buy his tea or films, I cannot see, in allowing him the right to do so, anything more than an ordinary incident of ownership, or, at most, a consequence of the Paper Bag Case, on which, as it seems to me, this case ought to turn. See Grant v. Raymond, 6 Pet. 218, 31 U. S. 242.
Not only do I believe that the rule that I advocate is right under the Paper Bag Case, but I think that it has become a rule of property that law and justice require to be retained. For fifteen years, at least since Bement & Sons v. National Harrow Co., 186 U. S. 70, 186 U. S. 88-93, if not considerably earlier, the public has been encouraged by this court to believe that the law is as it was laid down in Heaton-Peninsular Button-Fastener Co. v. Eureka Specialty Co., 77 F. 288, and numerous other decisions of the lower courts. I believe that many and important transactions have taken place on the faith of those decisions, and that, for that reason as well as for the first that I have given, the rule last announced in Henry v. A. B. Dick Co., 224 U. S. 1, should be maintained.
I will add, for its bearing upon Straus v. Victor Talking
Machine Co., ante, 243 U. S. 490, that a conditional sale retaining the title until a future event after delivery has been decided to be lawful again and again by this Court. Bailey v. Baker Ice Machine Co., 239 U. S. 268, 239 U. S. 272. I confine myself to expressing my views upon the general and important questions upon which I have the misfortune to differ from the majority of the Court. I leave on one side the question of the effect of the Clayton Act, as the Court had done, and also what I might think if the Paper Bag Case were not upheld, or if the question were upon the effect of a combination of patents such as to be contrary to the policy that I am bound to accept from the Congress of the United States.
MR. JUSTICE McKENNA and MR. JUSTICE VAN DEVANTER concur in this dissent.