A label placed upon a bottle to designate its contents is not a
subject for copyright.
In order to maintain an action for an infringement of the
ownership of a label, registered under the provisions of the Act of
June 18, 1874, 18 Stat. 78, 79, c. 301, it is necessary that public
notice of the registration should be given by affixing the word
"copyright" upon every copy of it.
The complainants were citizens of the United States, and
residents of Brooklyn in the State of New York. They were engaged
in the manufacture of various articles, among others,
Page 140 U. S. 429
of inks, in that city and in the City of New York, and have been
since 1885. They claimed to be entitled to the exclusive use of a
label containing the words "waterproof drawing ink," and that the
defendants had infringed upon their rights by the use of the label
on bottles of ink manufactured and sold by them. The present suit
was brought to compel the defendants to account for the profits
made by them from the use of this label and to restrain them from
its further use.
The bill alleged that sometime prior to 1880, one of the
complainants, Charles M. Higgins, invented a liquid drawing ink
possessing the quality of being insoluble and indelible, or proof
against water, when dried; that since its invention, either he or
the complainants as co-partners had been exclusively engaged in its
manufacture and sale; that subsequently to the invention, he
devised and adopted as a name or title for the ink, and as a label
for the same in the commerce and sale thereof, the words
"waterproof drawing ink;" that since then, the ink had become
widely and favorably known, and been extensively sold by that name
or title; that, being desirous to secure to himself and assigns the
sole and exclusive right to the use of the same, he, on the 27th of
October, 1883, entered and registered the said label in the United
States Patent Office, pursuant to the Act of Congress of June 18,
1874, "to amend the law relating to patents, trade marks and
copyrights," 18 Stat. c. 301, and complied with all its
requirements; that thereafter, on November 20, 1883, the
Commissioner of Patents issued to him a certificate of the
registration of the label, designated No. 3693; that this was done
before the label was used by the complainants, or either of them;
that by the registration he secured to himself and assigns the
exclusive right to the use of the label for twenty-eight years, and
that on May 1, 1885, he sold to the firm of which he was a member
that right for the term of five years from date, with all the
gains, profits and advantages arising therefrom. The bill further
averred that this right of the complainants to the exclusive use of
the label thus registered had been violated by the defendants, who
had used it upon bottles of ink manufactured and sold by them, to
the great damage and detriment of
Page 140 U. S. 430
the complainants, and that they threatened to continue such
infringement. The complainants therefore prayed for an injunction
against the further use of the label by the defendants, and that
they be decreed to render an account of the number of bottles sold
by them and to pay to the complainants the profits arising from
such sales.
The material allegations of the bill were denied by the
defendants in their answer, to which a replication was filed.
Evidence being taken, the case was heard on the pleadings and
proofs, and on April 27, 1887, a decree was rendered dismissing the
bill. 30 F. 627. From that decree an appeal was taken to this
Court.
MR. JUSTICE FIELD, after stating the facts as above, delivered
the opinion of the Court.
The complainants found their claim to an injunction restraining
the use of their registered label by the defendants, and to an
accounting for the profits made by them on the sales of bottles of
ink with such labels, upon the ground that one of their number had
secured a copyright of the same for the period of twenty-eight
years from the time it was registered, and had transferred to them
his exclusive right to its use for five years from May 1, 1885. On
the other hand, the defendants contest the claim upon the ground
that the Constitution does not authorize a copyright of labels,
which are simply intended to designate the articles upon which they
are placed, and also on the ground that if labels are within the
copyright law, the conditions of that law were not complied
with.
The clause of the Constitution under which Congress is
authorized to legislate for the protection of authors and inventors
is contained in the eighth section of Article I, which declares
that
"The Congress shall have power to promote the progress of
science and useful arts by securing for limited
Page 140 U. S. 431
times to authors and inventors the exclusive right to their
respective writings and discoveries."
This provision evidently has reference only to such writings and
discoveries as are the result of intellectual labor. It was so held
in
Trademark Cases, 100 U. S. 82, where
the Court said that,
"While the word 'writings' may be literally construed, as it has
been, to include original designs for engravings, prints, etc., it
is only such as are original and are founded in the creative powers
of the mind."
It does not have any reference to labels which simply designate
or describe the articles to which they are attached, and which have
no value separated from the articles, and no possible influence
upon science or the useful arts. A label on a box of fruit, giving
its name as "grapes," even with the addition of adjectives
characterizing their quality as "black," or "white," or "sweet," or
indicating the place of their growth, as Malaga or California, does
not come within the object of the clause. The use of such labels
upon those articles has no connection with the progress of science
and the useful arts. So a label designating ink in a bottle as
"black," "blue," or "red," or "indelible," or "insoluble," or as
possessing any other quality, has nothing to do with such progress.
It cannot, therefore, be held by any reasonable argument that the
protection of mere labels is within the purpose of the clause in
question. To be entitled to a copyright, the article must have by
itself some value as a composition, at least to the extent of
serving some purpose other than as a mere advertisement or
designation of the subject to which it is attached. This was held
substantially in
Scoville v. Toland, 6 Western Law Journal
84, which was before the Circuit Court of the United States for the
District of Ohio as early as 1848. There application was made for
an injunction to restrain the use of a label containing the
words:
"Doctor Rodgers' Compound Syrup of Liverwort and Tar. A safe and
certain cure for consumption of the lungs spitting of blood,
coughs, colds, asthma, pain in the side, bronchitis,
whooping-cough, and all pulmonary affections. The genuine is signed
Andrew Rodgers,"
which the complainant had entered in the clerk's office of the
District Court of the United States for the
Page 140 U. S. 432
District of Ohio, and in other respects complied with the law.
It was shown by several affidavits that the medicine prepared by
the complainant was efficacious in diseases. The defendants
insisted that the label was not the subject of copyright. In
considering this question, Mr. Justice McLean, presiding in the
circuit court, referred to the act of Congress of 1831, giving a
copyright to the author of any book or books, (4 Stat. c. 16, p.
436), and held that the label was not a book within its meaning,
although it had been decided under the English statute that a
composition upon a single sheet might be considered as a book.
Clementi v. Golding, 2 Camp. 25, 32. But Mr. Justice
McLean, distinguishing the case before him, said:
"The label which the complainant claims to be a book refers to a
certain medicinal preparation, and was designed to be an
accompaniment of it. Like other labels, it was intended for no
other use than to be pasted on the vials or bottles which contained
the medicine. As a composition distinct from the medicine, it can
be of no value. It asserts a fact that 'Doctor Rodgers' Compound
Syrup of Liverwort and Tar' is a certain cure for many diseases,
but it does not inform us how the compound is made. In no respect
does this label differ from the almost numberless labels attached
to bottles and vials containing medicines, and directions how they
shall be taken. Now these are only valuable when connected with the
medicine. As labels, they are useful, but as mere compositions,
distinct from the medicine, they are never used or designed to be
used. This is not the case with other compositions which are
intended to instruct and amuse the reader, though limited to a
single sheet or page. Of this character would be lunar tables,
sonata, music, and other mental labors concentrated on a single
page."
The court was therefore of opinion that the statute could not
bear a construction admitting the label within its protection, and
the injunction was refused.
The law of 1831, so far as books or compositions in writing are
concerned, was as broad as the law now in force, and the label
there rejected as not within the statute was more extended and full
than the one now before us. The rule applied in that case is as
applicable now.
Page 140 U. S. 433
A trademark may sometimes, it is true, in form serve as a label,
but it differs from a mere label in such cases in that it is not
confined to a designation of the article to which it is attached,
but by its words or design is a symbol or device which, affixed to
a product of one's manufacture, distinguishes it from articles of
the same general nature manufactured or sold by others, thus
securing to the producer the benefits of any increased sale by
reason of any peculiar excellence he may have given to it.
Manufacturing Co. v. Trainer, 101 U. S.
51,
101 U. S. 53. A
mere label is not intended to accomplish any such purpose, but only
to indicate the article contained in the bottle, package, or box to
which it is affixed. The label here is not claimed as a trademark.
If the complainants have any right to its words as a trademark, it
is not in any manner involved in this case, as was stated by the
court below.
But assuming that the Constitution authorizes legislation for
the protection of mere descriptive labels as properly the subjects
of copyright, and that the statute relating to copyright of books
and other compositions in writing includes such labels, the
proceedings taken to secure a copyright of the label in the present
case were insufficient and ineffectual for that purpose.
The Revised Statutes of the United States secure to the author,
inventor, or proprietor of any book, map, chart, dramatic or
musical composition, engraving, cut, print, or photograph, and to
the executors, administrators, or assigns of such person, the sole
liberty of printing, reprinting, publishing, completing, copying,
executing, finishing, and vending the same, upon complying with
certain provisions. Section 4952.
One of those provisions is that the person seeking a copyright
shall, before publication, deliver at the office of the Librarian
of Congress, or deposit in the mail addressed to such librarian, a
printed copy of the book or other article for which he desires a
copyright, and within ten days from the publication thereof deliver
at the office of such librarian, or deposit in the mail addressed
to him, two copies of such copyright book or other article. Sec.
4956.
They also provide that no person shall maintain an action
Page 140 U. S. 434
for the infringement of his copyright unless he has given notice
thereof by inserting in the several copies of every edition
published, on the title page or the page immediately following, if
it be a book, or if a map, chart, musical composition, print, cut,
engraving, or photograph, by inscribing upon some portion of the
face or front thereof, or on the face of the substance on which the
same shall be mounted, the following words: "Entered according to
act of Congress in the year ____, by A. B., in the office of the
Librarian of Congress at Washington." Sec. 4962.
The Act of June 18, 1874, 18 Stat. c. 301, p. 78, changes the
previous law in some respects. It allows, in place of the statement
of entry in the office of the librarian, the simple use of the word
"copyright," with the addition of the year it was entered, and the
name of the party by whom it was taken out. It also declares that
the words "engraving," "cut," and "print," shall be applied only to
pictorial illustrations or works connected with the fine arts, and
also that no prints or labels designed to be used for any other
articles of manufacture shall be entered under the copyright law,
but may be registered in the Patent Office, and the Commissioner of
Patents is charged with the supervision and control of the entry or
registry of such prints or labels in conformity with the
regulations provided by law as to copyright of prints. This statute
does not, however, make any change in the requirement of notice; it
only permits the form of it to be changed. The copyright is secured
when the registration is complete, and a certificate of the
registration is given by the Commissioner, just as under the former
law it was secured when the proper filing had been made with the
Librarian of Congress and his certificate was issued. But in this
case, notice of the copyright obtained has not been given as
required. The law in that respect has not been followed. The fact
of registration alone is placed upon the label. The word
"copyright" is not used, and, of course, with its omission the
essential facts respecting any copyright are omitted also. The law
therefore has not been complied with, and by its very terms no
action can be maintained for the infringement of the alleged
copyright without
Page 140 U. S. 435
such compliance, and, of course, no suit in equity to restrain
any future use of the label. Rev.Stat. ยง 4962;
Wheaton v.
Peters, 8 Pet. 591;
Callaghan v. Myers,
128 U. S. 617,
128 U. S.
652.
Decree affirmed.