1. Property in trademarks has long been recognized and protected
by the common law and by the statutes of the several states, and
does not derive its existence from the act of Congress providing
for the registration of them in the Patent Office.
2. A trademark is neither an invention, a discovery, nor a
writing within the meaning of the eighth clause of the eighth
section of the first article of the Constitution, which confers on
Congress power to secure for limited times to authors and inventors
the exclusive right to their respective writings and
discoveries.
3. If an act of Congress can in any case be extended, as a
regulation of commerce, to trademarks, it must be limited to their
use in "commerce with foreign nations, and among the several
states, and with the Indian tribes."
4. The legislation of Congress in regard to trademarks is not,
in its terms or essential character, a regulation thus limited, but
in its language embraces, and was intended to embrace, all
commerce, including that between citizens of the same state.
5. That legislation is void for want of constitutional
authority, inasmuch as it is so framed that its provisions are
applicable to all commerce, and cannot be confined to that which is
subject to the control of Congress.
The first two cases were brought here on certificates of
division in opinion between the judges of the Circuit Court of the
United States for the Southern District of New York. The last was
brought here on a certificate of division on opinion between the
judges of the Circuit Court of the United States for the Southern
District of Ohio.
Steffens was indicted under the fourth and fifth sections of an
act of Congress entitled "An Act to punish the counterfeiting of
trademarks and the sale or dealing in of counterfeit trademark
goods," approved Aug. 14, 1876, 19 Stat. 141.
The first count in the indictment charges him with knowingly and
willfully having in his possession counterfeits and colorable
imitations of the trademarks of G. H. Mumm & Co., of Rheims,
France, manufacturers and sellers of champagne wine.
The second count charges him with knowingly and willfully
selling counterfeited representations and colorable imitations of
the trademark of said G. H. Mumm & Co.
Page 100 U. S. 83
Wittemann was indicted under the fifth section of that act. The
indictment consists of six counts, and they charge: 1st, the
counterfeiting and forging; 2d, the having in possession colorable
imitations of; 3d, the buying; 4th, the selling; 5th, the offering
for sale; and, 6th, the dealing in colorable imitations of the
private trademark belonging to and used by the firm of Kunkleman
& Co., of Rheims, France, manufacturers and dealers in wine
known as the "Piper Heidsick" brand of champagne wine.
Johnson, McNamara, and Reeder were prosecuted under that act by
a criminal information containing seven counts, of which the first,
fourth, and sixth are founded upon a trademark consisting of the
letters "O K," registered in the United States Patent Office by
Charles F. O'Donnell, April 2, 1878, for use upon packages of
whiskey, and respectively charge the defendants with
counterfeiting, affixing a colorable imitation, and dealing in and
selling packages of whiskey to which was attached a colorable
imitation of said trademark; and the second, third, fifth, and
seventh counts are founded upon another trademark, consisting of a
seal and ribbon, the latter secured by the seal of a package
containing whiskey, registered by Charles F. O'Donnell, May 21,
1878, and respectively charge the defendants with counterfeiting,
making a colorable imitation, affixing a colorable imitation, and
dealing in packages of whiskey to which was attached a colorable
imitation of said trademark.
Secs. 4 and 5 of the act of 1876 are as follows:
"SEC. 4. That any person or persons who shall, with intent to
defraud any person or persons, knowingly and willfully cast,
engrave, or manufacture, or have in his, her, or their possession,
or buy, sell, offer for sale, or deal in, any die or dies, plate or
plates, brand or brands, engraving or engravings, on wood, stone,
metal, or other substance, moulds, or any false representation,
likeness, copy, or colorable imitation of any die, plate, brand,
engraving, or mould of any private label, brand, stamp, wrapper,
engraving on paper or other substance, or trademark, registered
pursuant to the statutes of the United States, shall, upon
conviction thereof, be punished as prescribed in the first section
of this act."
"SEC. 5. That any person or persons who shall, with intent to
defraud any person or persons, knowingly and willfully make,
Page 100 U. S. 84
forge, or counterfeit, or have in his, her, or their possession,
or buy, sell, offer for sale, or deal in, any representation,
likeness, similitude, copy, or colorable imitation of any private
label, brand, stamp, wrapper, engraving, mould, or trademark,
registered pursuant to the Statutes of the United States, shall,
upon conviction thereof, be punished as prescribed in the first
section of this act."
Sect. 4937, Rev. Stat., is as follows:
"Any person or firm domiciled in the United States, and any
corporation created by the authority of the United States, or of
any state or territory thereof, and any person, firm, or
corporation resident of or located in any foreign country which by
treaty or convention affords similar privileges to citizens of the
United States, and who are entitled to the exclusive use of any
lawful trademark, or who intend to adopt and use any trademark for
exclusive use within the United States, may obtain protection for
such lawful trademark, by complying with the following
requirements:"
"
First, by causing to be recorded in the Patent Office
a statement specifying the names of the parties, and their
residences and places of business, who desire the protection of the
trademark; the class of merchandise, and the particular description
of goods comprised in such class, by which the trademark has been
or is intended to be appropriated; a description of the trademark
itself, with facsimiles thereof, showing the mode in which it has
been or is intended to be applied and used; and the length of time,
if any, during which the trademark has been in use."
"
Second, by making payment of a fee of twenty-five
dollars in the same manner and for the same purpose as the fee
required for patents."
"
Third, by complying with such regulations as may be
prescribed by the Commissioner of Patents."
To each indictment there was a general demurrer. The judges of
the circuit court were opposed in opinion upon the following
question:
"Can the Act of Congress approved Aug. 14, 1876, entitled 'An
Act to punish the counterfeiting of trademark goods and the sale or
dealing in of counterfeit trademark goods,' under which this
indictment is found, be upheld, wholly or in part, as a law
necessary and proper for carrying into execution any of the powers
vested in the Congress by the Constitution of the United States?
"
Page 100 U. S. 85
To the information against Johnson, McNamara, and Reeder there
was a general demurrer, and thereupon a question arose for decision
whether the said act of Congress "is within the constitutional
power of Congress, or whether the same is unconstitutional, null,
and void," and the opinions of the judges of the Circuit Court were
opposed.
The Attorney-General for the United States.
Page 100 U. S. 91
MR. JUSTICE MILLER delivered the opinion of the Court.
The three cases whose titles stand at the head of this opinion
are criminal prosecutions for violations of what is known as the
trademark legislation of Congress. The first two are indictments in
the Southern District of New York and the last is an information in
the Southern District of Ohio. In all of them, the judges of the
circuit courts in which they are pending have certified to a
difference of opinion on what is substantially the same question,
namely, are the acts of Congress on the subject
Page 100 U. S. 92
of trademarks founded on any rightful authority in the
Constitution of the United States?
The entire legislation of Congress in regard to trademarks is of
very recent origin. It is first seen in secs. 77 to 84, inclusive,
of the Act of July 8, 1870, entitled "An Act to revise,
consolidate, and amend the statutes relating to patents and
copyrights." 16 Stat. 198. The part of this act relating to
trademarks is embodied in chap. 2, tit. 60, secs. 4937 to 4947, of
the Revised Statutes.
It is sufficient at present to say that they provide for the
registration in the Patent Office of any device in the nature of a
trademark to which any person has by usage established an exclusive
right, or which the person so registering intends to appropriate by
that act to his exclusive use, and they make the wrongful use of a
trademark, so registered, by any other person, without the owner's
permission, a cause of action in a civil suit for damages. Six
years later, we have the Act of Aug. 14, 1876, 19 Stat. 141,
punishing by fine and imprisonment the fraudulent use, sale, and
counterfeiting of trademarks registered in pursuance of the
statutes of the United States, on which the informations and
indictments are founded in the cases before us.
The right to adopt and use a symbol or a device to distinguish
the goods or property made or sold by the person whose mark it is,
to the exclusion of use by all other persons, has been long
recognized by the common law and the chancery courts of England and
of this country and by the statutes of some of the states. It is a
property right for the violation of which damages may be recovered
in an action at law, and the continued violation of it will be
enjoined by a court of equity, with compensation for past
infringement. This exclusive right was not created by the act of
Congress, and does not now depend upon it for its enforcement. The
whole system of trademark property and the civil remedies for its
protection existed long anterior to that act, and have remained in
full force since its passage.
There propositions are so well understood as to require neither
the citation of authorities nor an elaborate argument to prove
them.
Page 100 U. S. 93
As the property in trademarks and the right to their exclusive
use rest on the laws of the states, and, like the great body of the
rights of person and of property, depend on them for security and
protection, the power of Congress to legislate on the subject, to
establish the conditions on which these rights shall be enjoyed and
exercised, the period of their duration, and the legal remedies for
their enforcement, if such power exist at all, must be found in the
Constitution of the United States, which is the source of all
powers that Congress can lawfully exercise.
In the argument of these cases this seems to be conceded, and
the advocates for the validity of the acts of Congress on this
subject point to two clauses of the Constitution, in one or in both
of which, as they assert, sufficient warrant may be found for this
legislation.
The first of these is the eighth clause of sec. 8 of the first
article. That section, manifestly intended to be an enumeration of
the powers expressly granted to Congress and closing with the
declaration of a rule for the ascertainment of such powers as are
necessary by way of implication to carry into efficient operation
those expressly given, authorizes Congress, by the clause referred
to,
"to promote the progress of science and useful arts, by securing
for limited times, to authors and inventors, the exclusive right to
their respective writings and discoveries."
As the first and only attempt by Congress to regulate the right
of trademarks is to be found in the Act of July 8, 1870, to which
we have referred, entitled "An Act to revise, consolidate, and
amend the statutes relating to patents and copyrights," terms which
have long since become technical, as referring, the one to
inventions and the other to the writings of authors, it is a
reasonable inference that this part of the statute also was, in the
opinion of Congress, an exercise of the power found in that clause
of the Constitution. It may also be safely assumed that until a
critical examination of the subject in the courts became necessary,
it was mainly if not wholly to this clause that the advocates of
the law looked for its support.
Any attempt, however, to identify the essential characteristics
of a trademark with inventions and discoveries in the
Page 100 U. S. 94
arts and sciences, or with the writings of authors, will show
that the effort is surrounded with insurmountable difficulties.
The ordinary trademark has no necessary relation to invention or
discovery. The trademark recognized by the common law is generally
the growth of a considerable period of use, rather than a sudden
invention. It is often the result of accident, rather than design,
and when under the act of Congress it is sought to establish it by
registration, neither originality, invention, discovery, science,
nor art is in any way essential to the right conferred by that act.
If we should endeavor to classify it under the head of writings of
authors, the objections are equally strong. In this as in regard to
inventions, originality is required. And while the word writings
may be liberally construed, as it has been, to include original
designs for engravings, prints, &c., it is only such as are
original and are founded in the creative powers of the mind. The
writings which are to be protected are the fruits of intellectual
labor, embodied in the form of books, prints, engravings, and the
like. The trademark may be, and generally is, the adoption of
something already in existence as the distinctive symbol of the
party using it. At common law, the exclusive right to it grows out
of its use, and not its mere adoption. By the act of Congress, this
exclusive right attaches upon registration. But in neither case
does it depend upon novelty, invention, discovery, or any work of
the brain. It requires no fancy or imagination, no genius, no
laborious thought. It is simply founded on priority of
appropriation. We look in vain in the statute for any other
qualification or condition. If the symbol, however plain, simple,
old, or well known, has been first appropriated by the claimant as
his distinctive trademark, he may by registration secure the right
to its exclusive use. While such legislation may be a judicious aid
to the common law on the subject of trademarks, and may be within
the competency of legislatures whose general powers embrace that
class of subjects, we are unable to see any such power in the
constitutional provision concerning authors and inventors, and
their writings and discoveries.
The other clause of the Constitution supposed to confer the
requisite authority on Congress is the third of the same
section,
Page 100 U. S. 95
which, read in connection with the granting clause, is as
follows: "The Congress shall have power to regulate commerce with
foreign nations, and among the several states, and with the Indian
tribes."
The argument is that the use of a trademark -- that which alone
gives it any value -- is to identify a particular class or quality
of goods as the manufacture, produce, or property of the person who
puts them in the general market for sale; that the sale of the
article so distinguished is commerce; that the trademark is
therefore a useful and valuable aid or instrument of commerce, and
its regulation by virtue of the clause belongs to Congress, and
that the act in question is a lawful exercise of this power.
Every species of property which is the subject of commerce, or
which is used or even essential in commerce, is not brought by this
clause within the control of Congress. The barrels and casks, the
bottles and boxes in which alone certain articles of commerce are
kept for safety and by which their contents are transferred from
the seller to the buyer, do not thereby become subjects of
congressional legislation more than other property.
Nathan v.
Louisiana, 8 How. 73. In
Paul v.
Virginia, 8 Wall. 168, this Court held that a
policy of insurance made by a corporation of one state on property
situated in another was not an article of commerce and did not come
within the purview of the clause we are considering. "They are
not," said the Court, "commodities to be shipped or forwarded from
one state to another and then put up for sale." On the other hand,
in
Almy v. State of
California, 24 How. 169, it was held that a stamp
duty imposed by the Legislature of California on bills of lading
for gold and silver transported from any place in that state to
another out of the state was forbidden by the Constitution of the
United States because, such instruments being a necessity to the
transaction of commerce, the duty was a tax upon exports.
The question, therefore, whether the trademark bears such a
relation to commerce in general terms as to bring it within
congressional control, when used or applied to the classes of
commerce which fall within that control, is one which, in the
present case, we propose to leave undecided. We adopt this
Page 100 U. S. 96
course because when this Court is called on in the course of the
administration of the law to consider whether an act of Congress,
or of any other department of the government, is within the
constitutional authority of that department, a due respect for a
co-ordinate branch of the government requires that we shall decide
that it has transcended its powers only when that is so plain that
we cannot avoid the duty.
In such cases, it is manifestly the dictate of wisdom and
judicial propriety to decide no more than is necessary to the case
in hand. That such has been the uniform course of this Court in
regard to statutes passed by Congress will readily appear to anyone
who will consider the vast amount of argument presented to us
assailing them as unconstitutional, and he will count, as he may do
on his fingers, the instances in which this Court has declared an
act of Congress void for want of constitutional power.
Governed by this view of our duty, we proceed to remark that a
glance at the commerce clause of the Constitution discloses at once
what has been often the subject of comment in this Court and out of
it -- that the power of regulation there conferred on Congress is
limited to commerce with foreign nations, commerce among the
states, and commerce with the Indian tribes. While bearing in mind
the liberal construction that commerce with foreign nations means
commerce between citizens of the United States and citizens and
subjects of foreign nations, and commerce among the states means
commerce between the individual citizens of different states, there
still remains a very large amount of commerce, perhaps the largest,
which, being trade or traffic between citizens of the same state,
is beyond the control of Congress.
When, therefore, Congress undertakes to enact a law which can
only be valid as a regulation of commerce, it is reasonable to
expect to find on the face of the law or from its essential nature
that it is a regulation of commerce with foreign nations or among
the several states or with the Indian tribes. If not so limited, it
is in excess of the power of Congress. If its main purpose be to
establish a regulation applicable to all trade, to commerce at all
points, especially if it be apparent that it is designed to govern
the commerce wholly between citizens of
Page 100 U. S. 97
the same state, it is obviously the exercise of a power not
confided to Congress.
We find no recognition of this principle in the chapter on
trademarks in the Revised Statutes. We would naturally look for
this in the description of the class of persons who are entitled to
register a trademark, or in reference to the goods to which it
should be applied. If, for instance, the statute described persons
engaged in a commerce between the different states, and related to
the use of trademarks in such commerce, it would be evident that
Congress believed it was acting under the clause of the
Constitution which authorizes it to regulate commerce among the
states. So if, when the trademark has been registered, Congress had
protected its use on goods sold by a citizen of one state to
another, or by a citizen of a foreign state to a citizen of the
United States, it would be seen that Congress was at least
intending to exercise the power of regulation conferred by that
clause of the Constitution. But no such idea is found or suggested
in this statute. Its language is: "Any person or firm domiciled in
the United States, and any corporation created by the United
States, or of any state or territory thereof," or any person
residing in a foreign country which by treaty or convention affords
similar privileges to our citizens, may be registration obtain
protection for his trademark. Here is no requirement that such
person shall be engaged in the kind of commerce which Congress is
authorized to regulate. It is a general declaration that anybody in
the United States, and anybody in any other country which permits
us to do the like, may, by registering a trademark, have it fully
protected. So, while the person registering is required to
furnish
"a statement of the class of merchandise, and the particular
description of the goods comprised in such class, by which the
trademark has been or is intended to be appropriated,"
there is no hint that the goods are to be transported from one
state to another, or between the United States and foreign
countries. Sec. 4939 is intended to impose some restriction upon
the Commissioner of Patents in the matter of registration, but no
limitation is suggested in regard to persons or property engaged in
the different classes of commerce mentioned in the Constitution.
The remedies provided by the act
Page 100 U. S. 98
when the right of the owner of the registered trademark is
infringed are not confined to the case of a trademark used in
foreign or interstate commerce.
It is therefore manifest that no such distinction is found in
the act, but that its broad purpose was to establish a universal
system of trademark registration, for the benefit of all who had
already used a trademark or who wished to adopt one in the future,
without regard to the character of the trade to which it was to be
applied or the residence of the owner, with the solitary exception
that those who resided in foreign countries which extended no such
privileges to us were excluded from them here.
It has been suggested that if Congress has power to regulate
trademarks used in commerce with foreign nations and among the
several states, these statutes shall be held valid in that class of
cases, if no further. To this there are two objections: first, the
indictments in these cases do not show that the trademarks which
are wrongfully used were trademarks used in that kind of commerce;
secondly, while it may be true that when one part of a statute is
valid and constitutional and another part is unconstitutional and
void, the court may enforce the valid part where they are
distinctly separable so that each can stand alone, it is not within
the judicial province to give to the words used by Congress a
narrower meaning than they are manifestly intended to bear in order
that crimes may be punished which are not described in language
that brings them within the constitutional power of that body. This
precise point was decided in
United States v. Reese,
92 U. S. 214. In
that case, Congress had passed a statute punishing election
officers who should refuse to any person lawfully entitled to do so
the right to cast his vote at an election. This Court was of the
opinion that as regarded the section of the statute then under
consideration, Congress could only punish such denial when it was
on account of race, color, or previous condition of servitude.
It was urged, however, that the general description of the
offense included the more limited one, and that the section was
valid where such was in fact the cause of denial. But the Court
said, through the Chief Justice:
"We are not able to
Page 100 U. S. 99
reject a part which is unconstitutional and retain the
remainder, because it is not possible to separate that which is
constitutional, if there be any such, from that which is not. The
proposed effect is not to be attained by striking out or
disregarding words that are in the section, but by inserting those
that are not there now. Each of the sections must stand as a whole
or fall altogether. The language is plain. There is no room for
construction unless it be as to the effect of the Constitution. The
question, then, to be determined is whether we can introduce words
of limitation into a penal statute so as to make it specific when,
as expressed, it is general only. . . . To limit this statute in
the manner now asked for would be to make a new law, not to enforce
an old one. This is no part of our duty."
If we should, in the case before us, undertake to make by
judicial construction a law which Congress did not make, it is
quite probable we should do what, if the matter were now before
that body, it would be unwilling to do -- namely, make a trademark
law which is only partial in its operation and which would
complicate the rights which parties would hold, in some instances
under the act of Congress and in others under state law. Cooley,
Const.Lim. 178, 179;
Commonwealth v. Hitchings, 5 Gray
(Mass.) 482.
In what we have here said, we wish to be understood as leaving
untouched the whole question of the treatymaking power over
trademarks and of the duty of Congress to pass any laws necessary
to carry treaties into effect.
While we have, in our references in this opinion to the
trademark legislation of Congress, had mainly in view the act of
1870 and the civil remedy which that act provides, it was because
the criminal offenses described in the act of 1876 are, by their
express terms, solely referable to frauds, counterfeits, and
unlawful use of trademarks which were registered under the
provisions of the former act. If that act is unconstitutional, so
that the registration under it confers no lawful right, then the
criminal enactment intended to protect that right falls with
it.
The questions in each of these cases being an inquiry whether
these statutes can be upheld in whole or in part as valid and
constitutional, must be answered in the negative, and it will
be
So certified to the proper circuit courts.
