The rights of property and exclusive use granted to a patentee
do not extend to a foreign vessel lawfully entering one of our
ports and the use of such improvement in the construction, fitting
out, or equipment of such vessel while she is coming into or going
out of a port of the United States, is not an infringement of the
rights of an American patentee, provided it was placed upon her in
a foreign port, and authorized by the laws of the country to which
she belongs.
The facts in the case and state of the pleadings in the circuit
court are set forth so particularly in the opinion of the Court
that they need not be repeated.
Page 60 U. S. 193
MR. CHIEF JUSTICE TANEY delivered the opinion of the Court.
The plaintiff in error, who was also plaintiff in the court
below, brought this action against the defendant for the
infringement of a patent which the plaintiff had obtained for a new
and useful improvement in constructing the gaff of sailing vessels.
The declaration is in the usual form, and alleges that the
defendant used this improvement at Boston without his consent. The
defendant pleaded that the improvement in question was used by him
only in the gaffs of a French schooner, called the
Alcyon,
of which schooner he was master; that he the defendant was a
subject of the Empire of France; that the vessel was built in
France, and owned and manned by French subjects, and at the time of
the alleged infringement was upon a lawful voyage, under the flag
of France, from St. Peters in the Island of Miquelon, one of the
colonies of France, to Boston, and thence back to St. Peters, which
voyage was not ended at the date of the alleged infringement, and
that the gaffs he used were placed on the schooner at or near the
time she was launched by the builder in order to fit her for
sea.
There is also a second plea containing the same allegations,
with the additional averment that the improvement in question had
been in common use in French merchant vessels for more than twenty
years before the
Alcyon was built, and was the
Page 60 U. S. 194
common and well known property of every French subject long
before the plaintiff obtained his patent.
The plaintiff demurred generally to each of these pleas and the
defendant joined in demurrer, and the judgment of the circuit court
being in favor of the defendant, the plaintiff thereupon brought
this writ of error.
The plaintiff, by his demurrer, admits that the
Alcyon
was a foreign vessel, lawfully in a port of the United States for
the purposes of commerce, and that the improvement in question was
placed on her in a foreign port to fit her for sea, and was
authorized by the laws of the country to which she belonged. The
question, therefore, presented by the first plea is simply this:
whether any improvement in the construction or equipment of a
foreign vessel for which a patent has been obtained in the United
States can be used by such vessel within the jurisdiction of the
United States while she is temporarily there for the purposes of
commerce, without the consent of the patentee?
This question depends on the construction of the patent laws.
For undoubtedly every person who is found within the limits of a
government, whether for temporary purposes or as a resident, is
bound by its laws. The doctrine upon this subject is correctly
stated by Mr. Justice Story in his "Commentaries on the Conflict of
Laws" chap. 14, sec. 541, and the writers on public law to whom he
refers. A difficulty may sometimes arise, in determining whether a
particular law applies to the citizen of a foreign country and
intended to subject him to its provisions. But if the law applies
to him and embraces his case, it is unquestionably binding upon him
when he is within the jurisdiction of the United States.
The general words used in the clause of the patent laws granting
the exclusive right to the patentee to use the improvement, taken
by themselves, and literally construed without regard to the object
in view, would seem to sanction the claim of the plaintiff. But
this mode of expounding a statute has never been adopted by any
enlightened tribunal -- because it is evident that in many cases it
would defeat the object which the legislature intended to
accomplish. And it is well settled that in interpreting a statute,
the court will not look merely to a particular clause in which
general words may be used, but will take in connection with it the
whole statute or statutes on the same subject and the objects and
policy of the law, as indicated by its various provisions, and give
to it such a construction as will carry into execution the will of
the legislature, as thus ascertained, according to its true intent
and meaning.
Page 60 U. S. 195
Neither will the court, in expounding a statute, give to it a
construction which would in any degree disarm the government of a
power which has been confided to it to be used for the general good
-- or which would enable individuals to embarrass it in the
discharge of the high duties it owes to the community -- unless
plain and express words indicated that such was the intention of
the legislature.
The patent laws are authorized by that article in the
Constitution which provides that Congress shall have 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. The power thus granted is
domestic in its character, and necessarily confined within the
limits of the United States. It confers no power on Congress to
regulate commerce or the vehicles of commerce, which belong to a
foreign nation and occasionally visit our ports in their commercial
pursuits. That power and the treatymaking power of the general
government are separate and distinct powers from the one of which
we are now speaking, and are granted by separate and different
clauses, and are in no degree connected with it. And when Congress
are legislating to protect authors and inventors, their attention
is necessarily attracted to the authority under which they are
acting, and it ought not lightly to be presumed that they intended
to go beyond it and exercise another and distinct power conferred
on them for a different purpose.
Nor is there anything in the patent laws that should lead to a
different conclusion. They are all manifestly intended to carry
into execution this particular power. They secure to the inventor a
just remuneration from those who derive a profit or advantage
within the United States from his genius and mental labors.
But the right of property which a patentee has in his invention,
and his right to its exclusive use, are derived altogether from
these statutory provisions, and this Court has always held that an
inventor has no right of property in his invention upon which he
can maintain a suit unless he obtains a patent for it according to
the acts of Congress, and that his rights are to be regulated and
measured by these laws, and cannot go beyond them.
But these acts of Congress do not and were not intended to
operate beyond the limits of the United States, and as the
patentee's right of property and exclusive use is derived from
them, they cannot extend beyond the limits to which the law itself
is confined. And the use of it outside of the jurisdiction of the
United States is not an infringement of his rights, and
Page 60 U. S. 196
he has no claim to any compensation for the profit or advantage
the party may derive from it.
The chief and almost only advantage which the defendant derived
from the use of this improvement was on the high seas and in other
places out of the jurisdiction of the United States. The plea avers
that it was placed on her to fit her for sea. If it had been
manufactured on her deck while she was lying in the port of Boston,
or if the captain had sold it there, he would undoubtedly have
trespassed upon the rights of the plaintiff and would have been
justly answerable for the profit and advantage he thereby obtained.
For by coming in competition with the plaintiff where the plaintiff
was entitled to the exclusive use, he thereby diminished the value
of his property. Justice therefore, as well as the act of Congress,
would require that he should compensate the patentee for the injury
he sustained and the benefit and advantage which he the defendant
derived from the invention.
But so far as the mere use is concerned, the vessel could hardly
be said to use it while she was at anchor in the port or lay at the
wharf. It was certainly of no value to her while she was in the
harbor, and the only use made of it which can be supposed to
interfere with the rights of the plaintiff was in navigating the
vessel into and out of the harbor when she arrived or was about to
depart and while she was within the jurisdiction of the United
States. Now it is obvious that the plaintiff sustained no damage,
and the defendant derived no material advantage, from the use of an
improvement of this kind by a foreign vessel in a single voyage to
the United States or from occasional voyages in the ordinary
pursuits of commerce, or if any damage is sustained on the one side
or any profit or advantage gained on the other, it is so minute
that it is incapable of any appreciable value.
But it seems to be supposed that this user of the improvement
was, by legal intendment, a trespass upon the rights of the
plaintiff, and that although no real damage was sustained by the
plaintiff and no profit or advantage gained by the defendant, the
law presumes a damage, and that the action may be maintained on
that ground. In other words, that there is a technical damage, in
the eye of the law, although none has really been sustained.
This view of the subject, however, presupposes that the patent
laws embrace improvements on foreign ships, lawfully made in their
own country, which have been patented here. But that is the
question in controversy. And the
Court is of opinion that cases of that kind were not in the
contemplation of Congress in enacting the patent laws, and cannot
upon any
Page 60 U. S. 197
sound construction be regarded as embraced in them. For such a
construction would be inconsistent with the principles that lie at
the foundation of these laws, and instead of conferring legal
rights on the inventor in order to do equal justice between him and
those who profit by his invention, they would confer a power to
exact damages where no real damage had been sustained, and would
moreover seriously embarrass the commerce of the country with
foreign nations. We think these laws ought to be construed in the
spirit in which they were made -- that is, as founded in justice --
and should not be strained by technical constructions to reach
cases which Congress evidently could not have contemplated, without
departing from the principle upon which they were legislating and
going far beyond the object they intended to accomplish.
The construction claimed by the plaintiff would confer on
patentees not only rights of property, but also political power,
and enable them to embarrass the treatymaking power in its
negotiations with foreign nations, and also to interfere with the
legislation of Congress when exercising its constitutional power to
regulate commerce. And if a treaty should be negotiated with a
foreign nation by which the vessels of each party were to be freely
admitted into the ports of the other upon equal terms with its own
upon the payment of the ordinary port charges, and the foreign
government faithfully carried it into execution, yet the government
of the United States would find itself unable to fulfill its
obligations if the foreign ship had about her, in her construction
or equipment, anything for which a patent had been granted. And
after paying the port and other charges to which she was subject by
the treaty, the master would be met with a further demand, the
amount of which was not even regulated by law, but depended upon
the will of a private individual.
And it will be remembered that the demand, if well founded in
the patent laws, could not be controlled or put aside by the
treaty. For by the laws of the United States, the rights of a party
under a patent are his private property, and by the Constitution of
the United States, private property cannot be taken for public use
without just compensation. And in the case I have stated, the
government would be unable to carry into effect its treaty
stipulations without the consent of the patentee unless it resorted
to its right of eminent domain and went through the tedious and
expensive process of condemning so much of the right of property of
the patentee as related to foreign vessels and paying him such a
compensation therefor as should be awarded to him by the proper
tribunal. The same difficulty would exist in executing a law of
Congress
Page 60 U. S. 198
in relation to foreign ships and vessels trading to this
country. And it is impossible to suppose that Congress in passing
these laws could have intended to confer on the patentee a right of
private property which would in effect enable him to exercise
political power and which the government would be obliged to regain
by purchase, or by the power of its eminent domain, before it could
fully and freely exercise the great power of regulating commerce,
in which the whole nation has an interest. The patent laws were
passed to accomplish a different purpose, and with an eye to a
different object, and the right to interfere in foreign
intercourse, or with foreign ships visiting our ports, was
evidently not in the mind of the legislature, nor intended to be
granted to the patentee.
Congress may unquestionably, under its power to regulate
commerce, prohibit any foreign ship from entering our ports which,
in its construction or equipment, uses any improvement patented in
this country or may prescribe the terms and regulations upon which
such vessel shall be allowed to enter. Yet it may perhaps be
doubted whether Congress could by law confer on an individuals or
individuals a right which would in any degree impair the
constitutional powers of the legislative or executive departments
of the government or which might put it in their power to embarrass
our commerce and intercourse with foreign nations or endanger our
amicable relations. But however that may be, we are satisfied that
no sound rule of interpretation would justify the court in giving
to the general words used in the patent laws the extended
construction claimed by the plaintiff in a case like this, where
public rights and the interests of the whole community are
concerned.
The case of
Caldwell v. Vlissengen, 9 Hare 416, 9
Eng.L. & Eq. 51, and the statute passed by the British
Parliament in consequence of that decision, have been referred to
and relied on in the argument. The reasoning of the Vice Chancellor
is certainly entitled to much respect, and it is not for this Court
to question the correctness of the decision or the construction
given to the statute of Henry VIII.
But we must interpret our patent laws with reference to our own
Constitution and laws and judicial decisions. And the Court is of
opinion that the rights of property and exclusive use granted to a
patentee do not extend to a foreign vessel lawfully entering one of
our ports, and that the use of such improvement in the
construction, fitting out, or equipment of such vessel while she is
coming into or going out of a port of the United States, is not an
infringement of the rights of an American patentee, provided it was
placed upon her in a foreign
Page 60 U. S. 199
port and authorized by the laws of the country to which she
belongs.
In this view of the subject, it is unnecessary to say anything
in relation to the second plea of the defendant, since the matters
relied on in the first are sufficient to bar the plaintiff of his
action without the aid of the additional averments contained in the
second.
The judgment of the circuit court must therefore be
affirmed.