1. A bill in the District Court made a claim of copyright
infringement, raising a substantial federal question, and also
sought relief upon the ground that the very same acts constituting
the alleged infringement constituted unfair competition under the
state law.
Held:
(1) That the federal question raised by the pleading gave
jurisdiction of the case. P.
289 U. S.
240.
(2) When the federal claim was rejected on the merits, the court
still had jurisdiction to decide the claim of unfair competition on
the merits.
Leschen Rope Co. v. Broderick, 201 U.
S. 166, and
Elgin Watch Co. v. Illinois Watch
Co., 179 U. S. 665,
criticized. Pp.
289 U. S.
240-244.
2. It is a general rule that, where the federal court has
acquired jurisdiction by virtue of a substantial federal question
raised in the bill or the complaint, it may decide not only that
question, but also the local questions involved. P.
289 U. S.
243.
3. This rule does not go so far as to permit a federal court to
assume jurisdiction of a separate and distinct nonfederal cause of
action because it is joined in the same complaint with a federal
cause of action. P.
289 U. S.
245.
4. From the jurisdictional standpoint, the claims of copyright
infringement and of unfair competition pleaded in this case are not
separate causes of action, but are different grounds asserted in
support of the same cause of action. P.
289 U. S.
246.
61 F.2d 1031 modified and affirmed.
Certiorari, 288 U.S. 595, to review the affirmance of a decree
dismissing a bill on the merits insofar as grounded on copyright
infringement, and for want of jurisdiction insofar as grounded on
unfair competition.
Page 289 U. S. 239
MR. JUSTICE SUTHERLAND delivered the opinion of the Court.
Petitioners brought this suit to enjoin respondents from
publicly producing, presenting, or performing a play called "The
Spider," on the ground that it infringed a copyrighted play of
petitioners, called "The Evil Hour." There was also a prayer for
damages and an accounting. The bill, as amended, alleged that "The
Evil Hour" had been composed by petitioners and duly copyrighted
under the laws of the United States; that the play thereafter was
revised, but the revision was uncopyrighted; that the play, both in
its copyrighted and its revised uncopyrighted form, was submitted
to certain of the respondents, who considered and discussed its
production; that the feature of the play consisted in the
representation of a spiritualistic seance on the stage, with the
audience taking part therein; that respondents were the owners of
"The Spider," also copyrighted, but as originally produced
containing no representation of a spiritualistic seance of any
kind; that respondents, instead of producing petitioners' play,
altered their own by incorporating therein the idea of a
spiritualistic seance on the stage, and also certain incidental
"business and effects" and certain portions of "The Evil Hour;"
that their action in that respect was a violation of the copyright
laws of the United States, and also constituted "unfair business
practices and unfair competition against the [petitioners]." The
parties are citizens of the same state.
The trial court, considering the claim of infringement on the
merits, found that "The Spider" did not infringe in any way "The
Evil Hour," in contravention of the copyright law of the United
States, and concluded that,
Page 289 U. S. 240
in view thereof, the court was without jurisdiction to entertain
the allegations insofar as they were based upon claims other than
for a violation of the copyright law. A decree followed dismissing
the bill. The Circuit Court of Appeals affirmed upon the authority
of cases cited. 61 F.2d 1031.
It is apparent from the language of the trial court that the
claim of unfair competition in respect of the copyrighted play, as
well as in respect of the uncopyrighted version, was rejected not
on the merits, but for lack of jurisdiction. In that view, the
decree of the court was assailed and defended here.
One. We consider the question first from the standpoint
of the copyrighted play. While, as presently will appear, the claim
of unfair competition is without merit and the dismissal must stand
in any event, it is important that, if the determination of the
court was put upon the wrong ground, we should so declare, that it
may not be followed as a precedent.
The unfair competition in respect of the copyrighted play,
according to the allegations, results from the same acts which
constitute the infringement, and is inseparable therefrom. The
court below proceeded upon the theory that the allegations of the
bill in respect of infringement presented a substantial federal
question. Certainly the question is not plainly unsubstantial, and
the jurisdiction of the federal court was rightly upheld. Disposal
of the infringement, therefore, on the merits was proper, and the
precise question for determination is whether the claim of unfair
competition was properly dismissed for lack of jurisdiction, or
likewise should have been considered and disposed of on the
merits.
A multitude of cases in the lower federal courts have dealt with
the question in its various phases and have reached different
conclusions. The opinions present a great variety of views and of
differences. We shall not
Page 289 U. S. 241
undertake to review these cases. A few out of many are mentioned
in the footnote
* as illustrative
of the confusion and as indicating the importance of attempting to
formulate some rule on the subject. And, to that end, we first
direct attention to certain decisions of this Court which seem most
nearly in point.
In
Stark Bros. Nurseries & Orchards Co. v. Stark,
255 U. S. 50, suit
was brought for infringement of a trademark and unfair competition.
The Circuit Court of Appeals limited damages to the date when
notice was given of the registered mark, and refused to allow
damages for earlier injuries. This Court point out that the suit
was for infringement of a
Page 289 U. S. 242
registered trademark, not simply of a trademark, and that this
was the scope of the federal jurisdiction. Agreeing with the lower
court that the cause of action for the earlier damages lay outside
the federal jurisdiction, this Court assumed, though without
deciding, that plaintiff
"could recover for unfair competition that was inseparable from
the statutory wrong, but it court not reach back and recover for
earlier injuries to rights derived from a different source."
In that view, so far as the unfair competition alleged was thus
inseparable from the statutory wrong, it would seem that a failure
to establish the infringement would not have deprived the federal
court of jurisdiction of the claim of unfair competition, but would
have left that matter to be disposed of upon the merits. And that
is the effect of the decision of this Court in
Moore v. New
York Cotton Exchange, 270 U. S. 593,
270 U. S.
607-610. In that case, federal jurisdiction was invoked
under the federal antitrust laws. The answer set up a counterclaim,
nonfederal in character but arising out of the same transaction.
This Court held that, although the allegations of the bill were
insufficient to make a case under the federal law, they were not
plainly unsubstantial so as to deprive the federal court of
jurisdiction, and sustained a dismissal of the bill on the merits,
and not for the want of jurisdiction. Nevertheless, we held, under
Equity Rule 30, that the counterclaim was so much a part of the
case sought to be stated in the bill that the dismissal of the
latter on the merits did not deprive the court of jurisdiction to
dispose of the former on the merits. We think the question there
and the one here, in principle, cannot be distinguished. That a
statement of the particular counterclaim there was required by the
rule is not material, since the federal jurisdiction can neither be
extended nor abridged by a rule of court.
Page 289 U. S. 243
As early as
Osborn v. U.S.
Bank, 9 Wheat. 738,
22 U. S. 823,
Chief Justice Marshall, speaking for the Court, said:
"We think, then that, when a question to which the judicial
power of the Union is extended by the Constitution forms an
ingredient of the original cause, it is in the power of Congress to
give the Circuit Courts jurisdiction of that cause although other
questions of fact or of law may be involved in it."
In
Siler v. Louisville & Nashville R. Co.,
213 U. S. 175,
213 U. S. 191,
the bill sought to enjoin the enforcement of an order made by the
Railroad Commission of Kentucky fixing intrastate rates of
transportation upon the railroad of the company. The validity of
the order was assailed on the ground that the Kentucky statute
under which the Commission assumed to act was violative of the
Federal Constitution in several particulars, and upon the further
ground that such order was unauthorized by the state statute. This
Court held that the Circuit Court, having acquired jurisdiction by
reason of the federal questions involved,
"had the right to decide all the questions in the case, even
though it decided the federal questions adversely to the party
raising them, or even if it omitted to decide them at all, but
decided the case on local or state questions only."
Lincoln Gas & Electric Light Co. v. Lincoln,
250 U. S. 256,
involved, among other things, the validity of an ordinance
assessing an annual occupation tax upon gas companies in the city.
The ordinance was attacked on the ground that it violated the due
process and equal protection clauses of the Fourteenth Amendment,
and also upon grounds of state law. The federal District Court held
that the ordinance violated the Constitution of Nebraska, and upon
that ground granted a permanent injunction against its enforcement.
This Court, in disposing of the appeal, said (p.
250 U. S.
264):
". . . If the bill presented a substantial controversy under the
Constitution of the United States, and the requisite
Page 289 U. S. 244
amount was involved, the jurisdiction extended to the
determination of all questions, including questions of state law,
and irrespective of the disposition made of the federal
questions."
These decisions are illustrative of many cases where the rule
has been stated and restated in substantially the same way.
See
Louisville & Nash. R. Co. v. Garrett, 231 U.
S. 298,
231 U. S. 303;
Ohio Tax Cases, 232 U. S. 576,
232 U. S.
586-587;
Greene v. Louisville & Interurban R.
Co., 244 U. S. 499,
244 U. S. 508;
Louisville & Nash. R. Co. v. Greene, 244 U.
S. 522,
244 U. S. 527;
Davis v. Wallace, 257 U. S. 478,
257 U. S. 482;
Sterling v. Constantin, 287 U. S. 378,
287 U. S.
393-394.
Leschen & Sons Rope Co. v. Broderick & Bascom Rope
Co., 201 U. S. 166, is
said to establish a different doctrine. In that case, the plaintiff
alleged that it owned a duly registered trademark which had been
infringed by defendant. Upon demurrer, the bill was dismissed on
the ground that it disclosed that the trademark was not a lawful
and valid trademark. This Court sustained the dismissal for want of
jurisdiction, holding that the jurisdiction of the federal court
depended entirely upon whether the registered trademark was valid.
Having held that the lower court was without jurisdiction because
of the invalidity of the trademark, the Court further said that
jurisdiction of the case could not then be assumed as one wherein
the defendant had made use of the device for the purpose of
defrauding the plaintiff and palming off its goods as those of
plaintiff's manufacture.
Whether the court was right or wrong in denying jurisdiction to
consider the claim of infringement, the ground of the decision
seems to be that such denial necessarily carried with it, also for
lack of jurisdiction, any claim of unfair competition dependent
upon the same facts. That is to say, if the court had no
jurisdiction of the former claim, it followed that it had no
jurisdiction of the latter. Whether the federal question averred by
the bill was plainly unsubstantial was not considered. The
Court
Page 289 U. S. 245
summarily disposed of the matter (p.
201 U. S. 172)
in a single sentence:
"Our jurisdiction depends solely upon the question whether
plaintiff has a registered trademark, valid under the act of
Congress, and, for the reasons above given, we think it has
not."
This is a broad statement, which, taken literally, applies
whether the invalidity of the registry so appears on the face of
the bill as to render the federal question plainly unsubstantial
or, the bill being sufficient to meet this test, such invalidity is
otherwise disclosed.
Elgin Watch Co. v. Illinois Watch Co., 179 U.
S. 665,
179 U. S. 677,
goes no further than to recognize the same doctrine, the Court
simply saying:
"Was it a lawfully registered trademark? If the absolute right
to the word as a trademark belonged to appellant, then the Circuit
Court had jurisdiction under the statute to award relief for
infringement; but if it were not a lawfully registered trademark,
then the Circuit Court of Appeals correctly held that jurisdiction
could not be maintained."
We shall not attempt to harmonize the two cases last cited with
the
Siler and the other cases following it. It is not easy
to do so unless on the ground that cases involving patents,
trademarks, and copyrights constitute an exception to the general
rule stated in the
Siler and other like cases. And
accepting the view that this is the effect of the
Leschen &
Sons Rope and the
Elgin Watch cases,
supra,
we are of opinion that such a distinction is altogether unsound.
The
Siler and like cases announce the rule broadly,
without qualification, and we perceive no sufficient reason for the
exception suggested. It is stated in these decisions as a rule of
general application, and we hold it to be such -- as controlling in
patent, trademark, and copyright cases as it was in the cases where
it is announced.
But the rule does not go so far as to permit a federal court to
assume jurisdiction of a separate and distinct nonfederal cause of
action because it is joined in the
Page 289 U. S. 246
same complaint with a federal cause of action. The distinction
to be observed is between a case where two distinct grounds in
support of a single cause of action are alleged, one only of which
presents a federal question, and a case where two separate and
distinct causes of action are alleged, one only of which is federal
in character. In the former, where the federal question averred is
not plainly wanting in substance, the federal court, even though
the federal ground be not established, may nevertheless retain and
dispose of the case upon the nonfederal
ground; in the
latter, it may not do so upon the nonfederal
cause of
action.
The case at bar falls within the first category. The bill
alleges the violation of a single right -- namely, the right to
protection of the copyrighted play. And it is this violation which
constitutes the cause of action. Indeed, the claims of infringement
and unfair competition so precisely rest upon identical facts as to
be little more than the equivalent of different epithets to
characterize the same group of circumstances. The primary relief
sought is an injunction to put an end to an essentially single
wrong, however differently characterized, not to enjoin distinct
wrongs constituting the basis for independent causes of action. The
applicable rule is stated, and authorities cited, in
Baltimore
S.S. Co. v. Phillips, 274 U. S. 316. "A
cause of action does not consist of facts," this Court there said
(p.
274 U. S.
321),
"but of the unlawful violation of a right which the facts show.
The number and variety of the facts alleged do not establish more
than one cause of action so long as their result, whether they be
considered severally or in combination, is the violation of but one
right by a single legal wrong. . . ."
"The facts are merely the means, and not the end. They do not
constitute the cause of action, but they show its existence by
making the wrong appear. "
Page 289 U. S. 247
Thus tested, the claims of infringement and of unfair
competition averred in the present bill of complaint are not
separate causes of action, but different grounds asserted in
support of the same cause of action.
We do not mean by what has just been said to lay down a hard and
fast test by which to determine in all situations what constitutes
a cause of action. "A
cause of action' may mean one thing for
one purpose, and something different for another," United
States v. Memphis Cotton Oil Co., 288 U. S.
62, but, for the purpose of determining the bounds
between state and federal jurisdiction, the meaning should be kept
within the limits indicated. Compare Baltimore & O.S.W. R.
Co. v. Carroll, 280 U. S. 491,
280 U. S.
494-495, and cases cited.
It is entirely plain that the holding of the trial court
disposing of the claim of infringement on the merits also disposed
of the claim of unfair competition in respect of the copyrighted
play, since both depended upon the same allegations of wrongful
appropriation of certain parts of, and conceptions embodied in,
petitioners' play. The finding of the court is comprehensive --
"That no version of the defendants' play 'The Spider' infringed
in any way, either with respect to plot, material, arrangement or
sequence of events, or incidents, or otherwise, the plaintiffs'
copyrighted play."
This finding -- not challenged here -- contains every essential
element necessary to justify the conclusion that there was likewise
no unfair competition in respect of the copyrighted play, since it
negatives the allegations of the bill made for the purpose of
establishing by the same facts an infringement of the copyrighted
play and unfair competition in relation thereto. Upon this finding,
the court was right in dismissing the bill insofar as it set up a
claim of unfair business practices and unfair competition, but was
wrong in dismissing it for the want of jurisdiction. It
Page 289 U. S. 248
should have been dismissed, as was the infringement claim, upon
the merits. Since a decree to that effect must follow, upon this
record, as a matter of course, no further proceedings in the
District Court are necessary. Accordingly, the decree will be
modified in the respect suggested, and, as so modified, will be
affirmed.
Two. During the pendency of the suit, petitioners
amended their bill so as to make its allegations apply to the
uncopyrighted version of their play -- namely, that the wrongful
acts of respondents were in violation of the rights of petitioners,
and constituted unfair business practices and unfair competition
with respect to that version, as well as to the original. Since
that claim did not rest upon any federal ground and was wholly
independent of the claim of copyright infringement, the District
Court was clearly right in dismissing it for want of jurisdiction.
The bill, as amended, although badly drawn, sets forth facts
alleged to be in violation of two distinct rights, namely, the
right to the protection of the copyrighted play and the right to
the protection of the uncopyrighted play. From these averments two
separate and distinct causes of action resulted, one arising under
a law of the United States and the other arising under general law.
For reasons that have already been made manifest, the latter is
entirely outside the federal jurisdiction, and subject to dismissal
at any stage of the case. It is hardly necessary to say that a
federal court is without the judicial power to entertain a cause of
action not within its jurisdiction merely because that cause of
action has mistakenly been joined in the complaint with another
which is within its jurisdiction.
Decree modified in accordance with the foregoing opinion,
and, as modified, affirmed.
MR. JUSTICE BRANDEIS and MR. JUSTICE STONE think the decree
should be affirmed without modification.
* Some cases seem to hold that, however intimately the claims of
unfair competition and infringement are related, the federal court
is without power to consider the former.
Planten v.
Gedney, 224 F. 382, 386;
Recamier Mfg. Co. v. Harriet
Hubbard Ayer, Inc., 59 F.2d
802, 806. This is what is sometimes spoken of as the "Second
Circuit rule," and has been followed in a large number of cases.
Other cases have denied jurisdiction on the ground that the two
claims constitute separate causes of action, although in some, the
separateness does not clearly appear.
United States Expansion
Bolt Co. v. H. G. Kroncke Hardware Co., 234 F. 868, 872-875.
Compare Moore v. N.Y. Cotton Exchange, 270 U.
S. 593,
270 U. S. 607,
et seq.; Dickinson Tire & Machine Co. v. Dickinson, 29
F.2d 493. In
Onondaga Indian Wigwam Co. v. Ka-Noo-No Indian
Mfg. Co., 182 F. 832, the rule of the
Siler case,
213 U. S. 175, was
definitely applied to a case where the acts of defendant were
alleged as constituting an infringement of a patent and also unfair
competition. Some courts have taken jurisdiction of unfair
competition in infringement suits as an element constituting
"aggravation of damages."
Ludwigs v. Payson Mfg. Co., 206
F. 60, 65;
W. F. Burns Co. v. Automatic Recording Safe
Co., 241 F. 472, 486;
Payton v. Ideal Jewelry Mfg.
Co., 7 F.2d 113. Relief has been denied for unfair competition
where the patent or trademark has been held valid but not infringed
--
Sprigg v. Fisher, 222 F. 964;
Detroit Showcase Co.
v. Kawneer Mfg. Co., 250 F. 234, 240;
Taylor v.
Bostick, 299 F. 232, while the contrary is stated with much
force in
Vogue Co. v. Vogue Hat Co., 12 F.2d 991, 992-995.
One case, at least, seems to consider the question of retention of
jurisdiction a matter of discretion.
Mallinson v. Ryan,
242 F. 951, 953.